Ex Parte Kaminsky

Patent Trial and Appeal Board

Jan 31, 2017

11534824 (P.T.A.B. Jan. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/534,824 09/25/2006 David L. Kaminsky RSW920060105US1 (251) 6605
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
GEBRESENBET, DINKU W
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID L. KAMINSKY
Appeal 2015-007291
Application 11/534,824
Technology Center 2100
Before JOHN A. JEFFERY, DAVID C. McKONE, and
DANIEL N. FISHMAN, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
This application returns to us after we affirmed the Examiner’s
decision to reject then-pending claims 1—16. Ex parte Kaminsky, No. 2010-
010925 (PTAB June 8, 2013) (“Bd. Dec.”). Prosecution reopened after that
decision, and Appellant now appeals under 35 U.S.C. § 134(a) from the
Examiner’s subsequent decision to reject claims 1—16. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm, but designate our affirmance as a new
ground of rejection.
STATEMENT OF THE CASE
Appellant’s invention verifies configuration changes in network
architecture by (1) receiving a proposed change to apply to a configuration
management database (CMDB); (2) applying the proposed change to a
Appeal 2015-007291
Application 11/534,824
CMDB clone; and (3) evaluating the modified clone. See generally
Abstract. Claim 1 is illustrative:
1. A computer-implemented change verification method
comprising:
receiving a proposed configuration change for application
to a configuration management database (CMDB);
cloning at least a portion of the CMDB to produce a clone;
applying the proposed configuration change to the clone;
evaluating the clone as modified by the proposed
configuration change; and,
applying the proposed configuration change to the CMDB
based upon the evaluation.
THE REJECTIONS
The Examiner rejected claims 1,2, 4—13, 15, and 16 under 35 U.S.C.
§ 102(e) as anticipated by Kilpatrick (US 2007/0100712 Al; published May
3,2007). Final Act. 3-12.1
The Examiner rejected claims 3 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Kilpatrick and Lubrecht (US 2006/0161444 Al; published
July 20, 2006). Final Act. 12—13.
THE ANTICIPATION REJECTION
The Examiner finds that Kilpatrick discloses every recited element of
claim 1 including applying a proposed configuration change to a clone of at
least part of a CMDB, namely via the process associated with adding
configuration items (CIs) in Figure 7. Final Act. 3^4. According to the
1 Throughout this opinion, we refer to (1) the Final Rejection mailed March
21, 2014 (“Final Act.”); (2) the Appeal Brief filed December 8, 2014
(“App. Br.”); (3) the Examiner’s Answer mailed May 29, 2015 (“Ans.”); and
(4) the Reply Brief filed July 29, 2015 (“Reply Br.”).
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Application 11/534,824
Examiner, Kilpatrick evaluates this clone before deploying the proposed
change, and applies the proposed configuration change to the CMDB based
upon the evaluation. Final Act. 4; Ans. 3—6.
Appellant argues that Kilpatrick does not apply the proposed
configuration change to the CMDB based upon the clone’s evaluation, as
claimed. App. Br. 4—8; Reply Br. 2—13. Among other things, Appellant
contends that Kilpatrick’s distributing a change plan to individuals does not
disclose applying a proposed configuration change to a CMDB. App. Br. 6—
7; Reply Br. 5. Appellant adds that Kilpatrick’s change database is not a
CMDB nor a clone of the configuration database. Reply Br. 10—12.
ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Kilpatrick applies a proposed configuration change to a CMDB based
on evaluating a clone of at least a portion of the CMDB, where the clone is
modified by a received proposed configuration change?
ANALYSIS
We begin by noting that the only difference between claim 1 at issue
in this appeal from claim 1 in the earlier appeal is the last clause, namely
applying the proposed configuration change to the CMDB based upon the
evaluation, which was added to the claim after our earlier decision. See
Bd. Dec. 2 (reproducing claim 1). Moreover, as in the earlier appeal (in
which we affirmed the Examiner), the Examiner rejects claim 1 as
anticipated over the same prior art reference, namely Kilpatrick.
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Application 11/534,824
That is, we affirmed the Examiner’s anticipation rejection of then-
pending claim 1, which recited every element of claim 1 that is now before
us in this appeal except for the last clause. See Bd. Dec. 3—5. Our findings
