Ex Parte Boss et al

Patent Trial and Appeal Board

Feb 5, 2014

11549728 (P.T.A.B. Feb. 5, 2014)

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.
11/549,728 10/16/2006 Gregory Jensen Boss AUS920060004US1 7485
46129 7590 02/06/2014
IBM CORPORATION
C/O DARCELL WALKER, ATTORNEY AT LAW
P. O. Box 25048
HOUSTON, TX 77265
EXAMINER
HOLMES, ANGELA R
ART UNIT PAPER NUMBER
2497
MAIL DATE DELIVERY MODE
02/06/2014 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 GREGORY JENSEN BOSS, ANDREW R. JONES,
KEVIN C. MCCONNELL, and ORI POMERANTZ
1

________________

Appeal 2011-006171
Application 11/549,728
Technology Center 2400
________________

Before JOSEPH L DIXON, JASON V. MORGAN, and
IRVIN E. BRANCH, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1
International Business Machines Corporation (IBM) is the Real Party in
Interest. App. Br. 2.
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Invention
Appellants invented “an automated process that enables dynamic
provisioning (both creation and deletion) of administrative accounts based
upon a real-time need as defined by service desk processes and procedures.”
Abst.
Exemplary Claims
Claims 1, 13, and 15, reproduced below with key and disputed
limitations emphasized, are representative:
1. An automated method for increasing security of accounts in
a computing system designed to assist users encountering
problems when attempting to perform computer-related task
comprising the steps of:
initially setting administrative accounts in the computing
system to a closed state;
detecting a problem with an attempt of a user to perform
a task;
assigning the detected problem to a service desk
personnel;
defining on or more administrative accounts that will be
accessible by the service desk personnel in order to resolve the
detected problem;
opening the defined one or more administrative accounts
for access by the service desk personnel in order to resolve the
detected problem;
determining when the service desk personnel has
generated a resolution to the detected problem; and
closing access to the one or more administrative
accounts, which had been opened to enable the service desk
personnel to resolve the detected problem.
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13. An automated service desk system for increasing security
of accounts in a computing system designed to assist users
encountering problems when attempting to perform computer-
related tasks comprising:
a user interface that enables a user to connect to a
computing device and perform a computing task;
a computing device for forming computing tasks; and
a service desk module for receiving a report of a
computer problem, assigning it to service desk personnel, and
for opening and closing access to computing resources that
service desk personnel needs to resolve a reported computing
problem.
15. The automated service desk system as described in claim
14 wherein said service desk module further comprises:
a database containing information about each computing
device in the computing system, each user that can access a
device in the computing system and information about security
policies the define which users can access which computing
devices and any privileges of a user when accessing a
computing device; and
a process module capable of assigning incidences to a
service desk personnel and opening and closing access to
computing resources that a service desk personnel needs to
resolve a reported computer problem.
Rejections
The Examiner rejects claims 13 and 14 under 35 U.S.C. § 102(b) as
being anticipated by Sullivan (US 6,477,531 B1). Ans. 5–7.
The Examiner rejects claims 1–3, 5–12, 16, and 18–20 under 35
U.S.C. § 103(a) as being unpatentable over Sullivan and Bernhardt (US
6,792,462 B2). Ans. 8–20.
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The Examiner rejects claims 4 and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Sullivan, Bernhardt, and Merriam (US 6,697,969
B1). Ans. 20–21.
The Examiner rejects claim 15 under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan and Merriam. Ans. 22–23.
ISSUES
1. Did the Examiner err in finding the combination of Sullivan and
Bernhardt teaches or suggests “determining when the service desk personnel
has generated a resolution to the detected problem,” as recited in claim 1?
2. Did the Examiner err in finding Sullivan discloses “a service desk
module for receiving a report of a computer problem, assigning it to service
desk personnel, and for opening and closing access to computing resources
that service desk personnel needs to resolve a reported computing problem,”
as recited in claim 13?
3. Did the Examiner err in finding the combination of Sullivan and
Merriam teaches or suggests “a database containing information about each
computing device in the computing system, each user that can access a
device in the computing system and information about security policies the
define which users can access which computing devices and any privileges
of a user when accessing a computing device,” as recited in claim 15?
ANALYSIS
Claims 1–12 and 16–20
Claim 1 recites “determining when the service desk personnel has
generated a resolution to the detected problem.” For example, a user can
provide verification that the problem is resolved. Spec. 10, ll. 26–28. The
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Examiner finds that Sullivan teaches or suggests this recitation. Ans. 10.
Specifically, the Examiner relies on Sullivan’s disclosure that “search string
90 is a value that, when fed into the technical support server’s search engine
50, should produce relevant hits, namely, information for solving the
technical problem.” Id. (citing Sullivan, col. 9, ll. 22–25) (emphasis
omitted). For a similar recitation in claim 12, the Examiner further relies on
Sullivan’s teaching that a support engineer can “access and review the same
self-help pages reviewed by the user during the self-help session.” Ans. 16
(citing Sullivan, col. 12, ll. 20–24) (emphasis omitted).
Appellants contend the Examiner erred because instead of
determining that a resolution to the detected problem is generated, Sullivan
merely “describes generating a series of hits of information for solving a
problem.” App. Br. 8. We agree with Appellants the Examiner erred. The
Examiner’s findings do not show that providing search results for
information used to solve a technical problem, as taught by Sullivan, teaches
or suggests determining that someone has generated a resolution to the
detected problem (e.g., receiving user verification of a resolution of the
