Ex Parte Powers et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10387148 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/387,148 03/11/2003 Jason Dean Powers 200207997-1 7133
7590 09/23/2010
HEWLETT-PACKARD DEVELOPMENT COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400
EXAMINER
MILLS, DONALD L
ART UNIT PAPER NUMBER
2462
MAIL DATE DELIVERY MODE
09/23/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JASON DEAN POWERS and EVAN KIRSHENBAUM
____________

Appeal 2009-007123
Application 10/387,148
Technology Center 2400
____________

Before LANCE LEONARD BARRY, ELENI MANTIS MERCADER and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007123
Application 10/387,148
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-6 and 8-33. Appeal Brief. 1. We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We reverse.

BACKGROUND OF THE INVENTION
Appellants’ invention is directed a method and system for evaluation
the utilization or allocation of resources in a system. See Specification 3.
Claim 1, which further illustrates the invention, follows:
1. A method for evaluating the utilization of resources in a system,
said method comprising:
receiving first information that characterizes a proposed first
allocation of resources in said system;
receiving second information that characterizes predicted requests to
said system;
using a predictor model to determine a first expected utilization for
said proposed first allocation of resources in response to said predicted
requests;
specifying a proposed second allocation of said resources and using
said predictor model to determine a second expected utilization for said
proposed second allocation in response to said predicted requests; and
selecting an allocation of said resources that improves utilization of
said system as measured against a selected performance metric.

The Rejection
Claims 1-6 and 8-33 are rejected under 35 USC § 102(e) as being
unpatentable over Rappaport (US 6,973,622 B1; Dec. 6, 2005). Answer 3-8.
Appeal 2009-007123
Application 10/387,148
3
ISSUE
Does Rappaport’s capacity of a system also disclose the utilization of
a system as defined by Appellants’ Specification?

PRINCIPLE OF LAWS
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
"The Patent and Trademark Office ("PTO") determines the scope of
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction 'in light of the
specification as it would be interpreted by one of ordinary sill in the art.'"
Phillips, 415 F.3d at 1316 (quoting American Academy, 367 F.3d at 1364).
‘The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.’ In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999) (internal citations omitted).

ANALYSIS
Appellants argue that Rappaport does not show or suggest the
capability to measure utilization and therefore Rappaport fails to disclose
“‘selecting an allocation of said resources that improves utilization of said
system as measured against a selected performance metric’” as recited in
claim 1. See Appeal Brief 6. It is the Examiner’s position that the claims
are very broad in nature and therefore the term “‘utilization’” can be broadly
interpreted. See Answer 8. Further, the Examiner contends that the
Appellants’ arguments that Rappaport disclosure of “‘network capacity’” is
Appeal 2009-007123
Application 10/387,148
4
patentably different from the claimed “‘utilization’” are not persuasive
because Appellants’ definition of “‘utilization’” from their own specification
comprises Rappaport’s capacity. See Answer 9. Appellants’ Specification
(page 11, lines 9-14) discloses:
Utilization can also be specified as a statistical distribution, for
example: "With five servers, each having 512 MB of memory,
the system is expected to be typically at 35 percent of its peak
capacity, and above 90 percent of peak capacity five percent of
the time." It is understood that these are merely examples, and
that utilization can be otherwise specified.

It is the Examiner’s contention that the Appellants’ own Specification
demonstrates that although capacity may be known without using utilization,
the Appellants’ definition of “‘utilization’” encompasses the definition of
capacity. See Answer 9. Appellants argue that the Appellants use of
“‘utilization’” is narrower than the Examiner’s definition as evidenced by
the Appellants’ Specification. See Reply Brief 3. We find the Appellants’
arguments to be persuasive. While utilization can be a specific term of
capacity, the term capacity does not necessarily constitute utilization as
specified in the Specification. Anticipation cannot be based on possibilities
or probabilities, but rather must be based on what is necessarily present in
the reference either expressly or inherently. See Robertson, 169 F.3d at 745
and Phillips 415 F.3d at 1316.
Thus, we agree with the Examiner that the Appellants’ Specification
does not set forth a definition that is contrary to the accepted definition of
“‘utilization’” however, because the claims are read in light of the
specification, and the Appellants’ Specification provide a narrower
definition of “‘utilization,’” it is clear that the terms “‘capacity’” and
“‘utilization’” do not denote the same meaning. Id.
Appeal 2009-007123
Application 10/387,148
5

DECISION
We reverse the Examiner’s 35 U.S.C. § 102(e) rejection of claims 1-6
and 8-33 over Rappaport.
ORDER
REVERSED

KIS

HEWLETT-PACKARD DEVELOPMENT COMPANY
Intellectual Property Administration
P. O. Box 272400
Fort Collins, CO 80527-2400