Ex Parte Rosenthal et al

Board of Patent Appeals and Interferences

Mar 26, 2012

10289662 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD EDWIN ROSENTHAL,
TROY ALEXANDER SHAHOUMIAN,
JULIE ANN WARD, and JOHN WILKES
____________________

Appeal 2009-010890
Application 10/289,6621
Technology Center 2100
____________________

Before ALLEN R. MACDONALD, THU A. DANG, and JAMES R.
HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under authority of 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-9, 11-21, 26-37, and 86-119. Claims 10,

1 Application filed November 6, 2002. The real party in interest is Hewlett-
Packard Development Co., L.P. (App. Br. 2.)
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22-25, and 38-85 have been canceled. (App. Br. 2.) We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns a computer program
product (an article of manufacture storing a computer program) and method
for assigning boxes to racks. (Spec. ¶¶ [0011]-[0016]; Abstract.)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method of assigning boxes to racks, comprising
steps of:
obtaining information regarding physical attributes of
boxes to be assigned to racks and of a set of available racks;
identifying particular racks to use, from the set of
available racks, by solving a rack select optimization sub-
problem using the obtained information;
assigning each of the boxes to one of the particular racks
by solving a rack assign optimization sub-problem using the
obtained information, the rack assign optimization sub-problem
being solved after the rack select optimization sub-problem has
been solved; and

2 We refer to Appellants’ Specification (“Spec.”) (paragraph numbers refer
to US Pub. No. 2004/0088145 A1); Appeal Brief (“App. Br.”) filed
November 17, 2008; and Reply Brief (“Reply Br.”) filed April 13, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed February 11, 2009.
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at least one of outputting an assignment solution to a
user interface, the assignment solution including results of the
identifying and assigning steps, and placing the boxes into the
particular racks based on the assignment solution.

References
The Examiner relies on the following references as evidence in
support of the rejection:
Dolby US 5,630,025 May 13, 1997

Cook US 5,850,539 Dec. 15, 1998

Gordon C. Armour & Elwood S. Buffa, A Heuristic Algorithm and
Simulation Approach to Relative Location of Facilities, 9 Management
Science, 294-309 (1963) (“Armour”).

Rejections on Appeal
1. The Examiner rejects claims 1-9, 11-21, 26-37 and 86-119
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. The Examiner rejects claims 1, 3-5, 8, 9, 26, 29-33, 36, 37, 86,
88-90, 93, 94, 106, 107, 109-113, and 116-119 under 35 U.S.C. § 102(b) as
being anticipated by Dolby.
3. The Examiner rejects claims 6, 12, 14, 28, 34, 35, 91, 96, 98,
108, 114, and 115 under 35 U.S.C. § 103(a) as being unpatentable over
Dolby and Cook.
4. The Examiner rejects claims 2, 7, 11, 13, 15-21, 27, 87, 92, 95,
97, and 99-105 under 35 U.S.C. § 103(a) as being unpatentable over Dolby
and Armour.

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FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows.

