Ex Parte Benedetti et al

Patent Trial and Appeal Board

Jul 20, 2013

11457042 (P.T.A.B. Jul. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FABIO BENEDETTI and JONATHAN WAGNER
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Appeal 2011-006147
Application 11/457,042
Technology Center 2600
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Before ERIC GRIMES, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal
1
under 35 U.S.C. § 134 involving claims to a
method, a program, and a system for organizing works to be performed at a
plurality of workstations that are part of a pool of workstations. The Patent
Examiner has rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

1
Appellants state that the real party in interest is International Business
Machines Corporation of Armonk, New York. (App. Br. 2.)
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STATEMENT OF THE CASE
Claims 1-17 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief (App. Br. 19-24). Claim 1 is illustrative of the claims on
appeal, and reads as follows:
1. A method for scheduling execution of work units in a data
processing system, wherein the method includes the steps of:
organizing a plurality of workstations logically into a plurality
of pools, a workstation being a resource of a pool, the workstation
being described by a plurality of hardware and software
characteristics associated with the workstation, and a pool in the
plurality of pools being dedicated to a category of work units;
providing a plan of execution of the work units, each work unit
requiring at least one resource of a corresponding pool for execution;
submitting each work unit for execution according to the plan;
for each submitted work unit, verifying an availability of each
required resource in the corresponding pool; and
requesting the provisioning of at least one further resource to
the pool corresponding to at least one non-available required resource.
The following ground of rejection is before us for review:
The Examiner has rejected claims 1-17 under 35 U.S.C. § 103(a) as
unpatentable over Winner
2
in view of Itaki.
3

The Issue
The Examiner takes the position that Winner disclosed a method of
scheduling execution of work units in a data processing system that uses
printers (Ans. 4). The Examiner finds the sets of printers to be analogous to
pools of printers (id. at 18). “Itaki et al. teaches classifying a plurality of
printers 16 into pre-registered groups, the printer 16 being a resource of the

2
Jeffrey B. Winner et al., US 6,278,901 Bl, issued Aug. 21, 2001.
3
Kanji Itaki et al., US 2002/0030840 Al, published Mar. 14, 2002.
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group(s) of printers 16, the printer 16 having hardware and software
characteristics” (Ans. 5). The Examiner concludes that “it would have been
obvious to a person of ordinary skill in the art to add the group printer
classification of Itaki et al. to the workflow scheduling of Winner et al. in
order to obtain grouping of workstations to schedule jobs that logically
match with each grouping of workstations.” (Id. at 6.)
The Examiner interprets “verifying an availability” to be a means of
providing “alternate routes when a certain step cannot occur or a certain
result cannot be reached. For example, when a resource is unavailable in a
route, an alternative route allows the job to proceed by utilizing alternate
resource.” (Id. at 17 (emphasis omitted).) The Examiner interprets
“requesting the provisioning” to encompass the step of identifying “another
route to find an available resource, or . . . provid[ing] alternate routes when a
certain step cannot occur or a certain result cannot be reached. For example,
when a resource is unavailable in a route, an alternative route allows the job
to proceed by utilizing alternate resource[s].” (Id. at 18 (emphasis omitted).)
Appellants contend:
By definition, “provisioning” means making available.
Provisioning a resource to a pool makes the resource available
in the pool. Performing a different process due to non-
availability of a resource according to Winner utilizes a
different resource in a different route, and does not make
available the different resource in the original process or route.
(App. Br. 14.) Appellants contend “[l]earning that a resource is unavailable
in an original route to determine an alternate resource in an alternate route is
insufficient to teach or suggest provisioning that resource in the
corresponding pool.” (Id. at 17.)
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The issue is: Is the Examiner‟s interpretation of the claims reasonable
in light of the Specification?

