Ex Parte HADAR et al

Patent Trial and Appeal Board

Nov 21, 2018

13472857 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/472,857 05/16/2012
106095 7590 11/26/2018
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
FIRST NAMED INVENTOR
EitanHADAR
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
063170.9797 4734
EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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
following e-mail address(es):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EITAN HADAR and DONALD F. FERGUSON
Appeal2017-009268
Application 13/472,857
Technology Center 3600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1,2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3, 5-9, 11, 13-17, 19, and 21-30. See Br. 10.
Claims 2, 4, 10, 12, 18, and 20 have been canceled. Supp. Br. 3, 7, and 10.
We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
March 18, 2016; the Appeal Brief (Br.) filed August 15, 2016; the
Supplemental Appeal Brief (Supp. Br.) filed November 18, 2016, containing
the correct copy of the appealed claims; and the Examiner's Answer (Ans.)
mailed March 3, 2017. No Reply Brief has been filed.
2 The real party in interest is listed as CA, Inc. Br. 1.
Appeal2017-009268
Application 13/472,857
Invention
"Information technology (IT) is essential to driving the growth of
service-based business ( e.g., business service providers)" (Spec. ,r 2) who
"often leverage IT to move their businesses forward" (Spec. ,r 3). "But as
technology has evolved, IT management has become far more difficult,
particularly with respect to risk management." Spec. ,r 3. "[T]he business
service provider must make tradeoffs among all the relevant and important
costs, benefits, and risks." Spec. ,r 4. Appellants' invention relates to
"proactively assessing the risk of compatibility issues that might result from
system architecture evolutions." Spec. ,r 1; see also id., Abstract.
Illustrative claim 1 is reproduced below:
1. An apparatus for risk assessment for system
architecture evolutions, the apparatus comprising:
one or more processors;
a database comprising a plurality of roadmaps for a
corresponding plurality of components that form an enterprise
architecture, the roadmaps identifying the planned operating
characteristics of the plurality of components; and
computer-readable program code that, when executed by
the one or more processors, is configured to:
identify the components that form a particular enterprise
architecture;
identify a current operating characteristics of the
components that form the particular enterprise architecture;
map the components that form the particular enterprise
architecture to corresponding roadmaps from among the
plurality of roadmaps in the database;
identify a first component and a second component from
the particular enterprise architecture that have current operating
characteristics that are different from their corresponding
planned operating characteristics, the operation of the second
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component depending at least in part on the operation of the
first component;
determine a first value of loss that will be experienced by
the particular enterprise architecture if the first component is
updated when its corresponding planned operating
characteristics are scheduled to be implemented and the second
component is updated when its corresponding planned
operating characteristics are scheduled to be implemented;
determine a second value of loss that will be experienced
by the particular enterprise architecture if the first component is
updated after its corresponding planned operating
characteristics are scheduled to be implemented and the second
component is updated when its corresponding planned
operating characteristics are scheduled to be implemented;
determine a third value of loss that will be experienced
by the particular enterprise architecture if the first component
and the second component are updated when the corresponding
planned operating characteristics for the second component are
scheduled to be implemented; and
schedule the first component and the second component
to be updated based on the first value of loss, the second value
of loss, and the third value of loss so that the first component
and the second component are updated at times that correspond
to a least value of loss determined.
Supp. Br. 2-3 (Claims App'x).
The Examiner relies on the following as evidence of unpatentability:
Lee
Chan
Cain
Houlding
Feeser
Dvorak
US 2004/0031029 Al
US 2005/0109049 Al
US 2006/0080656 Al
US 7,415,697 Bl
US 8,296,756 Bl
US 2013/0197830 Al
3
Feb. 12,2004
May 26, 2005
Apr. 13, 2006
Aug. 19, 2008
Oct. 23, 2012
Aug. 1, 2013
Appeal2017-009268
Application 13/472,857
The Rejections3
Claims 1, 3, 5-9, 11, 13-17, 19, and 21-30 are rejected under
35 U.S.C. § 101 as being directed to patent ineligible subject matter. Final
Act. 5---6.
Claims 1, 3, 6, 7, 9, 11, 14, 15,4 17, 19, 22, 23, 25, 27, and29 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Feeser, Chan,
and Dvorak. Final Act. 7-23.
