INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Aug 30, 2021

2020004669 (P.T.A.B. Aug. 30, 2021)

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.
14/743,130 06/18/2015 Keith W. Grueneberg YOR920150027US2
(865 CON)
7314
49267 7590 08/30/2021
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
BAKER, IRENE H
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
08/30/2021 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEITH W. GRUENEBERG, BONG JUN KO, JORGE J. ORTIZ,
THEODOROS SALONIDIS, RAHUL URGAONKAR,
DINESH C. VERMA, and XIPING WANG
____________________

Appeal 2020 -0046691
Application 14/743,1302
Technology Center 2100
____________________

Before ST. JOHN COURTENAY, III, MARC S. HOFF, and
BETH Z. SHAW, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Non-Final Rejection
of claims 1–14.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 This application is a continuation of Application No. 14/667,320, Appeal
No. 2020-004667.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant states that the real party in interest is International
Business Machines Corporation. Appeal Br. 4.
3 Claims 15 and 16 have been cancelled.
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Appellant’s invention is a method and system for identifying
applications compatible with a set of data. The method includes the
identifying step of executing at least some of the applications in the set
against at least some of the data in the set. The method further comprises
analyzing, by a log analyzer, execution logs for executions of the at least
some of the applications against at least some of the data, and indicating, by
the log analyzer, a compatibility of the at least some of the applications to
the at least some of the data by detecting compatibility relevant errors using
the execution logs. Abstract.
Claim 1 is reproduced below:
1. A method for identifying application and data
compatibility in a cloud computing environment including a
network of interconnected nodes communicating with a
plurality of physical devices, the method comprising:
moving, by a processor, one application from a set of
applications stored in an analytics repository to an execution
platform by an analytics finder;
moving, by the processor, a subset of a set of data stored
in a storage repository to the execution platform;
identifying, without user input or intervention, whether
the one application of the set of applications moved to the
execution platform is compatible with the subset of the set of
data moved to the execution platform without using pre-defined
meta-information about analytics solutions or a data source for
determining compatibility between the one application and the
subset of the set of data, and without requiring data
transformation pre-processing tasks of analyzing, profiling or
discovering of the data source for the subset of the set of data,
where the processor is programmed to not provide the analytics
repository and the storage repository with meta-information;
and
implementing, by the set of applications, respective
actual analytic solutions for the set of data, wherein said
identifying step comprises:
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collecting, by a log collector, execution logs
derived from executing the one application to the subset
of the set of data;
analyzing, by a log analyzer, the execution logs to
detect compatibility issues;
indicating, by the log analyzer, a compatibility
status between the one application and the subset of the
set of data by detecting data interfacing errors and data
compliance errors;
automatically designating as incompatible and
preventing execution thereof, by the analytics finder
responsive to an incompatibility being detected for an
application in the set of applications, other applications in
the set previously linked to the application based on
linking criteria; and
outputting, on a computing device, the
incompatibility detected for the application in the set of
applications on a user interface of one or more of the
plurality of physical devices.

The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Plasek US 5,878,426 Mar. 2, 1999
Gill US 8,516,308 B1 Aug. 20, 2013
Miles US 6,654,911 B1 Nov. 25, 2003
Kumar D
(“Kumar”)
US 8,959,209 B1 Feb. 17, 2015
Singonahalli US 2010/0325616 A1 Dec. 23, 2010
Kurapati US 2013/0007522 A1 Jan. 3, 2013
Todorova US 2013/0036156 A1 Feb. 7, 2013
Kashyap US 2013/0080418 A1 Mar. 28, 2013
Neumeyer US 2013/0179865 A1 July 11, 2013

Claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Gill, Todorova, Kurapati, and Kumar.
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Claims 2, 5, and 6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gill, Todorova, Kumar, and Miles.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gill, Todorova, Kumar, Miles, and Neumeyer.
Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Gill, Todorova, Kumar, and Singonahalli.
Claims 8–11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gill, Todorova, and Kumar.
Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Gill, Todorova, Kumar, and Plasek.
Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Gill, Todorova, Kumar, and Kashyap.
Claim 14 stands rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim that which Appellant
considers to be the invention.
Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed February 7, 2020), the Reply Brief (“Reply Br.,” filed
June 2, 2020), and the Examiner’s Answer (“Ans.,” mailed April 9, 2020)
for their respective details.