Findings of Fact
FF 1. The Specification provides that a provisioning manager
monitors the workstations; when impairment in the workload is detected the
provisioning manager may:
[A]dd further workstations to the pool or move some
workstations from another (under-exploited) pool. At the same
time, the provisioning manager 255 automatically configures
the (added or moved) workstations for the required tasks; the
operations to be executed for this purpose (such as install
software applications, configure system parameters, set up
hardware devices, and the like) are defined by corresponding
workflows, which are stored into a database 270.
(Spec. p. 9, ll. 17-24)(emphasis added.)
FF 2. The Specification provides that upon receiving a job the handler
verifies workstation availabilities and if insufficient workstations are
available then the job is added to a “waiting queue, together with a
corresponding timestamp (updating the control file accordingly).” (Spec.
p. 10, ll. 15-22.)
FF 3. Winner disclosed that “model 10 may be continuously updated
with information regarding the real-world manufacturing environment that it
represents. In this way, as resources are taken off line or added, model 10 is
available to identify new production plans.” (Winner, col. 5, ll. 47-49;
Ans. 17.) Resources include materials and assets. Materials are those
consumables that can only be used once, for example paper and toner; while
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assets are those resources that are not consumed such as print machines, the
physical plant, operators etc. (Winner, col. 6, ll. 16-24.)
FF 4. Winner disclosed that:
To produce workflows 134, scheduler 132 may
determine which of the number of possible routes represented
in model 130 are available to process each tasking 136 and may
then provide work assignments accordingly. For example,
scheduler 132 may determine which routes are unavailable by
determining which processes represented by task nodes in
model 130 are already filled to capacity and decide to schedule
new tasks 136 along routes that do not include those task nodes.
(Winner, col. 10, ll. 50-58.)
FF 5. Itaki disclosed using a group of “printers 161,162, ... ,16n [that]
have substantially the same structure, and are different only in attributes.”
(Itaki, 13: ¶0141.) “The operation screen includes a group display portion
202 for displaying the printers 16 connected to the network 10 when the
printers 16 have been classified into pre-registered groups by operator
operations, a setting portion 204 for setting the output method, etc., and a ten
key portion 206.” (Itaki, 13: ¶0157; Ans. 5.)

