Ex Parte Dunne et al

Patent Trial and Appeal Board

Apr 27, 2017

13893650 (P.T.A.B. Apr. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/893,650 05/14/2013 Jonathan Dunne CAM920120015US2_8150-0383 4665
52021 7590 05/01/2017
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
LEIBOVICH, YAIR
ART UNIT PAPER NUMBER
2114
NOTIFICATION DATE DELIVERY MODE
05/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN DUNNE and JEFFREY B. SLOYER
Appeal 2015-007281
Application 13/893,650
Technology Center 2100
Before CARLA M. KRIVAK, IRVIN E. BRANCH, and JOHN R. KENNY,
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge IRVIN E.
BRANCH.
Opinion Dissenting filed by Administrative Patent Judge JOHN R. KENNY.
BRANCH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellants request rehearing of our Decision on Appeal entered
January 27, 2017 (“Decision”), in which we affirmed the Examiner’s
rejection of claims 25—33.
ANALYSIS
We have reviewed the Request for Rehearing (“Req. Reh’g”) in view
of our Decision. Appellants’ arguments do not persuade us of anything our
decision misapprehended or overlooked. We note the following for
emphasis.
Claims 27, 29, and 30
Appellants “assume” we overlooked Appellants’ arguments (App. Br.
15—17; Reply Br. 8—10) as to claims 27, 28, and 30 based on the premise we
did not “summarize Appellants’ arguments” and we did not “explain why
[we] accepted the Examiner’s arguments.” Req. Reh’g 3^4.
To clarify, our Decision states we “adopt as our own the findings and
conclusions set forth by the Examiner in the Final Action and the
Examiner’s Answer” (Decision 2—3) and find Appellants’ arguments
“unpersuasive for the reasons stated by the Examiner (Final Act. 6—7; Ans.
11).” Id. 4 (citing Appellants’ arguments “App. Br. 15—17; Reply Br. 8—10”).
That adopted material is to be treated as if it is part of our Decision. See In
re Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (“the
PTAB [is] authorized to adopt the Examiner’s findings”).
The record established by the Examiner (Final Act. 6—7; Ans. 11)
adequately explains the basis of the rejection and the lack of persuasiveness
in Appellants’ arguments (App. Br. 15—17; Reply Br. 8—10). Accordingly,
Appellants’ arguments (Req. Reh’g 3 4) do not persuade us of anything we
misapprehended or overlooked.
Claim 25
Appellants contend (Req. Reh’g 4—8) we misapprehended or
overlooked certain of Appellants’ claim 25 arguments (App. Br. 8—10; Reply
Br. 2—3) because we did not summarize Appellants’ arguments or explain
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why the Examiner’s arguments are persuasive. Appellants also repeat
previously-presented arguments, alleging error in the majority’s conclusion.
See, e.g., Req. Reh’g 8 (“the dissent accurately recognizes the problem with
the analysis presented by the majority” and “[t]he dissent’s second point
correctly identifies the error in the majority’s new finding that ‘calculated
average (‘average response time,’ 116) also describes claim 25’s calculated
forecast’”). Appellants also argue our Decision includes an undesignated
new ground of rejection. Id. FN 3.
Regarding claim 25 ’s “determining a transaction time for each of a
plurality of transactions to a system under test during a reliability test,
wherein the plurality of transactions are of a same transaction type,”
Appellants’ contend
Referring to the underlined portion of the above-
reproduced passage [“Appellants’ arguments overlook the
Examiner’s findings with respect to Fraenkel, Fig. 13”], the
Board’s only substantive response to Appellants’ arguments was
that “Appellants’ arguments overlook the Examiner’s findings
with respect to Fraenkel.” Fike the aforementioned dependent
claims, the Board’s analysis does not meet the requirements of
Nuvasive. Merely asserting that Appellants have overlooked
certain findings by Nuvasive [sic the Examiner] is no more than
a summarization of the Examiner’s finding that fails to explain
why the Board accepted the Examiner’s arguments. Without
recognizing Appellants’ arguments or explaining why these
arguments were unpersuasive, Appellants can only assume that
the Board overlooked Appellants’ arguments.