ANALYSIS
Appellants have the opportunity on appeal to the BPAI to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of the §§ 101, 102, and 103
rejections in the Examiner’s Answer with respect to each of the claims.
(Ans. 3-37.) Therefore, we look to the Appellants’ Briefs to show error in
the proffered findings and conclusions. See Kahn, 441 F.3d at 985-86.
A. The Examiner’s Rejection Under § 101
Appellants separately argue independent claims 1 and 86. Appellants
provide nominal arguments with respect to dependent claims 2-9, 11-21, 26-
37, and 87-119, which generally take the form of “[t]his additional feature of
the invention provides even more concrete detail regarding the
transformation” (App. Br. 14). (See App. Br. 14-26.) Therefore, we
conclude that Appellants argue claims 2-9, 11-21, 26-37, and 87-119 as a
group based on their respective base claims, and we select claims 1 and 86
as representative of Appellants’ arguments and groupings. 37 C.F.R.
§ 41.37(c)(1)(vii). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief . . . .”); In re Nielson, 816
F.2d 1567, 1572 (Fed. Cir. 1987).
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1. Issue:
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the issue before
us is whether the Examiner erred in rejecting the method for assigning boxes
to racks under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
2. Claim 1
The Examiner rejects Appellants’ independent claim 1 as being
directed to non-statutory subject matter. (Ans. 3-4, 21-22.) Specifically, the
Examiner submits that the claim “is purely an algorithm . . . [and] is
unpatentable as an abstract idea and is not tied to particular apparatus.”
(Ans. 3.) In particular, the Examiner explains that “[t]he steps of obtaining,
identifying and assigning could be ‘mental steps’ and do not require a
computer (addition of ‘user interface’ limitation to the claim). The use of a
‘user interface’, presumably in a computer, is post-solution activity.” (Ans.
4; see Ans. 21-22.) Further, the Examiner submits that “the components can
be read as purely software per se lacking any supporting hardware.” (Id.).
Appellants contend that the claim meets the Bilski transformation test
by transforming data representing specific physical objects into a different
state. (App. Br. 10-12; Reply Br. 1-2.) Specifically, Appellants contend
that:
the obtained physical attribute information is transformed into
an assignment solution provided on the user interface . . . .
Thus, there is a transformation of data representing specific
physical objects or substances, and/or physical objects or
substances themselves, or into a different state or thing. In
addition, the recited transformation clearly is not merely
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insignificant extra-solution activity, but rather is central to the
purpose of the claimed process, i.e., assigning boxes to racks.
(App. Br 11.)
We begin our analysis by noting that the case law regarding § 101
continues to evolve. “[T]he Supreme Court has made clear that a patent
claim’s failure to satisfy the machine-or-transformation test is not dispositive
of the § 101 inquiry.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011) (citing Bilski v. Kappos, 130 S.Ct. 3218, 3227
(2010)).
Considering the language of independent claim 1 as a whole, we agree
with the Examiner (see Ans. 3-4, 21-22) that the process of claim 1 does not
meet Bilski’s “machine or transformation test” and could be performed
within the human mind or by a human writing on a piece of paper.3 The

3 See CyberSource, 654 F.3d at 1372 (“It is clear that unpatentable mental
processes are the subject matter of claim 3. All of claim 3’s method steps
can be performed in the human mind, or by a human using a pen and
paper.”). Manipulation of data utilizing a computer program (software), no
matter its function, is nothing more than the representation of an algorithm
or group of algorithms, conceptually no different from a list of steps written
down with pencil and paper for execution by a human being. See In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)) (“Phenomena of nature, though just
discovered, mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.”);
Benson, 409 U.S. at 72; In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009)
(“[M]ental processes — or processes of human thinking — standing alone
are not patentable even if they have practical application.”). See also
Dealertrack, Inc. v. Huber, No. 2009-1566, 2012 WL 164439, at *17 (Fed.
Cir. Jan. 20, 2012) (“Simply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render the
claim patent eligible.”).
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claim recites a number of steps that are not tied to a particular machine – the
claim does not recite any machine performing the functions of the steps, e.g.,
a processor. Nor do these steps transform data into a different state – the
claim simply recites: (1) obtaining data (“information regarding physical
attributes of boxes to be assigned to racks and of a set of available racks”) by
an undisclosed means; (2) identifying an item or items (“particular racks to
use, from the set of available racks”) by solving an undisclosed and
unclaimed algorithm (“a rack select optimization sub-problem”) using the
obtained data (“information”); (3) assigning articles (“each of the boxes”) to
one of the identified items (“particular racks”) by solving an undisclosed and
unclaimed algorithm (“a rack assign optimization sub-problem”) using the
obtained data (“information”); (4) where the second algorithm (“the rack
assign optimization sub-problem”) is solved after the first algorithm (“rack
select optimization sub-problem”) has been solved; and (5) outputting the
solution (“at least one of outputting an assignment solution to a user
interface, the assignment solution including results of the identifying and
assigning steps, and placing the boxes into the particular racks based on the
assignment solution”). See In re Bilski, , 545 F.3d 943, 962-63 (Fed. Cir.
2008) (en banc), aff’d sub nom. Bilski v. Kappos, 130 S.Ct. 3218 (2010).
Here, to the extent any transformation takes place, the transformation is of
one type of electronic data into another type of electronic data. This is not a
“transformation or reduction of an article into a different state or thing
constituting patent-eligible subject matter.” In re Bilski, at 962; see id. at
963-64 (discussing patent-eligible data transformations). The data
represented and transformed in Appellants’ claim is not data “represent[ing]
physical and tangible objects” nor “the electronic transformation of the data
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itself into a visual depiction.” Id. at 963 (discussing In re Abele, 684 F.2d
902, 908-09 (CCPA 1982)). Even if the outputting step were, arguendo,
considered such a transformation – this transformation is merely
post-solution activity of the type proscribed in Parker v. Flook, 437 U.S.
584, 590 (1978) (“The notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable principle
into a patentable process exalts form over substance.”).
Further, our reviewing court guides that “a method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.” CyberSource, 654 F.3d at 1373. Because we
conclude that the scope of claim 1’s method steps covers functions that can
be performed in the human mind, or by a human using a pen and paper, we
conclude that unpatentable abstract mental processes fall within the subject
matter of claim 1.4 Additionally, given the unbounded scope of the claim
limitations – solving a first undisclosed and unclaimed algorithm (“a rack
select optimization sub-problem”) and a second undisclosed and unclaimed
algorithm (“a rack assign optimization sub-problem”), where the second