Claims 5, 13, and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Feeser, Chan, Dvorak, and Lee. Final Act. 23-24.
Claims 8, 16, and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Feeser, Chan, Dvorak, and Houlding. Final Act. 25-26.
Claims 26, 28, 5 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Feeser, Chan, Dvorak, and Cain. Final Act. 26-31.
3 The Examiner rejected claims 1, 3, 5-9, 11, 13-17, 19, and 21-30 under
35 U.S.C. § 112, first paragraph, discussing claims 1, 9, 17, and 25-30 in the
rejection's body. Final Act. 3--4. The Examiner has withdrawn explicitly
the§ 112 rejection of claims 1, 9, 17, and 25-30. Ans. 2. For purposes of
this decision, we presume the Examiner also has withdrawn the§ 112
rejection of claims 3, 5-8, 11, 13-16, 19, and 21-24, which depend directly
or indirectly from those claims for which the § 112 explicitly was
withdrawn.
4 Claim 15 is mistakenly omitted from the rejection's header (Final Act. 7)
but otherwise appears in the rejection's body (id. at 20). We deem this
typographical error to be harmless.
5 The rejection's header (Final Act. 26) mistakenly identifies claim 29
instead of claim 28. Claim 28 otherwise appears in the rejection's body. Id.
at 31. We deem this typographical error to be harmless.
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THE PATENT-INELIGIBILITY REJECTION
Appellants argue claims 1, 3, 5-9, 11, 13-17, 19, and 21-30 as a
group. Br. 15-25. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds the claims are directed to "concepts related to
commerce present in risk mitigation (fundamental economic practices); thus,
the claims are directed to an abstract idea." Final Act. 6; see also id. at 5.
The Examiner further states the claims do not include additional elements
that amount to significantly more than the abstract idea. Id. at 6. The
Examiner determines the claims recite no more than instructions to apply the
abstract idea on a generic computer and do not move beyond generally
linking the abstract idea to a particular technologic environment. Id.
Appellants argue that the claimed invention is not directed to an
abstract idea. Br. 15-21. According to Appellants, "the claims are not
recited at such a high level of generality to preempt all practical uses of the
alleged abstract idea." Id. at 17. Appellants further contend the claims
recite a technical improvement in specific technical fields ( e.g., computing,
networks, and enterprise architecture) and in computer functionality by
reducing a loss value to a particular enterprise architecture, thereby allowing
the particular enterprise architecture to run efficiently with minimal
downtime. Id. at 19-21 (citing Spec. ,r,r 4, 12, 42, 45). To the extent the
claims are directed to an abstract idea, Appellants further assert evaluating
the loss that will be experienced by an enterprise architecture according to
three specific scenarios as claimed are "precisely the type of meaningful
limitations referenced in Alice" Corp. Proprietary Ltd. v. CLS Bank
International, 134 S. Ct. 2347 (2014). In Appellants' view, "[t]hese
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limitations are meaningful because they are essential to the claimed
apparatus, method, and computer program product." Id. at 23.
ISSUE
Under§ 101, has the Examiner erred in rejecting claim 1 by finding
that the claim is directed to patent ineligible subject matter?
ANALYSIS
Based on the record before us, we find no error in the Examiner's
rejection of independent claim 1. Under 35 U.S.C. § 101, a patent may be
obtained for "any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof." The
Supreme Court has "'long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable."' Alice, 134 S. Ct. at 23 54 ( quoting Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. First, "determine
whether the claims at issue are directed to a patent-ineligible concept," such
as an abstract idea. Id. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If
so, "consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
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transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016).
Mayo/Alice Step 1
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). There is no
definitive rule in determining what constitutes an "abstract idea." Enfish,
822 F.3d at 1334 (citing Alice, 134 S. Ct at 2357). We need only look to
other decisions where similar concepts were previously found abstract by the
courts. See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016); see also Enfzsh, 822 F.3d at 1334--35.