and conclusions in our earlier decision, then, are applicable here, and indeed
binding in this appeal. See Manual of Patent Examining Procedure
(MPEP) § 706.07(h)(XI)(A) (9th ed. Rev. 07.2015, Nov. 2015) (noting that
the Board’s decision becomes the “law of the case” in that it is controlling
on the application under appeal and later related applications). Therefore,
this appeal turns solely on whether the Examiner erred in finding that
Kilpatrick also anticipates the last clause of claim 1.
In our earlier decision, we found, among other things, that Kilpatrick
(1) clones a configuration item (Cl) in steps 708 and 712 of Kilpatrick’s
Figure 7 as part of the configuration change definition step 108 of Figure
1 A, and (2) applies a proposed configuration change to the clone by
populating additional information and completing the cloned Cl in steps 714
and 716. Bd. Dec. 4. We also found that Kilpatrick evaluates this modified
clone before deployment by (1) validating all Cl changes via error checking
and as a batch in steps 110 and 112 of Figure 1A, and (2) determining the
impact of these changes at step 118 before they are implemented at step 126
in Figure IB. Bd. Dec. 5 (citing Kilpatrick || 28—29, 32).
Notably, Kilpatrick also applies the proposed configuration change to
the CMDB based on this evaluation. On page 5 of the Answer, the
Examiner cites Kilpatrick’s paragraph 54, which discusses defining changes
to Cis, which can be stored in configuration and change databases—the
former of which is a CMDB (Kilpatrick 120). The Examiner also cites
Kilpatrick’s paragraph 70, which discusses, among other things,
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Application 11/534,824
(1) presenting CIs to a user for registration in the configuration database;
(2) applying changes to CIs; (3) implementing those changes in the database;
and (4) updating pending state records in the database in Figure 11 A.
Ans. 5—6.
These findings are consistent with the process detailed in Kilpatrick’s
Figures 1A and IB, which, as noted in our earlier decision, defines
configuration changes in terms of proposed changes to CIs in a
configuration database, namely a CMDB. See Bd. Dec. 3^4 (citing
Kilpatrick || 27—28). Notably, after such a change is implemented and
deemed successful in step 128 of Figure IB, it is registered in the
configuration database (i.e., CMDB) in step 132. Kilpatrick 133.
Therefore, the proposed configuration change that was (1) applied to the
clone by populating additional information and completing the cloned Cl in
steps 714 and 716 of Figure 7, and (2) evaluated in steps 110, 112, and 118
in Figure 1A as noted above and in our earlier decision, is also applied to the
CMDB based on the clone’s evaluation, at least with respect to its
registration in that database in step 132. Because the Examiner did not rely
on the registration step 132 in connection with the rejection, we designate
our affirmance as a new ground of rejection in light of our emphasis on these
additional facts.
Appellant’s arguments regarding Kilpatrick’s alleged shortcomings
regarding the change database and change plan distribution (App. Br. 4—8;
Reply Br. 2—13) are not germane to Kilpatrick’s above-noted functionality
that applies proposed configuration changes to cloned CIs and, after
evaluating those changes, applies those changes to a CMDB via registration.
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Application 11/534,824
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2, 4—13, 15, and 16 not argued separately with
particularity.
THE OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 3 and
14. Final Act. 12—13. Appellant reiterates similar arguments made in
connection with the independent claims (App. Br. 9), which we find
unpersuasive for the reasons previously discussed.
CONCLUSION
The Examiner did not err in rejecting (1) claims 1,2, 4—13, 15, and 16
under § 102, and (2) claims 3 and 14 under § 103.
We designate our affirmance as a new ground of rejection under
§ 41.50(b).
DECISION
The Examiner’s decision rejecting claims 1—16 is affirmed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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:
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Application 11/534,824
(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 prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under §41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, § 41.50(b)
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