Ex Parte Wong et al

Patent Trial and Appeal BoardJan 11, 2013

10887738 (P.T.A.B. Jan. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WAI WONG and ALAN YOUNG 1 ____________________ Appeal 2011-004557 Application 10/887,738 Technology Center 3600 ____________________ Before, ANTON W. FETTING, KEVIN F. TURNER, and MEREDITH C. PETRAVICK, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE 2 Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Computer Associates Think, Inc., is the real party in interest. 2 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,” filed February 2, 2010), Supplemental Appeal Brief (“Supp. Br.,” filed March 24, 2010), and Reply Br. (“Reply Br.,” filed October 5, 2010) and the Examiner’s Answer (“Ans.,” mailed August 5, 2010). Appeal 2011-004557 Application 10/887,738 2 THE INVENTION Appellants’ disclosure relates to a system and method for managing information technology through auto discovery analysis by forming an information model based on components and business processes in an IT infrastructure discovered during monitoring. (Abs.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for managing information technology (IT) through auto discovery analysis to achieve business relevance, comprising: providing one or more IT services operable to monitor an IT infrastructure and thereby discover managed components of the infrastructure and discover business processes which are supported by the infrastructure; and forming, using a computer system, an object-based information model based on the discovered components and the discovered business processes, the information model modeling one or more mappings of business processes to associated managed components that support the business processes such that a business impact can be determined based on the monitoring. (App. Br., Claims Appendix A.1.) PRIOR ART REJECTION The prior art reference relied upon by the Examiner in rejecting the claims is: Bowman-Amuah US 6,370,573 B1 Apr. 9, 2002 Appellants respond to the following rejections: Appeal 2011-004557 Application 10/887,738 3 Claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-38, and 42 rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 3 Claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66 rejected under 35 U.S.C. § 102(e) as being anticipated by Bowman. ISSUE Does Bowman-Amuah disclose “forming . . . an object-based information model,” as generally recited by independent claims 1, 39, 42, 43, 46, and 47, such that it anticipates the subject matter of claims 1, 3-6, 8- 9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66 under 35 U.S.C. § 102(e)? FINDINGS OF FACT 1. Bowman-Amuah is directed to a system for managing an environment in a development architecture framework based on service level agreements and/or operations level agreements which utilizes performance modeling tools to determine if system resources are sufficient to meet a desired performance level. (Abs; col. 2, ll. 28-41.) 2. Bowman-Amuah describes that its system provides data modeling tools which provide a graphical depiction of the logical data requirements 3 The Examiner’s Answer is silent as to a rejection of claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-38, and 42 being directed to non-statutory subject matter under 35 U.S.C. § 101. It appears Examiner dropped this rejection between the Final Rejection and Answer. Accordingly, we treat this rejection of these claims as withdrawn, and so we decline to address Appellants’ arguments regarding this rejection. Appeal 2011-004557 Application 10/887,738 4 for the system to support diagramming entities, relationships, and attributes of the business being modeled. (Col. 72, ll. 17-22.) 3. Bowman-Amuah states that “[w]hen a component or object-based approach is used, data modeling is not performed. Rather, the object model contains both the data and the behavior associated with an object. In most systems relational databases are used and the object model must be mapped to the data model.” (Col. 72, ll. 34-41.) ANALYSIS Claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66 rejected under 35 U.S.C. § 102(e) as being anticipated by Bowman. Independent claims 1, 39, 42, 43, 46, and 47 Appellants argue inter alia that Bowman-Amuah fails to disclose the step of “forming . . . an object-based information model based on the discovered components and the discovered business processes, the information model modeling one or more mappings of business processes to associated managed components that support the business processes such that a business impact can be determined based on the monitoring,” as presently recited by independent claim 1. (App. Br. 29; Reply Br. 4.) Independent claims 39, 42, 43, 46, and 47 recite a substantially similar limitation. (App. Br. 33.) To address this limitation, the Examiner asserts that Bowman- Amuah’s “system has data model or diagram for high-level descriptions of conceptual data models, and it provides a graphical notation for representing such data models in the form of entity-relationship diagrams” [sic]. (Ans. 4, Appeal 2011-004557 Application 10/887,738 5 7.) Appellants disagree with the Examiner and assert that the data model referred to in Bowman-Amuah is not the same as the “object-based information model” recited by independent claims 1, 39, 42, 43, 46, and 47. (App. Br. 30; Reply Br. 5.) We agree with Appellants. While we agree with the Examiner that Bowman-Amuah describes mapping an object to a data model (FF 2), we cannot agree with the Examiner that Bowman-Amuah’s system discloses forming an object-based information model, as required by independent claims 1, 39, 42, 43, 46, and 47. To the contrary, as Appellants point out, Bowman-Amuah clearly discloses that “[w]hen a component or object-based approach is used, data modeling is not performed.” (FF 3.) Thus, we find the Examiner’s reliance on Bowman-Amuah impermissibly reads the requirement for an “object-based information model” out of the claims, where each of the independent claims explicitly recites the formation of an “object-based information model,” and as such, cannot anticipate the subject matter of independent claims 1, 39, 42, 43, 46, and 47. See Texas Instr., Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (Claim language cannot be mere surplusage. An express limitation cannot be read out of the claim). The Examiner appears to have selected a reference that affirmatively negates the very limitation the Examiner makes findings toward. We express no opinion regarding patentability in light of any similar reference not before us that did not include such an express disclaimer. Accordingly, we cannot sustain the Examiner’s rejection of independent claims 1, 39, 42, 43, 46, and 47, and claims 3-6, 8, 9, 11, 17-18, Appeal 2011-004557 Application 10/887,738 6 21, 25-26, 30, 33-38, and 48-66, from which they depend, under 35 U.S.C. § 102(e) as anticipated by Bowman. CONCLUSION We conclude that Bowman fails to disclose “forming . . . an object- based information model,” as generally recited by independent claims 1, 39, 42, 43, 46, and 47, and as such, fails to anticipate the subject matter of claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66 under 35 U.S.C. § 102(e). DECISION We reverse the Examiner’s rejection of claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66. REVERSED alw