Ex Parte Beaty et al

Patent Trial and Appeal Board

Mar 28, 2014

11848258 (P.T.A.B. Mar. 28, 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.
11/848,258 08/31/2007 Kirk A. Beaty YOR920070273US1 3486
48062 7590 03/28/2014
RYAN, MASON & LEWIS, LLP
1175 Post Road East
2nd Floor
Westport, CT 06880
EXAMINER
CHANG, LI WU
ART UNIT PAPER NUMBER
2129
MAIL DATE DELIVERY MODE
03/28/2014 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 KIRK A. BEATY and ANCA SAILER
__________

Appeal 2012-000183
Application 11/848,258
Technology Center 2100
___________

Before GLENN J. PERRY, TRENTON A. WARD, and
STACEY G. WHITE, Administrative Patent Judges.

WARD, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
The Rejection on Appeal
Claims 1-3 and 10-20 stand rejected under 35 U.S.C. § 103(a)
unpatentable over Berenji (Hamid R. Berenji, Case-Based Reasoning for
Fault Diagnosis and Prognosis, IEEE INT’L CONF. ON FUZZY SYSS. 1316
(2006)) and Yang (Qiang Yang et al., CaseAdvisor: Supporting Interactive
Problem Solving and Case Base Maintenance for Help Desk Applications,
PROC. IJCAI 97 WORKSHOP ON PRAC. APPLICATIONS CBR 1 (1997)).1
Claims 4-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Berenji, Yang, and Breslow (Leonard A. Breslow & David W. Aha,
NaCoDAE: Navy Conversational Decision Aids Environment, NAVY
CENTER RES. LAB. 1 (1997)).
The Claimed Invention
The claimed invention is directed to problem determination and
resolution in the field of information technology. Spec. 3. The claimed
invention provides a method that includes the steps of detecting anomalous
changes in an environment for which a problem diagnosis is to be provided,
generating domain specific key words and predicates, searching in a
knowledge repository for solutions related to the generated key words and
predicates, and generating a particular solution for the problem, based on the
solutions from the knowledge repository. Id. Furthermore, the claimed
invention provides that generation of domain specific key terms and
predicates that relate to the anomalous IT changes in the environment can

1 Throughout this opinion, we refer to the Appeal Brief (“App. Br.”) filed on
June 6, 2011, and the Examiner’s Answer (“Ans.”) mailed on July 18, 2011.
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guide the search for resolution by using appropriate and relevant clauses. Id.
Claim 1 is illustrative and is reproduced below, with certain limitations
emphasized:
1. A method for problem determination and resolution,
said method comprising the steps of:
detecting anomalous changes in an environment for
which a problem diagnosis is to be provided;
generating domain specific key words and predicates
based, at least in part, on said detected anomalous changes;
searching in a knowledge resolution repository for
solutions related to said generated key words and predicates;
and
generating a particular solution for said problem, based,
at least in part, on said solutions from said knowledge
resolution repository, wherein one or more of said steps are
performed by a hardware device.