4 See Cybersource, 654 F.3d at 1372 (“It is clear that unpatentable mental
processes are the subject matter of claim 3. . . . Claim 3 does not limit its
scope to any particular fraud detection algorithm . . . . Rather, the broad
scope of claim 3 extends to essentially any method of detecting
credit card fraud based on information relating past transactions to a
particular ‘Internet address,’ even methods that can be performed in the
human mind.”); see also In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007)
(“The four categories [of § 101] together describe the exclusive reach of
patentable subject matter. If a claim covers material not found in any of the
four statutory categories, that claim falls outside the plainly expressed scope
of § 101 even if the subject matter is otherwise new and useful.”).
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algorithm is solved after the first algorithm – we are of the view that
independent claim 1 is invalid as being directed to an abstract idea
preemptive of a fundamental concept or idea that would foreclose
innovation. Cf. Dealertrack, 2012 WL at *16 (“In this case, however, we
are compelled to conclude that the claims are invalid as being directed to an
abstract idea preemptive of a fundamental concept or idea that would
foreclose innovation in this area.”).
3. Claim 86
Similar to claim 1 (supra), the Examiner rejects Appellants’
independent claim 86 as being directed to non-statutory subject matter.
(Ans. 4-5, 22-23.) Appellants assert that “[c]laim 86 covers an article of
manufacture storing a computer program which clearly is statutory subject
matter under 35 U.S.C. § 101.” (App. Br. 13). Appellants also reiterate the
contention, made with respect to claim 1, that the claim meets the Bilski
transformation test by transforming data. (App. Br. 12-14; Reply Br. 3.)
Based the intervening guidance of our reviewing court as well as our
findings and conclusions with respect to claim 1 (supra), we conclude that
claim 86 is actually directed to a process rather than an “article of
manufacture” and further conclude that the process is directed to non-
statutory subject matter. As explained by our reviewing court, “[r]egardless
of what statutory category (‘process, machine, manufacture, or composition
of matter,’ 35 U.S.C. § 101) a claim’s language is crafted to literally invoke,
we look to the underlying invention for patent-eligibility purposes.”
CyberSource, 654 F.3d at 1374. A close review of Appellants’ claim shows
that it does not recite any physical structure. The term “article of
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manufacture storing a computer program” (claim 86) does not actually
require or imply the presence of any machine, hardware, or other physical
structure. Additionally, the recitation of an “article” in the claim preamble
does not serve as a structural limitation because it would not have been
understood in the art as implying any particular structure. Therefore,
following the Federal Circuit’s approach in CyberSource (654 F.3d at 1375),
we analyze the underlying invention of claim 86 as a process. Other than
reciting an article of manufacture, the limitations of claim 86 are identical to
those of claim 1. Accordingly, we rely on our analysis with respect to claim
1 (supra).
For these reasons, we find that Appellants’ arguments unpersuasive of
error in the rejection of representative claims 1 and 86 and dependent claims
2-9, 11-21, 26-37, and 87-119 not separately argued with particularity
(supra). These claims fail to meet the requirements of 35 U.S.C. § 101 and
are directed to non-statutory subject matter. Accordingly, we affirm the
Examiner’s rejection of these claims under 35 U.S.C. § 101.
B. The Examiner’s Rejection Under § 102
Appellants separately argue independent claims 1 (App. Br. 26-29)
and dependent claims 9 and 94 (id. at 32), 26 and 106 (id. at 32-33), 29 and
109 (id. at 33-34), 30 and 110 (id. at 34), 31 and 111 (id. at 35), 36 and 116
(id. at 36), 37 and 117 (id. at 36-37), and 118 (id. at 37). Appellants also
provide separate arguments for independent claim 86; however, these
arguments simply reiterate those made with respect to claim 1. Therefore,
we select claims 1, 9, 26, 29, 30, 31, 36, 37, and 118 as representative of
Appellants’ arguments and groupings. 37 C.F.R. § 41.37(c)(1)(vii).