Req. Reh’g 4—5 (quoting Decision 3). Our Decision, however, did not
“[mjerely assert[] that Appellants have overlooked certain findings by
Nuvasive [sic the Examiner]” {id.), our Decision also quoted the Examiner’s
unrebutted finding (Decision 3 (quoting Ans. 8 (“in figure 13 and other
locations, the figure shows multiple graphs, each is an average of a type; for
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example, ‘update account’ is a type, and since each point in the graph is an
average, it is an average of multiple values of a same type”))).
Because Appellants’ Reply Brief arguments (Reply Br. 2—3) did not
mention or persuasively rebut the Examiner (i.e., “Appellants’ arguments
overlook[ed] the Examiner’s findings”), we “disagree[d] with Appellants
that the Examiner erred” (Decision 2—3). Accordingly, Appellants’
arguments in the Request for Rehearing do not persuade us of anything our
decision misapprehended or overlooked.
Further regarding “determining a transaction time for each of a
plurality of transactions to a system under test during a reliability test,
wherein the plurality of transactions are of a same transaction type,”
Appellants contend “[t]he Board’s citation to ‘Fig. 13. Ans. 8’ only
addresses the second of the two issues raised by Appellants. Accordingly,
Appellants respectfully submit that the Board has overlooked the first issue
raised by Appellants.” Req. Reh’g 4—5.
We understand “first issue” to refer to Appellants’ arguments
regarding “transaction time.” See App. Br. 8—10 (“The first issue raised by
Appellants involved the Examiner’s cited passages failing to teach the
claimed ‘transaction time.’ ... Appellants need to have a clear statement, in
the written record, as to what teachings are being relied upon by the
Examiner as to these limitations.”) Appellants raised the “first issue” in
response to the Examiner’s finding “[rjesponse times and network times of
interactions performed by a transactional server is a reasonable interpretation
of transaction time, without further explanations.” Final Act. 4. Appellants
accurately reproduced this finding in the Appeal Brief. See App. Br. 9-10.
Accordingly, Appellants’ “first issue” amounted to needing “a clear
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statement, in the written record, as to what teachings are being relied upon
by the Examiner” as to “transaction time.”
The Examiner responded. See Ans. 6—8. In particular, the Examiner
responded as follows:
Applicants’ arguments are not persuasive because as noted in the
office actions, response time and network times of interactions
performed by a transactional server is viewed as said claimed
“transaction time”. The abstract and other locations pointed to by
examiner teach that. In addition, Fraenkel mentions the term
“transaction time” in [0106], [0119], [0159], and [0239],
however other terms in other locations in Fraenkel, especially the
ones pointed to by the examiner, could be reasonably interpreted
as the claimed transaction times. The term “transaction time[”]
is broad.
Id. 8. In short, the Examiner responded to Appellants’ “need to have a clear
statement, in the written record, as to what teachings are being relied upon
by the Examiner as to these limitations,” which was the “first issue.”
To whatever extent the “first issue” was more than a lack of citation,
Appellants did not persuasively rebut the Examiner’s Answer. See Reply Br.
2—3. In particular, Appellants dismissed “[t]he Examiner’s remaining
analysis on pages 7 and 8” because it “appear[s] to reproduce the
Examiner’s previously-presented arguments.” Id. 3 (referring to Ans. 7—8).
Appellants specifically responded only to portions of the Examiner’s
Answer, namely two paragraphs on page 6 of the Examiner’s Answer, and
did not identify where the passage on page 8 that we quote above had been
“previously-presented” (see, generally, id. 2—3). Accordingly, we
“disagree[d] with Appellants that the Examiner erred” and we “adopt[ed] as
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our own the findings and conclusions set forth by the Examiner in the Final
Action and the Examiner's Answer.” Decision 2—3.1
Regarding “calculating a forecast of transaction times for the
transaction type [and] comparing the forecast with a threshold time using a
processor,” our Decision found Appellants’ arguments (App. Br. 10-13;
Reply Br. 3—6) unpersuasive and provided an explanation. Decision 3.
