Ex Parte Wilcock et al

Patent Trial and Appeal Board

Nov 9, 2016

13258970 (P.T.A.B. Nov. 9, 2016)

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.
13/258,970 09/22/2011 Lawrence Wilcock 82853005 2237
56436 7590 11/14/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
CHONG CRUZ, NADJA N
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/14/2016 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 LAWRENCE WILCOCK, NIGEL EDWARDS,
JOHANNES KIRSHNICK, and SEBASTIAN HAGEN
Appeal 2014-0081141
Application 13/258,9702
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
September 6, 2013) and Reply Brief (“Reply Br.,” filed July 18, 2014), and
the Examiner’s Answer (“Ans.,” mailed May 22, 2014) and Final Office
Action (“Final Act.,” mailed May 10, 2013).
2 Appellants identify Hewlett-Packard Development Company, LP as the
real party in interest. App. Br. 2.
Appeal 2014-008114
Application 13/258,970
CLAIMED INVENTION
Appellants’ claimed invention relates to “[sjystems and methods for
information technology system change planning” (Abstract).
Claims 1 and 9, reproduced below, are the independent claims on
appeal:
1. A method for information technology system
change management, comprising, with a network server
performing each of the following:
receiving a change request on the network server;
identifying domain objects and relationships among
domain objects to form a model;
selecting tasks and state transitions from a knowledge base
based on the change request and the model, including
dependencies; and
creating a workflow for implementing the change request
using a processor, wherein the workflow is based on the model,
and wherein the workflow comprises a combination of selected
refmable tasks, atomic tasks, and state transitions used to
implement the change request;
wherein the tasks and the state transitions are rules within
the knowledge base, and wherein creating a workflow further
comprises selecting the rules such that the refmable tasks, atomic
tasks, and state transitions call other refmable tasks, atomic tasks,
and state transitions from the knowledge base to implement the
change request.
9. An information technology system change planning
system, comprising:
a plurality of networked devices in communication with a
management server, the plurality of networked devices
comprising a plurality of domain objects;
an change planning module on the management server
configured to identify the domain objects to create a model, and
further configured to create a workflow based on the model to
implement a change request;
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Application 13/258,970
a task knowledge base accessible by the change planning
module, the task knowledge base comprising a plurality of rules
for completing refmable and atomic tasks executable for change
request implementation; and
a behavior knowledge base accessible by the change
planning module, the behavior knowledge base comprising a
plurality of rules for state transitions of the domain objects
executable for change request implementation, wherein:
task and state transition rules within respective
knowledge bases include rules for managing domain
object dependencies; and
the task rules and the state transition rules, as well
as dependency rules, can be called from other task rules,
state rules, and dependency rules from either of the task
knowledge base and the behavior knowledge base, the
dependency rules comprising preconditions for the task
rules and the state transition rules.
REJECTIONS3
Claims 17 and 19 are rejected under 35U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claim 19 is rejected under 35U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellants regard as the invention.
Claims 1—4, 7, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kephart (US 2007/0100892 Al, pub. May 3, 2007) and
Gilboa (US 2004/0148586 Al, pub. July 29, 2004).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kephart, Gilboa, and Official Notice.
3 The rejection of claims 1—16 and 18 under 35 U.S.C. § 112, first
paragraph, has been withdrawn. Ans. 2.
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Claims 6, 8—14, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kephart, Gilboa, and Chandel (US 2006/0070068 Al,
pub. Mar. 30, 2006).
Claims 15 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kephart, Gilboa, and Barfield (US 2008/0196024 Al
pub. Aug. 14, 2008).
ANALYSIS
Written Description
Dependent Claim 17
Claim 17 depends from claim 1, and recites that the method further
comprises “considering applicability conditions for said tasks and state
transitions to identity a subset of said tasks and state transitions to be used in
creating said workflow to satisfy said change request.”