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1. Issue:
The issue before us is whether Appellants show the Examiner erred in
finding Dolby discloses the limitations of the representative claims?
2. Claim 1
The Examiner rejects Appellants’ independent claim 1 as being
anticipated by Dolby. (Ans. 5-9, 23-27.) Specifically, the Examiner
explains that Dolby discloses each feature of Appellants claim, including:
choosing a cabinet (Rack) (solving the rack select optimization sub-problem)
(id. at 6-7, 23-25); assigning components (boxes) to particular cabinets
(racks) (by solving the rack assign optimization sub-problem) after choosing
a cabinet (the rack select optimization sub-problem has been solved) (id. at
7-9, 24-26); and outputting the result (outputting the solution to an interface
or placing boxes in racks) (id. at 8-9, 27). In particular, the Examiner
explains that Appellants’ rack-select and rack-assign sub-optimization
problems are multi-dimensional bin-packing problems and Dolby discloses
solving multi-dimensional bin-packing problems. (Ans. 24-25.)
Appellants contend that Dolby fails to disclose several features of
claim 1. (App. Br. 7-8, 26-29; Reply Br. 3-5 (claim 1); see App. Br. 29-31;
Reply Br. 5 (claim 86).) Specifically, Appellants contend: (1) “Dolby does
not disclose at least the feature of identifying particular racks to use, from a
set of available racks, by solving a rack select optimization sub-problem
using obtained information regarding physical attributes of boxes to be
assigned to racks and of a set of available racks” (App. Br. 26; see id. at 27-
28 ); (2) “[a]s a result, Dolby also fails to disclose that the presently recited
rack assign optimization sub-problem is solved after the presently recited
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rack select optimization sub-problem has been solved” (id. at 28); and (3)
“Dolby also fails to disclose a step of outputting an assignment solution to a
user interface and/or placing the boxes into the particular racks based on the
assignment solution, where the assignment solution includes results of such
an identifying step” (id.).
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings and ultimate conclusion that the
subject matter of Appellants’ claim 1 is anticipated by Dolby. Accordingly,
we sustain the Examiner’s rejection of claim 1 for the reasons set forth in the
Answer, which we incorporate herein by reference. (Ans. 5-9, 23-27.)
As explained by the Examiner, Dolby discloses solving multi-
dimensional bin-packing problems. (Ans. 24-25 (citing Dolby col. 20, ll.
42-67.) For instance, Dolby provides a detailed packing example (Dolby
col. 24, l. 27 to col. 26, l. 10) that describes running multiple packers that
solve the packing problem in sequence to select a cabinet (creating a new
cabinet instance conforming to a component) (col, 25, ll. 1-3, 42-48) and
assigning (and placing) the components in locations within the selected
cabinet (col. 25, ll. 47-50, 60-62). In view of the breadth of the claim, Dolby
broadly but reasonably discloses selecting a cabinet (rack) and assigning
components to the cabinet after the cabinet selection and placing the
components into the cabinet.
We find Appellants’ contrary arguments unpersuasive of error in the
Examiner’s rejection for the reasons explained above. It follows that
Appellants do not persuade us of error in the Examiner’s anticipation
rejection of representative claim 1. Appellants also do not persuade us of
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error in the Examiner’s anticipation rejection of independent claim 86 and
dependent claims 3-5, 8, 32, 33, 88-90, 93, 107, 112, 113, and 119 not
separately argued with particularity (supra). See 37 C.F.R.
§ 41.37(c)(1)(vii); In re Lovin, 652 F.3d at 1357; Ex Parte Frye, 94 USPQ2d
1072, 1075-76 (BPAI 2010) (precedential). Accordingly, we affirm the
Examiner’s anticipation rejection of claims 1, 3-5, 8, 32, 33, 86, 88-90, 93,
107, 112, 113, and 119.
3. Claim 9
Appellants contend that Dolby fails to disclose “improving the results
after solving the optimization sub-problems by employing an approach in
which heuristically identified changes tentatively are tested and then made
only if a specified objective is improved.” (App. Br. 32.)
We find that the preponderance of evidence on this record does not
support the Examiner’s findings that the subject matter of Appellants’ claim
9 is anticipated by Dolby. While Dolby describes checking to ensure
solutions do not cause problems with existing component placements and
also future placements (Ans. 10, 27-28 (citing Dolby, col. 23, ll. 5-26; Fig.
7)), we agree with Appellants that the disclosure does not sufficiently
describe improving results once a cabinet has been selected and components
have been placed therein. Thus, we find no clear explanation in Dolby or
