International Business Machines Corporation

Patent Trials and Appeals Board

Sep 30, 2020

15668275 - (D) (P.T.A.B. Sep. 30, 2020)

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.
15/668,275 08/03/2017 Daniel Lereya SJO920170005US1 4230
54858 7590 09/30/2020
IBM CORP. (WIP)
c/o WALDER INTELLECTUAL PROPERTY LAW, P.C.
445 CRESTOVER CIRCLE
RICHARDSON, TX 75080
EXAMINER
OBAID, HAMZEH M
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
09/30/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL LEREYA, NADAV PARAG,
VLADIMIR SHALIKASHVILI, and MOSHE WEISS
____________

Appeal 2020-003101
Application 15/668,2751
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s invention “relates generally to an improved data
processing apparatus and method and more specifically to mechanisms for
utilizing analytic data to generate crowd-based custom logic units for use in
storage management.” (Spec. ¶ 1.)
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1 is
illustrative. It recites (bracketed material added):
1. A method, in a data processing system comprising at least
one processor and a memory coupled to the at least one
processor, for generating crowd-based custom logic units for use
in storage management, the method comprising:
[1.] responsive to receiving analytic data from a set of
storage device managers on a set of customer devices about how
users interact with a set of storage devices on the set of customer
devices managed by a respective storage device manager,
analyzing the analytics data in order to gain one or more insights
into how users interact with the set of storage devices using the
respective storage manager;
[2.] utilizing the one or more insights, generating one or
more logic units that will allow the users to perform their daily
tasks more efficiently; and
[3a.] transmitting the one or more logic units to one or
more storage device managers in the set of storage device
managers so that [3b.] the one or more storage device managers
integrate the one or more logic units and the users of the one or
more storage device managers and the respective set of storage
devices on the set of customer devices utilize the one or more
logic units to perform their daily tasks more efficiently.

REJECTIONS
Claims 1, 2, 4, 6–9, 11, 13–16, 18, and 20 are rejected under
35 U.S.C. § 103 as unpatentable in view Guthrie (US 8,515,801 B2, iss.
Aug. 20, 2013) and Vibhor (US 2015/0244775 A1, pub. Aug. 27, 2015).
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Claims 3, 5, 10, 12, 17, and 19 are rejected under 35 U.S.C. § 103 as
unpatentable in view Guthrie and Lehto (US 2013/0212154 A1, pub.
Aug. 15, 2013).2

ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Guthrie discloses “utilizing the one or more insights, generating
one or more logic units that will allow the users to perform their daily tasks
more efficiently.” (Final Action 5 (citing Guthrie, col. 5, ll. 54–61); see also
Answer 3–4.)

2 In rejecting the independent claims (claims 1, 8, and 15), the Examiner
relies on Vibhor to cure a deficiency in Guthrie. The Examiner does not rely
on Lehto to cure this deficiency in rejecting dependent claims 3, 5, 10, 12,
17, and 19. (See Final Action 27–34.) We treat the failure to cite Vibhor in
this rejection of these dependent claims as inadvertent and, in this case,
harmless error.
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Appellant argues that
while Guthrie collects data and examines the data in order to
obtain valuable insight into the activities being undertaken to
carry out the business process, nowhere does Guthrie utilize the
one or more insights to generate one or more logic units that
will allow the users to perform their daily tasks more efficiently.
In fact, there is no mention of a logic unit . . . .

(Appeal Br. 9.)
As an initial matter, we construe the claim terms “logic units” and
“integrate.”
Claims are construed in light of the specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond,
910 F.2d 831, 833 (Fed. Cir. 1990) (“During examination, ‘claims . . . are to
be given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the
art.’”)). We are also mindful that “[t]he general rule . . . is that the claims of
a patent are not limited to the preferred embodiment.” Karlin Tech., Inc. v.
Surgical Dynamics, Inc., 177 F.3d 968, 973 (Fed. Cir. 1999).
The Specification discloses:
[T]he mechanisms of the illustrative embodiment utilize
analytics data to generate crowd-based custom logic units for use
by other [sic] in their storage management. That is, the
mechanisms analyze the analytics data gathered from a plurality
of users using storage device managers in order to gain
community insights. Using the community insights, the
mechanisms generate community knowledge-based procedures,
herein after [sic] referred to as “Logic Units” that are then
integrated back into the storage device managers as plugins.

