Ex Parte Bosa et al

Patent Trial and Appeal BoardJun 28, 2016

11131540 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111131,540 05/17/2005 105727 7590 06/30/2016 Pillsbury Winthrop Shaw Pittman LLP (CA, Inc,) PO Box 10500 McLean, VA 22102 Patrick A. Bosa 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 019287-0317294 5283 EXAMINER CHOY, PANG ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 06/30/2016 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): Docket_IP@pillsbury law. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK A. BOSA, MATTHEW HAGEN, and THOMAS S. P ANTELIS Appeal2014-002021 Application 11/131,540 Technology Center 3600 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE1 Appellants seek our review under 35 U.S.C. Â§ 134 from the Examiner's Final rejection of claims 1-14 and 46-60. We AFFIRM (37 C.F.R. Â§ 41.50(b)). 1 The Appellants identify CA, Inc. as the real party in interest. (Appeal Br. 2). Appeal2014-002021 Application 11/131,540 THE CLAIMED INVENTION Appellants claimed method and medium relate generally to "evaluating a state of a business process associated with a network." (Spec. 1, 11. 6-9). Claim 1 is illustrative of the claimed subject matter: 1. A method for monitoring a business process associated with a network, the method executed by a processor configured to perform a plurality of operations, the operations comprising: determining, by the processor, an operational characteristic of a business process; taking an action, by the processor, to modify a state of an event associated with a change in the operational characteristic of the business process, wherein taking the action comprises making a decision regarding whether the event is covered by a service level agreement; and re-determining, by the processor, the operational characteristic of the business process. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Becerra Balasubramanian Andreev US 2004/0122697 Al June 24, 2004 US 2005/0108169 Al May 19, 2005 US 2006/0248546 Al Nov. 2, 2006 REJECTIONS The following rejection is before us for review. The Examiner rejected claims 1-14 and 46-60 under 35 U.S.C. Â§ 103(a) as unpatentable over Andreev, Balasubramanian, and Becerra. FINDINGS OF FACT We find the following facts by a preponderance of the evidence. 2 Appeal2014-002021 Application 11/131,540 1. Andreev discloses a method that "identifies at least one operational characteristic of the IT structure A such that the at least one operational characteristic corresponds to the service level specified in step 6004 and may be adjusted to sustain the specified service level." (Andreev, para. 504). 2. Andreev discloses "Step 6007 monitors the operation of the IT structure A." (Andreev, para. 506). 3. Andreev discloses "Step 6008 ascertains whether the monitoring of the IT structure A in step 6007 detects a condition in which the measured value of any operational characteristic of the identified at least one operational characteristic violates the corresponding threshold." (Andreev, para. 507). 4. Andreev discloses re-determining the operational characteristic of the business process, in that after determining that a value does not violate a threshold, "the process loops back to step 6007 to again monitor the operation of the IT structure A." (Id.). 5. Andreev discloses that if a measured value violates a threshold, Andreev "notifies the appropriate operations personnel, denoted as SL examiner 6009, that the measured value of one or more operational characteristics has violated the corresponding thresholds." (Andreev, para. 508). 6. Andreev discloses that after notifying personnel of a violation of a threshold, "the process loops back to step 6002 to repeat steps 6002- 6013" to repeat monitoring the business process. (Andreev, para. 512). 3 Appeal2014-002021 Application 11/131,540 ANALYSIS Claims 1, 2, 5-10, 13, 14, 46, 47, 50-55, and 58---60 Initially, we note that the Appellants argue independent claims 1 and 46 together as a group. (Appeal Br. 11 ). Correspondingly, we select representative claim 1 to decide the appeal of these claims, with remaining claim 46 standing or falling with claim 1. Appellant does not provide a substantive argument as to the separate patentability of claims 2, 5-10, 13, 14, 47, 50-55, and 58---60 that depend from claims 1 and 46. (Appeal Br. 12). Thus, claims 2, 5-10, 13, 14, 46, 47, 50-55, and 58---60 stand or fall with claim 1. See, 37 C.F.R. Â§ 41.37(c)(l)(vii). Preliminarily, we note that the Examiner, in rejecting claim 1, found that Andreev discloses a majority of the claim requirements, but found that Balasubramanian and Becerra are needed to meet two other claim limitations. (Final Act. 6). Specifically, the Examiner looked to Balasubramanian for "disclos[ing] re-determining []the operational characteristic of the business process," and to Becerra for disclosing "wherein taking the action comprises marking a decision regarding whether the event is covered by a service level agreement." (Ans. 5-8). But, we find, however, that Andreev alone discloses the other claim limitations. That is, Andreev discloses monitoring IT services (FF 1, 2), and after ascertaining whether a monitored value violates a threshold (FF 3), Andreev "loops back" to resume monitoring (FF 4, 6), thus, "re-determining the operational characteristic of the business process," as claimed. Balasubramanian, therefore, is a cumulative reference for this aspect of the claimed method. Further, we find that, Andreev alone discloses a characteristic that "corresponds to the service level." (FF 1 ). In doing so, 4 Appeal2014-002021 Application 11/131,540 Andreev discloses "making a decision regarding whether the event is covered by a service level agreement," as claimed, because if a characteristic is not covered by a service level agreement, it need not be monitored. Andreev, thus, meets the claim language at issue, making Becerra cumulative. Appellants argue the combination of Andreev, Balasubramanian, and Becerra is in error, because Becerra is not analogous art. (Appeal Br. 6-8; see also Reply Br. 4--5). The argument is moot, however, because as found supra, Andreev alone discloses the claim language at issue. Appellants next argue there is no motivation in the cited art to combine the teachings of Becerra with those of Andreev and Balasubramanian. (Appeal Br. 