Ex Parte Bliznak et al

Patent Trial and Appeal Board

May 18, 2015

11319375 (P.T.A.B. May. 18, 2015)

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.
11/319,375 12/29/2005 Karol Bliznak 07781.0237-00 6971
60668 7590 05/19/2015
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
LAN, TZU-HSIANG
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
05/19/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAROL BLIZNAK and MARCUS WEFERS
____________

Appeal 2012-011798
Application 11/319,375
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1–4, 9–12, and 16–19 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

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THE INVENTION
The Appellants’ claimed invention is directed to systems and methods
for managing the internal controls of an organization (Spec. para. 7). Claim
1, reproduced below with the numbering in brackets added, is representative
of the subject matter on appeal.

1. A computer-implemented method for testing operating
effectiveness of controls for an entity, the method comprising:
[1] creating, by a processor, a test plan through a calling
application using a service catalog including a plurality of test
services, the test plan identifying controls to be tested using at
least
one internal application and at least one of the test services in
the service catalog for delivering testing results for the
identified controls, the test plan specifying threshold values
indicative of
deficiency levels of the identified controls;
[2] uploading, by the processor, without human
intervention, control testing results for at least one scheduled
test from the internal application to the service catalog using the
at least one
test service, wherein uploading comprises:
[3] automatically generating an exception when the
control testing results exceed a first threshold value;
[4] creating a pre-filled test log and an issue indicative of
at least one deficiency of the identified controls, after the
exception is generated, wherein the pre-filled test log includes
an exception field indicating that the exception is generated,
and includes an issue priority field indicating an issue priority
associated with the issue; and
[5] determining the issue priority associated with the
issue by comparing the control testing results with the threshold
values;
[6] validating, by the processor, the control testing results
at the service catalog to obtain validated results, wherein the
validated results are the control testing results in their original
form if the first threshold value is not exceeded, and the
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validated results are the automatically generated exceptions
rather than the control testing results if the first threshold is
exceeded; and
[7] sending, by the processor, the validated results to the
calling application.

THE REJECTIONS
The following rejections are before us for review:
Claims 1–4, 9–12, and 16–19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yankovich (US2006/0129441 A1, pub. June 15, 2006),
Pudhukottai (US 7,523,053 B2, iss. Apr. 21, 2009), and Tien
(US2007/0112607 A1, pub. May 17, 2007).
Claims 3, 11, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yankovich, Pudhukottai, Tien, and www.movaris.com
(http://web.archive.org/web/20040827231923/http://movaris.com/product/re
view.htm (2003–2004).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1

ANALYSIS
The Appellants first argue that the rejection of claim 1 is improper
because the prior art does not disclose or suggest elements of claim
limitations [3], [4], and [6] (App. Br. 11–13, Reply Br 2–3). In contrast, the

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Examiner has determined that the rejection of record is proper (Ans. 2–7,
10–14).
We agree with the Examiner. The Appellants have first argued that
the rejection of claim 1 is improper because the prior art does not disclose
the claim limitation for “generating an exception when the control testing
results exceed a first threshold value.” However, Pudhukottai at column 15,
lines 24 through column 16, line 20, discloses features such as a key
performance indicator (KPI) 710 and KPI target value 840, and the
generation of a report of the risk control relative to the KPI target value.
Here, the reported risk control results relative to the KPI target value serve
as the generated exception required by the claim limitation. Pudhukottai at
column 16, line 55 through column 17, line 3, discloses the generation of
“deviations” that are identified as also meeting the required claim limitation
for “generation of an exception” in the control testing.
The Appellants also argue that the cited prior art fails to disclose
“creating a pre-filled test log . . . wherein the pre-filled test log includes an
exception field indicating that the exception is generated, and includes an
issue priority field indicating an issue priority associated with the issue”
(App. Br. 12–13). However, Tien discloses this in Figures 4, 6, and 7. For
example, Tien in Fig. 6 shows a “Status” symbol which serves as a priority
field and an “Alert” field which shows the exception level generated,
meeting the argued claim limitation.
The Appellants further argue that the prior art fails to disclose or
suggest that “the validated results are the automatically generated exceptions
rather than the control testing results if the first threshold is exceeded” (App.
Br. 13–14, Reply Br. 2–3). In contrast, the Examiner has determined that
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such a modification would have been obvious as alternative programming
(Ans. 13). We agree with the Examiner. Here, there are a finite number of
solutions for the validated results, they are either automatically generated
exceptions or the control testing results. Here, one of ordinary skill in the art
that wanted a higher degree of certainty would have readily seen the
advantage of using automatically generated exceptions rather than using the
control testing results if desired and such a modification would have been
obvious. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court
stated that when considering obviousness that “the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR at 418. Here, such a
modification to obtain a higher degree of certainty in the results would have
been an obvious modification in the cited combination of record.
For these above reasons the rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims and
rejections, and the rejections of these claims are sustained for the same
reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejection section above.

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DECISION
The Examiner’s rejection of claims 1–4, 9–12, and 16–19 is sustained.

AFFIRMED

rvb