Ex Parte Ayachitula et al

Patent Trial and Appeal BoardMay 5, 2014

11479532 (P.T.A.B. May. 5, 2014)

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. 11/479,532 06/30/2006 Naga A. Ayachitula YOR920060469US1 8749 7590 05/06/2014 Ryan, Mason & Lewis, LLP 90 Forest Avenue Locust Valley, NY 11560 EXAMINER SPIELER, WILLIAM ART UNIT PAPER NUMBER 2159 MAIL DATE DELIVERY MODE 05/06/2014 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 NAGA A. AYACHITULA, KRISHNA S. GARIMELLA, YAN OR, and LARISA SHWARTZ ____________ Appeal 2011-009410 Application 11/479,532 Technology Center 2100 ____________ Before DONALD E. ADAMS, ERIC GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1, 3-9, and 11-22 (App. Br. 2). Examiner entered a rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The claims are directed to a computer-implemented method of, an apparatus for, and an article of manufacture for, automatically creating 1 The Real Party in Interest is International Business Machines Corporation (App. Br. 1). Appeal 2011-009410 Application 11/479,532 2 composite configuration items in a configuration management database of a configuration management database system. Claims 1 and 4 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Claims 1, 3-9, and 11-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Resnick,2 Desnoyers,3 and Beadles.4 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Examiner finds that the combination of Resnick and Desnoyers suggests the subject matter of Appellants’ claimed invention with the exception of Appellants’ claimed requirement “that the configuration items used in the creation of the composite configuration items are selected by . . . [a] computer” (Ans. 5). FF 2. Examiner finds that Beadles’ suggestion of bulk loading data makes up for the foregoing deficiency in the combination of Resnick and Desnoyers (id.). FF 3. Beadles’ “invention is directed to the user interface and policy loading aspects of a policy-based, out-sourced, network management system. . . . In . . . [one] aspect, the initial loading of the policies is done using a bulk loader in a logic layer” (Beadles 2: ¶ [0022]). 2 Resnick et al., US 2002/0198920 A1, published December 26, 2002. 3 Desnoyers et al., US 6,791,948 B1, issued September 14, 2004. 4 Beadles et al., US 2003/0037040 A1, published February 20, 2003. Appeal 2011-009410 Application 11/479,532 3 FF 4. According to Beadles, “the bulk loader, after receiving the XML files identifying the user’s selected policies and network devices . . ., loads the data into the database” (id. at ¶ [0026] (emphasis added)). ANALYSIS Based on the combination of Resnick, Desnoyers, and Beadles, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to create composite configuration items based on the user-created relationships of Resnick” (Ans. 6 (emphasis added)). We are not persuaded. Recognizing Examiner’s concession that neither Resnick nor Desnoyers, alone or in combination, suggest that “the creation of the composite configuration items are selected by the computer,” Appellants contend that, notwithstanding Examiner’s assertion to the contrary, Beadles’ “bulk loader does not perform any selection of the sort recited in . . . [Appellants’] independent claims,” but instead loads the “user’s selected policies” into a database (App. Br. 7-8; FF 3-4; Cf. FF 2). We recognize Examiner’s assertion that Appellants’ claims may use a bulk loader to perform the method step at issue (Ans. 9; Cf. Reply Br. 4). The issue, however, is not whether a bulk loader can be used to perform the claimed method step, but rather the issue is whether the prior art suggests the specific method step required by the claim, specifically that the “selection be performed by a computer” (see Reply Br. 4). As discussed above, Beadles fails to suggest “any arrangement in which a selection . . . is performed by a computer” and therefore fails to remedy this deficiency in the combination of Resnick and Desnoyers (id.). Appeal 2011-009410 Application 11/479,532 4 We recognize, but are not persuaded by, Examiner’s interpretation of Appellants’ claim to read on selection “by the computer based on user input” (see Appellants’ Claim 1; Cf. Ans. 9). As Appellants explain, “Examiner seems to be confusing the first [providing] step of the method . . . with the second [automatically creating] step of the method” (Reply Br. 4). In this regard, Appellants contend that Even if a plurality of configuration items could be provided by a user in the arrangements disclosed by the references, as alleged by the Examiner, there would still be no teaching or suggestion of any arrangement in which one or more of the plurality of configuration items are selected by the computer and in which one or more composite configuration items are automatically created from these selected one or more of the configuration items. (Id. at 5.) In sum, Examiner failed to establish an evidentiary basis on this record to support a conclusion that the combination of Resnick, Desnoyers, and Beadles suggests the automatic creation of one or more composite configuration items in a configuration management database from one or more of a plurality of configuration items selected by a computer as is required by each of Appellants’ independent claims (see Appellants’ claims 1, 9, and 17). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1, 3-9, and 11- 22 under 35 U.S.C. § 103(a) as unpatentable over the combination of Resnick, Desnoyers, and Beadles is reversed. REVERSED cdc