Ex Parte Choi et alDownload PDFPatent Trial and Appeal BoardJan 17, 201713216309 (P.T.A.B. Jan. 17, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation