Ex Parte Batot et al

Patent Trials and Appeals Board

Jun 25, 2014

11523200 - (D) (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRONZ F. BATOT, RANDY S. JOHNSON,
TEDRICK N. NORTHWAY, PAUL D. PETERSON, and
HOWARD N. SMALLOWITZ
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Appeal 2012-002481
Application 11/523,200
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–12. We have jurisdiction under
35 U.S.C. § 6(b).

Appeal 2012-002481
Application 11/523,200

2

SUMMARY OF THE DECISION
We reverse.

BACKGROUND
Appellants’ invention is directed to management services that support
physical disaster recovery operations (Spec. 1, ll. 5–6).
Claim 1 is illustrative:
1. A method for prioritizing a multiplicity of management
services which manage physical disaster recovery operations,
the method comprising the steps of:
a computer determining from a database a criticality of
each of the management services;
the computer determining from a database an urgency of
recovery of each of the management services;
the computer determining from a database respective
numbers of the management services which support each of the
management services; and
the computer determining and electronically reporting a
priority to perform each of the management services based on
(a) the criticality of said each management service, (b) the
urgency of said each management service and (c) the number of
the management services which support said each management
service.
Appellants appeal the following rejections:
Claims 1, 3, 4, 6, 7, 9, 10, and 121 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Breslin (US 2004/0064436 A1, published Apr. 1,
2004).

1 We take as inadvertent error the omission of claim 9 from the statement of
rejection at page 4 of the Answer, because claim 9 is addressed along with
claims 3, 6, and 12 at pages 8–9 of the Answer.
Appeal 2012-002481
Application 11/523,200

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Claims 2 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Breslin, Tachihara (US 7,350,100 B2, issued Mar. 25, 2008), Bonissone
(US 5,058,033, issued Oct. 15, 1991), and Barnard (US 2002/0103731 A1,
published Aug. 1, 2002).
Claims 8 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Breslin, Tachihara, Bonissone, and Millar (US 5,297,276, issued
Mar. 22, 1994).

ANALYSIS
We are persuaded by Appellants’ argument that “[w]hile Breslin et al.
disclose ‘[identification of] the products (services) which are supported
by the particular department,’ these are the products and services which
the department supports and not a count of how many services support a
service whose priority is being evaluated.” (Br. 10–11).
Each of independent claims 1, 4, 7, and 10 recites limitations directed
to “determining” three data elements that are used to determine a priority.
The Specification describes that for two of the data elements, the
determining involves merely retrieving data from a database for those data
elements, because the required data was stored there by a person. “Based on
experience, research and logic, a person specifies the ‘criticality’ of each
management service and enters the specification into database 32.” (Spec. 5,
ll. 26–28). “Based on experience, research and logic, a person specifies the
‘urgency’ of each management service and enters the specification into
database 32.” (Id. at 6, ll. 3–4). The final element, however, is a “number,”
but the Specification does not describe a number as being an element of data
that is stored in the database. Instead, “[a] person also determines from
Appeal 2012-002481
Application 11/523,200

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experience, research and logic which other services support or depend on
recovery of the management service listed in the first column.” (Id. at 6,
ll. 5–6, emphasis added).
As a result, we construe the claim step of “determining from a
database respective numbers of the management services which support each
of the management services” (in claim 1, similarly recited in claims 4, 7, and
10) to represent the action of counting. This count is not based on a stored
number, but instead is calculated based on stored descriptions of “which”
services support or depend on a service. See, for example, the “Prioritization
Table” at Specification, page 6, which lists the names of services, but not a
number or count.
For the “determining . . . a number” limitations, the Examiner directs
us to Breslin, paragraphs 28, 36, 52 (Answer 6), and 40 (Answer 15).
Paragraph 28 merely discloses the hardware and software components of a
system. Although paragraph 36 discloses “identify[ing] the products
(services) which are supported by the particular department,” this is not a
determination of a number, or count. Paragraph 40 discloses attributes of
the “Internal Service Agreement impact 145,” but does not disclose a
number or count. Finally, paragraph 52 discloses that data is “aggregated,”
which the Examiner asserts “sums the information.” Breslin is disclosing,
however, that aggregating means storing all the information in a central
database, rather than summing or counting. (Para. 52).
Therefore, Breslin does not determine a number of services, as
claimed, for one of the data elements used to determine priority. For this
reason, we will not sustain the rejection under 35 U.S.C. § 102(b) of
independent claims 1, 4, 7, and 10, nor of dependent claims 3, 6, 9, and 12.
Appeal 2012-002481
Application 11/523,200

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We also will not sustain the rejections under 35 U.S.C. § 103(a) of
dependent claims 2, 5, 8, and 11 that depend from claims 1, 4, 7, and 10.

DECISION
We reverse the rejections of claims 1–12.

REVERSED

hh