Venkata Ramana. Karpuram

Patent Trials and Appeals BoardJul 23, 2020

2018008653 (P.T.A.B. Jul. 23, 2020)

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. 12/015,348 01/16/2008 Venkata Ramana Karpuram OR07-25401 2196 51067 7590 07/23/2020 PVF -- ORACLE INTERNATIONAL CORPORATION c/o PARK, VAUGHAN, FLEMING & DOWLER LLP 2820 FIFTH STREET DAVIS, CA 95618-7759 EXAMINER SPRINGER, JAMES E ART UNIT PAPER NUMBER 2454 NOTIFICATION DATE DELIVERY MODE 07/23/2020 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): syadmin@parklegal.com uspto-incoming@parklegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VENKATA RAMANA KARPURAM ____________ Appeal 2018-008653 Application 12/015,348 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, LARRY J. HUME, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–4, 6–13, and 15–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Oracle International Corporation as the real party in interest. Appeal Br. 1. Appeal 2018-008653 Application 12/015,348 2 STATEMENT OF THE CASE The invention relates to monitoring distributed enterprise applications. Abstract; Spec. ¶¶ 1–3, 24, 25, 71; Figs. 1, 4. Claim 1, reproduced below, is exemplary of the subject matter on appeal (emphases added): 1. A method for providing automatic discovery and monitoring of enterprise components, the method comprising: discovering a new enterprise component in an enterprise environment by scanning the enterprise environment, wherein the new enterprise component provides a functionality to an enterprise application that runs in the enterprise environment; scanning the enterprise environment for presence of an item of metadata associated with the new enterprise component; analyzing the metadata to determine whether a monitoring system is to manage the new enterprise component, wherein the monitoring system is used to manage one or more enterprise components in the enterprise environment; if the monitoring system is to manage the new enterprise component, performing a monitoring instruction for the new enterprise component specified in the metadata; and in response to receiving a temporary instruction for the new enterprise component, precluding the monitoring system from performing the monitoring instruction for the new enterprise component for a period of time specified in the temporary instruction. Appeal Br. 32 (Claims App. 1). THE REJECTION Claims 1–4, 6–13, and 15–20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Doshi, Keefer, and Adhikari. Final Act. 2–12. Appeal 2018-008653 Application 12/015,348 3 REFERENCES Prior art relied upon by the Examiner: Name Reference Date Doshi et al. US 7,506,044 B2 Mar. 17, 2009 Keefer et al. US 2005/0015485 Al Jan. 20, 2005 Adhikari et al. US 2008/0144613 Al June 19, 2008 ANALYSIS The Examiner finds that the combination of Doshi, Keefer, and Adhikari teaches the limitations of claim 1. Final Act. 2. The Examiner finds Doshi teaches the disputed limitations set forth below. Id. at 3 (citing Doshi, Fig. 4, elements S410–S402; 6:7–21): (1) discovering a new enterprise component in an enterprise environment by scanning the enterprise environment, wherein the new enterprise component provides a functionality to an enterprise application that runs in the enterprise environment; (2) scanning the enterprise environment for presence of an item of metadata associated with the new enterprise component. (Emphasis and designations (1) and (2) added; also referred to as “disputed limitations (1) and (2)”). Appellant argues, inter alia, that the Examiner errs in finding Doshi teaches the disputed limitations (1) and (2). Appeal Br. 8–11; Reply Br. 8–10. Regarding disputed limitation (1), Appellant refers to Doshi agent 212 and argues Doshi discovers managed objects (MO) and, because agent 212 is already known, Doshi does not discover agent 212 of Doshi. Appeal Br. 8 (citing Doshi, 3:53–55, 5:41–49; Step S402). Appellant additionally argues the Examiner has not shown that Doshi teaches discovering “by scanning the enterprise environment.” Id. 9. Appeal 2018-008653 Application 12/015,348 4 According to Appellant: Discovery service 311 of Doshi does not scan for an agent for discovery. In particular, Doshi discloses in col. 6, lines 7-9 that “[the] sequence of execution of operations on a specified target during the discovery process will be described with respect to FIGS. 3 and 4. ” Therefore, the target for the discovery process of Doshi has already been specified. Applicant, thus, respectfully submits that discovery service 311 of Doshi does not scan an enterprise environment. Instead, discovery service 311 of Doshi operates on an already specified target. Id. at 9. Regarding disputed limitation (2), Appellant argues Doshi does not teach “scanning the enterprise environment for presence of an item of metadata associated with the new enterprise component” because Doshi assumes the metadata is present and therefore does not scan for the presence of the metadata. Id. at 10 (citing Doshi, Fig. 3, discovery service 311; Fig. 4, Step S401). According to Appellant, “the Instant Application teaches ‘scanning the enterprise environment for presence of an item of metadata associated with the new enterprise component.’” and “[u]nlike Doshi, which simply retrieves the metadata, the method of claim 1 scans the enterprise environment to check for the presence of an item of metadata.” Id. In the Answer, the Examiner refers to a prior Board Decision2 (also referred to as “Decision” or “Dec.”) and asserts the Decision affirmed the rejection based on Doshi’s “teaching of these limitations” and is res judicata as to the current appeal. Ans. 3–4. The Examiner additionally finds, even if res judicata is not applicable, Doshi teaches the disputed limitations. Id. The Examiner points out Appellant incorrectly interprets the current rejection by interpreting “agent 212” of Doshi as the “new enterprise 2 Appeal 2015-005578, Application 12/015,348, November 1, 2016. Appeal 2018-008653 Application 12/015,348 5 component of claim 1,” as it is the managed object (MO) of Doshi that the Examiner interprets as meeting the claimed “new enterprise component.” Id. at 4 (citing previous Answer, 13, dated February 27, 2015). The Examiner quotes from the previous Answer: “. . . Doshi states at col. 4 lines 24-26 that managed objects may be ‘devices, systems, and/or any hardware or software that require some form of monitoring and management.’ Managed objects may be considered enterprise components as they are part of an enterprise.” Id. The Examiner additionally finds: Examiner maintains that, interpreted properly, Doshi meets the disputed limitations. In S401, S402 of FIG. 4 and col. 6 lines 7- 21 of Doshi it is clear that a discovery service scans an enterprise environment for new enterprise components by querying a metadata cache service to retrieve metadata for new managed objects. The new enterprise components provide a functionality to an enterprise application because they all at least provide a function of reporting status to the enterprise application J2EE manager as indicated in col. 4 lines 15-23. Appellant asserts that Doshi does not perform the claimed “scanning” because “. . . discovery service 311 simply obtains the metadata, which does not involve checking for the presence of metadata.” Brief, p. 10. Examiner respectfully disagrees and maintains that the discovery service of Doshi does in fact discover managed objects that were previously unknown. This is clear in S402 of FIG. 4 which states “Discovery Service finds configured MO and GMO instances on the Agent Managed Object Query Service.” It is clear that the discovery process of Doshi discovers managed objects. Accordingly, Examiner maintains that Doshi is sufficient to teach the portions of the claim against which it has been cited. Ans. 4–5. In the Reply Brief, Appellant argues the Examiner errs in referring to the prior Decision because that claim has different scope from claim 1 in the Appeal 2018-008653 Application 12/015,348 6 present Appeal. Reply 8–10. Appellant argues claim 1 includes two distinct sets of scanning operations (limitations (1) and (2)), not recited in claim 1 of the prior Decision. Id. at 8. In particular, the prior Decision claim 1 recites: “discovering a new enterprise component in an enterprise environment by scanning the enterprise environment for an item of metadata associated with the new enterprise component, wherein the new enterprise component provides a functionality to an enterprise application that runs in the enterprise environment.” Id. at 8; see Dec., 2). Appellant argues, in the prior Decision claim limitation, the “new component” was discovered by “scanning the enterprise environment for an item of metadata.” Id. According to Appellant: In contrast, the instant application is directed to “discovering a new enterprise component” and then “scanning the enterprise environment for presence of an item of metadata associated with the [emphasis added] new enterprise environment.” This clearly decouples the discovery of the new enterprise component from scanning for an item of metadata. In other words, the currently pending claim limitations of the instant application are directed to two distinct sets of scanning operations: (i) scanning for a new enterprise component; and (ii) scanning for an item of metadata associated with that enterprise component. Hence, based on the currently pending claim limitations of the instant application, the discovery of the new enterprise component does not cover the additional scanning operation for an item of metadata. Reply Br. 8–9. Appellant argues that the Examiner does not distinguish between scanning for an enterprise component and scanning for an item of metadata associated with that enterprise component. Id. at 9–10. According to Appellant: Appeal 2018-008653 Application 12/015,348 7 Appellant respectfully points out that, on page 10 of the Appeal Brief, Appellant has referred to the fact that Doshi does not teach the second scanning operation for an item of metadata (see id.), which is a separate scanning operation than “discovering a new enterprise component” “by scanning the enterprise environment. ” However, in the Examiner’s Answer, Examiner has repeated the argument regarding the first scanning operation without pointing out which section of Doshi allegedly discloses a second scanning operation directed to finding an item of metadata for an enterprise component already discovered by a first scanning operation. Hence, Appellant respectfully submits that Examiner has failed to show, in both the Office Action and the Examiner’s Answer, that Doshi discloses “scanning the enterprise environment for presence of an item of metadata associated with the new enterprise environment.” Id. We are persuaded by Appellant’s arguments. Unlike the claim in the prior Decision, claim 1 recites two distinct scanning steps (disputed limitations (1) and (2)). On the record before us, the Examiner’s findings are insufficient to support a finding that Doshi teaches disputed limitations (1) and (2). See Doshi, Figs. 3, 4; 4:15–23, 6:7–21. Assuming arguendo that Doshi teaches disputed limitation (1), the Examiner presents insufficient evidence to find that Doshi teaches disputed limitation (2). The Examiner does not rely on the teachings of Keefer or Adhikari regarding the disputed limitations. In view of the above, we do not sustain the rejection of claim 1, independent claims 10 and 19 which include the disputed limitation, and dependent claims 2–4, 6–9, 11–13, 15–18, and 20. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). Appeal 2018-008653 Application 12/015,348 8 Because our decision with regard to the disputed limitations are dispositive of the rejections made, we do not address additional arguments raised by Appellant. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–4, 6–13, 15–20 103(a) Doshi, Keefer, Adhikari 1–4, 6–13, 15–20 REVERSED