ISSUE
Does the combination of Gill, Todorova, Kurapati, and Kumar teach
or suggest identifying, without user input or intervention, whether the one
application of the set of applications moved to the execution platform is
compatible with the subset of the set of data moved to the execution
platform without using pre-defined meta-information about analytics
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solutions or a data source for determining compatibility between the one
application and the subset of the set of data, as claim 1 requires?

PRINCIPLES OF LAW
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) (citations
Omitted)). Claims must “particularly point[] out and distinctly claim[] the
subject matter which the applicant regards as his invention.” 35 U.S.C.
§ 112, ¶ 2. However, “[o]nly claims not amenable to construction or
insolubly ambiguous are indefinite. . . . A claim term is not indefinite just
because it poses a difficult issue of claim construction.” Star Sci., Inc. v. R.J.
Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (internal
citations and quotation marks omitted). “Thus, the definiteness of claim
terms depends on whether those terms can be given any reasonable
meaning.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005).
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection. . . . References are selected as being
reasonably pertinent to the problem based on the judgment of a person
having ordinary skill in the art.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir.
2006).
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Our reviewing court has held that “[a] reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1090 (Fed. Cir. 1995).

ANALYSIS
Claim 1
Independent claim 1 recites, in pertinent part,
identifying, without user input or intervention, whether
the one application of the set of applications moved to the
execution platform is compatible with the subset of the set of
data moved to the execution platform without using pre-defined
meta-information about analytics solutions or a data source for
determining compatibility between the one application and the
subset of the set of data.
Appellant argues that the Examiner erred in combining Gill,
Todorova, Kurapati, and Kumar, because Kumar does not qualify as prior art
under 35 U.S.C. § 103 due to it being non-analogous to the invention under
appeal. Appeal Br. 11. Appellant argues that because Kumar’s compatibility
test “relies on metadata,” Kumar is not directed to the same field of
endeavor. Appeal Br. 12 (emphasis omitted).
Appellant further suggests that Kumar is not reasonably pertinent to
the problem faced by the inventor because it neither addresses the same
problem nor serves the same purpose as the invention under appeal. Appeal
Br. 12. Appellant’s underlying thesis again is that the test of Kumar “must
use metadata.” Appeal Br. 13 (emphasis omitted).
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Appellant further contends that Kumar teaches away from the
combination with Gill, Todorova, and Kurapati, because as argued supra,
Kumar “must” employ metadata. Appeal Br. 15–16 (emphasis omitted).
Because these three arguments by Appellant are based on the shared
assertion that Kumar “must use metadata” or “relies on metadata,” we begin
by construing the claim term “meta-information.” Appellant’s arguments,
which concern metadata, imply that the argued term “metadata” is
interchangeable with “meta-information.”
To construe “meta-information,” we first look to Appellant’s
Specification. We observe that Appellant does not define “metadata” or
“meta-information” in the Specification, nor does Appellant point us to any
portion of the Specification to support Appellant’s argument. We further
note that Kumar does not mention, let alone define, the term “metadata.” We
look to extrinsic evidence for a definition of the word. “Metadata describes
other data. It provides information about a certain item’s content. . . . Web
pages often include metadata in the form of meta tags. Description and
keywords
meta tags are commonly used to describe the Web page’s content.”
TechTerms.com (accessed Aug. 19, 2021), https://techterms.com/definition/
metadata. The Microsoft Computer Dictionary defines metadata as “[d]ata
about data. For example, the title, subject, author, and size of a file constitute
metadata about the file.” Microsoft Computer Dictionary 336 (5th Ed. 2009).
The Merriam-Webster Dictionary defines metadata as “data that provides
information about other data.” Merriam-Webster.com (accessed Aug. 19,
2021), https://www.merriam-webster.com/dictionary/metadata. Taken
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together, these definitions suggest that metadata refers to information about
the content of a data source.
Appellant insists that in Kumar, “the metadata of the device is
compared to the metadata of the web page” and that such a comparison “can
only be done with metadata.” Appeal Br. 13 (emphasis omitted). We do not
agree with Appellant’s argument given the disclosure of Kumar. Kumar’s
invention concerns a system and method to indicate the compatibility of a
web page with a device. “A link to a web page is obtained. A set of
capabilities associated with a device is obtained. A set of requirements
associated with the web page is obtained. A compatibility result is
determined for the web page based on the set of capabilities and the set of
requirements.” Kumar col. 1:28–33.
Kumar further teaches that, “[i]n some cases, the web page may be
tested to determine the set of capabilities. In some cases, the web page may
be tested to determine the set of requirements.” Kumar col. 1:59–61. “In
some configurations, web compatibility tests may be performed on the
device to determine what properties . . . are supported on the device.” Kumar
col. 3:18-21.
The Examiner finds, and we agree, that
the cited portions of Kumar disclose testing the device and web
pages for a set of capabilities and requirements, respectively. If
Kumar’s disclosure were solely based on metadata as asserted
by Appellant, Kumar’s system could have directly queried the
set of capabilities and requirements, instead of disclosing an
additional embodiment of performing an extra testing step.

Ans. 7. Appellant’s unsupported attorney argument to the contrary is entitled
to little weight.
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As a consequence of agreeing with the Examiner’s finding that Kumar
discloses web page compatibility testing that does not directly query a set of
capabilities and requirements, and thus in at least some embodiments does
not use metadata, we are not persuaded by Appellant’s argument that Kumar
is not analogous to the claimed invention. We agree with the Examiner’s
finding that Kumar is directed to the same field of endeavor as the invention
under appeal—compatibility testing between an application and a data set..
Our finding that Kumar does not rely on metadata also means that we
do not agree with Appellant that Kumar teaches away from the claimed
invention. Kumar does not discourage the person having ordinary skill in the
art from following the non-metadata path set forth, and does not lead the
skilled artisan on a path divergent from that followed by the invention under
appeal. Gurley, 27 F.3d at 553.
With regard to teaching away, Appellant further urges that Kumar
teaches away from “identifying, without user input or intervention, whether
the one application of the set of applications moved to the execution
platform is compatible with the subset of the set of data moved to the
execution platform,” because “Kumar specifically states that a user can
determine if a web page is supported before visiting the web page since a
user receives a percentage of support for a web page.” Appeal Br. 16
(emphasis omitted). This argument is unpersuasive because Kumar teaches a
“display module . . . [that] may indicate and/or display the compatibility
result determined by the comparison module.” This result “may be indicated
as a percentage (e.g., a percentage of compatibility).” Kumar col. 7:55–61.
Kumar thus conducts the compatibility testing discussed supra, and then
displays the testing result as a percentage of compatibility. No user input is
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solicited by Kumar in conducting the testing. No user intervention in the
compatibility testing is disclosed in Kumar.
Last, we are not persuaded by Appellant’s argument that Kumar does
not teach identifying compatibility using a processor programmed to “not
provide the analytics repository and the storage repository with meta-
information.” Appeal Br. 18. As we explain supra, we find that Kumar
teaches compatibility testing that does not rely on metadata.
Appellant has not identified Examiner error in the § 103 rejection of
claim 1 over Gill, Todorova, Kurapati, and Kumar. We sustain the
Examiner’s § 103 rejection.