In rejecting claim 17 under 35 U.S.C. § 112, first paragraph, the
Examiner finds that there is no support in the Specification for “said tasks
and state transitions to identify a subset of said tasks and state transitions,”
as recited in claim 17 (Final Act. 2—3). Appellants argue that the rejection is
improper and point to paragraph 22 (i.e., page 6, lines 13—16) of the
Specification as providing the requisite written description support (App.
Br. 12—13). We agree with Appellants.
As Appellants observe, “[t]he only discrepancy between claim 17 and
[Appellants’] specification appears to be that the claim refers to ‘task and
state transitions, ’ whereas the specification refers to ‘task rules and state
transition rules’” {id. at 12). We agree with Appellants that a person of
ordinary skill in the art would understand that, in this context, tasks and state
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transitions are synonymous with task rules and state transition rules (id.
at 13).
Therefore, we do not sustain the Examiner’s rejection of claim 17
under 35U.S.C. § 112, first paragraph.
Dependent Claim 19
Claim 19 depends from claim 9, and recites that “the task knowledge
base and the behavior knowledge base comprise applicability conditions for
said rules for completing refmable and atomic tasks and said rules for state
transitions of the domain objects.”
The Examiner maintains that there is no support in the Specification
for claim 19 (Final Act. 3). However, we agree with Appellants that the
requisite written description support is provided at page 6, lines 13—14 and
page 13, lines 17—20 of the Specification.
Therefore, we do not sustain the Examiner’s rejection of claim 19
under 35U.S.C. § 112, first paragraph.
Indefiniteness
Dependent Claim 19
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 19 under 35U.S.C. § 112, second paragraph (App. Br. 14).
The Examiner asserts that it is “not clear to which rules [the claim] is
referring to, task rules, state transition rules or dependency rules” (Final
Act. 3). However, we agree with Appellants that a person of ordinary skill
in the art would understand what is claimed when claim 19 is read in light of
the Specification, i.e., that the task knowledge base and the behavior
knowledge base include applicability conditions for task rules and state
transition rules (App. Br. 14).
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Therefore, we do not sustain the Examiner’s rejection of claim 19
under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for
definiteness under 35 U.S.C. § 112, second paragraph, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.”).
Obviousness
Independent Claim 1 and Dependent Claims 4, 7, and 16
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because neither Kephart
nor Gilboa, alone or in combination, discloses or suggests “selecting tasks
and state transitions from a knowledge base based on the change request and
the model,” as recited in claim 1 (App. Br. 14—17).
Appellants first argue that the rejection is improper because although
Kephart, on which the Examiner relies, discloses a state or behavior
knowledge base, Kephart does not disclose or suggest a task knowledge base
{id. at 15—16). That argument is not persuasive at least because, as the
Examiner observes, it is not commensurate with the language of claim 1
(Final Act. 5). Rather than requiring a “task knowledge base,” claim 1
simply recites “selecting tasks and state transitions from a knowledge base”
(emphasis added).
To the extent that Appellants argue that in Kephart, tasks are defined
by IT personnel rather than by reference to a knowledge base (App. Br. 16),
we note that Kephart discloses a configuration database, which includes an
array of configuration items arranged so that at least some of the
configuration items are linked together through upstream relationships,
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downstream relationships, peer relationships and/or views so that a
configuration change related to a particular configuration item imposes an
appropriate change to other configuration items based on the relationships
(Kephart 16). Kephart also discloses, with reference to Figure 1, that when
a change request is received, a demand management process is carried out to
determine if the change is needed and/or appropriate; if so, “change
activities are defined, meaning all the tasks and configuration changes
required to describe the configuration changes are set out and the workflow
is assigned [to] the appropriate parties to perform the tasks” (Kephart 127).
We agree with the Examiner that a person of ordinary skill would
understand from this disclosure that the change activities, i.e., “the tasks and
configuration changes required to describe the configuration changes,” are
selected from the configuration database (Ans. 6—7), which Appellants
concede is a knowledge base (App. Br. 15 (Kephart’s configuration database
is “a state or behavior knowledge base”)).