DISCUSSION
A. Obviousness Rejection of Claims 1, 13, 15, and 18 over Berenji and
Yang
Independent Claims 1, 15, and 18
The Examiner finds that Berenji discloses the claim 1 limitations
involving detecting anomalous changes in an environment for which a
diagnosis is to be provided. Ans. 6. Furthermore, the Examiner found that
Berenji does not particularly disclose generating the claimed “domain
specific key words and predicates.” Id. The Examiner cited Yang as
teaching this feature, along with the additional claim limitations regarding
searching in a knowledge resolution repository for solutions and generating
a solution, in concluding that the claim would have been obvious. Ans. 7-8.
Appellants disagree with the Examiner and argue that Yang fails to
disclose the claimed limitation regarding “domain specific keywords and
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predicates.” App. Br. 4 (quoting claim 1). Although, Appellants agree with
the Examiner that Yang discloses key words and key phrases, Appellants
disagree that Yang discloses the “predicates” recited in claim 1. Id. at 5.
Appellants argue that the term “predicate” should be construed as a “verb
phrase template” that describes a “property of objects, or a relationship
among objects represented by the variables.” Id. (emphases omitted).
Appellants fail to point to any statements or discussion in the Specification
regarding the definition of the term predicate. We have reviewed the
Specification and we find no definition of “predicate.”
The Examiner determined that the term “predicate” is defined in
neither the Specification nor the claim. Ans. 13. We agree with the
Examiner’s findings that Appellants failed to clearly state their intent to
assign a special definition to the term “predicate.” Id.; see also Laryngeal
Mask Co. Ltd. v. Ambu A/S, 618 F.3d 1367, 1372 (Fed. Cir. 2010)
(concluding the patentee did not act as his own lexicographer because “[t]o
be his own lexicographer, a patentee must use a ‘special definition of the
term [that] is clearly stated in the patent specification or file history’”
(citations omitted)). Because Appellants did not act as lexicographer for the
term “predicate,” the Examiner used the plain meaning of the term: “part of
a sentence or clause that expresses what is said of the subject and that
usually consists of a verb with or without objects, complements, or adverbial
modifiers.” Ans. 13. We agree with the Examiner’s construction of the
term “predicate.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (finding that the USPTO must give claims their
broadest reasonable interpretation consistent with the specification.).
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Using this plain meaning of “predicate,” the Examiner found that
Yang discloses that “[c]ases are indexed on problem features” and the
“system retrieves the cases that most likely match important keywords in the
description and ranks the cases.” Ans. 6 (citing Yang §§ 3.2, 4.2). Yang
further discloses generating “key words and key phrases from the
unstructured text.” Yang § 3.2. The Examiner relied upon this disclosure in
Yang as teaching the claimed step of “generating domain specific key words
and predicates.” Ans. 6. Based on this disclosure, we see no error in the
Examiner’s position that it would have been obvious to combine the
detection of anomalous changes from Berenji with Yang’s disclosure
regarding generating key words and key phrases.
Accordingly, we are not persuaded by Appellants’ arguments
regarding the rejection of claim 1 as obvious over Berenji and Yang.
Therefore, we sustain the Examiner’s rejection of independent claim 1, and
claims 15 and 18 not separately argued.
Claim 13
Appellants argue that claim 13 was improperly rejected as being
unpatentable over Berenji and Yang. App. Br. 8. Specifically, Appellants
argue that “Breslow discloses projects that are planned and extensions to
NaCoDAE” and “Breslow[] does not disclose or suggest wherein a
knowledge repository comprises at least a database and wherein a database
in turn comprises assets generated by an offline analyzer and
troubleshooting knowledge generator.” Id. (emphases added). As the
Examiner identifies, Breslow was not relied upon to reject claim 13, but
rather Berenji was. Ans. 16. Accordingly, Appellants’ arguments are not
persuasive and we sustain the Examiner’s rejection of claim 13.
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B. Obviousness Rejection of Claims 4, 6, and 9 over Berenji, Yang, and
Breslow
Claim 4
Claim 4 recites that the “step of creating said knowledge repository
comprises the sub-step of periodically organizing available environment
historical data.” The Examiner relied upon Breslow’s disclosure regarding
cyclic review and revision steps in constructing solutions in combination
with Berenji and Yang in determining that claim 4 is obvious. Ans. 10-11.
Appellants argue that, although Breslow teaches how to adapt constructed
solutions, it fails to disclose periodically organizing available environment
historical data, as required by claim 4.
Contrary to Appellants’ arguments, Breslow discloses that the “review
and revision steps can cycle.” Breslow § 1.1. The Examiner found that the
cycle of these two steps in case-based reasoning represents periodicity.
Based on this disclosure, we see no error in the Examiner’s position that it
would have been obvious to combine Breslow with Berenji and Yang in
finding claim 4 is obvious. Therefore, we sustain the Examiner’s rejection
of claim 4.
Claim 6
Claim 6 recites that the “step of creating said knowledge repository
further comprises the additional sub-step of analyzing and pre-processing
said environmental historical data to obtain said knowledge repository.”
With respect to this claim limitation, the Examiner relied upon Breslow’s
disclosure regarding “library revision” in enhancing case retrieval
performance, in combination with Berenji and Yang, in determining that
claim 6 is obvious. Ans. 11 (citing Berenji § 2.6). Appellants argue that,
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although Breslow teaches extracting cases to reorder them by an induced
hierarchy, it fails to disclose analyzing and pre-processing environmental
historical data to obtain the knowledge repository, as required by claim 6.
Breslow discloses inducing a hierarchy from the case library, editing
the cases, and extracting the cases as part of its library revision process.
Breslow § 2.6. The Examiner found that the induction, editing, and
extraction steps require analyzing and pre-processing historical data as
required by claim 6. Based on this disclosure in Breslow, we see no error in
the Examiner’s position that it would have been obvious to combine Breslow
with Berenji and Yang in finding claim 6 is obvious. Therefore, we sustain
the Examiner’s rejection of claim 6.
Claim 9
Claim 9 recites that the “step of creating said knowledge repository
further comprises the additional sub-step of indexing said knowledge
repository by said domain specific key words and predicates.” With respect
to this claim limitation, the Examiner relied upon Breslow’s disclosure
regarding inducing a hierarchy from the case library, in combination with
Berenji and Yang, in determining that claim 9 is obvious. Ans. 12 (citing
Berenji § 2.6). Appellants argue that, although Breslow teaches an induced
hierarchy, it fails to disclose indexing the knowledge repository by domain
specific key words and predicates, as required by claim 9.
Breslow discloses inducing a hierarchy from the case library as part of
its “library revision” process. Breslow § 2.6. The Examiner found that this
induction of a hierarchy, in combination with key word generation disclosed
in Yang, teaches the indexing by key words and predicates required by claim
9. Based on this disclosure, we see no error in the Examiner’s position that
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it would have been obvious to combine Breslow with Berenji and Yang in
finding claim 9 is obvious. Therefore, we sustain the Examiner’s rejection
of claim 9.

C. Rejection of Claims 2, 3, 5, 7, 8, 10-12, 14, 16, 17, 19, and 20
Appellants indicate in the Appeal Brief that “claims 1-20 are presently
pending” but that “[c]laims 1, 4, 6, 9, 13, 15, and 18 are being appealed.”
App. Br. 2. Nevertheless, in the “Statement of Grounds of Rejection to Be
Reviewed on Appeal,” Appellants state that “[c]laims 1-3 and 10-20 are
rejected under 35 U.S.C. §103(a) as being unpatentable over Berenji in view
of Yang et a1. and claims 4-9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Berenji, in view of Yang and further in view of Breslow et
a1.” App. Br. 4. Therefore, the Appeal Brief is ambiguous as to which
claims are subject to appeal. Regardless, the Appeal Brief only presents
arguments as to the claims 1, 4, 6, 9, 13, 15, and 18. See App. Br. 4-9.
Accordingly, arguments that could have been made to the remaining claims
are waived. Therefore, we sustain the Examiner’s rejection of the
remaining claims 2, 3, 5, 7, 8, 10-12, 14, 16, 17, 19, and 20.

ORDER
The Examiner’s decision rejecting claims 1-20 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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED
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