Accordingly, we are not persuaded that our Decision misapprehended or
overlooked Appellants’ arguments as Appellants now contend. Req. Reh’g
5-8.
Specifically, we agreed with the Examiner’s finding that Fraenkel’s
average response time being compared to a threshold describes the argued
limitations. Decision 3 (citing Fraenkel 116). This finding appeared in the
Final Office Action (Final Act. 6), which we cited in our Decision (Decision
2, “REJECTION”) and which we adopted {id. 2—3 (“[w]e ... adopt as our
1 We did not reach Appellants’ belatedly presented, conclusory argument
that “[t]he Examiner’s proposed claim construction is a conclusory assertion
that is unsupported by evidence or analysis.” Reply Br. 3 (referring to Ans. 6
(“Applicants’ arguments are not persuasive because the term ‘transaction
time’ is broad enough to correspond to the response times and network times
performed by transactional servers.”)). “[I]t is inappropriate for appellants to
discuss in their reply brief matters not raised in . . . the principal brief[ ].
Reply briefs are to be used to reply to matter[s] raised in the brief of the
appellee.” Kaufman Company, Inc. v. Lantech, Inc., 807 F.2d 970, 973 n.*
(Fed. Cir. 1986). The Examiner had made essentially the same finding in the
Final Office Action (Final Act. 4) and Appellants’ Appeal Brief repeated the
finding but did not timely raise claim construction of “transaction time” on
Appeal {see, generally, App. Br. 9-10). We review the appealed rejections
for error based upon the issues identified by Appellants, and in light of the
arguments and evidence produced thereon. Cf. Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (citing In re Oetiker, 977 F.2d 1443, 1445).
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own the findings and conclusions set forth by the Examiner in the Final
Action and the Examiner’s Answer)).
The Examiner found Fraenkel describes “calculating a forecast of
transaction times for the transaction type” and “comparing the forecast
with a threshold time using a processor.” Final Act. 6 (citing Fraenkel
Abstract, H 16, 21, and “other location”). Specifically, the Examiner found
“average times are calculated and compared to expected ones.” Id.
(“calculating a forecast of transaction times for the transaction type (see
[0016], [0021], and other locations: average times are calculated and
compared to expected ones (which are also calculated/estimated; view an
expected average as said forecast because this is how the system is
expected/forecasted to behave)”); Ans. 3^4. Fraenkel also discloses “a
system administrator responsible for an Atlanta branch office may request to
be notified when a particular problem (e.g., average response time exceeds a
particular threshold) is detected by computers in that office.” Fraenkel 116.
For the reasons stated in our Decision (Decision 3) and the additional
emphasis we provide infra, the Examiner’s finding Fraenkel describes
“average times are calculated and compared to expected ones” (Final Act. 6;
Ans. 3) is sufficient evidence, in the majority’s view, that Fraenkel describes
“calculating a forecast of transaction times for the transaction type” and
“comparing the forecast with a threshold time using a processor,” as recited
in claim 25.2 As we stated in our Decision, the Examiner’s additional finding
2 We note Appellants’ contention that “it ‘does not make sense’ to perform
such a comparison when the elements being compared are necessarily the
same.” Req. Reh’g 8 (quoting Dissenting Decision 1). Indeed, we note the
Examiner’s statement that “the threshold is the forecast as explained above.”
Ans. 10. As we explained in the majority Decision and repeat here,
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that “Fraenkel’s threshold is a calculated ‘forecast’ of when action should be
taken” (Decision 3) does not negate the sufficiency of the Examiner’s
principal finding that Fraenkel describes “calculating a forecast of
transaction times for the transaction type” and “comparing the forecast
with a threshold time using a processor.” Final Act. 6.
In view of the Examiner’s finding that Fraenkel describes “average
times are calculated and compared to expected ones” (Final Act. 6 (citing
Fraenkel Abstract, || 16, 21, “and other locations”) and Ans. 3) and our
adoption of the Examiner’s rejection (Decision 2—3 (“We ... adopt as our
own the findings and conclusions set forth by the Examiner in the Final
Action and the Examiner’s Answer”)), Appellants’ statements that
“Appellants are unable to identity where the Examiner made such a finding”
(Req. Reh’g 6) does not persuade us that our Decision misapprehended or
overlooked any of Appellants’ arguments. Similarly, neither does
Appellants’ contention that “the Board did not cite to either the appealed
Office Action [or] the Examiner’s Answer regarding this assertion.” Req.
