Ex Parte MOORE

Patent Trial and Appeal Board

Oct 29, 2018

12616212 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/616,212 11/11/2009 BRADLEY T. MOORE
79230 7590 10/31/2018
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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.
END92009008 l US 1 2102
EXAMINER
DETWEILER, JAMES M
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY T. MOORE
Appeal2017-004353
Application 12/616,212 1
Technology Center 3600
Before JOSEPH L. DIXON, ERIC S. FRAHM, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant identifies International Business Machines Corporation as the
real party in interest. App. Br. 2.
Appeal2017-004353
Application 12/616,212
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention generally relates to the
management of software licenses across a system comprising a plurality of
subunits. Spec. ,r,r 1-2. In particular, the disclosed and claimed invention
relates to managing software licenses when changes to the system (i.e., a
subunit) occur. Spec. ,r 1. In a disclosed embodiment, the system
determines how many licenses are being used for each of the subunits (i.e.,
an initial reconciliation report). Spec. ,r 33. If a subunit is changed, an
impact analysis is executed for the changed subunit to determine the
licensing impact of the change. Spec. ,r 36. The reconciliation report for the
subunit replaces the initial reconciliation report for the initial subunit (i.e.,
prior to being changed) to create an updated reconciliation report for the
changed system. Spec. ,r 37.
Claim 1 is exemplary of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A computer-implemented method of managing software
licenses, the computer-implemented method comprising:
a processor executing an initial reconciliation run for an
initial system, wherein the initial reconciliation run reconciles
software licenses with installed software in the initial system to
create an initial system reconciliation report, wherein the initial
system reconciliation report describes a level of licensing
compliance within the initial system, wherein the initial system
reconciliation report comprises an initial subunit reconciliation
report for an initial subunit, and wherein the initial subunit is a
component of the initial system;
executing, by the processor, a change to the initial subunit
to create a changed subunit;
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executing, by the processor, an impact analysis for the
changed subunit, wherein the impact analysis ascertains if a
licensing impact will result from creating the changed subunit;
identifying, by the processor, a subunit reconciliation
section from the initial reconciliation run, wherein the subunit
reconciliation section reconciles software licenses for only the
initial subunit before the change to the initial subunit;
executing, by the processor, a subunit reconciliation run
for only the changed subunit to create a changed subunit
reconciliation report; and
replacing, by the processor, the initial subunit
reconciliation report with the changed subunit reconciliation
report to create an updated reconciliation report for a changed
system, wherein the changed system comprises the changed
subunit, and wherein the updated reconciliation report describes
a level of licensing compliance for the changed system.
The Examiner's Rejections
1. Claims 1, 2, 4---6, 8-10, 12-14, 17, 18, and 20 stand rejected
under pre-AIA 35 U.S.C. § 112, first paragraph for failing to comply with
the written description requirement. Final Act. 10-14.
2. Claim 8 stands rejected under pre-AIA 35 U.S.C. § 112, second
paragraph as being indefinite. Final Act. 14--16.
3. Claims 1-10, 12-15, and 17-20 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Romero et al. (US
2008/0183626 Al; July 31, 2008) ("Romero"); Bad we et al. (US
2008/0148253 Al; June 19, 2008) ("Badwe"); and Chaturvedi et al. (US
2010/0205303 Al; Aug. 12, 2010) ("Chaturvedi"). Final Act. 17-55.
4. Claim I I stand rejected underpre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Romero, Badwe, Chaturvedi, and Bereiter (US
5,754,763; May 19, 1998). Final Act. 55-56.
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5. Claim 16 stand rejected underpre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Romero, Badwe, Chaturvedi, and Klemba et al. (US
7,055,040 B2; May 30, 2006) ("Klemba"). Final Act. 56-57.