According to the Examiner, claim 1 is directed to the abstract idea of
risk mitigation and is a fundamental economic practice. Final Act. 6. We
agree. Claim 1 recites "[an] apparatus for risk assessment for system
architecture evolutions" (preamble). Supp. Br. 2 (Claims App'x). The
apparatus includes code that, when executed, is configured to identify
components' planned operating characteristics using roadmaps, identify
components' current operating characteristics, map the components to the
roadmaps, identify first and second components having current operating
characteristics different from their corresponding planned operating
characteristics, determine a first, second, and third loss values experienced
by the particular enterprise architecture ("determine a first value of loss ...
for the second component are scheduled to be implemented"), and schedule
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the first and second components to update at times corresponding to the least
loss value determined ("schedule the first component and the second
component ... a least value of loss determined.").
Contrary to Appellants' assertions (Br. 18), claim 1 is directed to a
fundamental business practice of "risk assessment" consistent with the
disclosure. Spec. ,r 1. That is, claim 1 recites "[an] apparatus for risk
assessment for system architecture evolutions" (preamble). Supp. Br. 2
(Claims App'x). The Specification further explains:
Business service providers often leverage [information
technology (IT)] to move their businesses forward through
management and integration .... But as technology has evolved,
IT management has become far more difficult, particularly with
respect to risk management. Making business-centric IT
decisions based on risk drives the future design and intent of the
enterprise architecture landscape. But such risk-based decision-
making is complex due to its cross disciplinary implications.
Spec. ,r,r 3--4. Thus, the disclosure illustrates assessing risks, even in a
computing, IT, or enterprise architecture field, is a business or economic
practice long prevalent, similar to hedging or protecting against risks
discussed in Bilski v. Kappas, 561 U.S. 593, 611 (2010) or the use of a third
party to mitigate settlement risk, or intermediated settlement, addressed in
Alice, 134 S. Ct. at 2356.
We find unavailing Appellants' contention that claim 1 's focus "is to
a specific improvement in computer functionality by reducing a value of loss
to a particular enterprise architecture." Br. 19 (citing Enfzsh). The Enfzsh
court explained that "[t]he Supreme Court has suggested that claims
'purport[ing] to improve the functioning of the computer itself,' or
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'improv[ing] an existing technological process' might not succumb to the
abstract idea exception." Enfish, 822 F.3d at 1335 (citing Alice, 134 S. Ct. at
2358-59). The claims in Enfish were directed to an improved database
configuration that permitted faster searching for data. Id. at 1330-33, 1336.
Although Appellants' "enterprise architectures ... may involve ...
software, middle-ware, business processes, operations, lines of business,
support, projects, departments, politics, etc." (Spec. ,r 4), we find reducing a
loss value to an enterprise architecture as recited in claim 1 does not describe
an advance in hardware or software that, for example, causes a computer to
operate faster or more efficiently such as the court determined in Enfish. See
Enfish, 822 F.3d at 1336 (finding a "self-referential table for a computer
database" improves computer functionality itself). Accordingly, claim 1 is
not directed to "an improvement [in] computer functionality itself, [but
rather to] an economic or other [process] for which the computer is used in
its ordinary capacity." Id. at 1336.
Additionally, presuming, without agreeing, the above identified
abstract idea overgeneralizes claim 1, courts have found that steps of
analyzing or recognizing data ( e.g., the recited "identify" and "determine"
recitations in claim 1 ), manipulating data ( e.g., the "map" recitation in claim
1) and setting a schedule based on information ( e.g., the "schedule"
recitation in claim 1) are directed to abstract idea. See Elec. Power Grp.,
830 F.3d at 1354-55 (indicating the claims are directed to an abstract idea of
gathering and analyzing information of a specified content and displaying
results); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l
Ass 'n, 776 F.3d 1343, 1347 (Fed. Cri. 2014) (indicating the claims are
directed to the abstract idea of collecting data using a scanner and
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recognizing specific information within a collected dataset). Cf
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095-96 (Fed. Cir.
2016).
As for Appellants' pre-emption contention (Br. 16-18), we note,
"'while preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility."'
FairWarning, 839 F.3d at 1098 (quotingAriosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat
the claims do not pre-empt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Further, "[w]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
For the foregoing reasons, we determine claim 1 is directed to one or
more abstract ideas.
