INTERNATIONAL BUSINESS MACHINES CORPORATIONDownload PDFPatent Trials and Appeals BoardJun 23, 20212020002107 (P.T.A.B. Jun. 23, 2021) Copy Citation 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. Appeal 2020-002107 Application 13/759,117 2 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 Appeal 2020-002107 Application 13/759,117 3 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. Appeal 2020-002107 Application 13/759,117 4 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 Appeal 2020-002107 Application 13/759,117 5 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. Appeal 2020-002107 Application 13/759,117 6 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 Copy with citationCopy as parenthetical citation