ANALYSIS 2
Rejection under 35 USC§ 112,first paragraph (written description)
The Examiner rejected claims 1, 2, 4--6, 8-10, 12-14, 17, 18, and 20
under pre-AIA 35 U.S.C. § 112, first paragraph for containing subject matter
not described in the specification in such a way as to reasonably convey to
one skilled in the art that the inventors had possession of the claimed
invention (i.e., the written description requirement). Final Act. 10-14. In
particular, the Examiner identifies the following limitations as lacking
written description support: (i) "executing[, by the processor,] an impact
analysis for the changed subunit, wherein the impact analysis ascertains if a
licensing impact will result from creating the changed subunit;" (ii)
"identifying[, by the processor,] a subunit reconciliation section from the
initial reconciliation run;" and (iii) executing[, by the processor,] a change to
the initial subunit to create a changed subunit." Final Act. 10-14. The
Examiner finds the specification does not provide an algorithm, step-by-step
instructions, or flowchart for performing the identified steps. See, e.g., Final
Act. 12-14. Further, in support of the stated rejection, the Examiner relies
on the Manual of Patent Examining Procedure (MPEP) § 2161.01 (and cited
2 Throughout this Decision, we have considered the Appeal Brief, filed
August 19, 2016 ("App. Br."); the Reply Brief, filed January 18, 2017
("Reply Br."); the Examiner's Answer, mailed November 18, 2016 ("Ans.");
and the Final Office Action, mailed December 23, 2015 ("Final Act."), from
which this Appeal is taken.
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case law), which instructs that "claims may fail to satisfy the written
description requirement when the invention is claimed and described in
functional language but the specification does not sufficiently identify how
the invention achieves the claimed function."
In response to Appellant's identification of written disclosure and
drawings (i.e., flowcharts) that support the claim limitations (see App. Br. 7-
9, citing Spec. ,r,r 17, 25, 30-37, Fig. 6), the Examiner finds those sections
merely state the functions are performed by the system, but fail to provide
the steps necessary to achieve the claimed function. Ans. 4--8.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. See Ari ad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Further, the level of detail
necessary to satisfy the written description requirement depends on the
scope of the claims and the complexity of the technology. Ariad, 598 F.3d
at 1351.
As an initial matter, we note the disputed limitations were presented in
the originally filed claims but were amended to add "by the processor" to
each of the limitations. Compare Spec. 17 ( claim 1 ), with App. Br. 28
(amended claim 1). The Specification sets forth possible changes to a
subunit, performing an impact analysis, and identifying a subunit
reconciliation section from an initial reconciliation report. See, e.g., Spec.
,r,r 30-37, Figs. 3---6. We agree with Appellant that the disclosure reasonably
conveys to a skilled artisan that Appellant was in possession of these limited
concepts as of the filing date.
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However, we tum our attention to the amended claim language-i.e.,
that a change to the initial subunit to create a changed subunit is executed
"by the processor." The Specification contemplates that the change "may be
a change to hardware, a change to software, or a fundamental
transformation." Spec. ,r 30. Indeed, dependent claims 5 and 12 further
narrow the change recited in claim 1 to be "a hardware change" ( claim 5)
and the hardware change "is a replacement of a first processor ... with a
second processor" ( claim 12).
Although the Specification contemplates hardware changes (see Spec.
,r 30), the Specification does not describe, or otherwise contemplate, how
such hardware changes would be executed by the processor performing the
initial and subunit reconciliation runs. Nor does the Specification convey
that Appellant was in possession of the invention as claimed at the time of
filing. Accordingly, we sustain the Examiner's rejection of claim 1 under
pre-AIA 35 U.S.C. § 112, first paragraph, for lack of written description. 3
For similar reasons we also sustain the Examiner's rejection under pre-AIA
35 U.S.C. § 112, first paragraph, of independent claims 9 and 17, which
recite similar limitations. Additionally, we also sustain the Examiner's
rejection under pre-AIA 35 U.S.C. § 112, first paragraph, of claims 2, 4--6,
8, 10, 12-14, 18, and 20, which depend directly or indirectly therefrom.
Rejection under 35 USC§ 112, second paragraph (indefiniteness)
Claim 8 recites, in relevant part, a formula to determine "a computed
count of available licensing contracts available after changing the initial
3 In the event of further prosecution, we leave it to the Examiner to
determine whether the claims are enabled by the Specification.
