Ex Parte Akamatsu et al

Patent Trial and Appeal Board

Apr 11, 2014

12033938 (P.T.A.B. Apr. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TAKESHI AKAMATSU, TAKASHI TERAO, and
TSUNEFUMI WATANABE
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Appeal 2011-010856
Application 12/033,938
Technology Center 2400
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Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010856
Application 12/033,938

2
STATEMENT OF THE CASE
Takeshi Akamatsu et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An information processing system for managing, in a
distributed processing system in which a plurality of computers
are connected through a network connection device,
configuration information of the distributed processing system,
the information processing system comprising:
storage means for computer-readably storing physical
location information of the network connection device;
obtaining means for obtaining information about network
addresses of the plurality of computers connected to the
network connection device;
obtaining means for obtaining information about
software programs running on the plurality of computers
connected to the network connection device; and
recording means for recording the physical location
information of the network connection device such that the
physical location information is associated with the information
about the network addresses of the plurality of computers and
with the information about the software programs running on
the plurality of computers.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Ofir
Baekelmans
US 2005/0005190 A1
US 2006/0277299 A1
Jan. 6, 2005
Dec. 7, 2006
Appeal 2011-010856
Application 12/033,938

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Rejections
Claims 1, 4-8, 11-15, and 18-20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Baekelmans.
Claims 2, 3, 9, 10, 16, and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Baekelmans and Ofir.

OPINION
Claim 1 requires, inter alia, “obtaining means for obtaining
information about software programs running on the plurality of computers
connected to the network connection device.” Clms. App’x. 16 (emphasis
added). Claims 7 and 14 require “obtaining information about software
programs running on the plurality of computers connected to the network
connection device.” Id. at 17, 19 (emphasis added).
Appellants’ Specification describes this feature in paragraphs [0059]
and [0060]. Spec. 17. Paragraph [0059] states that “software programs
installed and running on the computers 208 and 210 are detected by the
functions of the TADDM and stored as CIs 708 and 710 in the CMDB 170.”
Id. Paragraph [0060] states that “[t]he relationship between a CI
representing a computer and a CI for a software program installed on the
computer is implemented as an instance of a Java class called ‘InstalledOn’.
Likewise, the relationship between a CI representing a computer and a CI for
a software program running on a computer is implemented as an instance of
a Java class called ‘RunsOn’.” Id. Thus, Appellants’ Specification clearly
and explicitly distinguishes between information about software installed on
the computers and information about software running on the computers.
Appeal 2011-010856
Application 12/033,938

4
The Examiner finds that Baekelmans discloses obtaining information
about software running on the plurality of computers in paragraphs [0015],
[0049], and [0056]. Ans. 4. Appellants contest this finding. App. Br. 11.
Appellants assert that paragraphs [0015] and [0056] of Baekelmans “only
describe software versions and enabled features installed on a networked
computer, not which software is actually running on a particular networked
computer” and that paragraph [0049] “is not related to software
configuration, much less software running on networked computers.” Id.
Appellants’ assertions with respect to Baekelmans are correct.
In response, the Examiner contends that retrieving information such as
“configuration information, software updates, software version, software
features which are enabled etc.” should satisfy the claim limitation of
obtaining information about software programs running on the computers.
Ans. 9. Given the explicit distinction set forth in Appellants’ Specification
between information about software programs installed on a computer and
software programs running on a computer, it is not immediately apparent,
and the Examiner provides no explanation, why Baekelmans’ disclosure of
obtaining information about software installed on the computers would
satisfy the claim limitation of obtaining information about software running
on the computers. Consequently, the Examiner fails to establish a sound
basis for the finding that Baekelmans anticipates the subject matter of
independent claims 1, 7, and 14.
For the above reasons, we do not sustain the rejection of claims 1, 7,
and 14 and of their dependent claims 4-6, 8, 11-13, 15, and 18-20 as
anticipated by Baekelmans.
Appeal 2011-010856
Application 12/033,938

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We also do not sustain the rejection of claims 2, 3, 9, 10, 16, and 17 as
unpatentable over Baekelmans and Ofir, because this rejection suffers from
the same deficiency as the rejection of claims 1, 7, and 14.

DECISION
The Examiner’s decision rejecting claims 1-20 is reversed.

REVERSED

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