problem). The search results in Sullivan may provide information that can
resolve a detected problem, but the problem itself is not resolved until the
information is applied. The Examiner’s findings do not show that Sullivan
determines when such information is applied such that the detected problem
is solved (i.e., determining when a resolution to the detected problem is
generated). The Examiner does not rely on Bernhardt to cure the noted
deficiency. Ans. 10. Therefore, we agree with Appellants that the Examiner
erred in finding that the combination of Sullivan and Bernhardt teaches or
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suggests “determining when the service desk personnel has generated a
resolution to the detected problem,” as recited in claim 1. App. Br. 8.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 1, and of claims 2–11 and 18–20 which depend therefrom.
We also do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 12, 16, and 17, which contain similar recitations.
Claims 13 and 14
Independent claim 13 recites “a service desk module for receiving a
report of a computer problem, assigning it to service desk personnel, and for
opening and closing access to computing resources that service desk
personnel needs to resolve a reported computing problem.” The Examiner
finds Sullivan’s diagnostic center 35, which includes one or more routing
servers 40, discloses this recitation. Ans. 6 (citing Sullivan, col. 6, ll. 19–
23). Each routing server’s primary responsibility is to route a given data set
to a best-equipped support engineer. Sullivan, col. 6, ll. 21–23.
The Examiner notes that, as part of this routing, a given support engineer
obtains ownership of a given data set until the session is complete or the call
is reassigned to some other group. Ans. 24 (citing Sullivan, col. 6, ll. 18–
35).
Appellants contend the Examiner erred because Sullivan does not
disclose a “process module capable of assigning incidences to a [sic] service
desk personnel [i.e., receiving and assigning a report of a computer program]
and opening and closing access to computing resources that a service desk
personnel needs to resolve a reported computer problem.” App. Br. 6.
Appellants, however, do not persuasively distinguish between routing a
given data set to an engineer, as disclosed by Sullivan, and assigning a report
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of a computer problem to service desk personnel. Appellants also do not
persuasively distinguish between temporary assignment of data set
ownership, as disclosed by Sullivan, and opening and closing access to
computing resources that service desk personnel need to resolve a reported
computing problem.
Appellants argue the invention of independent claim 13 differs from
Sullivan because “[i]n Sullivan, a given support engineer obtains ownership
(has access) to that data set for the purpose of resolving the problem.” Reply
Br. 2 (emphasis added). Appellants contend that in their “invention, the
intent is to limit the ability of a program to access resources that are not
needed or relevant to resolve the diagnosed problem.” Id. at 3 (emphasis
added). Claim 13 does not specify what obtains and loses access to
computing resources. That is, claim 13 does not specify that access is
provided to and taken away from a program rather than service desk
personnel. Thus, Appellants’ arguments are not commensurate in scope
with the claimed invention and thus not persuasive of error in the
Examiner’s rejection. Therefore, we agree with the Examiner that Sullivan
discloses “a service desk module for receiving a report of a computer
problem, assigning it to service desk personnel, and for opening and closing
access to computing resources that service desk personnel needs to resolve a
reported computing problem,” as recited in claim 13. Ans. 6.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection
of independent claim 13, and claim 14 which Appellants do not argue
separately. App. Br. 5–7.
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Claim 15
Appellants argue that the Examiner erred in rejecting claim 15
because the Examiner relies on Merriam to teach or suggest “a database
containing information about each computing device in the computing
system, each user that can access a device in the computing system and
information about security policies the define which users can access which
computing devices and any privileges of a user when accessing a computing
device,” as recited in claim 15. App. Br. 10. Specifically, Appellants argue
that:
Although, Merriam does describe a method and system for
diagnosing a computer in a network which includes a database,
Merriam does not describe as a feature of the database
information about security policies the [sic] define which users
can access which computing devices and any privileges of a
user when accessing a computing device.
Id.
Appellants’ arguments are not persuasive of error because the
disputed recitations merely relate to the content of the database. None of the
recitations in claim 15, or in the claims from which it depends, recite a
functional relationship with this content. Thus, the recitation “information
about each computing device in the computing system, each user that can
access a device in the computing system and information about security
policies the define which users can access which computing devices and any
privileges of a user when accessing a computing device” is directed to non-
functional descriptive material, which is generally not entitled to patentable
weight. See, e.g., In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Ex
parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI 2008) (precedential); Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative)
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(“nonfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art”),
aff’d, 191 Fed.Appx. 959 (Rule 36) (Fed. Cir. 2006). Because the disputed
recitations are not entitled to patentable weight, we conclude the Examiner
did not err in finding the combination of Sullivan and Merriam teaches or
suggests a database containing the recited non-functional descriptive
material. Ans. 22.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 15.
DECISION
We reverse the Examiner’s decision to reject claims 1–12 and 16–20.
We affirm the Examiner’s decision to reject claims 13–15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

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