Ex Parte Novak et al

Patent Trial and Appeal Board

Apr 27, 2016

12876651 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/876,651 09/07/2010 Miroslav Novak
56436 7590 04/29/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82263194 1752
EXAMINER
THATCHER, CLINT A
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
04/29/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIROSLA V NOV AK, PETR P ANUSKA, ALBERT REGNER,
and LUKAS BARTON
Appeal2014-005863
Application 12/87 6,651
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-005863
Application 12/87 6,651
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-20. We reverse.
The Examiner has rejected:
(i) claims 1-20 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard
as the invention (Final Act. 1--4; Ans. 2--4 and 11-13);
(ii) claims 1--4, 7-13, 15-18, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kelly, Michael,
Test Planning Using IBM Rational Quality Manager, found
at
http://www.ibm.com/developerworks/rational/library/09/020
3 kelly/index.html, pp. 1-11 (Feb. 3, 2009; last accessed
Dec. 17, 2012) (hereinafter, "Kelly") and Cheng (US
2004/0143819 Al; published July 22, 2004) (Final Act. 4--9;
Ans. 4--9 and 13-17); and
(iii) claims 5, 6, 14, and 19 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kelly, Cheng, and
Allor (US 2005/0193268 Al; published Sept. 1, 2005)
(Final Act. 9-10; Ans. 9-10 and 17).
We have reviewed Appellants' arguments in the Briefs (App. Br. 5-18
and Reply Br. 1-9), the Examiner's rejection (Final Act. 1-10; Ans. 2-10),
and the Examiner's response (Ans. 11-17) to Appellants' arguments.
We concur with Appellants' conclusion that the Examiner erred in
determining claims 1-20 to be indefinite for failing to particularly point out
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Appeal2014-005863
Application 12/87 6,651
and distinctly claim the subject matter which Appellants regard as the
invention. We agree with Appellants' arguments (App. Br. 5-8; Reply Br.
1--4) that the disputed terms ("change to the components" and "requirements
associated with the changes" recited in claim 1, and similarly recited in
remaining independent claims 10, and 15) have sufficient meaning so as to
be two distinct elements, and that one of ordinary skill in the art would
understand what these terms mean. These terms are therefore definite, and
we do not sustain the Examiner's indefiniteness rejection of claims 1-20.
We also concur with Appellants' conclusions that the Examiner erred
in finding that the combinations of the references teach or suggest the
limitations recited in independent claim 1, and as similarly recited in
dependent claims 2-20, based on the Examiner's (i) interpretation of claims
1, 10, and 15 which effectively reads out the claim terms "changes to
components" (claim 1 ), "changes to the components" (claim 10), and
"changes implemented to the components" (claim 15) and only gives weight
to the remaining claim term "the requirements associated with the changes"
found in each of claims 1, 10, and 15; and (ii) improper reliance upon Figure
5, or any other portion of Kelly, as disclosing a test planning method and/or
tool that presents a user with "changes to components" as recited in each of
claims 1, 10, and 15 (App. Br. 10-13; Reply Br. 4--8).
Accordingly, we do not sustain the Examiner's obviousness rejection
of independent claims 1, 10, and 15, as well as dependent claims 2--4, 7-9,
11-14, 16-18, and 20 depending respectively therefrom. For similar
reasons, we also do not sustain the Examiner's obviousness rejection of
claims 5, 6, 14, and 19 which relies on the same base combination of Kelly
and Cheng discussed supra with respect claims 1, 10, and 15.
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Appeal2014-005863
Application 12/87 6,651
CONCLUSION
Appellants have persuaded us of error in the Examiner's decision to
reject claims 1-20.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED
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