Mayo/Alice Step 2
In step two, we consider the elements of claim 1 both individually and
as an ordered combination to determine whether the additional elements add
enough to transform the claim into significantly more than a patent-
ineligible concept. Step two in the Mayo/Alice framework involves the
search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
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relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
To recap, we determine above that the functions of determining first,
second, and third loss values experienced by the particular enterprise
architecture ("determine a first value of loss ... for the second component
are scheduled to be implemented") concern the above-identified abstract
idea of risk mitigation and are not additional elements to the abstract ideas.
As previously discussed, these functions are drawn to the abstract idea of
risk assessment-a fundamental business or economic practice. See Bilski,
561 U.S. at 611; Alice, 134 S. Ct. at 2356. Additionally, we note various
functions (e.g., analyzing, recognizing, and manipulating data (e.g., the
recited "identify" and "determine" recitations in claim 1) are drawn to
abstract ideas. Thus, Appellants' contention that the above limitations
express "meaningful limitations" that transform claim 1 into a patent eligible
subject matter is not persuasive. See Br. 23-24.
The Examiner concludes under step two in the Mayo/Alice framework
that claim 1 uses a "processor" and "storage media" to perform computer
functions, but that these uses do not qualify as significantly more than the
abstract idea. Final Act. 6. Appellants do not sufficiently challenge that the
claimed processor and storage media do not operate in their conventional
manner. The disclosure further describes the processor and the storage
media in generalities. Spec. ,r,r 13-14, 17, 24--27.
Thus, like the Examiner (Final Act. 8-9), we conclude the additional
elements in claim 1 are no more than generic computer elements that do not
transform the above-discussed abstract idea into a patent-eligible invention.
See Alice, 135 S. Ct. at 2358 (holding "the mere recitation of a generic
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computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention"); Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1341 (Fed. Cir. 2017) ("[T]he claims recite both a generic
computer element-a processor-and a series of generic computer
'components' that merely restate their individual functions .... That is to
say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two."). Rather, the
additional elements in claim 1 ( e.g., a processor and database) are merely
tools used to perform the claim's functions. See Alice, 134 S. Ct. at 2358.
For the above reasons, claim 1 's limitations, viewed "both
individually and as an ordered combination," do not amount to significantly
more than the judicial exception and do not sufficiently transform the nature
of the claims into patent-eligible subject matter. See Alice, 134 S. Ct. at
2355.
Claim 9 recites a method implementing functions similar to the
functional limitations claim 1 's apparatus performs, except claim 9 omits the
"schedul[ing]" function recited in claim 1. Supp. Br. 6-7 (Claims App'x).
Claim 17 recites a "non-transitory computer program product" having
instructions to implement a method similar to the functional limitations
claim 1 's apparatus performs. Id. at 9-10 ( Claims App' x). Similar to claim
1, these claims recite conventional computing devices (e.g., storage devices
and media), and do not transform the claims into patent-eligible subject
matter. We refer to our analysis above for more details.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claims 1, 9, and 1 7 and remaining dependent
claims 3, 5-8, 11, 13-16, 19, and 21-30.
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THE OBVIOUSNESS REJECTION OVER FEESER, CHAN,
AND DVORAK
Regarding independent claim 1, the Examiner finds Feeser teaches
many of its limitations, including code that when executed is configured to
identify current operating characteristics of components forming an
enterprise architecture. Final Act. 8-9 (citing Feeser, 4:34--58, 11:51-57,
Abstract); id. at 7-11. The Examiner also finds Feeser identifies a first
component and second component having current operating characteristics
different from their corresponding planned operating characteristics. Id. at
10 (citing Feeser 5: 19-24, 6:51-59, 7: 1-5).
Although the Examiner acknowledges that Feeser does not (1)
determine first loss value and third loss values as recited or (2) schedule the
first component and the second component to be updated based on
determined first and third loss values as recited so that the first component
and second component are updated at times that correspond to the least
determined loss value as recited, the Examiner cites Chan in combination
with Feeser for teaching these features. Id. at 11-13 (citing Chan ,r,r 8, 10,
36-37, 44--45, 51). The Examiner also acknowledges that Feeser does not
(3) determine second and third loss values as recited and ( 4) schedule the
first component and the second component to be updated based on a
determined second and third loss values so that the first component and
second component are updated at times that correspond to the least
determined loss value. Id. at 13-16. The Examiner cites Dvorak in
combination with Feeser and Chan to teach these features. Id. at 13-16
(citing Dvorak ,r,r 11-14, 102).
