International Business Machines Corporation

Patent Trials and Appeals Board

Oct 2, 2020

15006571 - (D) (P.T.A.B. Oct. 2, 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.
15/006,571 01/26/2016 Karin MURTHY YOR920151220US1 7144
48243 7590 10/02/2020
FLEIT INTELLECTUAL PROPERTY LAW
4800 N. Federal Highway, Suite B306
BOCA RATON, FL 33431
EXAMINER
CHOUAT, ABDERRAHMEN
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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):
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARIN MURTHY,
ZHIMING SHEN, CHRISTOPHER CHARLES YOUNG,
and SAI ZENG
____________

Appeal 2019-003313
Application 15/006,571
Technology Center 2400
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU, and
SHARON FENICK, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b)(1).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation as the real party in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention “generally relates to cloud garbage collecting”
in order to address, for example, overprovisioned or under-utilized servers
and resources. Spec. ¶ 1; see id. ¶ 4.
Claims 1, 12, and 20 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal (emphases added):
1. A method for collecting unproductive resources in a network
infrastructure, the method comprising:
collecting data relating to resources of a network
infrastructure;
selecting an analytics model based on a type of the
collected data;
executing the selected analytics model to classify a
resource as one of unproductive and productive and to assign a
corresponding confidence level;
determining an action plan for each confidence level; and
executing the action plan for the resource.
Appeal Br. 22 (Claims App.).
REJECTIONS
The Examiner rejects claims 1–4, 6, 11–14, 16, and 20 under
35 U.S.C. § 103 as being unpatentable over Brooker2 and Kavuri.3 Final
Act. 4–7.

2 Brooker et al., US 2016/0269313 A1 (pub. Sept. 15, 2016).
3 Kavuri et al., US 2015/0339197 A1 (pub. Nov. 26, 2015).
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The Examiner rejects claims 5, 7, 8, 15, 17, and 18 under 35 U.S.C.
§ 103 as being unpatentable over Brooker, Kavuri, and Eggen.4 Final
Act. 8–11.
The Examiner rejects claims 9, 10, and 19 under 35 U.S.C. § 103 as
being unpatentable over Brooker, Kavuri, Eggen, and Lombrozo.5 Final
Act. 11–12.
OPINION
The Examiner relies on Brooker for disclosing the limitation of
“selecting an analytics model based on a type of the collected data,” as
recited in independent claims 1, 12 and 20. Final Act. 3–5 (citing Brooker
¶¶ 39–40); Ans. 4–5, 7–8 (citing Brooker ¶¶ 18–21, 39–43). Specifically,
the Examiner cites Brooker’s disclosure of collecting “information, metrics,
or metadata” as “placement criteria” to “perform various kinds of analysis to
identify placement locations for resources,” including “configuration
analysis.” Brooker ¶¶ 39–40 (cited at Final Act. 3, 5; Ans. 7–8).
Appellant argues that Brooker is silent on the use of analytics models
and that, while Brooker discloses various analyses, “not all analytic
processes require the use of models.” Appeal Br. 13; see id. at 14–15, 20;
Reply Br. 2. Appellant further argues that Brooker does not teach or suggest
“selecting a specific model for the analysis based on the type of data
collected.” Appeal Br. 20; see id. at 14–15.
We agree with Appellant. The Examiner finds that Brooker’s
“various kinds of analysis,” including “configuration analysis,” “cost-benefit

4 Eggen et al., US 2017/0126500 A1 (pub. May 4, 2017).
5 Lombrozo et al., US 2016/0209844 A1 (pub. July 21, 2016).
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migration analysis,” “volume placement” analysis, and “resource host
fragmentation analysis,” are analytics models. Final Act. 5 (citing Brooker
¶ 40); Ans. 4–5, 7 (citing ¶¶ 18–21, 40–43). The Examiner appears to rely
on an implicit disclosure of analytics models in Brooker, finding that “all
types of analysis must be modeled to (1) take as input a type of data,
(2) manipulate data, (3) output data.” Final Act. 5 (emphasis omitted).
However, the Examiner does not provide sufficient evidence to support that
finding, and it is not clear from the record, that Brooker’s types of analysis
teach or suggest the use of an analytics model.6
Furthermore, the Examiner finds that Brooker’s “configuration
analysis is adapted in the case it needs to be applied to [a] virtual resource”
(Final Act. 3 (citing Brooker ¶ 40)) and characterizes Brooker’s adapted
configuration analysis as an analytics model and whether “the resources
include[] virtual instances attached to the data volume or not” as a type of
collected data (Final Act. 5; see id. at 3–4). According to the Examiner,
Brooker selects an analytics model based on a type of collected data in that,
“based on data collected to perform the configuration analysis, the
configuration analysis is performed.” Ans. 4. We find the Examiner’s

