INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Jun 23, 2021

2020002107 (P.T.A.B. Jun. 23, 2021)

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.
13/759,117 02/05/2013 Brian P. Byrne CAM920120094US1_8150-0323 9127
112978 7590 06/23/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
HOUSTON, CLIFTON L
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
06/23/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN P. BYRNE, IVAN M. MILMAN,
MARTIN A. OBERHOFER, and SUSHAIN PANDIT
Appeal 2020-002107
Application 13/759,117
Technology Center 2400
Before SHARON FENICK, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 33–52, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies IBM Corp. as the real party in
interest. Appeal Br. 1.
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Application 13/759,117

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TECHNOLOGY
The application relates to managing blueprints specifying the
architecture of an information technology (IT) system. Spec. ¶ 1.
ILLUSTRATIVE CLAIM
Claim 33 is illustrative and reproduced below with the limitations at
issue emphasized:
33. A computer hardware system including a blueprint lifecycle
management tool, comprising:
a hardware processor configured to initiate the following
executable operations:
identifying, within a blueprint defining an
information technology system, a plurality of components
of the information technology system that are referenced
by the blueprint;
selecting, for each of the plurality of components,
between a first class of component tools and a second class
of component tools;
determining whether a component tool selected for
a particular component includes a sensor; and
instructing the sensor to register the particular
component, wherein
the component tool manages the particular component for
which the component tool was selected.
RELATED PROCEEDINGS
U.S. Patent Application No. 14/066,999 (“the ’999 application”) is a
continuation of the present application and is currently on appeal to the
PTAB in Appeal No. 2020-002097. That appeal involves substantially
similar claims and arguments. We previously addressed the obviousness of
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Application 13/759,117

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the then-pending claims in these two applications in Appeal Nos. 2017-
011170 and 2017-011130, which were mailed on August 1, 2018.
REFERENCES
The Examiner relies on the following references as prior art:
Name Reference Date
Demant US 2012/0060141 A1 Mar. 8, 2012
Nagami US 2006/0168208 A1 July 27, 2006
Sharir US 8,443,438 B1 May 14, 2013
Wilkerson US 2013/0174261 A1 July 4, 2013
REJECTIONS
The Examiner makes the following rejections under 35 U.S.C. § 103:
Claims References Final Act.
33, 35–38, 41, 43, 45–48, 51 Nagami, Wilkerson 7
34, 44 Nagami, Wilkerson, Demant 11
39, 40, 42, 49, 50, 52 Nagami, Wilkerson, Sharir 12
Claims 33–52 also are rejected for non-statutory double patenting
over claims 25–34 of the co-pending ’999 application. Final Act. 6.
Appellant states it “will make a determination as to the filing of a Terminal
Disclaimer upon indication of allowable subject matter.” Appeal Br. 3 n.1.
“Panels have the flexibility to reach or not reach provisional obviousness-
type double-patenting rejections.” Ex parte Jerg, No. 2011-000044, 2012
WL 1375142, at *3 (BPAI Apr. 13, 2012) (informative); see also Ex parte
Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). We leave it to the
Examiner and Appellant to determine whether a terminal disclaimer would
be appropriate for this application at this time, particularly given our
concurrent decision for the ’999 application in Appeal No. 2021-002097.
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Application 13/759,117

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ISSUE
Did the Examiner err in finding Nagami teaches or suggests
“determining whether a component tool selected for a particular component
includes a sensor,” as recited in claims 33 and 43?
ANALYSIS
Independent claims 33 and 43 recite “determining whether a
component tool selected for a particular component includes a sensor.” All
other pending claims ultimately depend from these two claims.
The Examiner relies on Nagami for this limitation. Ans. 4–8. The
Examiner determines that the combination of Nagami’s information
collection section 12, information registration section 16, and information
storage section 18 teaches or suggests the claimed sensor. Ans. 5 (citing
Nagami ¶ 57). Nagami’s “information collection section 12 is an SNMP
manager.” Id. (citing Nagami ¶¶ 9, 63). The Examiner further finds that
Nagami’s network management server 10 teaches or suggests the claimed
component tool. Final Act. 2.
According to the Examiner, “the feature of ‘determining if the
network management server 10 includes a sensor’, i.e., determining whether
the management server includes a software for collecting data, is inherent
and/or implicit in . . . the process of software installation.” Ans. 6. Thus,
“when the SNMP manager . . . is installed in the network management
server 10, this process must first check the presence or absence of existing
identical software.” Id.
However, we agree with Appellant that “[w]hat the Examiner has
described is an optional process – not a necessary process.” Reply Br. 4. “A
party must . . . meet a high standard in order to rely on inherency to establish
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the existence of a claim limitation in the prior art in an obviousness
analysis—the limitation at issue necessarily must be present, or the natural
result of the combination of elements explicitly disclosed by the prior art.”
Par Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir.
2014). That standard for inherency is not met here. Checking for existing
versions of the software prior to installation may be an obvious best practice,
but it is not necessarily present in Nagami.
The Examiner also cites a list of nine different references that “are
provided to show that the feature of determining whether a . . . server
already includes a software when the software needs to be installed is well
known and obvious in the art of software installations.” Ans. 7. Regardless
of whether this is part of the Examiner’s inherency approach or a separate
determination of obviousness or Official Notice, we agree with Appellant
that “‘determining whether a machine or server already includes a software
when the software needs to be installed’ does not map to the limitations at
issue, which are ‘determining whether a component tool selected for a
particular component includes a sensor.’” Reply Br. 5. For example, the
limitation requires a component tool “selected for a particular component,”
where “selected” is in the past tense. Yet, as Appellant argues, “there is no
mention of the network management server 10 of Nagami being selected for
a particular component.” Appeal Br. 11. Thus, even if it were obvious
when installing an SNMP manager on the network management server to
first check whether the SNMP manager was already installed, the Examiner
has not adequately explained whether or why Nagami’s network
management server would have already been “selected for a particular
component” at the time when Nagami’s SNMP manager is installed.
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Accordingly, we do not sustain the Examiner’s rejection of
independent claims 33 and 43 and their dependent claims 34–42 and 44–52.
OUTCOME
The following table summarizes the outcome of each § 103 rejection:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
33, 35–38, 41,
43, 45–48, 51
103(a) Nagami, Wilkerson 33, 35–38, 41,
43, 45–48, 51
34, 44 103(a) Nagami, Wilkerson,
Demant
34, 44
39, 40, 42, 49,
50, 52
103(a) Nagami, Wilkerson,
Sharir
39, 40, 42, 49,
50, 52
Overall
Outcome
33–52
REVERSED