Ex Parte Milojicic et al

Patent Trial and Appeal Board

Oct 5, 2016

13379161 (P.T.A.B. Oct. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/379, 161 12/19/2011 Dejan S. Milojicic
56436 7590 10/07/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82852930 3434
EXAMINER
JARRETT, SCOTT L
ART UNIT PAPER NUMBER
2615
NOTIFICATION DATE DELIVERY MODE
10/07/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEJAN S. MILOJICIC, BRIAN COX,
TIMOTHY F. PORELL, and ALAN G. NEMETH
Appeal2014-007667 1
Application 13/379,161
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1 and 3-7. We
have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
We AFFIRM.
The invention relates generally to "supporting a computer-based
product." Spec., para. 1.
Claim 1 is illustrative:
1. A method comprising:
processing data in a processor-based system to determine
a mixture of product-based, automation-based and human-based
1 The Appellants identify Hewlett-Packard Development Co. LP as the real
party in interest. Appeal Br. 3.
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Application 13/379,161
components of service support to resolve future incidents
occurring in an operation of a computer-based product; and
based at least in part on the determined mixture,
selectively incorporating at least one non-diagnostic feature into
the product to cause a future mixture of product, automation and
human components of an actual service support for the product
to be skewed toward the determined mixture.
Claims 1 and 3-7 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 1, 3, 4, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zhi-Jie Liu et al., "A Diagnostics Design Decision Model
for Products Under Warranty," IEEE, 2007 Annual Reliability and
Maintainability Symposium (hereinafter "Liu"), G. G. Hegde et al.,
"Diagnostics Design," European Journal of Operational Research Vol. 38.1,
1989 (hereinafter "Hegde"), and Shah (US 7 ,055,062 B2, iss. May 30,
2006).
Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Liu, Hegde, Shah, and Koopman, "Embedded System Design Issues
(the Rest of the Story)," Proceedings of the International Conference on
Computer Design, 1996 (hereinafter "Koopman").
ANALYSIS
Rejection under 3 5 U.S. C. § 112
We are persuaded by the Appellants' arguments that the Specification
demonstrates the Appellants were in possession of "incorporating at least
one non-diagnostic feature into the product," as claimed. Appeal Br. 10-11.
The Examiner finds "the phrase non-diagnostic is nowhere recited in
Applicants' specification." Final Act. 3; see also Answer 2-3. However,
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the Specification describes components of product system 100, such as
product-based support 200, as "prompting a diagnosis." Spec., paras. 22-23.
The Specification further describes that "product system 100 may be
designed with redundant memory partitions, redundant back planes,
redundant drives, etc." Id. at para. 31. We are persuaded that the
aforementioned redundant components would have been recognized by the
skilled artisan as a "non-diagnostic feature," and, thus, are persuaded that the
Appellants have demonstrated sufficiently that they were in possession of
this aspect of the claims at the time of filing.
The Examiner also finds a lack of support for incorporating non-
diagnostic features into a product, as claimed, finding the Specification does
not describe "how to selectively incorporate them into a future mix of a
product." Final Act. 3; see also Answer 5. We are persuaded by the
Appellants' arguments on this aspect as well.
The Specification describes incorporating non-diagnostic features in
products, in that "products may be designed with increased redundancy or
resilience to enable 'self-healing,' which means that the product at least
temporarily diagnoses and fixes" identified problems. Spec., para. 14. The
Specification also describes a service network to provide support for
products that encounter problems, where the "service support network 50
has both automated and human-based, non-automated components." Id. at
para. 16. In addition, the Specification describes that the "specific mixture
of the product-based 200, automation-based 202 and human-based 204
components of the service support generally affects the total cost of
servicing a given product system 100." Id. at para. 28. Putting the cost of
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support together with product features that drive support cost, including non-
diagnostic features, the Specification describes:
a technique 250 may be used for purposes of designing the
product system 100 and support network 50 in general, so that
the mixture product-based, human-based and automated-based
service components is cost-optimized. More specifically, in
accordance with some embodiments of the invention, the
technique 250 includes determining (block 254) a mixture of
product-based, automation-based and human-based components,
which are used to support a new computer-based product. Based
on this determined mixture, features are selectively incorporated
into the product to skew the future support delivery toward the
