Ex Parte Choi et al

Patent Trial and Appeal Board

Jan 17, 2017

13216309 (P.T.A.B. Jan. 17, 2017)

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.
13/216,309 08/24/2011 Christopher Young-Soo Choi AU920110012US1 3876
63400 7590
IBM CORP. (DHJ)
c/o DAVID H. JUDSON
15950 DALLAS PARKWAY
SUITE 225
DALLAS, TX 75248
01/19/2017 EXAMINER
ZHAO, DON GORDON
ART UNIT PAPER NUMBER
2493
NOTIFICATION DATE DELIVERY MODE
01/19/2017 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):
mail@davidjudson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER YOUNG-SOO CHOI and
NEIL IAN READSHAW
Appeal 2016-000692
Application 13/216,3091
Technology Center 2400
Before ERIC S. FRAHM, MATTHEW J. McNEILL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 9-11, 13, 15-19, 21, and 23-31, which are all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 1.
2 Claims 1-8, 12, 14, 20, and 22 have been canceled. App. Br. 21, 22, 24
(Claims App’x).
Appeal 2016-000692
Application 13/216,309
STATEMENT OF THE CASE
Introduction
Appellants’ application relates to a security policy management
solution that models how changes in a security policy may impact the
effectiveness and risk associated with a policy. Abstract. Claim 9 is
illustrative of the subject matter on appeal and reads as follows:
9. An apparatus for policy change management,
comprising:
a processor;
computer memory holding computer program
instructions that when executed by the processor perform a
method comprising:
defining a version of a policy, the policy having a
schema associated therewith, the schema having a set of
attributes;
quantifying an effectiveness of the policy version
by assigning a value to a first policy schema attribute;
quantifying a policy risk associated with the policy
version by assigning a measure of potential for negative
impact of the policy on a second policy schema attribute;
mapping, on a machine-implemented graphical
display, the effectiveness and the policy risk for the
policy version using the value of the first policy schema
attribute and the measure of potential for negative impact
on the second policy schema attribute; and
comparing the policy version with a prior version
of the policy to determine whether the policy version is
to be implemented.
2
Appeal 2016-000692
Application 13/216,309
The Examiner’s Rejection
Claims 9-11, 13, 15-19, 21, and 23-31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hurst (US 8,176,571 Bl; May 8, 2012),
Spoonamore (US 2008/0047016 Al; Feb. 21, 2008), and Draper (US
2009/0276257 Al; Nov. 5, 2009). Final Act. 7-31.
ANALYSIS
We have reviewed the Examiner’s rejection in consideration of
Appellants’ contentions and the evidence of record. Appellants persuade us
the Examiner fails to establish the claims are unpatentable over the cited
prior art.
The Examiner finds the combination of Hurst, Spoonamore, and
Draper teaches or suggests “comparing the policy version with a prior
version of the policy to determine whether the policy version is to be
implemented.” Final Act. 9 (citing Hurst 4:15-24, 5:1-5, 9:31-37, 9:41—
45). In particular, the Examiner finds Hurst teaches comparing different
version of topologies and policies and evaluating risks of a policy for the
purpose of implementation. Id.
Appellants argue Hurst’s “side-by-side comparison” of physical
network topologies is not a comparison of a policy version with a prior
version of the policy to “determine whether [the] policy version is to be
implemented,” as recited in claim 9. App. Br. 11, Reply Br. 7.
Appellants have persuaded us the Examiner erred. Although Hurst
teaches a side-by-side comparison of a policy version with a prior version of
the policy, this comparison involves marking up the policy language to
identify changes of the policy from the old effective version to the new
3
Appeal 2016-000692
Application 13/216,309
effective version. Hurst 8:36-55. The new effective policy version has
already been implemented at the time of the comparison. Id. Thus, the
comparison of the new version of the policy to the old version is not done
“to determine whether the [new] policy version is to be implemented”
because this decision has already been made.
The Examiner finds Hurst teaches the Best Practice Score is used to
determine the best configuration of a network. Ans. 22 (citing Hurst 21:55—
57, 22:11-12). However, this determination is done for only a single policy
at a time, and the Examiner has not established that Hurst teaches
performing a side-by-side comparison of the two policies using the Best
Practice Score to determine whether the new policy should be implemented.
We agree with Appellants that using the Best Practice Score in such a
manner would not have been obvious to an ordinarily skilled artisan because
the “new” effective policy has already been implemented at the time of
Hurst’s side-by-side comparison of the policies. See Reply Br. 7.
Accordingly, we agree with Appellants that the Examiner has failed to
establish that the cited portions of Hurst teach “comparing the policy version
with a prior version of the policy to determine whether the policy version is
to be implemented.” On this record, we therefore do not sustain the
Examiner’s rejection of independent claim 9.3 We also do not sustain the
rejection of independent claims 17, 25, and 26, which contain similar
3 Because we are persuaded of error with regard to the identified issue,
which is dispositive of the rejection of claim 9 over Hurst, Spoonamore, and
Draper, we do not reach the additional issues raised by Appellants’
arguments.
4
Appeal 2016-000692
Application 13/216,309
limitations, or dependent claims 10, 11, 13, 15, 16, 18, 19, 21, 23, 24, and
27-31.
DECISION4
We reverse the decision of the Examiner to reject claims 9-11, 13,
15-19, 21, and 23-31.
REVERSED
4 The Patent Trial and Appeal Board is a review body, rather than a place of
initial examination. We leave to the Examiner, upon any further prosecution
of the instant application, to consider the appropriateness of further
rejection(s) of claims 9-11, 13, 15-19, 21, and 23-31 under 35 U.S.C.
§ 103(a) over the cited references applied differently or in combination with
additional references.
5