Claims 2–14
Claims 2–14 depend from independent claim 1, the rejection of which
we sustain supra. Appellant does not present separate argument for the
patentability of these claims. Appellant states only that Miles, Neumeyer,
Singonahalli, Plasek, and Kashyap, respectively, do not remedy the
deficiencies of Gill, Todorova, and Kumar as applied against independent
claim 1. Appeal Br. 19–21.
Because we determine that such deficiencies do not exist, we will
sustain the § 103 rejection of claims 2, 5, and 6 over Gill, Todorova, Kumar,
and Miles, for the reasons given supra with respect to the § 103 rejection of
claim 1. We will sustain the § 103 rejection of claims 3 and 4 over Gill,
Todorova, Kumar, Miles, and Neumeyer, for the reasons given supra with
respect to the § 103 rejection of claim 1. We will sustain the § 103 rejection
of claim 7 over Gill, Todorova, Kumar, and Singonahalli, for the reasons
given supra with respect to the § 103 rejection of claim 1. We will sustain
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the § 103 rejection of claims 8–11 over Gill, Todorova, and Kumar, for the
reasons given supra with respect to the § 103 rejection of claim 1. We will
sustain the § 103 rejection of claims 12 and 13 over Gill, Todorova, Kumar,
and Plasek, for the reasons given supra with respect to the § 103 rejection of
claim 1. Last, we will sustain the § 103 rejection of claim 14 over Gill,
Todorova, Kumar, and Kashyap, for the reasons given supra with respect to
the § 103 rejection of claim 1.
35 U.S.C. § 112(b) rejection of claim 14
Claim 14 recites, in pertinent part, “using an execution time period
limiting approach that inherently selects the at least one data by limiting an
amount of overall execution time for the data in the set of data.”
The Examiner determines “inherently” to be indefinite in this context.
“Given the dictionary definition of ‘inherent’, which refers to something
existing as a permanent, essential, or characteristic attribute, it is uncertain
what is meant by the system ‘inherently’ selecting data.” Non-Final Act. 6.
Appellant suggests that the Examiner erred in this rejection because
“there is ample support for the term ‘inherently.’” Appeal Br. 10 (citing
Spec. ¶ 102). “The specification does not need to elaborate more on the term
. . . . It is clear from the specification what is meant by ‘inherently.’” Id.
Appellant quotes the Specification: “the subset of the data set is
obtained inherently by executing the analytics solution directly against the
data in the data store 210 but for only a limited period of time. In yet another
embodiment, the subset of the data is selected by a human.” Spec. ¶ 102.
We are not persuaded by Appellant’s argument that those skilled in the art
would understand what is claimed when the claim is read in light of the
specification. Paragraph 102 discloses obtaining (i.e., selecting) data in some
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fashion; in one embodiment, the selection is done by a human, and in
another embodiment it is done without human involvement. Appellant does
not explain how “executing the analytics solution” means that any data in
the data store is selected or obtained.
Accordingly, we sustain the Examiner’s § 112(b) rejection of claim
14.
CONCLUSION
The combination of Gill, Todorova, Kurapati, and Kumar suggests
identifying, without user input or intervention, whether the one application
of the set of applications moved to the execution platform is compatible with
the subset of the set of data moved to the execution platform without using
pre-defined meta-information about analytics solutions or a data source for
determining compatibility between the one application and the subset of the
set of data, as claim 1 requires.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis 
Affirmed Reversed
14 112 Indefiniteness 14
1 103 Gill, Todorova,
Kurapati, Kumar
1
2, 5, 6 103 Gill, Todorova,
Kumar, Miles
2, 5, 6
3, 4 103 Gill, Todorova,
Kumar, Miles,
Neumeyer
3, 4
7 103 Gill, Todorova,
Kumar,
Singonahalli
7
8–11 103 Gill, Todorova,
Kumar
8–11
12, 13 103 Gill, Todorova,
Kumar, Plasek
12, 13
14 103 Gill, Todorova,
Kumar, Kashyap
14
Overall
Outcome
1–14

ORDER
The Examiner’s decision to reject claims 1–14 is affirmed.
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.
§ 1.136(a)(1)(iv) (2019).

AFFIRMED