the Examiner’s discussion of the rejection of the disputed features.
Consequently, we are constrained by the record before us to conclude
that Dolby fails to disclose the recited features of “improving the results
after solving the optimization sub-problems by employing an approach in
which heuristically identified changes tentatively are tested and then made
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only if a specified objective is improved” (claim 9). Therefore, the rejection
of claim 9 fails to establish a prima facie case of anticipation. Appellants’
dependent claim 94 includes limitations of similar scope. Accordingly, we
reverse the Examiner’s anticipation rejection of claims 9 and 94.
4. Claim 26
Appellants contend that Dolby fails to disclose “solving the rack
select optimization sub-problem includes calculating bounds on a maximum
number of each rack type to be used in a solution, and considering only
those solutions adhering to the bounds.” (App. Br. 32-33.)
We agree with Appellants that the portion of Dolby cited by the
Examiner (col. 22, ll. 38-67; Fig.7) does not sufficiently describe a
maximum number of each rack type. Thus, we find no clear explanation in
Dolby or the Examiner’s discussion of the rejection of the disputed features
and find that the preponderance of evidence on this record does not support
the Examiner’s findings that the subject matter of Appellants’ claim 26 is
anticipated by Dolby. Appellants’ dependent claim 106 includes limitations
of similar scope. Accordingly, we reverse the Examiner’s anticipation
rejection of claims 26 and 106.
5. Claim 29
Appellants contend that Dolby fails to disclose “solving the rack
select optimization sub-problem includes requiring an anti-symmetry
constraint so that a particular rack (r) will be required to be used for holding
a box before a second rack (r+1) is used for holding a box.” (App. Br. 33.)
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We find that the preponderance of evidence on this record supports
the Examiner’s findings and ultimate conclusion that the subject matter of
Appellants’ claim 29 is anticipated by Dolby. Accordingly, we sustain the
Examiner’s rejection of claim 29 for the reasons set forth in the Answer,
which we incorporate herein by reference. (Ans. 10-11, 29.)
As explained by the Examiner, Dolby discloses a bidding process in
which a new cabinet (rack) is provisioned only when an existing cabinet
cannot hold a component, which leads to a reduction in functionally
equivalent solutions (see Spec. ¶¶ [0138]-[0141] (Spec. of record, pages 52-
53)). (Ans. 29 (citing Dolby, col. 12, ll. 20-28; col, 25, ll. 15-23).) In view
of the breadth of the claim, Dolby broadly but reasonably discloses this
feature.
It follows that Appellants do not persuade us of error in the
Examiner’s anticipation rejection of representative claim 29. Appellants
also do not persuade us of error in the Examiner’s anticipation rejection of
dependent claim 109, which includes limitations of similar scope and which
is not separately argued with particularity (supra). Accordingly, we affirm
the Examiner’s anticipation rejection of claims 29 and 109.
6. Claim 30
Appellants contend that Dolby fails to disclose “solving the rack
assign optimization sub-problem includes using an initial solution from the
rack select optimization sub-problem for the rack assign optimization sub-
problem.” (App. Br. 34.)
We find that the preponderance of evidence on this record supports
the Examiner’s findings and ultimate conclusion that the subject matter of
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Appellants’ claim 30 is anticipated by Dolby. Accordingly, we sustain the
Examiner’s rejection of claim 30 for the reasons set forth in the Answer,
which we incorporate herein by reference. (Ans. 11, 30.)
As explained by the Examiner, Dolby discloses utilizing a cabinet
selection (solution from the rack assign optimization sub-problem) in the
component assignment (the rack assign optimization sub-problem). (Ans.
11, 30 (citing Dolby, col. 22, ll. 38-67; co1. 25, l. 1 to col. 26, l. 11; Fig.7).)
In view of the breadth of the claim, Dolby broadly but reasonably discloses
this feature. Further, as explained by the Examiner, Appellants fail to rebut
the Examiner’s findings. (Ans. 30.)
It follows that Appellants do not persuade us of error in the
Examiner’s anticipation rejection of representative claim 30 or dependent
claim 110, which includes limitations of similar scope and which is not
separately argued with particularity (supra). Accordingly, we affirm the
Examiner’s anticipation rejection of claims 30 and 110.
7. Claim 31
Appellants contend that Dolby fails to disclose “solving the rack
assign optimization sub-problem includes using a lower bound from an
initial solution from the rack select optimization sub-problem as an input.”
(App. Br. 35.)