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subunit." The claimed computed count is "determined by O - R + L Sc,
wherein O is the initial count of licensing contracts available to the initial
system, R is a count of licensing contracts consumed per contract by the
initial system, and L Sc is a sum of a difference in licensing contract counts
consumed by all initial subunits minus licensing contract counts consumed
by the changed subunit."
The Examiner concludes how the claimed formula will result in the
claimed count of available licensing contracts after changing the initial
subunit. Final Act. 15. More particularly, the Examiner explains:
L Sc appears to be either 1) the count oflicensing contract counts
consumed by all of the initial subunits (i.e. "R" the count of
licensing contract counts consumed per contract by the system -
the system inherently comprises all initial subunits) minus the
counts consumed by the changed subunit, or 2) the value
obtained by separately subtracting the licensing contract counts
consumed by the changed subunit from the licensing count of
each initial subunits and the summing together the resulting
differences.
Final Act. 15. The Examiner provides an example scenario under each
possible construction and concludes that neither approach yields a count of
available licensing contracts available after changing the initial subunit.
Final Act. 15-16. Thus, the Examiner concludes the claim is vague and
indefinite. Final Act. 16.
Appellant argues the claimed formula is precise, clear, correct, and
unambiguous. App. Br. 10 ( citing MPEP § 2171 ). Appellant asserts the
claim language tracks the language in the Specification (see Spec. ,r 34) and
that the Examiner's example fails from "mathematical confusion." App.
Br. 10; see also Reply Br. 2-3. Additionally, Appellant provides an
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example scenario, which, Appellant asserts, illustrates that the formula
produces the desired count. App. Br. 23.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). "A claim is not
'indefinite' simply because it is hard to understand when viewed without
benefit of the specification." S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1369
(Fed. Cir. 2001).
Here, we agree with Appellant that the claim language ( as well as the
Specification) provides the meaning for the formula element, L Sc. As
stated, "I Sc is a sum of a difference in licensing contract counts consumed
by all initial subunits minus licensing contract counts consumed by the
changed subunit." Thus, we do not sustain the Examiner's rejection of claim
8 under 35 U.S.C. § 112, second paragraph, for being indefinite.
However, we agree with the Examiner that the formula recited in
claim 8 does not appear to result in the claimed "computed count of
available licensing contracts." As an initial matter, we find the example
scenarios provided by Appellant and the Examiner problematic. The
Examiner's example contains mathematical errors (see Final Act. 15;
Ans. 16), whereas Appellant's simplistic example is limited to an initial
system comprised of only one subunit (see App. Br. 23). As the Examiner
notes, a subunit is only one portion of the system. Ans. 15. Thus, neither
example is instructive in determining whether the recited formula is correct.
By suggesting the recited formula does not yield the claimed
computed count of available licensing contracts, the Examiner appears to
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conclude that claim 8 is not enabled under pre-AIA 35 U.S.C. § 112, first
paragraph. However, such a rejection is not before us. Although the Board
is authorized to reject claims under 37 C.F.R. § 4I.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02 (9th ed. Rev. 08.2017, Jan. 2018).
Rejections under pre-AJA 35 US. C. § 103 (a)
a. Claim 1
Independent claim 1 recites, in part, "identifying, by the processor, a
subunit reconciliation section from the initial reconciliation run, wherein the
subunit reconciliation section reconciles software licenses for only the initial
subunit before the change to the initial subunit."
Rather than reconciling software licenses for only the initial subunit
before the change to the initial subunit, Appellant argues Romero, as relied
on by the Examiner, teaches that software licensing compliance is monitored
after a change to the resource (i.e., a component such as a processor or
memory of a partition) is activated or migrates. App. Br. 11-13.
In response, the Examiner explains "Romero's initial reconciliation
run [is] performed across a plurality of different resources/subunits [and,
therefore,] comprises individual subunit reconciliation sections (e.g., one for
each resource/subunit, including the claim[ed] 'initial subunit')." Ans. 10.
