Ex Parte Beavers

Board of Patent Appeals and Interferences

Jun 25, 2007

10082235 (B.P.A.I. Jun. 25, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN B. BEAVERS
____________

Appeal 2007-1297
Application 10/082,235
Technology Center 2100
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Decided: June 25, 2007
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Before LEE E. BARRETT, JOSEPH F. RUGGIERO, and JOHN A.
JEFFERY, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1, 2, 4-10, and 12-26. Claims 3 and 11 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2007-1297
Application 10/082,235

Appellant’s claimed invention relates to a system and method for
managing an incident in an enterprise in which enterprise input information
is processed using tables, databases, and rules to determine whether an
incident requiring action should be declared. The input information is
filtered using the rules, databases, and tables and results in a display of the
incident in a format that shows a defined conclusion for analysis.
(Specification 7).

Claim 1 is illustrative of the claims on appeal, and it reads as follows:
1. A method of declaring an incident in an enterprise comprising:

providing a number of alert indications containing information
concerning an incident related to the enterprise; and either

comparing one or more of the alert indications to a set of rules, and if
a match occurs between the set of rules, and the alert indication, declaring an
incident based on the match, or

comparing one or more of the alert indications to a decision table
containing a number of defined alert events; remembering each alert
indication that matches one of the defined alert events, comparing the
remembered alert indication to correlation data in the decision table, and if a
match occurs between the remembered alert indication and the correlation
data, declaring an incident based on the match; or

if no match occurs between the alert indication and the correlation
data or the rules set, declare an incident if the alert indication meets a
defined default threshold value; and

displaying an incident ticket for each incident declared, the incident
ticket including a description of the incident, a conclusion based on the
incident description, any actions responsive to the conclusion, one or more
user-editable incident tracking rules which identify one or more further alert
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Application 10/082,235

indications for association with the incident ticket, and a detail of the alert
indications associated with the incident.

The Examiner relies on the following prior art reference to show
unpatentability:
Curtis US 6,208,720 B1 Mar. 27, 2001

Claims 1, 2, 4-10, and 12-26, all of the appealed claims, stand rejected
under 35 U.S.C. § 102(a) as being anticipated by Curtis.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details.

ISSUE
Under 35 U.S.C. § 102(a), does Curtis have a disclosure which
anticipates the invention set forth in claims 1, 2, 4-10, and 12-26?

PRINCIPLES OF LAW
ANTICIPATION
It is axiomatic that anticipation of a claim under § 102 can be found if
the prior art reference discloses every element of the claim. See In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 102, a single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation. Perricone v. Medicis Pharmaceutical
Corp., 432 F.3d 1368, 1375-76, 77 USPQ2d 1321, 1325-26 (Fed. Cir. 2005),
citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc.,
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Application 10/082,235

976 F.2d 1559, 1565, 24 USPQ2d 1321, 1326 (Fed. Cir. 1992). Anticipation
of a patent claim requires a finding that the claim at issue “reads on” a prior
art reference. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346, 51
USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).

ANALYSIS
With respect to the 35 U.S.C. § 102(a) rejection of independent claims
1 and 10 based on the teachings of Curtis, the Examiner indicates (Answer
3-6) how the various limitations are read on the disclosure of Curtis. In
particular, the Examiner directs attention to the illustrations in Figures 2 and
4 of Curtis, as well as the disclosure at column 9, lines 45-53, column 10,
lines 24-30, column 11, lines 20-49, and column 18, lines 44-59 of Curtis.
In our view, the Examiner’s analysis is sufficiently reasonable that we
find that the Examiner has as least satisfied the burden of presenting a prima
facie case of anticipation. The burden is, therefore, upon Appellant to come
forward with evidence and/or arguments which persuasively rebut the
Examiner’s prima facie case. Only those arguments actually made by
Appellant have been considered in this decision. Arguments which
Appellant could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived [see 37 C.F.R.
§ 41.37(c)(1)(vii)].
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Application 10/082,235

Appellant’s arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of Curtis
so as to establish a prima facie case of anticipation. Appellant’s arguments
(Br. 9-11) focus on the contention that, in contrast to the claimed invention,
Curtis does not disclose the displaying of an incident ticket in which the
incident ticket itself includes tracking rules which are editable by a user
viewing the ticket.
After reviewing the disclosure of Curtis in light of the arguments of
record, however, we are in general agreement with the Examiner’s position
as stated in the Answer. Our interpretation of the disclosure of Curtis
coincides with that of the Examiner, i.e., the information related to the
“fraud cases” which is presented and displayed to a fraud analyst at
computer workstations 152a-152n can reasonably be considered to
correspond to the claimed “incident ticket.” The presented fraud case
information in Curtis also permits a user to edit tracking rules associated
with the fraud case. (Curtis, col. 12, ll. 1-5.) As further indicated by Curtis
(col. 19, ll. 35-40), the fraud analyst may edit the tracking rules by either
entering a rule suggested by pattern recognition system 132 or by creating a
new rule. We would also point out that, to whatever extent Appellant’s
argument (Br. 10) that the displayed incident ticket “itself” includes editable
tracking rules suggest that the ticket is presented on a single screen display,
we find no claim language which limits the displayed incident ticket to a
single display screen.
In view of the above discussion, since all of the claimed limitations
are present in the disclosure of Curtis, the Examiner’s 35 U.S.C. § 102(a)
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Appeal 2007-1297
Application 10/082,235

rejection of independent claims 1 and 10, as well as dependent claims 2, 4-9,
and 12-22 not separately argued by Appellant, is sustained.
Turning to consideration of the Examiner’s 35 U.S.C. § 102(a)
rejection of independent claim 23 based on Curtis, we sustain this rejection
as well as that of dependent claims 24-26 not separately argued by
Appellant. Independent claim 23 differs from previously discussed
independent claims 1 and 10 by requiring that a user use a menu on the
displayed incident ticket to edit the tracking rules.
We agree with Appellant (Br. 12-13; Reply Br. 5-6) that the portions
of Curtis cited by the Examiner in support of the rejection of claim 23 are
directed to general discussions of computer work station user interfaces that
display the fraud case information, i.e., the incident ticket, but have no
explicit disclosure of the use of a menu, associated with the displayed fraud
case information, by a user to edit tracking rules. Nevertheless, while the
absence of an explicit disclosure in Curtis of a menu for tracking rule editing
purposes would indicate that the Examiner’s rejection would have been
more properly based on obviousness under 35 U.S.C. § 103, we will sustain
this rejection under 35 U.S.C. § 102. In our view, the ordinarily skilled
artisan would have recognized from Curtis’ disclosure of user work station
editing of tracking rules that such editing procedure would have included a
menu feature for user entry of rule creations and modifications.

CONCLUSION
In summary, we have sustained the Examiner’s rejections of all the
claims on appeal. Therefore, the decision of the Examiner rejecting claims
1, 2, 4-10, and 12-26 is affirmed.
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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)(iv).

AFFIRMED

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