determined mixture, pursuant to block 258.
Id. at para. 29. The Specification, thus, describes "selectively incorporating"
any number of product features, which would include some of the
aforementioned "non-diagnostic" features, to affect support cost to arrive at
an optimal mix, which demonstrates that the Appellants were in possession
of "selectively incorporating at least one non-diagnostic feature into the
product to cause a future mixture of product, automation and human
components of an actual service support for the product to be skewed toward
the determined mixture," as claimed.
For these reasons, we do not sustain the new matter rejection under
the written description portion of 35 U.S.C. § 112.
Furthermore, in the Answer, the Examiner appears to introduce
arguments about an enablement rejection, though no enablement rejection is
before us. Answer 6-9. To that end, the Examiner finds the claims are
"replete with undefined and broad terms" (id. at 6), and represent an
"abstract concept" (id. at 3, 6). In spite of this, the Examiner asserts this
broad, abstract concept could not be performed without undue
experimentation. Id. at 6. Even if this were a properly presented
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enablement rejection, which it is not (see 37 C.F.R. § 41.39(a)(2), requiring
Director approval for a new ground of rejection first presented in an
Examiner's Answer), we are persuaded that it would not be difficult to
perform a method that is a broadly-recited abstract concept, because mere
thought would meet the claim language, and little experimentation would be
required.
Rejection of claims l, 3, 4, and 7 under 35 U.S.C. § 103(a)
We are not persuaded by the Appellants' arguments that none of the
cited references disclose "incorporating at least one non-diagnostic feature
into the product," as recited in independent claim 1. Appeal Br. 11-13; see
also Reply Br. 7-8.
Liu discloses in background the concept of "product design changes to
reduce warranty or life cycle costs." Liu 28. Liu further discloses trade-off
models to determine whether the cost of adding diagnostic features to a
product design are overcome by the cost savings from these features. Id.
Liu, thus, discloses incorporating diagnostic features into a product, but
limits the features to exclude non-diagnostic features.
Shah discloses designing automated repair features into a product.
Shah, col. 2, 11. 54---62. We are persuaded that the ordinary artisan would
recognize that the decision to incorporate features in a product would
normally involve more than merely diagnostic functions, as in Liu, and
would also include non-diagnostic features, such as the automated repair
features disclosed in Shah.
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For this reason, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a) over Liu, Hegde, and Shah. We also sustain the rejection of
dependent claims 3, 4, and 7 that were not argued separately.
Rejection of claims 5 and 6 under 35 U.S.C. § 103(a)
We are not persuaded by the Appellants' argument that although
Koopman discloses the use of redundant components in systems, because it
also discloses that the cost of redundant fault tolerance may be cost
prohibitive, Koopman, thus, "leads the skilled artisan away" from the use of
redundant features. Appeal Br. 14--15; see also Reply Br. 8.
As the Appellants point out, Koopman discloses "[i]n mission-critical
applications such as aircraft flight control, severe personal injury or
equipment damage could result from a failure of the embedded computer.
Traditionally, such systems have employed multiply-redundant computers or
distributed consensus protocols in order to ensure continued operation after
an equipment failure." Koopman § 3 .3.
Although Koopman further discloses that many systems "cannot
tolerate the added cost of redundancy in hardware or processing capacity
needed for traditional fault tolerance techniques" (id.), we are persuaded that
the ordinary artisan would recognize that this does not teach away from the
use of redundant features, but merely notes that incorporating redundant
features increase cost, especially in fault tolerant computers. Thus, for other,
non-fault-tolerant products, the use of redundant components may be cost-
effective. We are unpersuaded that one of ordinary skill would not have
been aware of these tradeoffs, and that any potential disadvantages of the use
of redundant components is so egregious that it would have negated the
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knowledge of ordinary skill that "traditional" systems can have redundant
components for the advantage of "ensur[ing] continued operation after an
equipment failure," as expressly recognized by Koopman.
For this reason, we sustain the rejection of claim 5 over Liu, Hegde,
Shah, and Koopman, as well as dependent claim 6 that depends from claim 5
and was not argued separately.
DECISION
We reverse the rejection of claims 1 and 3-7 under 35 U.S.C. § 112.
We affirm the rejections of claims 1 and 3-7 under 35 U.S.C.
§ 103(a).
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).
AFFIRMED
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