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Appellants argue neither Chan nor Dvorak teaches assigning a first
loss value, a second loss value, and a third loss value, and scheduling an
update for the first and second components at times corresponding to a least
determined loss value. Br. 27-29. Appellants further argue (1) the
Examiner improperly relies on impermissible hindsight in combining Feeser,
Chan, and Dvorak to arrive at the claimed invention as recited in claim 1, (2)
combining Chan and Dvorak with Feeser would frustrate one of Feeser's
stated purposes, and (3) Chan and Dvorak are non-analogous art. Id. at 29-
34.
ISSUES
(I) Under§ 103, has the Examiner erred in rejecting claim 1 by
finding Feeser, Chan, and Dvorak collectively teach or suggest an apparatus
comprising computer-readable program code that, when executed by one or
more processors, is configured to "schedule the first component and the
second component to be updated based on the first value of loss, the second
value of loss, and the third value of loss so that the first component and the
second component are updated at times that correspond to a least value of
loss determined" ("the disputed limitation")?
(II) Is the Examiner's reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner's obviousness conclusion? This issue
turns on whether the Examiner erred by using impermissible hindsight in
combining Feeser, Chan, and Dvorak to arrive at the claimed invention as
recited in claim 1.
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(III) Do Chan and Dvorak (a) constitute analogous art or (b) frustrate
the intended purpose of Feeser?
ANALYSIS
CLAIMS 1, 6, 7, 9, 14, 15, 17, 22, 23, 25, 27, and 29
I. The Disputed Limitation
We begin by noting that the Examiner's obviousness rejection of
claim 1 relies on Feeser, Chan, and Dvorak. See Final Act. 7-16; see also
Ans. 5 (stating "the combination of cited references disclose[s] the claimed
values."). The Examiner's obviousness rejection relies principally on Feeser
for teaching many of the recited elements of claim 1 and cites Chan and
Dvorak for limited purposes. See Final Act. 7-16. Feeser is relied upon to
teach identifying an enterprise architecture's first component and second
component having current operating characteristics different from their
corresponding planned operating characteristics. See id. at 10 ( citing Feeser
5:19-24, 6:51-59, 7:1-5). These findings from Feeser are undisputed. See
Br. 27-29.
The Examiner also cites Chan in combination with Feeser to show
scheduling first and second components to be updated at times
corresponding to a least loss value among determined first and third loss
values. Final Act. 12-13 (citing Chan ,r,r 8, 10, 37, 44, and 51); Ans. 6-7.
The Examiner cites Dvorak in combination with Feeser to show scheduling
first and second components to be updated at times corresponding to a least
value of loss among determined second and third loss values. See id. at 14,
16 (citing Dvorak ,r,r 11-14, 102); Ans. 7-9. That is, the Examiner cites
Chan's and Dvorak' s least loss value calculations to suggest modifying
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Feeser so as to optimize maintenance schedule and costs. See Ans. 9-10;
see also Final Act. 13, 16. We agree with the Examiner in concluding
Feeser, Chan, and Dvorak collectively teach or suggest the disputed
limitation pertaining to scheduling first and second components to be
updated at times corresponding to a least loss value among determined first,
second, and third loss values.
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413,426
(CCP A 1981 ). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the claimed invention
to a person having ordinary skill in the art. In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, Appellants' arguments
regarding Chan's and Dvorak's alleged individual shortcomings (Br. 28-29
( stating "neither Chan nor Dvorak discloses or suggests assigning three
determined values of loss ... and updating the first and second component
'at times that correspond to a least value of loss determined"') (italics and
bolding omitted)) with respect to the disputed limitation are unavailing.
This is because the rejection is not based solely on Chan's or Dvorak's
individual teachings.
In short, Appellants fail to specifically rebut the Examiner's ultimate
legal conclusion of obviousness based on the combination of Feeser, Chan,
and Dvorak.