8-9; see also Reply Br. 5-7). Again, the argument is moot, because we find that Andreev alone discloses the claim language at issue. But, to the extent Appellants seek an explicit suggestion or motivation in the reference itself for a combination, this is no longer the law in view of the Supreme Court's recent holding in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Appellants similarly argue the reason to combine the references is "conclusory" and a result of impermissible hindsight. (Appeal Br. 9-1 O; see also Reply Br. 7). We are not persuaded by Appellants argument because again we find that Becerra is merely cumulative. But, we this point notwithstanding, we nevertheless find that the Examiner properly set forth "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). For example, the Examiner reasons with regard to the combination of Becerra's teachings with those of Andreev and Balasubramanian, the 5 Appeal2014-002021 Application 11/131,540 ordinary artisan would be motivated to make the combination "in order to gain the commonly understood benefit of such adaption, such as enhance the efficiency of the operation process, against revenue lost." (Final Act. 8). Appellants next argue Becerra and Balasubramanian each fails to disclose the claim language for which each was cited. (Appeal Br. 10-11; see also Reply Br. 7-9). The argument is again moot, because Andreev alone discloses the claim language at issue, and Becerra and Balasubramanian are merely cumulative references, as noted above. For these reasons, we affirm the rejection of claims 2, 5-10, 13, 14, 46, 47, 50-55, and 58---60. Because our rationale differs from that used by the Examiner, we denote this Decision as containing a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b) Claims 4 and 49 Initially, we note Appellants argue dependent claims 4 and 49 together as a group. (App. Br. 13). Correspondingly, we select representative claim 49 to decide the appeal of these claims, with remaining claim 4 standing or falling with claim 49. See, 37 C.F.R. Â§ 41.37(c)(l)(vii). Dependent claim 49 recites "wherein the operation of taking an action to modify a state of an event associated with a change in the operational characteristic of the business process further comprises identifying the state of the event as subject to the service level agreement" (dependent claim 4 recites "marking" instead of "identifying."). Appellant identifies that claim 49 is "similar to" claim 4. (Appeal Br. 13). 6 Appeal2014-002021 Application 11/131,540 Appellants argue that Andreev' s report and "adjusting an operational characteristic" fail to disclose the claim language, because "there is no mention of the claimed marking operation." (Appeal Br. 13;see also Reply Br. 10-11). We are not persuaded by Appellants' argument, because Andreev discloses identifying whether an "operational characteristic corresponds to the service level specified in step 6004," which meets the claim language at issue. (FF 1 ). The identifying is part of the taking an action to modify an event, as claimed, because it is part of the process laid out by Andreev for defining, identifying, monitoring, and adjusting operational characteristics. (FF 1--4). Claims 3 and 48 Initially, we note Appellants argue dependent claims 3 and 48 together as a group. (App. Br. 12). Correspondingly, we select representative claim 48 to decide the appeal of these claims, with remaining claim 3 standing or falling with claim 48. See, 37 C.F.R. Â§ 41.37(c)(l)(vii). Dependent claim 48 recites "wherein the operation of taking an action to modify a state of an event associated with a change in the operational characteristic of the business process further comprises identifying the state of the event as exempt from the service level agreement." Dependent claim 3 recites "marking" instead of "identifying." Appellants identify that claim 3 is "similar to" claim 48. (Appeal Br. 12). Appellants argue Andreev fails to disclose the claim language at the cited sections. (Appeal Br. 12; see also Reply Br. 9-10). 7 Appeal2014-002021 Application 11/131,540 We are not persuaded by Appellants' argument, because Andreev necessarily identifies events exempt from a service level agreement when it identifies whether an event is subject to a service level agreement. (FF 1 ). That is, when identifying events that are subject to the service level agreement, the skilled artisan would recognize that some events that may be considered as subject to a service level agreement may be found as not to be within that category, and are, thus, identified as exempt, as claimed. Claims 11 and 56 Dependent claims 11 and 56 each recite language substantially equivalent to "wherein the operation of redetermining the operational characteristic of the business process further comprises taking an action to disregard an event." Appellants argue Andreev fails to disclose the claim language. (Appeal Br. 13-14; see also Reply Br. 11-12). We are not persuaded by Appellants' argument, because Andreev discloses it disregards a measured characteristic and "loops back" to continue monitoring the operation, thus meeting the claim language. (FF 4). Claims 12 and 57 Dependent claims 12 and 57 each recite language substantially equivalent to "wherein the operation of re-determining the operational characteristic of the business process further comprises applying a rule to the operational characteristic to determine whether to transmit an alert." Appellants argue Andreev fails to disclose the claim language. (Appeal Br. 14--15; see also Reply Br. 12-13). 8 Appeal2014-002021 Application 11/131,540 We are not persuaded by Appellants' argument, because Andreev discloses it transmits an alert by notifying appropriate personnel when a measured value violates a threshold, thus, meeting the claim language. (FF 5). CONCLUSIONS OF LAW The Examiner did not err in rejecting claims 1-14 and 46-60 under 35 U.S.C. Â§ 103(a). DECISION For the above reasons, the Examiner's rejection of claims 1-14 and 46-60 is affirmed. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21(September7, 2004)). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that the appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same record .... 9 Appeal2014-002021 Application 11/131,540 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED; 37 CPRÂ§ 41.50(b) 10