The Examiner further explains an initial subunit reconciliation section of an
overall initial reconciliation report for a system still reconciles software
licenses for only that subunit "regardless of whether or not different subunit
reconciliation sections were created during the same process." Ans. 10
( emphases omitted). Moreover, the Examiner notes that the claim limitation
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is directed to merely identifying a subunit reconciliation report from the
initial reconciliation run. Ans. 12. Contrary to Appellant's argument (see
Reply Br. 3), the Examiner finds by creating an initial reconciliation report
for the system (i.e., for all subunits) and monitoring for changes within the
subunits (i.e., partitions), Romero teaches retrieving (i.e., identifying) the
initial subunit reconciliation section in order to monitor license compliance,
i.e., determine whether the change to the partition affects license
consumption. Ans. 11 ( citing Romero ,r,r 2--4, 12-13, 22-24, 27, 31-32, 46,
48, 55). We agree with the Examiner's findings.
Appellant responds to the Examiner's characterization of "retrieving
the previously generated report" and asserts that Romero does not teach such
retrieval. Reply Br. 3 ( emphasis omitted).
An obviousness analysis "need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007).
Here, the Examiner finds, and Appellant does not dispute
persuasively, Romero teaches running an initial reconciliation report on the
system (i.e., across all partitions/subunits). Further, Romero describes a
compliance monitor configured to monitor the number of baseline licenses
per partition. Romero ,r 27. Romero describes the compliance monitor may
also be configured "to detect resource activation and/or migration and
monitor compliance with the software licensing agreement when a resource
is activated or migrates [(i.e., a changed subunit)]." Romero ,r 32. Thus, in
order to enforce compliance with the licensing agreement, one of ordinary
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skill in the art would understand Romero suggests determining the license
consumption impact of the changed partition (i.e., subunit) from its initial
state and, therefore, identifying the initial partition (subunit) reconciliation
section from the initial reconciliation report so that such a determination
may be made.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claim 1. For similar reasons, we also sustain the Examiner's rejection of
independent claims 9 and 17, which recite similar limitations and were not
argued separately. See App. Br. 13; see also 37 C.F.R. § 4I.37(c)(l)(iv)
(2015). Further, we sustain the Examiner's rejection of claims 2, 3, 5, 10,
13, 16, and 18-20, which depend directly or indirectly therefrom and were
not argued separately. See App. Br. 13; see also 37 C.F.R. § 4I.37(c)(l)(iv).
b. Claim 4
Claim 4 depends from claim 1 and recites "wherein the change to the
initial subunit is a change from a physical hardware unit to a virtual
computing unit that is configured in software."
Appellant argues Romero, as relied on by the Examiner, teaches
allocating physical/virtual resources to physical/virtual partitions, but that
there is no change from a physical hardware unit to a virtual computing unit.
App. Br. 16; Reply Br. 3--4.
Romero describes that a system may comprise servers that enable
partitioning of resources into physical and virtual partitions. Romero ,r 2.
Additionally, Romero describes various migrations of resources across
partitions. See, e.g., Romero ,r,r 2--4, 13 (a processor or memory may be
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migrated), 14, 29 (the number of processors per partition may change), 19
( dynamically allocating resources among the partitions), and 48.
However, after the initial configuration/partitioning of the server into
physical and/or virtual partitions, the Examiner has not identified where
Romero changes one of the initially configured physical partitions into a
virtual computing unit.
Accordingly, we do not sustain the Examiner's rejection under pre-
AIA 35 U.S.C. § 103(a) of claim 4.
c. Claims 6 and 14
Claim 6 depends from claim 5 ( which depends from claim 1) and
recites "wherein the hardware change comprises a change from a single core
machine to a multi-core machine." Claim 14, which depends indirectly from
independent claim 9, recites a similar limitation.
