Ex Parte Bhamidipaty et al

Patent Trial and Appeal Board

Aug 17, 2016

12608672 (P.T.A.B. Aug. 17, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/608,672 10/29/2009 Anuradha Bhamidipaty IN920090057US1
(790.030)
6910
89885 7590 08/18/2016
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
GEBRESILASSIE, KIBROM K
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
08/18/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANURADHA BHAMIDIPATY
and KALAPRIYA KANNAN
____________

Appeal 2015-000192
Application 12/608,672
Technology Center 2100
____________

Before BRUCE R. WINSOR, HUNG H. BUI, and
AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-000192
Application 12/608,672

2
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The application is directed to “[s]ystems and methods for resource
identification” which “can be undertaken via modeling in which primary
constraints include requirements and availability and building a resource
map that includes alternatives which can help in the realization of the
function.” (Abstract.) Claim 1, reproduced below with disputed limitations
in italics, is illustrative:
1. A system comprising:
a resource identification tool having one or more processors
and one or more modules executable by the one or more
processors, the one or more modules comprising computer
program code comprising:
computer program code configured to identify resources of a
target computer platform which meet a predetermined functional
requirement, via:
modeling resource constraints relating to the functional
requirement and the target computer platform;
the modeling including decomposing the functional
requirement into components corresponding to resource
constraints, and categorizing each of the components of the
functional requirement via identifying and assigning a resource
category to each component;

1 Appellants identify International Business Machines Corporation as the
real party in interest. (See App. Br. 3.)
Appeal 2015-000192
Application 12/608,672

3
determining additional resource constraints; and
developing a resource map, based at least on the resource
constraints relating to the functional requirement and the target
computer platform, of resource alternatives for the functional
requirement that are not specified in the functional requirement.

THE REFERENCES AND THE REJECTION
Claims 1–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Asare et al. (US 2005/0120347 A1; pub. June 2, 2005) and Chon et al.
(US 2006/0212540 A1; pub. Sept. 21, 2006). (See Final Act. 6–11.)

APPELLANTS’ CONTENTIONS
Appellants argue that the Examiner’s rejection is in error because
“[i]n stark contrast to the teachings of the applied references, independent
Claims 1, 11 and 21 recite the following features, inter alia:”
- decomposing a functional requirement into components cor-
responding to resource constraints, and categorizing each of
the components of the functional requirement via identifying
and assigning a resource category to each component; and
- developing a resource map, based at least on the resource con-
straints relating to the functional requirement and the target
computer platform, of resource alternatives for the functional
requirement that are not specified in the functional require-
ment.
(App. Br. 12–13.)

Appeal 2015-000192
Application 12/608,672

4
ANALYSIS
For convenience, we refer to “decomposing the functional
requirement into components corresponding to resource constraints” as the
“decomposing limitation,” “categorizing each of the components of the
functional requirement via identifying and assigning a resource category to
each component” as the “categorizing limitation,” and “developing a
resource map, based at least on the resource constraints relating to the
functional requirement and the target computer platform, of resource
alternatives for the functional requirement that are not specified in the
functional requirement” as the “resource map limitation.”
The Examiner found the decomposing and categorizing limitations in
paragraph 66 of Chon and the resource map limitation in paragraph 20 of
Asare. (See Final Act. 7–8; see also Final Act. 2–5 (responding to
Appellants’ arguments); Ans. 2–7.)
Appellants do not explain why the Examiner’s finding that Asare
teaches the resource map limitation is not correct. Instead, Appellants argue
that “Asare is merely drawn to a rudimentary exercise of script generation,”
“Asare does not so much as approach the versatility, encompassed by the
features of [the independent claims] of generally assessing compatibility of a
variety of resource requirements with respect to target platforms,” “Asare
fails to set forth any system, product or method that offers a range of
functionality such as that associated with a system product or method
encompassed by [the independent claims],” and that “Asare’s treatment of
‘alternatives’ is very general and does not relate to what may or may not be
specified in a functional requirement.” (App. Br. 12–14.) We find these
generalized characterizations inadequate to show error in the Examiner’s
Appeal 2015-000192
Application 12/608,672

5
specific findings. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1356
(Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”); see also Ex parte Belinne, No.
2009-004693, 2009 WL 2477843, at *4 (BPAI 2009) (informative)
(affirming the rejection where “Appellants [did] not present any arguments
to explain why the Examiner’s explicit fact finding is in error”).
Appellants take a similar approach with regard to Chon, arguing that
“Chon relates to software testing in a military vehicle,” and that “the citation
of para. 0066 of Chon only points to items that may be seen in a ‘logical
view.’” (App. Br. 14.) Such assertions fail to show error in the Examiner’s
specific finding that Chon teaches the decomposing and categorizing
limitations. Appellants’ argument that “there is no teaching or suggestion in
Chon relating to how any such components could or should be readily
incorporable into a framework represented by the balance of features
broadly claimed by [the independent claims]” (id. at 14–15) fails to show
error in, or even squarely address, the Examiner’s stated motivation to
combine. (See Final Act. 8.) This argument is also unpersuasive because
“[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference” but rather “what the combined teachings of those references
would have suggested to those of ordinary skill in the art.” In re Keller, 642
F.2d 413, 425 (CCPA 1981).
Appeal 2015-000192
Application 12/608,672

6
For these reasons, we sustain the Examiner’s obviousness rejection of
claims 1–25 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1–25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED