Ex Parte Olsson et al

Patent Trial and Appeal Board

Sep 27, 2012

10383847 (P.T.A.B. Sep. 27, 2012)

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.
10/383,847 03/06/2003 Stig Arne Olsson AUS920020695US1 8799
87220 7590 09/27/2012
Walder Intellectual Property Law (END)
C/O Walder Intellectual Property Law, P.C.
17330 Preston Road
Suite 100B
Dallas, TX 75252
EXAMINER
BRUCKART, BENJAMIN R
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
09/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STIG ARNE OLSSON, TERENCE DALE SMETANKA,
and GEETHA VIJAYAN
____________

Appeal 2010-002186
Application 10/383,847
Technology Center 2400
____________

Before JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 4, 6-12, and 29 which are all the remaining claims in
the application. Claims 2, 5, and 13-28 were canceled during prosecution.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2010-002816
Application 10/383,847

2
Invention
Appellants’ invention relates generally to information handling, and
more particularly to methods and systems for evaluating the performance of
information handling in a network environment. (Spec. 1:23-25.)1
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A method for doing evaluation in a network
environment, said method comprising:
providing a generic task list comprising a plurality of
tasks that are frequently performed by end users;
applying said generic task list to a first business process
and a second business process;
wherein said applying comprises, for each task within the
plurality of tasks, mapping a transaction step in said first
business process to a similar transaction step in said second
business process and to a current threshold, and applying a
script for each task in the generic task list on a set of probes;
receiving performance measures for said first business
process and said second business process from the set of
probes;
establishing at least one new threshold value for said first
business process, based on said performance measures; and
creating a performance comparison report, based on said
mapping and said performance measures.

1 We refer to Appellants’ Specification (“Spec.”), Reply Brief (“Reply Br.”)
filed September 3, 2009; and Appeal Brief (“App. Br.”) filed Apr. 6, 2009.
We also refer to the Examiner’s Answer (“Ans.”) mailed July 6, 2009.
Appeal 2010-002816
Application 10/383,847

3
Rejections on Appeal
1. The Examiner rejects claims 1, 3, 4, 7-12 and 29 under 35
U.S.C. § 103(a) as being unpatentable over Chen (U.S. Pat. Pub. No.
2003/0191837 A1 published Oct. 9, 2003), Carley (U.S. Pat. Pub. No.
2003/0018450 A1 published Jan. 23, 2003), and Noble (U.S. Patent No.
5,944,782 issued Aug. 31, 1999).
2. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Chen, Carley, Noble, and Rappaport (U.S. Patent No.
6,973,622 B1, issued Dec. 6, 2005).

ISSUE
Based upon our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, we have
determined that the following issue is dispositive in this appeal:
Under § 103, did the Examiner err in finding that the combination of
Chen, Carley, and Noble would have collectively taught or suggested:
wherein said applying comprises, for each task within the
plurality of tasks, mapping a transaction step in said first
business process to a similar transaction step in said second
business process and to a current threshold, and applying a
script for each task in the generic task list on a set of probes;
(emphasis added) within the meaning of independent claim 1 and
commensurate language of independent claims 9 and 29?

ANALYSIS
Claims 1, 3, 4, 7-12, and 29
Appellants contend that they “do not agree that Chen (relied upon by
the Examiner to teach or suggest the present limitation (Ans. 4)) teaches, for
Appeal 2010-002816
Application 10/383,847

4
each generic task in a generic task list, mapping a transaction step in a first
business process to a similar transaction step in a second business process
and to a current threshold.” (App. Br. 12.) More particularly, Appellants
contend, inter alia,
The Examiner's Answer states that the transaction step in Chen is
the step of fetching and rendering content. However, the
Examiner's Answer also equates fetching and rendering content to
the generic task list. If fetching content, for instance, is a generic
task within a plurality of tasks that are frequently performed by
end users, which it is not, then Chen does not teach the further
step of applying "fetching content" to a first business process and
a second business process by mapping, for "fetching content," a
transaction step in the first business process to a similar
transaction step in a second business process and to a current
threshold.
(Reply Br. 6)
Regarding the claimed “generic task list,” the Examiner determined:
The Chen reference teaches a series of tasks that are applied for
collecting and analyzing metrics associated with applications in a
network environment as taught on pages 5 and 6, para. 43-45.
These generic tasks make up a list of tests, for example the "fetch
time, render time, performance record" are used to identify
"specific performance problems manifested at the edge of the
internetwork, where the users of the internetwork reside."
(Ans. 10) (emphasis added).
As noted by Appellants (Reply Br. 6), the Examiner also
contends that “the transaction step (emphasis added) in Chen is the
step of fetching and rendering content.” (Ans. 12.) Therefore, we
agree with Appellants that the Examiner has improperly mapped both
the claimed “generic tasks lists” and “transaction step” to a list of tests
(fetch time, render time) disclosed in Chen. As noted by Appellants,
claim 1 requires a generic task list and for each task in the generic task
Appeal 2010-002816
Application 10/383,847

5
list, a transaction step is mapped between a first and second business
process. (See claim 1.) Independent claims 9 and 29 recite
commensurate limitations.
Based on this record, we conclude that the Examiner erred in rejecting
independent claims 1, 9, and 11 for essentially the same reasons argued by
Appellants discussed supra. Accordingly, we reverse the Examiner’s
rejection of claims 1, 3, 4, 7, 8, 9-12, and 29.

Claim 6
As noted above, the Examiner rejected claim 6 as unpatentable over
Chen, Carley, Noble, and Rappaport. We do not find, nor has the Examiner
established, that Rappaport cures the deficiencies of Chen, Carley, and
Noble discussed supra. Accordingly, we reverse the Examiner’s rejection of
claim 6 for the same reasons discussed supra.

CONCLUSION OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1,
3, 4, 6-12, and 29 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s rejections of claims 1, 3, 4, 6-12, and 29
under 35 U.S.C. § 103(a).

REVERSED

pgc