6 Appellant argues that the Examiner “attempted to improperly take Official
Notice” that “[i]t is well known in the art that models used for analysis are
methods to conduct the analysis process” in the Final Office Action, without
affording Appellant “an opportunity to defend” and “without providing
documentary support.” Appeal Br. 12–13 (citing Final Act. 3); Reply
Br. 2–3. The Examiner states that “no official notice was taken.” Ans. 4.
We understand Appellant’s argument to be that the finality of the Office
Action was premature, which we do not consider here because that is a
matter reviewable by petition and outside of the Board’s jurisdiction. MPEP
§§ 706.07(c), 1002.02(c)(3)(a).
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reasoning to be strained. Similarly, we do not agree with the Examiner that
Brooker’s cost-benefit migration analysis is an analytics model selected
based on a type of collected data simply by virtue of being performed using
corresponding input data, such as a placement score. See id. at 7–8 (citing
Brooker ¶¶ 18–21).
Accordingly, we determine that the Examiner errs in finding that
Brooker teaches or suggests an “analytics model,” as well as “selecting an
analytics model based on a type of the collected data.”
The Examiner further relies on Brooker for the limitation of
“classify[ing] a resource as one of unproductive and productive,” as recited
in independent claims 1, 12, and 20. Final Act. 3–5 (citing Brooker ¶¶ 15,
18, 39); Ans. 5–6. Specifically, the Examiner cites Brooker’s disclosure that
sub-optimal resource placements may result in “underutilized resource hosts,
inefficient or less durable configurations for distributed resources, and/or
various other kinds of waste or inefficiency for the resource or distributed
system as a whole.” Brooker ¶ 15; see Final Act. 3–4; Ans. 5–6. According
to the Examiner, Brooker’s “resources are migrated based on sub-optimal
placement leading to waste, inefficiency, and underutilized resources” (Ans.
5) and, “when a resource is not being utilized it is selected for migration and
is equivalent to being classified as unproductive” (Final Act. 5 (emphasis
omitted)).
Appellant argues that “Brooker does not classify resources as
‘productive’ or ‘unproductive’” according to the Specification’s definition of
an “unproductive resource.” Appeal Br. 17 (citing Spec. ¶ 25). According
to Appellant, “Brooker is concerned with optimizing resource placement by
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implementing opportunistic resource migration,” but does not “make any
attempt to target unproductive resources for migration.” Id.
We agree with Appellant that the cited portions of Brooker fail to
teach or suggest selecting resources for migration by classifying them as
unproductive or productive based on the definition provided in the
Specification. The Specification provides:
[T]he term “unproductive resource” is used to denote a resource
that is not performing any productive work. An unproductive
resource may be idle, inactive, or unused. However, not every
idle, inactive, or unused resource is necessarily unproductive
(e.g., a disaster recovery server may be idle for a long time but
still serves a productive purpose). Also, an active resource may
still be unproductive if the resource performs work that nothing
depends on.
Spec. ¶ 25. That is, the Specification provides that an “unproductive
resource” is “a resource that is not performing any productive work.”
Although the Examiner interprets an “unproductive resource” differently, to
mean “a resource that is not performing optimally based on its placement”
(Final Act. 3), that interpretation is incorrect because the Specification’s
definition controls. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
2005) (en banc) (“[O]ur cases recognize that the specification may reveal a
special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess. In such cases, the inventor’s
lexicography governs.”); Martek Biosciences Corp. v. Nutrinova, Inc., 579
F.3d 1363, 1380 (Fed. Cir. 2009) (“When a patentee explicitly defines a
claim term in the patent specification, the patentee’s definition controls.”).
And, while the Examiner finds that the Specification’s definition of an
“unproductive resource” is “relative,” “indefinite,” and “non-limiting” (Final
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Act. 2–3; Ans. 6), a person with ordinary skill in the art would have
understood from the Specification that an “unproductive resource” is a
resource that is “idle, inactive, or unused” without “serv[ing] a productive
purpose,” or a resource that “performs work that nothing depends on.” Spec.
¶ 25; see also id. ¶ 60 (explaining that a machine “running applications that
are not actually needed by users” is unproductive, and that a machine that
“may appear idle at a given moment” or “is idle most of the time, but
required to be available at any time for disaster recovery or backup
purposes” is productive).
Accordingly, we determine that the Examiner errs in finding that
Brooker teaches or suggests “executing the selected analytics model to
classify a resource as one of unproductive and productive” as claimed.
For the foregoing reasons, we do not sustain the Examiner’s § 103
rejections of claims 1–20.
CONCLUSION
The Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103 are
reversed.

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DECISION SUMMARY
In summary:

REVERSED

Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
1–4, 6, 11–14,
16, 20
103 Booker, Kavuri 1–4, 6, 11–14,
16, 20
5, 7, 8, 15, 17,
18
103 Booker, Kavuri,
Eggen
5, 7, 8, 15, 17,
18
9, 10, 19 103 Booker, Kavuri,
Eggen, Lombrozo
9, 10, 19
Overall
Outcome
1–20