(Spec. ¶ 14.)
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In view of the disclosures in the Specification, and applying a
broadest reasonable interpretation, we determine that the claim term “logic
units” includes community knowledge-based procedures.
In view of the disclosures in the Specification, and applying a
broadest reasonable interpretation, we determine that the claim term
“integrate” includes to combine to form a unified whole, e.g., storage device
managers combine with the logic units to form a unified whole. (See
Merriam-Webster.com, http://merriam-webster.com/dictionary/integrate,
def. 1 (last visited Sept. 25, 2020).)
Guthrie “relates generally to improvements to the performance of
business processes” (Guthrie, col. 1, ll. 16–17), and “generation of a
suggestion or suggestions of alternative techniques for carrying out business
processes” (id. at col. 2, ll. 29–36). More particularly, Guthrie discloses that
“business processes include various tasks involving the use of a computing
resource (id. at col. 2, ll. 7–8), and that “[b]usiness processes can be thought
of as including a number of components, including functions involving data
management and organization” (id. at col. 4, ll. 39–41). Guthrie discloses
gathering information relating to
activities undertaken in carrying out various business processes,
and evaluat[ing] the efficiency, . . . and in general the business
process. . . . Such evaluation may include identifying best
practices for carrying out business processes and comparing best
practices to actual operations within an organization, or within
individual users and groups within the organization.

(Guthrie, col. 6, ll. 6–18.) In short, Guthrie teaches using insights from
analyzing relative efficiencies involved in operations to carry out tasks, i.e.,
use of community based knowledge to generate suggestions for alternative
procedures to more efficiently carry out tasks. Thus, we disagree with
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Appellant’s assertion that Guthrie does not generate one or more logic units,
i.e., one or more community knowledge-based procedures.
With regard to claim step 3a, i.e., “transmitting the one or more logic
units to one or more storage device managers in the set of storage device
managers,” the Examiner finds that Guthrie discloses this limitation. (Final
Action 5–6 (citing Guthrie, col. 6, ll. 19–44, col. 16, ll. 38–45); see also
Answer 5–6 (citing Guthrie col. 2, ll. 15–44).) In particular, Guthrie
discloses “configurations for facilitating the transfer of information for
purposes of analysis to improve business processes.” (Guthrie, col. 6, ll. 21–
24.) We note that Guthrie specifically discloses that a user’s workstation
can process information collected from the workstation “for purposes of
improving the performance of transactions involving the use of [the]
workstation,” and that the workstation “is capable of processing information
collected from other workstations for purposes of improving transactions
involving the use of those workstations.” (Id., col. 6, l. 62–col. 7, l. 3.)
Regardless, Appellant argues that
while Guthrie describes the components of a workstation l04A-
104C, i.e. a central processing unit (CPU) 106, a keyboard 112,
a display 114, a mouse 116, a telephone 117, and a human
interface device (HID) 118, nowhere is there a description that
the server 102 provided any of these components to the
workstation 104A-104C. In fact, Appellants respectfully submit
that none of these components are a logic unit, such as a plug-in,
plugin, add-in, addin, add-on, addon, or other extension, that is
generated to allow the users to perform their daily tasks more
efficiently utilizing the one or more insights. Appellants
respectfully submit that this deficiency is because Guthrie does
not utilize one or more insights to generate one or more logic
units that will allow the users to perform their daily tasks more
efficiently . . . .

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(Appeal Br. 10.)
To the extent Appellant’s argument is based on Guthrie not generating
one or more logic units, for the reasons discussed above, we do not find this
argument persuasive. To the extent Appellant’s argument is that a logic unit
must be “a plug-in, plugin, add-in, addin, add-on, addon, or other extension”
(see id.), we disagree for the reasons discussed above. And to the extent
Appellant’s argument is that a logic unit must be a hardware device, e.g., a
CPU, a keyboard, a display, a mouse, etc., we also disagree for the reasons
discussed above.
With regard to step 3b, and particularly the limitation “the one or
more storage device managers integrate the one or more logic units,” the
Examiner finds that this is disclosed in Vibhor. (Final Action 6–7 (citing
Vibhor, Fig. 9, ¶¶ 192–203, 338)3; see also Answer 5 (citing Vibhor ¶ 190).)
Vibhor discloses an information management system including a
storage manager. (Id. ¶ 187.) “[T]he storage manager 940 may

3 In discussing Vibhor, the Examiner refers to “the following limitation:
managed by a respective storage device manager; using the respective
storage manager; storage device managers integrate the one or more logic
units and the users of the one or more storage device managers.” (Final
Action 6 (emphasis omitted).) This suggests that the Examiner erroneously
interprets claim 1 to require integrating the logic units and the users of the
storage device managers. As discussed above, the Specification discloses
that the logic units are “integrated back into the storage device managers.”
(See, e.g., Spec. ¶¶ 14, 40, 52.) Thus, we interpret limitation 3b of claim 1
as reciting “the one or more storage device managers integrate the one or
more logic units[;] and the users of the one or more storage device managers
and the respective set of storage devices on the set of customer devices
utilize the one or more logic units to perform their daily tasks more
efficiently.”