We find that the preponderance of evidence on this record supports
the Examiner’s findings and ultimate conclusion that the subject matter of
Appellants’ claim 31 is anticipated by Dolby. Accordingly, we sustain the
Examiner’s rejection of claim 31 for the reasons set forth in the Answer,
which we incorporate herein by reference. (Ans. 11, 30.)
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As explained (supra) with respect to claim 30, Dolby discloses
utilizing cabinet selection during component assignment. As explained by
the Examiner, Dolby also discloses limit expressions (constraints) that place
limits on the number of components. (Ans. 11, 30 (citing Dolby, col. 39, ll.
25-37).) In view of the breadth of the claim, Dolby broadly but reasonably
discloses the claimed features. Further, as explained by the Examiner,
Appellants fail to rebut the Examiner’s findings. (Ans. 30.)
Appellants do not persuade us of error in the Examiner’s anticipation
rejection of representative claim 31 or dependent claim 111, which includes
limitations of similar scope and which is not separately argued with
particularity (supra). Accordingly, we affirm the Examiner’s anticipation
rejection of claims 31 and 111.
8. Claim 36
Appellants contend that Dolby fails to disclose “solving the rack
assign optimization sub-problem comprises using the number of boxes
assigned to each rack in the rack select optimization sub-problem as a
guideline.” (App. Br. 36.)
We find that the preponderance of evidence on this record supports
the Examiner’s findings and sustain the Examiner’s rejection of claim 36 for
the reasons set forth in our discussion of claims 30 and 31(supra) as well as
the Answer (Ans. 11, 30), which we incorporate herein by reference.
Accordingly, we affirm the Examiner’s anticipation rejection of claim 36
and claim 116, which includes limitations of similar scope and which is not
separately argued with particularity (supra).
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9. Claim 37
Appellants contend that Dolby fails to disclose “that the number of
boxes is used: to choose the number of instances of each rack type; to
choose the number of boxes of each type to assign to each rack; and to
ensure that approximately the same number of boxes of each type are
assigned to each rack.” (App. Br. 36.)
We agree with Appellants (App. Br. 36-37) that the portion of Dolby
cited by the Examiner (col. 11, l. 50 to co1. 12, l. 32) does not sufficiently
describe the steps utilizing the number of boxes as a guide to choose, for
example, the number of each rack type. The example cited discusses units
of storage and various components. While we agree with the Examiner that
Dolby describes the number of components to be assigned can serve as a
constraint, Dolby fails to disclose the specific process claimed – utilizing the
number of components (boxes) as a guide to choose: the number of each
cabinet (rack) type, the number of components (boxes) of each type assigned
to each cabinet (rack), and that the number of each type of component (box)
assigned to each cabinet (rack) is approximately the same. Thus, we find no
clear explanation in Dolby or the Examiner’s discussion of the rejection of
the disputed features. Consequently, we are constrained by the record before
us to conclude that Dolby fails to disclose the recited features and, therefore,
the rejection of claim 37 fails to establish a prima facie case of anticipation.
Appellants’ dependent claim 117 includes limitations of similar scope.
Accordingly, we reverse the Examiner’s anticipation rejection of claims 37
and 117.
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10. Claim 118
Appellants contend that Dolby fails to disclose that “the boxes are
placed into the particular racks based on the presently recited assignment
solution.” (App. Br. 37.)
We find that the preponderance of evidence on this record supports
the Examiner’s findings and ultimate conclusion that the subject matter of
Appellants’ claim 118 is anticipated by Dolby. Accordingly, we sustain the
Examiner’s rejection of claim 118 for the reasons set forth in the Answer
(Ans. 12, 30 (citing Dolby, col. 20, ll. 44-67; col. 22, ll. 38-67; Fig.7)),
which we incorporate herein by reference, as well as our discussion of claim
1 (supra).
C. The Examiner’s Rejections Under § 103
Appellants separately argue dependent claims 7 and 92 (App. Br. 40-
41), 12 and 96 (id. at 38), 17 and 101 (id. at 41-42), 18 and 102 (id. at 42-
43), 19 and 103 (id. at 44), 20 and 104 (id. at 44-45), 21 and 105 (id. at 45-
46), 27 and 107 (id. at 46-47), 28 and 108 (id. at 39), and 35 and 115 (id. at
39-40). Therefore, we select claims 7, 12, 17-21, 27, 28, and 35 as
representative of Appellants’ arguments and groupings. 37 C.F.R.
§ 41.37(c)(1)(vii). We address the representative claims in the order argued
by Appellants.