Appellants further argue that claim 1 is allowable because Kephart
does not disclose or suggest “selecting [both] tasks and state transitions from
a knowledge base” (see, e.g., App. Br. 15). That argument fails at least
because Appellants’ assertion does not rise to the level of a substantive
argument for patentability. Cf. In reLovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (holding that the Board reasonably interpreted 37 C.F.R.
§ 41.37 (c)(l)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”). Appellants
note the Examiner’s reliance on paragraphs 6 and 27 of Kephart as
disclosing the argued limitation. But Appellants do not present any
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persuasive argument or technical reasoning to explain why the Examiner’s
finding is unreasonable or unsupported.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection
of dependent claims 4, 7, and 16, which are not argued separately.
Dependent Claim 2
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 2 under 35 U.S.C. § 103(a) because neither Kephart nor
Gilboa, alone or in combination, discloses or suggests “executing the
workflow on a simulated version of the model,” as recited in claim 2 (App.
Br. 17-18).
The Examiner cites paragraphs 23, 29, and 51 of Kephart as
disclosing the claimed subject matter (Final Act. 5, 11; see also Ans. 8).
However, we agree with Appellants that the cited paragraphs of Kephart
merely disclose the use of a neural network to calculate the risk and/or
impact to the system of implementing a particular change request, e.g., by
analyzing change history for recognizable patterns that correlated to
successful or unsuccessful changes (see Kephart 123), which is not the same
as “executing the workflow on a simulated version of the model,” as recited
in claim 2 (App. Br. 17—18).
Therefore, we do not sustain the Examiner’s rejection of claim 2
under 35 U.S.C. § 103(a).
Dependent Claim 3
Claim 3 depends from claim 2. We do not sustain the Examiner’s
rejection of claim 3 under 35 U.S.C. § 103(a) for the same reasons set forth
above with respect to claim 2. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed.
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Cir. 1992) (“dependent claims are nonobvious if the independent claims
from which they depend are nonobvious”).
Dependent Claim 17
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 17 under 35 U.S.C. § 103(a) because Kephart, on which the
Examiner relies, does not disclose or suggest “considering applicability
conditions for said tasks and state transitions to identify a subset of said
tasks and state transitions to be used in creating said workflow to satisfy said
change request,” as recited in claim 17 (App. Br. 19).
The Examiner cites paragraphs 22, 23, and 30 of Kephart as
disclosing the claimed subject matter (Final Act. 13—14; see also Ans. 9-10).
But we find nothing in the cited paragraphs that discloses or suggests
considering applicability conditions when determining which task and state
transitions should be used in creating a workflow to satisfy a particular
change request, as called for in claim 17.
Therefore, we do not sustain the Examiner’s rejection of claim 17
under 35 U.S.C. § 103(a).
Dependent Claim 5
Claim 5 depends from claim 1, and recites that the method further
comprises “creating a workflow depending on rules for parallel and
sequential refinable tasks, atomic tasks, and state transitions.”
Appellants first argue that the Examiner erred in rejecting claim 5
under 35 U.S.C. § 103(a) because “the cited references appear to suggest
tasks that are provided by IT personnel and not based on ‘rules’ or [sic]
provided by a task knowledge base. (Kephart, paragraph 0027)” (App.
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Br. 20). That argument is not persuasive for the reasons set forth above with
respect to claim 1.
In rejecting claim 5 under 35 U.S.C. § 103(a), the Examiner
acknowledges that neither Gilboa nor Kephart discloses or suggests
“creating a workflow depending on rules for parallel and sequential refmable
tasks, atomic tasks, and state transitions,” as recited in claim 5 (Final
Act. 14). The Examiner takes Official Notice that it was old and well known
in the workflow arts at the time of Appellants’ invention to create a
workflow depending on rules for parallel and sequential tasks, as evidenced
by Levidow (US 2008/0244565 Al) (id.). And the Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
of Appellants’ invention to “modify Kephart in view of Gilboa to include the
teaching of Official Notice because the claimed invention is merely a
combination of old elements, and in the combination each element merely
would have performed the same function as it did separately, and one of
ordinary skill in the art would have recognized that the results of the
combination were predictable” (id).