Principle of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

Analysis
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the
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prior art. Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir.
2003); In re Steele, 305 F.2d 859, 863 (CCPA 1962) (“Before it can be held
that the claim on appeal cover „a wide range of compositions,‟ it is essential
to know what the claims do in fact cover. . . . We think the examiner and the
board were wrong in relying on what at best are speculative assumptions as
to the meaning of the claims and basing a rejection under 35 U.S.C. § 103
thereon.”). In this case, Appellants challenge the Examiner‟s interpretation
of the phrase “requesting the provisioning of at least one further resource to
the pool corresponding to at least one non-available required resource” as
recited in claim 1, arguing that the “[b]y definition, „provisioning‟ means
making available. Provisioning a resource to a pool makes the resource
available in the pool. Performing a different process due to non-availability
of a resource according to Winner utilizes a different resource in a different
route, and does not make available the different resource in the original
process or route.” (App. Br. 14.)
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, we first turn to the
Specification to determine whether the meaning of the phrase “requesting
the provisioning of at least on further resource to the pool corresponding to
at least one non-available required resource” can be discerned.
The Specification teaches that the provisioning server allocates a new
workstation (or more) to the pool (Spec. 13, ll. 29-30). The Specification
further teaches that the “provisioning manager 255 may add further
workstations to the pool or move some workstations from another (under-
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exploited) pool. At the same time, the provisioning manager 255
automatically configures the (added or moved) workstations for the required
tasks; the operations to be executed for this purpose.” (Spec. 9, ll. 16-21
(emphasis added).)
Based on the teaching of the Specification, we interpret the limitation
of “provisioning” to not only include the addition of a resources but also to
reasonably include moving (routing) workstations (resources) from
underutilized areas to carry the workload necessary to achieve the job.
Appellants contend that the Examiner did not apply the definition of
“provisioning” as making the additional resource available (App. Br. 14).
We are not persuaded by Appellants‟ contention. The Specification provides
that the provisioning manager can move some workstations from another
(under-exploited) pool (FF 1). Thus, the “provisioning” limitation as recited
in the claim is not limited to adding resources but also includes allocating
underused resources. We also find that the Examiners has reasonably
interpreted the claim limitation of “provisioning” to encompass providing
alternate routes in order to ensure that the work can be completed (Ans. 17).
“[W]hen a resource is unavailable in a route, an alternative route allows the
job to proceed by utilizing alternate resource.” (Id.) (Emphasis omitted.)
Furthermore, in Winner each printer workstation comprises multiple
resources; in addition to the actual printer, it also contains the consumable
resources such as paper and ink that are part of the printer workstation (FF
3). During the printing process, when consumable resources are used up, no
work can be completed in that route until the printer is supplied with more
resources, and thus another route may be chosen (Winner, col. 4, ll. 8-12).
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Appellants assert that “[n]owhere in Winner does Winner support the
Examiner's notion that the „set of printers‟ operates as the claimed pool.”
(Reply Br. 4.) Appellants acknowledge that “Winner does use multiple
printers, but the examiner chooses to view the „sets of printers‟ as the
claimed „pool‟ which has very specific characteristics and participates in
very specific manner in a claimed plan to accomplish a task as described
above.” (Id.)
We are not persuaded. The Examiner has reasonably interpreted “the
pool” limitation “as being analogous to pools of printers or resources in a
production environment” (Ans. 18). We agree with the Examiner‟s
conclusion that “it would have been obvious to a person of ordinary skill in
the art to add the group printer classification of Itaki et al. to the workflow
scheduling of Winner et al. in order to obtain grouping of workstations to
schedule jobs that logically match with each grouping of workstations.”
(Ans. 6.) We find that Winner disclosed a process that looks at a group of
printers and maps the availability of the resources as they are taken off line
or added back into the production (FF 3), these resources include paper and
toner as well as the printers themselves (id.). Winner disclosed assigning
work with the help of a scheduler that can determine work assignment based
on what resources or routes are available (FF 4).
Appellants‟ arguments with respect to claims 9 and 10 are similar to
claim 1. (Ans. 18.) We agree with the Examiner‟s conclusion that “it would
have been obvious to a person of ordinary skill in the art to add the group
printer classification of Itaki et al. to the workflow scheduling of Winner et
al. in order to obtain grouping of workstations to schedule jobs that logically
match with each grouping of workstations.” (Id. at 13.)
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With regard to claim 2, Appellants contend “[l]earning that a resource
is unavailable in an original route to determine an alternate resource in an
alternate route is insufficient to teach or suggest provisioning that resource
in the corresponding pool.” (App. Br. 17.) Specifically, Appellants contend
that claim 2 combines the submitted jobs into a “waiting queue” until the
resources become available in the pool before assigning the work to a
particular group (id.).
We are not persuaded. “During examination, „claims … are to be
given their broadest reasonable interpretation consistent with the
specification, and … claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”‟
In re Am. Acad. of Sci. Tech. Ctr., at 1364 (quoting In re Bond, 910 F.2d.
931, 833 (Fed. Cir. 1990)). Neither the Specification nor the claims define
the location of the waiting queue (FF 2). The queue in Winner is at the level
of the task node that is associated with a particular resource, such as a printer
(FF 4). Winner provides that “all inputs to a task node 14 represent logical
AND requirements. That is, the action associated with a given task node 14
cannot be performed until all of the associated inventory items represented
by the state nodes 12 which feed the task node 14 are available.” (Winner
col. 5, ll. 24-28; see also Fig 1.) We agree with the Examiner‟s position that
Winner disclosed “that job processing tasks cannot be performed until the
necessary resources become[ ] available. This means that the work unit
must wait or be „queued‟ until a resource(s) become available to continue
processing.” (Ans. 18.)
We conclude that the preponderance of the evidence of record
supports the Examiner‟s conclusion that the combination of Winner and
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Itaki renders obvious the method of scheduling work units of claim 1 as well
as submitting work to a queue of claim 2. We thus affirm the rejection of
claims 1 and 2 under 35 U.S.C. § 103(a) as being obvious. As claims 3-17
fall with those claims, we affirm the rejection of claims 3-17 as well. 37
C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm the Examiner‟s rejection of claims 1-17 as obvious.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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