II
We also find unavailing Appellants' contentions that the Examiner's
reason to combine the references is based on impermissible hindsight and
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the only rationale to combine the references is gleaned from Appellants'
disclosure. See Br. 26, 29.
The Examiner concludes it would have been obvious to modify the
teachings of Feeser with the teachings of Chan and Dvorak to "[schedule]
maintenance in such a way that it optimizes overall costs." Ans. 9. Notably,
it is well settled that
an implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the "improvement" is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). Thus, to the extent that the Examiner's
rationale to combine the references results in a more efficient or cheaper
product or process, such an enhancement flows from the references'
teachings and is an adequate motivation to combine the references.
Moreover, the Examiner relies on the references themselves to
demonstrate optimizing overall costs was a known technique within an
ordinary artisan's skill level. See Ans. 9 ( citing Dvorak ,r 11 and Chan
,r,r 36-37, 51). Thus, to the extent Appellants contend that the Examiner's
rationale to combine the references is based solely on teachings gleaned
from Appellants' disclosure (see Br. 7-8), we disagree. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
On this record, the Examiner's articulated reason to combine the
references is not based on impermissible hindsight, but rather is supported
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by reasoning with some rational underpinning from the references to justify
the Examiner's obviousness conclusion.
III.
(a) Analogous Art
Appellants contend the Examiner's reliance on Chan and Dvorak is
misplaced because Chan and Dvorak are non-analogous art with respect to
the claimed invention. See Br. 32-34. We are not persuaded.
"The identification of analogous prior art is a factual question." In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citing In re GPAC, 57 F.3d
1573, 1577 (Fed. Cir. 1995)). In an obviousness analysis,
[ t ]wo separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting Bigio, 381 F.3d
at 1325). "A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem." Klein, 647 F.3d at 1348
(quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)) (emphasis added).
Appellants' Specification discusses "proactively [ selecting] how to
evolve their enterprise architecture to avoid system down-time when
software vendors implement future updates." Spec. ,r 12; see also Br. 34
( citing Spec. ,r,r 3-5, 12). Thus, the problem to be solved by the invention is
avoiding system down-time. According to Appellants' Specification, to
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avoid system down-time, the future updates are assessed in terms of risk
management (Spec. ,r 12) and tradeoffs are made among relevant and
important costs, benefits, and risks (Spec. ,r 4 ). Thus, Appellants' focus on
"how to determine and mitigate the risks associated with software updates to
improve IT management" (Br. 34) may be one, but is not the only, problem
to be solved by the invention.
Chan is concerned with reducing a device's deactivation periods,
maintenance, and costs. Chan ,r,r 10, 36. According to Chan, traditional
device maintenance leads to longer than necessary off-line times. Id. ,r 8.
We find Chan's technique to reduce deactivation periods and maintenance is
reasonably pertinent to the problem Appellants were concerned with-
dealing with down-time and tradeoffs associated with downtime (e.g., cost).
Chan's technique would have logically commended itself to a skilled person
faced with the problems associated with avoiding system down-time. See
Klein, 647 F.3d at 1348.
Dvorak is concerned with minimizing downtime of an apparatus ( e.g.,
equipment requiring occasional oil replacements) to optimize schedule
maintenance costs. Dvorak ,r 11. According to Dvorak, the time between
the replacements of the apparatus' components may be lengthened if
considered safe. Id. ,r 13. We find Dvorak's teachings concerning
minimizing equipment downtime to optimize costs is reasonably pertinent to
the above-identified problem with which Appellants were concerned and
would have logically commended itself to a skilled person faced with the
problems associated with avoiding system down-time.
Accordingly, we find that Chan and Dvorak are analogous art with
regard to Appellants' invention.
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(b) Intended Purpose
Appellants contend Chan and Dvorak each, when viewed in their
entirety, frustrate the purpose of Feeser. Br. 29-32. According to
Appellants, Feeser's purpose is to remove the need to have individual
custom scripts and to maintain a uniform server environment by finding and
patching all unpatched servers not successfully updated. Id. at 30-31 ( citing
Feeser Abstract, 6:51-59, 7:1-7, 49-57, Fig. 6, claim 1). Appellants argue
Chan's teaching of shutting down each component to repair creates a non-
uniform server environment antithetical to Feeser's stated purpose. Id.