Appellants assert that “it has not been shown that Levidow (if it were
applied) or any other cited reference teaches ‘a workflow depending on rules
for [all of] parallel and sequential refmable tasks, atomic tasks, and state
transitions.’ (Claim 5) (emphasis added)” (App. Br. 20). But Appellants do
not present any persuasive argument or technical reasoning to explain why
the Examiner’s finding is unreasonable or unsupported.
Therefore, we sustain the Examiner’s rejection of claim 5 under
35 U.S.C. § 103(a).
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Independent Claim 9 and Dependent Claims 10—15 and 19
Appellants argue that the Examiner erred in rejecting independent
claim 9 under 35 U.S.C. § 103(a) because none of the cited references
discloses or suggests, inter alia, that “the task rules[,] ... the state transition
rules,. . . [and] dependency rules, can be called from other task rules, state
rules, and dependency rules from either of the task knowledge base and the
behavior knowledge base,” as recited in claim 9 (App. Br. 21—23).
The Examiner does not indicate, either in the Final Office or in the
Answer, how or where the cited references disclose or suggest the argued
limitation. As such, the Examiner has failed to establish a prima facie case
of obviousness in the first instance.
Based on the present record, we cannot sustain the Examiner’s
rejections under 35 U.S.C. § 103(a) of independent claim 9, and claims 10—
15 and 19, which depend therefrom.
Dependent Claim 18
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 18 under 35 U.S.C. § 103(a) because Barfield, on which the
Examiner relies, does not disclose or suggest “checking for conflicts
between the change request and a second change request received by the
network server,” as recited in claim 18 (App. Br. 25—26).
Barfield is directed to a client information handling system, and
discloses that the system includes a dependency database that stores both
installation dependency information and operational dependency
information for installed software components and candidate software
components (Barfield, Abstract). Barfield further discloses that the system
includes a request handler that, in response to a request to change the
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software configuration of the system, checks the dependency database for
conflicts between a candidate software component and both installation and
operational dependencies that the dependency database stores (id.).
We agree with Appellants that determining whether a single change
request will create conflicts, as disclosed in Barfield, is not the same as, and
does not disclose or suggest, checking for conflicts between two successive
change requests, i.e., checking to determine whether two change requests
conflict with each other, as called for in claim 8 (App. Br. 25—26).
Therefore, we do not sustain the Examiner’s rejection of claim 18
under 35 U.S.C. § 103(a).
Dependent Claim 6
Claim 6 depends from independent claim 1. Appellants do not present
any argument in support of the patentability of claim 6. Therefore, we
summarily sustain the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a).
Dependent Claim 8
Claim 8 depends from independent claim 1. Appellants do not present
any argument in support of the patentability of claim 8 expect to assert that
none of the cited references discloses or suggests “task rules” (App. Br. 22).
We agree with the Examiner that Kephart discloses “task rules” in
paragraph 6 where Kephart discloses its configuration database (see, e.g.,
Ans. 11). Therefore, we sustain the Examiner’s rejection of claim 8 under
35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 17 and 19 under 35 U.S.C. § 112,
first paragraph, is reversed.
The Examiner’s rejection of claim 19 under 35 U.S.C. § 112, second
paragraph, is reversed.
The Examiner’s rejections of claims 1, 4—8, and 16 under 35 U.S.C.
§ 103(a) are affirmed.
The Examiner’s rejections of claims 2, 3, 9-15, and 17—19 under
35 U.S.C. § 103(a) are reversed.
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-IN-PART
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