Reh’g 6, FN2. We cited to the Final Action and referred to both. Our
adoption of the Examiner’s finding is not, therefore, a new ground of
rejection.
Finally, we note Appellants’ contentions regarding “average response
time” not being a “forecast.” Req. Reh’g 7 (“paragraph [0016] implies that
the ‘average response time’ reflects an average of past response times that
are used to detect a current problem”) and 8 (“[t]here is a difference between
actual time measurements (e.g., the ‘average response time’ in paragraph
[0016]) and a forecast,” “nothing within paragraph [0016] (or the remainder
however, the Examiner’s additional findings are not relevant to our
Decision.
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of Fraenkel) either explicitly teaches or implies that the ‘average response
time,’ at the time it is calculated, refers to future (i.e., forecasted) response
times,” and “‘average response time’ refers to response times that have
already occurred (i.e., in the past)”). Our dissenting colleague makes a
similar argument. Decision Dissenting 1 (“The Specification, however,
distinguishes actual time measurements from forecasts. (Spec. Fig. 4, || 40-
43.)”).
Both Appellants and our dissenting colleague overlook that Fraenkel’s
“average” response time is a derivative of actual measurements (i.e.,
response times). Fraenkel 116. “Average response time” is not, itself, a
measurement. Appellants’ and our dissenting colleague’s arguments do not
persuasively explain how Fraenkel’s “average response time” precludes its
use as a forecast — i.e., to “predict” or “forecast” a problem. To the contrary,
notifying a system administrator when average response time exceeds a
particular threshold implies an ensuing (i.e., future) problem. In order for an
average to exceed a threshold, actual measurements necessarily have
exceeded the threshold without necessarily triggering the problem that is
forecast to happen by virtue of the average exceeding the threshold.
Moreover, carving “average response time” out of the realm of
“forecast” is not supported by Appellants’ Specification. Although the
majority did not rely on this in rendering our Decision, we note Appellants
intend “forecast” to be interpreted broadly. Spec. 1 51 (discussing forecasts:
“any of a variety of different models or modeling techniques can be used
including various derivatives of the varieties specifically noted herein as
appreciated by one skilled in the art. As such, the embodiments disclosed
within this specification are not intended to be limited by the various
exemplary techniques provided” (emphases added)). As we explain above,
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Fraenkel clearly uses “average response time” exceeding a threshold to
“forecast” an ensuing problem as Appellants intend “forecast” to be
construed (Spec. 1 51 (“as appreciated by one skilled in the art”)).
Accordingly, we do not agree with our dissenting colleague (Decision
Dissenting 1) that Appellants “distinguish” “average response time” from
forecast.
Because we relied on, adopted, and expressly discussed (Decision 2—
3) the Examiner’s finding that Fraenkel describes “average times are
calculated and compared to expected ones” (Final Act. 6 (citing Fraenkel
Abstract, || 16, 21, “and other locations”)), Appellants’ arguments (Req.
Reh’g 5—8) do not persuade us of anything our Decision misapprehended or
overlooked with respect to claim 25.
DECISION
Based on the record before us now and in the original appeal, we have
granted Appellants’ request to the extent that we have reconsidered our
Decision, but we deny Appellants’ request to make any changes in our
Decision.
The request for rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REHEARING DENIED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN DUNNE and JEFFREY B. SLOYER
Appeal 2015-007281
Application 13/893,650
Technology Center 2100
Before CARLA M. KRIVAK, IRVIN E. BRANCH, and JOHN R. KENNY,
Administrative Patent Judges.
KENNY, Administrative Patent Judge, dissenting.
Respectfully, I reviewed the majority’s analysis in this Decision on
Request for Rehearing, but I still would find that Fraenkel’s average
response time is not the forecast recited by claim 25. Therefore, I
respectfully maintain the dissent set forth in the Decision on Appeal, entered
January 27, 2017.
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