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communicate with and/or control some or all elements of the information
management system.” (Id. ¶ 190.) “[I]n certain embodiments, control
information originates from the storage manager.” (Id.) “Control
information can generally include parameters and instructions for carrying
out information management operations, such as, without limitation,
instructions to perform a task associated with an operation . . . .” (Id.) For
example, Vibhor discloses that the storage manager performs functions
including “tracking logical associations between components in the
information management system.” (Id. ¶ 200.)
The Examiner determines:
It would have been obvious . . . to use Vibhor[’s] teaching
of using a storage manager to send, transmit and/or communicate
information/logic units in Guthrie[’]s method and apparatus [to]
analyze dat[a] . . . to determine efficiency of a business process.
Specifically, in relation to command and transactions used for
achieving the same intended result (Guthrie Col. 11, lines 15-30).
Also, to enable the storage manager 940 to track logical
association[s] between storage devices and allow[ing] the users
to configure and initiate certain information management
operations on an individual basis (Vibhor [0203]).

(Final Action 7.)
Appellant argues that
while Vibhor may track logical associations between
components and manage a database, nowhere does the storage
manager of Vibhor integrate the one or more logic units . . . .
[T]his deficiency is because Vibhor does not utilize one or more
insights to generate one or more logic units that will allow the
users to perform their daily tasks more efficiently. . . .
Therefore, Appellants respectfully submit that, since Guthrie and
Vibhor, taken alone or in combination, do not utilize the one or
more insights to generate one or more logic units that will allow
the users to perform their daily tasks more efficiently, Guthrie
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and Vibhor, taken alone or in combination, could not transmit the
one or more logic units to one or more storage device managers
in the set of storage device managers . . . .

(Appeal Br. 11–12.)
For the reasons discussed above regarding Guthrie, we disagree with
Appellant that Guthrie does not utilize one or more insights to generate one
or more logic units that will allow users to perform tasks more efficiently.
However, we are persuaded by Appellant’s argument that the
Examiner erred (Appeal Br. 11) in finding that Vibhor discloses
“integrat[ing] the one or more logic units” (Final Action 6). As an initial
matter, we note that the Examiner’s reliance on Vibhor for teaching
“integrat[ing] the one or more logic units” suggests that even though Guthrie
discloses processing information from workstations to improve performance
of those workstations (Guthrie, col. 6, l. 62–col. 7, l. 3), the Examiner does
not believe that it would have been obvious from Guthrie alone to integrate
Guthrie’s community knowledge-based procedures into storage device
managers. With regard to Vibhor, the Examiner does not direct us to a
disclosure in Vibhor discussing the use of community knowledge-based
procedures. (See Final Action 6–7.) It follows that the Examiner also does
not direct us to a disclosure in Vibhor of combining storage management
devices with community knowledge-based procedures to form a unified
whole.
Therefore, absent the Examiner directing us to a disclosure in Vibhor
of integrating community knowledge-based procedures into Vibhor’s storage
managers, i.e., integrating one or more logic units, we find that the
Examiner’s reasoning is not sufficient to support the determination that it
would have been obvious “to use Vibhor[’s] teaching of using a storage
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manager to send, transmit and/or communicate information/logic units in
Guthrie[’]s method.” (See Final Action 7.)
Independent claims 8 and 15 contain language similar to that of
claim 1 and are similarly rejected. See Final Act. 12–15, 20–23. For similar
reasons to those discussed above, we are persuaded of reversible error.

CONCLUSION
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103 are
reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4,
6–9, 11,
13–16,
18, 20
103 Guthrie, Vibhor 1, 2, 4,
6–9, 11,
13–16,
18, 20
3, 5, 10,
12, 17,
19
103 Guthrie, Lehto 3, 5, 10,
12, 17, 19
Overall
Outcome
1–20

REVERSED