Ex Parte Dan et al

Patent Trial and Appeal Board

Feb 6, 2014

12132790 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/132,790 06/04/2008 Asit Dan YOR920050226US2 8433
48063 7590 02/06/2014
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
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 ASIT DAN, HENNER GIMPEL, and HEIKO LUDWIG
____________________

Appeal 2011-013245
Application 12/132,790
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
THOMAS F. SMEGAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013245
Application 12/132,790

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

THE CLAIMED INVENTION
Appellants’ claimed invention “generally relates to service
environments and, more particularly, to techniques for automated
provisioning of resources to fulfill a service agreement” (Spec. 1, ll. 10-12).
Claims 1 and 19, reproduced below, are illustrative of the subject
matter on appeal:
1. A method for use by a service provider for automatically
provisioning one or more resources based on at least one
service agreement offer of a service client, comprising the steps
of:
obtaining the at least one service agreement offer;
obtaining at least one implementation plan template; and
automatically deriving a provisioning description in
accordance with the service agreement offer and the
implementation plan template, wherein the provisioning
description is usable for configuring one or more resources such
that a service may be provided to the service client;
wherein at least the automated provisioning description
derivation step is performed by a processor;

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
February 14, 2011) and Reply Brief (“Reply Br.,” filed August 22, 2011),
and the Examiner’s Answer (“Ans.,” mailed June 21, 2011).
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Application 12/132,790

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wherein the implementation plan template comprises a
provisioning description template having one or more open
fields; and
wherein the automated provisioning description
derivation step comprises generating a provisioning
specification instance by (i) automatically determining one or
more values corresponding to the one or more open fields of the
provisioning description template based at least in part on the
service agreement offer; and (ii) automatically filling in the one
or more open fields of the provisioning description template
with the one or more values based at least in part on the
implementation plan template.

19. A method for use in automatically managing the
provisioning of one or more resources, comprising the steps of:
generating an agreement template; and
generating an associated agreement implementation plan
template;
wherein at least one of the generating steps is performed
by a processor; and
wherein the implementation plan template comprises one
or more open fields fillable in accordance with an agreement
offer having a structure in accordance with the agreement
template.

THE REJECTION
The following rejection is before us for review:
Claims 1-19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Goodyear et al., Netcentric and Client/Server Computing: A Practical
Guide, CRC Press LLC (1999) (hereinafter “Goodyear”) and Soares
(US 2005/0043979 A1, pub. Feb. 24, 2005).