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1. Issue:
The issue before us is whether the Examiner erred in concluding that
the combination of references (Dolby and Cook or Dolby and Armour)
would have collectively taught or fairly suggested the limitations of the
representative claims?
2. Claim 12
The Examiner rejects Appellants’ dependent claim 12 as being
obvious over the combination of Dolby and Cook. (Ans. 14-15, 32.)
Specifically, the Examiner explains that Dolby describes each feature of
Appellants claim, including at least some of the recited constraints, for
example, power requirements or power consumption (Ans. 32 (citing Dolby,
col. 7, l. 64 to col. 8, l. 18; col. 12, ll. 42-53; col. 13, ll. 38-43).) Appellants,
on the other hand, contend that Dolby fails to teach the recited constraints.
(App. Br. 38.)
We find that the preponderance of evidence on this record supports
the Examiner’s findings and ultimate conclusion that the subject matter of
Appellants’ claim 12 is obvious over the combination of Dolby and Cook.
Accordingly, we sustain the Examiner’s rejection of claim 12 for the reasons
set forth in the Answer, which we incorporate herein by reference (Ans. 14-
15, 32), as well as our discussion of claim 1 (supra).
We conclude, as did the Examiner (Ans. 32) that Dolby would have at
least suggested one of the constraints recited in claim 12, such that:
the rack select optimization sub-problem is solved based upon
at least one of the following constraints: a dimension of a box
in a particular rack can not exceed a dimension of the rack, a
selected rack must meet the power requirements for boxes
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placed in the selected rack, a box requiring uninterrupted power
(UPS) must be placed in a rack with adequate UPS capability,
heat generated by boxes in a single particular rack must be
within a particular limit, a certain type of box and a certain type
of rack are prohibited as a combination, a box and a backup of
the box must be placed in separate racks, and a box and a
backup of the box must be separated by at least some user-
defined distance.
(Claim 12.)
We find Appellants’ contrary arguments unpersuasive of error in the
Examiner’s rejection for the reasons explained above. It follows that
Appellants do not persuade us of error in the Examiner’s obviousness
rejection of representative claim 12. Appellants also do not persuade us of
error in the Examiner’s obviousness rejection of dependent claim 96 and
dependent claims 6, 14, 34, 91, 98, and 114 not separately argued with
particularity (supra). See 37 C.F.R. § 41.37(c)(1)(vii); In re Lovin, 652 F.3d
at 1357; Ex Parte Frye, 94 USPQ2d at 1075-76. Accordingly, we affirm the
Examiner’s obviousness rejection of claims 6, 12, 14, 34, 91, 96, 98, and
114.
3. Claim 28
Appellants contend that Dolby and Cook do not teach “that solving
the rack select optimization sub-problem includes forcing at least one
requirement related to a box appearing in a given rack.” (App. Br. 39.)
We agree with Appellants that the portion of Cook cited by the
Examiner (col. 13, ll. 38-43; see Ans. 15, 32) does not teach or suggest
forcing a requirement (in Dolby’s cabinet selection (i.e., solving the rack
select optimization sub-problem)). (App. Br. 39.) Specifically, we find no
description in the cited portion of Cook of forcing any requirement with
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respect to any selection criteria. Thus, we find no clear explanation in Dolby
or the Examiner’s discussion of the rejection of the disputed features.
Consequently, we are constrained by the record before us to conclude that
Dolby fails to teach or suggest the recited features and, therefore, the
rejection of claim 28 fails to establish a prima facie case of obviousness.
Appellants’ dependent claim 108 includes limitations of similar scope.
Accordingly, we reverse the Examiner’s obviousness rejection of claims 28
and 108.
4. Claim 35
Appellants contend that the portion of Cook cited by the Examiner
fails to teach anything about solving a rack select optimization sub-problem.
(App. Br. 39-40.)
We find that the preponderance of evidence on this record supports
the Examiner’s findings and ultimate conclusion that the subject matter of
Appellants’ claim 35 is obvious over the combination of Dolby and Cook
and sustain the Examiner’s rejection of claim 35 for the reasons set forth in
the Answer, which we incorporate herein by reference (Ans. 15-16, 32-33).
We also concur with the Examiner that Appellants improperly attempt
to attack the references individually, instead of addressing the combination
of references (Ans. 33), and find Appellants’ contrary arguments