The Examiner finds Romero teaches adding additional processors to a
partition for load balancing and "other well-known advantages of parallel
computing." Final Act. 28 (citing Romero ,r,r 13-14, 19, 29-30, 39-40, 53,
63). For example, Romero discloses "[t]he number of processors per
partition may change over time as a result of processor migrations across
partitions." Romero ,r 14. Additionally, Romero discloses that in a virtual
environment, "the number of baseline processor cores can change." Romero
Appellant argues that merely adding additional processors to a
partition does not make the partition a multi-core machine within the
meaning of claims 6 and 14. App. Br. 19. Further, as an example, Appellant
asserts that one of ordinary skill in the art would not refer to a multi-
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processor computer as a multi-core machine. App. Br. 19. Instead,
Appellant asserts "the customary meaning of a 'multi-core machine' is a
processor that has multiple cores, just as a 'single core machine' is a
processor that has only one core." App. Br. 19.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Contrary to Appellant's argument, we note that in the Specification,
Appellant provides a number of examples of changes to hardware including
"changing the number of processors ... ( e.g., replacing a single-core
motherboard with a multi-core motherboard or vice versa)." Spec. ,r 30.
Thus, when read in light of the Specification, we agree with the Examiner
that Romero's teaching of adding processors to a partition teaches changing
from a single core machine to a multi-core machine, as recited by claims 6
and 14.
For the reasons discussed supra, we sustain the Examiner's rejection
of claims 6 and 14.
d. Claims 7 and 15
Claim 7 depends from claim 5 and recites "wherein the hardware
change results in a difference, between the initial subunit and the changed
subunit, in a number of executable instructions per second between the
initial subunit and the changed subunit." Claim 15, which depends
indirectly from independent claim 9, recites a similar limitation.
Appellant contends the cited portions of Romero describe allocating
or migrating additional processors to different partitions. App. Br. ( citing
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Romero ,r 13-14, 19, 29-30, 39--40, 53, 63). Appellant argues that
"increasing the number of processors in a subunit may or may not increase
bandwidth ('number of executable instructions per second')." App. Br. 20.
Appellant posits that adding a processor does not increase the bandwidth due
to "potential bottlenecks, bus and I/0 collisions, etc." Reply Br. 4.
We do not find Appellant's arguments persuasive of Examiner error.
As an initial matter, it is well settled that mere attorney arguments and
conclusory statements, which are unsupported by factual evidence, are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
( attorney argument is not evidence). Appellant does not provide persuasive
evidence to support the contention that adding processors to a partition
results in increased bottlenecks, collisions, etc. that offset any increase in the
number of executable instructions per second.
Further, we agree with the Examiner that by describing migrating a
processor or memory across partitions to balance processing load, Romero
teaches or reasonably suggests a hardware change to increase the number of
executable instructions per second (i.e., to the partition gaining an additional
processor). See Final Act. 29 (citing, e.g., Romero ,r 13); Ans. 15.
Thus, we sustain the Examiner's rejection of claims 7 and 15.
e. Claim 8
As discussed supra, claim 8 contains a formula (i.e., -R + L Sc) for
computing the count of available licensing contracts after changing the
initial subunit. Appellant asserts Romero, as relied on by the Examiner, fails
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to teach computing a count of available licenses using the recited formula.
App. Br. 23.
Romero describes a software licensing monitor including a
compliance monitor to monitor compliance with a licensing agreement.
Romero ,r 27. Romero discloses the compliance monitor monitors, inter
alia, "the number of baseline processors in the individual partitions, the
number of baseline licenses per partition, and the number of temporary
software licenses." Romero ,r 27. Additionally, Romero discloses the
compliance monitor may be "configured to detect resource activation and/or
migration and monitor compliance with the software licensing agreement
when a resource is activated." Romero ,r 32.
Although we agree with the Examiner that Romero teaches
computing a count of available licenses after changing the initial subunit
(see, e.g., Final Act. 29--30 ( citing Romero ,r,r 27-32), the Examiner has not
provided sufficient evidence indicating Romero computes the count of
available licenses using the formula recited in Appellant's claim 8. As the
Examiner states, "it is unclear how [the equation of claim 8] will yield the
claimed 'count of available licensing contracts available after changing the
initial subunit."' Final Act. 15; see also Ans. 16-1 7 ("[I]t is unclear how
one of ordinary skill in the art would use the claimed algorithm and/or the
algorithm described in the specification" to arrive at a count of available
licenses).
Accordingly, we do not sustain the Examiner's rejection under pre-
AIA 35 U.S.C. § 103(a) of claim 8.
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f. Claim 11
Claim 11 depends from claim 1 and recites "wherein the change to the
initial subunit is a change to which software applications are allowed to
interface with a particular licensed unit of installed software on the initial
subunit."
The Examiner relies on Bereiter to teach the limitation recited in
claim 11. Final Act. 55-56 (citing Bereiter, col. 9, 1. 65---col. 10, 1. 11).
Bereiter generally relates to auditing software usage by deriving a count of a
number of simultaneous invocations of one or more software applications
and determining whether the count exceeds an authorized number of copies
of the software application. Bereiter, Abstract. Bereiter discloses that the
application licenses may be node-locked or floating. Bereiter, col. 9, 11. 49-
50. In particular, for floating licenses, "[ e Jach time a particular system
management operation is initiated, a check is made to the server to authorize
the operation and locate the target( s) of the operation." Bereiter, col. 9, 1.
66---col. 10, 1. 1. If the application uses licensed software, the server counts
the number of operations started and compares the count to the number of
floating licenses. Bereiter, col. 10, 11. 2-11. The Examiner explains the
system management operations are applications (within the meaning of
claim 11) that interface with one another. Ans. 17.
Appellant argues the cited section of Bereiter is unrelated to changing
a subunit by changing which software applications are allowed to interface
with a particular licensed unit of software installed on the initial subunit.
App. Br. 25; Reply Br. 4--5.
We agree with Appellant to the extent that the Examiner has not
provided sufficient evidence or reasoning to support a finding that Bereiter
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teaches changing which software applications are allowed to interface with
particular licensed software. Rather, than changing which applications are
allowed to interface with the licensed software, Bereiter discloses if the
count of operations of licensed software exceeds the number of floating
licenses, "appropriate notifications" are sent to the system administrator.
Bereiter, col. 10, 11. 4--6.
Accordingly, we do not sustain the Examiner's rejection under pre-
AIA 35 U.S.C. § 103(a) of claim 11.
g. Claim 12
Claim 12 depends from claim 5 ( which depends from claim 1) and
recites "wherein the hardware change is a replacement of a first processor
having a first instructions per second speed with a second processor having a
second instructions per second speed, wherein the second instructions per
second speed is greater than the first instructions per second speed."
In rejecting claim 12, the Examiner relies on the same evidence from
Romero that was relied upon in rejecting claim 7. Compare Final Act. 41,
with Final Act. 29. In other words, the Examiner relies on Romero's
teaching of adding or migrating a processor across a partition for load
balancing to teach replacing a first processor with a second, faster processor.
Appellant contends that adding more processors, as taught by
Romero, is different than replacing a slow processor with a faster processor.
Reply Br. 5; App. Br. 25-26.
Although similar to claim 7 ( which claimed a hardware change
resulting in an increased number of executable instructions per second) in
that a faster processor will also result in an increased number of executable
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instructions per second, claim 12 requires the replacement of the slower
processor for a faster one. Here, the Examiner has not identified within the
cited portions of Romero, nor provided sufficient technical reasoning, that
Romero teaches or reasonably suggests replacing a processor as part of the
contemplated changes to a partition (i.e., subunit).
Accordingly, we do not sustain the Examiner's rejection under pre-
AIA 35 U.S.C. § 103(a) of claim 12.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4---6, 8-10,
12-14, 17, 18, and 20 under pre-AIA 35 U.S.C. § 112, first paragraph for
failing to comply with the written description requirement.
We reverse the Examiner's decision rejecting claim 8 under pre-AIA
35 U.S.C. § 112, second paragraph as being indefinite.
We affirm the Examiner's decision rejecting claims 1-3, 5-7, 9, 10,
and 13-20 under pre-AIA 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claims 4, 8, 11, and 12
under pre-AIA 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1-20is
affirmed. See 37 C.F.R. § 41.50(a)(l ).
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.
§ 41.50(±).
AFFIRMED
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