Ex Parte Batot et alDownload PDFPatent Trial and Appeal BoardJun 25, 201411523200 (P.T.A.B. Jun. 25, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRONZ F. BATOT, RANDY S. JOHNSON, TEDRICK N. NORTHWAY, PAUL D. PETERSON, and HOWARD N. SMALLOWITZ ____________________ Appeal 2012-002481 Application 11/523,200 Technology Center 3600 ____________________ Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–12. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2012-002481 Application 11/523,200 2 SUMMARY OF THE DECISION We reverse. BACKGROUND Appellants’ invention is directed to management services that support physical disaster recovery operations (Spec. 1, ll. 5–6). Claim 1 is illustrative: 1. A method for prioritizing a multiplicity of management services which manage physical disaster recovery operations, the method comprising the steps of: a computer determining from a database a criticality of each of the management services; the computer determining from a database an urgency of recovery of each of the management services; the computer determining from a database respective numbers of the management services which support each of the management services; and the computer determining and electronically reporting a priority to perform each of the management services based on (a) the criticality of said each management service, (b) the urgency of said each management service and (c) the number of the management services which support said each management service. Appellants appeal the following rejections: Claims 1, 3, 4, 6, 7, 9, 10, and 121 are rejected under 35 U.S.C. § 102(b) as anticipated by Breslin (US 2004/0064436 A1, published Apr. 1, 2004). 1 We take as inadvertent error the omission of claim 9 from the statement of rejection at page 4 of the Answer, because claim 9 is addressed along with claims 3, 6, and 12 at pages 8–9 of the Answer. Appeal 2012-002481 Application 11/523,200 3 Claims 2 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Breslin, Tachihara (US 7,350,100 B2, issued Mar. 25, 2008), Bonissone (US 5,058,033, issued Oct. 15, 1991), and Barnard (US 2002/0103731 A1, published Aug. 1, 2002). Claims 8 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Breslin, Tachihara, Bonissone, and Millar (US 5,297,276, issued Mar. 22, 1994). ANALYSIS We are persuaded by Appellants’ argument that “[w]hile Breslin et al. disclose ‘[identification of] the products (services) which are supported by the particular department,’ these are the products and services which the department supports and not a count of how many services support a service whose priority is being evaluated.” (Br. 10–11). Each of independent claims 1, 4, 7, and 10 recites limitations directed to “determining” three data elements that are used to determine a priority. The Specification describes that for two of the data elements, the determining involves merely retrieving data from a database for those data elements, because the required data was stored there by a person. “Based on experience, research and logic, a person specifies the ‘criticality’ of each management service and enters the specification into database 32.” (Spec. 5, ll. 26–28). “Based on experience, research and logic, a person specifies the ‘urgency’ of each management service and enters the specification into database 32.” (Id. at 6, ll. 3–4). The final element, however, is a “number,” but the Specification does not describe a number as being an element of data that is stored in the database. Instead, “[a] person also determines from Appeal 2012-002481 Application 11/523,200 4 experience, research and logic which other services support or depend on recovery of the management service listed in the first column.” (Id. at 6, ll. 5–6, emphasis added). As a result, we construe the claim step of “determining from a database respective numbers of the management services which support each of the management services” (in claim 1, similarly recited in claims 4, 7, and 10) to represent the action of counting. This count is not based on a stored number, but instead is calculated based on stored descriptions of “which” services support or depend on a service. See, for example, the “Prioritization Table” at Specification, page 6, which lists the names of services, but not a number or count. For the “determining . . . a number” limitations, the Examiner directs us to Breslin, paragraphs 28, 36, 52 (Answer 6), and 40 (Answer 15). Paragraph 28 merely discloses the hardware and software components of a system. Although paragraph 36 discloses “identify[ing] the products (services) which are supported by the particular department,” this is not a determination of a number, or count. Paragraph 40 discloses attributes of the “Internal Service Agreement impact 145,” but does not disclose a number or count. Finally, paragraph 52 discloses that data is “aggregated,” which the Examiner asserts “sums the information.” Breslin is disclosing, however, that aggregating means storing all the information in a central database, rather than summing or counting. (Para. 52). Therefore, Breslin does not determine a number of services, as claimed, for one of the data elements used to determine priority. For this reason, we will not sustain the rejection under 35 U.S.C. § 102(b) of independent claims 1, 4, 7, and 10, nor of dependent claims 3, 6, 9, and 12. Appeal 2012-002481 Application 11/523,200 5 We also will not sustain the rejections under 35 U.S.C. § 103(a) of dependent claims 2, 5, 8, and 11 that depend from claims 1, 4, 7, and 10. DECISION We reverse the rejections of claims 1–12. REVERSED hh Copy with citationCopy as parenthetical citation