unpersuasive of error in the Examiner’s rejection for the reasons explained
above. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (noting
that one cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references) (citing In re
Keller, 642 F.2d 413, 425 (CCPA 1981)). It follows that Appellants do not
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persuade us of error in the Examiner’s obviousness rejection of
representative claim 35 or claim 115 not separately argued with particularity
(supra). Accordingly, we affirm the Examiner’s obviousness rejection of
claims 35 and 115.
5. Claim 7
The Examiner rejects Appellants’ dependent claim 7 as being obvious
over the combination of Dolby and Armour. (Ans. 16-18, 33.) Specifically,
the Examiner explains that Armour teaches determining the configuration
based upon an integer programming solution (citing Armour, p. 296
(“Quadratic Integer programming problem”)) and that it would have been
obvious to apply the teachings of Armour to Dolby. (Ans. 16-17.) Further,
the Examiner submits that Armour teaches solving the layout optimization
sub problem to determine a location of each rack. (Ans. 18, 33 (citing
Armour, pp. 294 (Abstract), 295-298 (“Conceptualization of
Methodology”)).)
Appellants contend that the combination of Dolby and Armour fails to
teach the recited limitation: “determining a physical location of each rack
that will hold at least one box by solving a rack layout optimization sub-
problem” (claim 7). (App. Br. 40-41.) Specifically, Appellants argue that
“Armour does not appear to say anything at all about racks, much less
placement of racks.” (App. Br. 41.)
We agree with Appellants that the portion of Armour cited by the
Examiner (pp. 294-298), in combination with Dolby, does not sufficiently
describe determining a physical location of each rack as recited in the claim.
Dolby is directed to assigning components to cabinets (supra). Dolby does
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not teach or suggest the placement (location) of cabinets. Armour is directed
to the location of physical facilities (p. 294, Abstract). The Examiner
analogizes the location of facilities to “computer components placement.”
(Ans. 17.) While we agree with the Examiner that Armour teaches integer
programming and the location of elements (facilities), it is not apparent how
one would combine Dolby and Armour to achieve the specific process
claimed – locating a cabinet (rack). Thus, we find no clear explanation in
Dolby or the Examiner’s discussion of the rejection of the disputed features.
Consequently, we are constrained by the record before us to conclude that
the combination of Dolby and Armour would not have taught or suggested
the recited features and, therefore, the rejection of claim 7 fails to establish a
prima facie case of obviousness. Appellants’ dependent claim 92 includes
limitations of similar scope. Appellants’ claims 20 and 21 (dependent on
claim 7) and 104 and 105 (dependent on claim 92) fall with their respective
base claims.
Because the Examiner fails to explain how one would combine Dolby
and Armour, we are also constrained to conclude that the combination of
Dolby and Armour would not have taught or suggested the recited features
of Appellants representative claims 17-19, and 27 and, therefore, the
rejection of claims 17-19, and 27 fails to establish a prima facie case of
obviousness. Appellants’ dependent claims 101-103, 107, and 108 include
limitations of similar scope. Accordingly, we reverse the Examiner’s
obviousness rejection of claims 7, 17-21, 27, 92, 101-105, and 107.
Appellants did not address the Examiner’s rejection of dependent
claims 2, 11, 13, 15, 16, 87, 95, 97, 99, and 100 not separately argued with
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particularity (supra). Accordingly, we affirm the Examiner’s obviousness
rejection of claims 2, 11, 13, 15, 16, 87, 95, 97, 99, and 100.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-9, 11-21, 26-37 and 86-119 under 35 U.S.C. § 101.
Appellants have not shown that the Examiner erred in rejecting claims
1, 3-5, 8, 29-33, 36, 86, 88-90, 93, 107, 109-113, 116, 118, and 119 under 35
U.S.C. § 102(b).
Appellants have shown that the Examiner erred in rejecting claims 9,
26, 37, 94, 106, and 117 under 35 U.S.C. § 102(b).
Appellants have not shown that the Examiner erred in rejecting claims
2, 6, 11-16, 34, 35, 87, 91, 95-100, 114, and 115 under 35 U.S.C. § 103(a).
Appellants have shown that the Examiner erred in rejecting claims 7,
17-21, 27, 28, 92, 101-105, 107, and 108 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-9, 11-21, 26-37 and
86-119.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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