Ex Parte Bakman et al

Patent Trial and Appeal Board

Feb 28, 2017

11077121 (P.T.A.B. Feb. 28, 2017)

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.
11/077,121 03/11/2005 Alexander Bakman 48650 8715
1609 7590 03/02/2017
Roylance, Abrams, Berdo
& Goodman, L.L. P.
PO Box 66372
Washington, DC 20035-6372
EXAMINER
TAPP, AMELIA L
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
mbicks @ wenderoth .com
DWPatents @ dickinson-wright. com
alfredgoodman @ outlook, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER BAKMAN, DANIEL SABIN, TUDOR HULUBEI
and SHALOM WERTSBERGER
Appeal 2014-006507
Application 11/077,121
Technology Center 2100
Before CARL W. WHITEHEAD JR, J. JOHN LEE and
SHARON FENICK, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants are appealing the Final Rejection of claims 91, 93, 94, 97,
99-102, 104—117, 119-130, 132-134, and 136-1532 under 35 U.S.C.
1 An oral hearing was held on February 3, 2017.
2 Appellants contend the Examiner’s indication of rejected claims in the
Final Rejection is erroneous and list the rejected claims accordingly. See
Appeal Brief 3—5; see also Final Rejection 5—22. Appellants do not argue
the validity of the statutory and non-statutory double patenting rejections
and, therefore, we summarily affirm the double patenting rejections. Filing
a Board appeal does not, unto itself, entitle an appellant to de novo review of
all aspects of a rejection. If an appellant fails to present arguments on a
particular issue—or, more broadly, on a particular rejection—the Board will
Appeal 2014-006507
Application 11/077,121
§ 134(a). Appeal Brief 1, 8. We have jurisdiction under 35 U.S.C. § 6(b)
(2012).
We affirm-in-part.
Introduction
The invention is directed to an “automatic documentation generation
and management system.” Abstract.
Illustrative Claim (disputed limitations emphasized)
91. A method for automatic production of documentation for
configurable
computerized systems, comprising the steps of:
retrieving configuration parameters of a configurable
system, said
configuration parameters having values associated therewith,
from said configurable system, wherein said values are
associated with and indicative of at least one of software and
hardware component of said configurable system, and said
configuration parameters either (i) control, (ii) modify, or (Hi)
control and modify at least a portion of behavior of said
configurable system;
storing a first set of configuration parameters from a
configurable system;
storing a second set of configuration parameters from a
configurable system; and
outputting differences between said first and second sets
of configuration parameters.
not, as a general matter, unilaterally review those uncontested aspects of the
rejection. See, e.g., Hyatt v. Dudas, 551 F.3d 1307, 1313—14 (Fed. Cir.
2008) (the Board may treat arguments appellant failed to make for a given
ground of rejection as waived); Ex Parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential).
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Application 11/077,121
Rejections on Appeal
Claims 111, 127, and 131 stand rejected under 35 U.S.C. § 101 as
claiming the same invention as that of claims 50, 87, and 91 of Bakman
(United States Patent Number 6,981,207 Bl; issued December 27, 2005).
Final Rejection 2.
Claims 91, 92, 95-98, 102, 103, 106, 107, 114^118, 121, 122, 125,
126, 130, 134, 135, 138, and 139 stand rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1, 71, 77, 36, 36, 41, 41, 45, 45, 71, 75, 77, 79, 79, 82, 82, 87, 87, 91,
95, 95, 97, and 97 respectively of Bakman. Final Rejection 3^4.
Claims 91, 93, 97, 99-102, 10^U106, 108-110, 112, 113, 115, 117,
119-121, 123-126, 128-130, 132-134, 136-138, 140, and 141 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Pope (United
States Patent Number 5,335,342; issued August 2, 1994) and DeLucia
(United States Patent Number 4,864,569; issued September 5, 1989). Final
Rejection 4—20.
Claims 107, 114, 116 and 127 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Pope, DeLucia and DeRose (United States Patent
Number 5,557,722; issued September 17, 1996). Final Rejection 21—22.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed October 21, 2013), the Reply Brief (filed
May 13, 2014), the Answer (mailed March 13, 2014) and the Final Rejection
(mailed September 30, 2011) for the respective details. We have considered
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Application 11/077,121
in this decision only those arguments Appellants actually raised in the
Briefs.
Appellants argue that even assuming arguendo the Examiner’s
findings that Pope’s “alarm threshold setting”, “color sensitivity setting” and
“pixel resolution parameter” are configuration parameters, they do not teach
the claimed “outputting differences between said first and second sets of
configuration parameters” limitation because Pope’s parameters do not
indicate differences between two software versions. Appeal Brief 11.
Appellants contends Pope’s “alarm threshold setting”, “color sensitivity
setting” and “pixel resolution parameter” are set by the user in a
configuration file before performing image comparison and remain the same
for both an old image generated by an old version of the software and a new
image generated by a newer version of the software. Appeal Brief 11—12
(citing Pope, column 7, line 46 to column 8, line 7).
The Examiner finds, “Pope fails to explicitly disclose: said
configuration parameters either (i) control, (ii) modify, or (in) control and
modify at least a portion of behavior of said configurable system,” and
further finds DeLucia addresses Pope’s deficiency because “DeLucia
teaches comparing a revised software, along with configuration routines,
statements, variables, etc. (which control and modify the software, and its
associated systems), with an old version of the software.” Final Rejection
5—6. Appellants contend the Examiner’s findings are erroneous because “the
‘differences and discrepancies’ examined by DeLucia are those between ‘the
software release forms stored in the release file’ and the ‘deviations between
the two generations of the software code and documentation, ’ not
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Application 11/077,121
between ‘two versions of software’ as alleged by the Examiner.” Appeal
Brief 15.
Once the Examiner has satisfied the burden of presenting a prima
facie case of obviousness, the burden then shifts to Appellants to present
evidence and/or arguments that persuasively rebut the Examiner’s prima
facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The
Examiner finds the combination of Pope and DeLucia discloses the claimed
invention; however, the Examiner’s findings are not specific. See Final
Rejection 4—22. The Examiner relies upon bulk citations to support the
findings, therefore, making it difficult to ascertain the actual teachings of the
references in regard to the claimed invention.3 See Final Rejection 5
(Examiner cites to Pope’s column 8, line 44 to column 9, line 47; column 7,
lines 47—64; column 2, lines 2—30; abstract and Figure 1). We are
constrained by the record and, therefore, we find Appellants’ arguments
persuasive because the Examiner has not satisfied the burden of presenting a
prima facie case of obviousness. We reverse the Examiner’s obviousness
rejection of claims 91, 93, 94, 97, 99-102, 104—117, 119-130, 132—134, and
136-153.
3 37 C.F.R. §1.104(c)(2) (“In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best references at his or her
command. When a reference is complex or shows or describes inventions
other than that claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference, if not
apparent, must be clearly explained and each rejected claim specified.”)
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Application 11/077,121
DECISION
The Examiner’s statutory and non-statutory double patenting
rejections are sustained.
The Examiner’s obviousness rejections are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED-IN-PART
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