(citing Chan ,r,r 36, 43--45). Similar arguments are presented for Dvorak.
Id. at 31-32.
We are not persuaded. The Examiner finds, and we agree, Feeser's
purpose is not to manage a uniform update deployment as asserted. Ans. 10
( citing Feeser 5: 16--48). For example, Feeser' s PatchMaster tool allows a
user to select a list of servers to patch or boot in a batch manner from among
all available servers. Feeser 5:15-30. Feeser also allows a user to use a
checkbox to override current patching/booting conditions and to create
another group, permitting for individualized updates. Feeser 5:25--48,
discussed in Ans. 10-11. Thus, contrary to Appellants' argument (Br. 30-
31 ), we find Feeser allows for non-uniform deployment of updates among
all available servers. Appellants have not provide sufficient persuasive
evidence that Feeser's purpose is to maintain a uniformly updated server
environment or rebutted the Examiner's findings in this regard.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 6, 7, 9, 14, 15, 17, 22, 23,
25, 27, and 29, which are not separately argued.
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CLAIMS 3, 11, AND 19
Claim 3 depends from claim 1 and further recites, in pertinent
part, code that when executed by a processor is configured to:
schedule the first component and the second component to be
updated when the corresponding planned operating
characteristics for the second component are scheduled to be
implemented when each of the first value of loss and the second
value of loss is greater than or equal to the third value of loss.
Br. 39 (Claims App'x.). Appellants argue Chan and Dvorak do not teach,
individually or in combination, scheduling multiple components based on
three loss values. Br. 35. We select claim 3 as representative. See 37
C.F.R. § 4I.37(c)(l)(iv).
The Examiner cites Chan in combination with Feeser to teach or
suggest, when a first loss value is greater than a third loss value, scheduling
first and second component updates when the second component's
corresponding planned operating characteristics are scheduled to be
implemented based on the first and third loss value. Final Act. 16-17. The
Examiner cites Dvorak in combination with Feeser/Chan's system to teach
or suggest, when a second loss value is greater than or equal to a third loss
value, scheduling first and second component updates when the second
component's corresponding planned operating characteristics are scheduled
to be implemented based on second and third loss values. Id. at 17-18.
That is, the Examiner cites Dvorak to show that Chan's scheduling of
first and second components to be updated based on when a different loss
value ( e.g., first or second) is greater than a third loss value. Combining
these teachings predictably yields no more than code configured to schedule
the first and second components to be updated when first and second loss
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values are equal to or greater than a third loss value as recited. We agree
with the Examiner (Ans. 16) in concluding the combination of Chan and
Dvorak with Feeser teaches or suggests the disputed limitation pertaining to
schedule the first component and the second component to be updated when
each of the first value of loss and the second value of loss is greater than or
equal to the third value of loss.
Therefore, Appellants' arguments regarding Chan's (Br. 34--35) and
Dvorak's (id.) alleged individual shortcomings with respect to the disputed
limitation pertaining to scheduling the first component and the second
component to be updated when each of the first value of loss and the second
value of loss is greater than or equal to the third value of loss, are unavailing
where, as here, the rejection is not based solely on Chan's or Dvorak's
individual teachings, but rather on Chan's and Dvorak's collective teachings
with Feeser. In short, Appellants fail to rebut persuasively the Examiner's
ultimate legal conclusion of obviousness that is based on the combination of
Feeser, Chan, and Dvorak. See Keller, 642 F.2d at 426; Merck, 800 F.2d at
1097; Young, 927 F.2d at 591.
Based on the record, Appellants have not persuaded us of error in the
rejection of claims 3 and claims 11 and 19, which are not separately argued.
THE REMAINING OBVIOUSNESS REJECTIONS
Appellants have not separately argued the remaining rejections. Br.
35-36. Accordingly, we sustain the rejections of dependent claims 5, 8, 13,
16, 21, 24, 26, 28, and 30 for reasons similar to those previously discussed.
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DECISION
We affirm the Examiner's rejections of claims 1, 3, 5-9, 11, 13-17,
19, and 21-30 under 35 U.S.C. §§ 101 and 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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