Appeal 2011-013245
Application 12/132,790

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ANALYSIS
Independent claim 1 and dependent claims 2-16
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because the combination of Goodyear and Soares fails to
disclose or suggest “obtaining at least one implementation plan template;
and automatically deriving a provisioning description in accordance with the
service agreement offer and the implementation plan template,” as recited in
claim 1 (App. Br. 8-9). In this regard, Appellants assert that “claim 1 clearly
specifies that the recited implementation plan template is used for automatic
derivation of a provisioning description, and thus that the implementation
plan template and the provisioning description are distinct” (id. at 8).
Directing our attention to page 23-11 of Goodyear, the Examiner
maintains that Goodyear’s OLA corresponds to the claimed implementation
plan template and that “automatically deriving a provisioning description in
accordance with the service agreement offer and the implementation plan
template” is met by Goodyear’s teaching that “‘service levels can be met by
one or a combination of service providers through one or more OLAs’”
(Ans. 5-6) and its further teaching at pages 10-8 and 10-9 of “‘providing a
common template for the content and format of design information’”
(Ans. 6). The Examiner asserts that, interpreted in this way, the
provisioning description is distinct from the implementation plan because
“[t]he provisioning description is shown by Goodyear at 23-11 by ‘[a]
combination of service providers through one or more service OLAs’ which
necessarily is more than the implementation plan because it includes more
than a single OLA (or implementation plan) because of the combination with
service provide[r]s or other OLAs” (Ans. 16).
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We have reviewed the cited portions of Goodyear, on which the
Examiner relies, and we cannot agree that Goodyear meets the argued
limitations.
Goodyear describes that an Operational Level Agreement or “OLA is
an agreement between those responsible for the management of the system
and the service providers (either internal or external) who are actually
managing the system component(s) or domain(s)” (Goodyear, 23-11).
We agree with Appellants that Goodyear does not disclose or suggest that
the OLA is a template, let alone a template for an implementation plan
(Reply Br. 2-3). Instead, as Appellants observe, an OLA is similar to a
Service Level Agreement (“SLA”), i.e., “an agreement between the users of
the system and those managing it, which defines the level of service the
users expect to receive” (see Goodyear, 23-9), except that different parties
are involved, i.e., system management and service providers (OLA) as
opposed to system management and system users (SLA). Thus, rather than
constituting a template, which describes how a provisioning description will
be derived from contents of a service agreement offer and contains a
template of a provisioning description, the OLA is itself an agreement
(See Reply Br. 2-3).
The Examiner points to pages 10-8 and 10-9 of Goodyear as
disclosing a “common template.” However, the Examiner does not explain
how, nor do we see how, this “template,” which Goodyear describes is “for
the content and format of design information” so that “developers are more
likely to create consistent specifications,” is related in any way to the OLAs
described in Goodyear at page 23-11.
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In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103(a). We also will not sustain the
Examiner’s rejection of claims 2-16, which depend from claim 1.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims
are nonobvious if the independent claims from which they depend are
nonobvious.”).
Independent claims 17 and 18
Independent claims 17 and 18 include language substantially similar
to the language of claim 1. Therefore, we will not sustain the Examiner’s
rejection of claims 17 and 18 under 35 U.S.C. § 103(a) for the same reasons
as set forth above with respect to claim 1.
Independent claim 19
In rejecting claim 19 under 35 U.S.C. § 103(a), the Examiner stated,
“Claim 19 recites limitations addressed in claims 1-16 above. Therefore,
claim 19 is rejected for similar reasons” (see Ans. 15).
Appellants argue that none of claims 1-16 recites “an agreement offer
having a structure in accordance with an agreement template,” as recited in
claim 19, and that the Examiner has failed to set forth a prima facie case of
obviousness of claim 19 because “the Examiner has failed to indicate the
manner in which the cited references are believed to teach or suggest at least
this limitation of claim 19” (App. Br. 13).
The Examiner asserts that “[t]he equivalent of this feature [i.e., an
agreement offer having a structure in accordance with an agreement
template] is shown in claim 1 by the automatically filling of open fields
based on the agreement offer;” that “[t]he fields would not be able to be
filled if the agreement offer structure was not compatible with the agreement
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template; and, therefore, that “the limitation of claim 19 does exist in claim 1
and [is] properly taught by the Goodyear and Soares reference[s]” (Ans. 21).
Claim 1 recites “automatically determining one or more values
corresponding to the one or more open fields of the provisioning description
template based at least in part on the service agreement offer” and
“automatically filling in the one or more open fields of the provisioning
description template with the one or more values based at least in part on the
implementation plan template.” The Examiner suggests that these steps
require that the service agreement offer have a structure in accordance with
the agreement template, as recited in claim 19. However, claim 1 does not
recite an agreement template; instead the claim recites an implementation
template, which includes a provisioning description template. We agree
with Appellants that claim 1, thus, at most requires that the agreement offer
have a structure compatible with the implementation template (which, as
recited in claim 19, is distinct from the agreement template) and/or the
provisioning description template (Reply Br. 10).
The Examiner has not indicated how the cited references disclose or
suggest the limitations of claim 19, and, therefore, has failed to establish a
prima facie case of obviousness.
Therefore, we will not sustain the Examiner’s rejection of claim 19
under 35 U.S.C. § 103(a).

Appeal 2011-013245
Application 12/132,790

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DECISION
The Examiner’s rejection of claims 1-19 under 35 U.S.C. § 103(a) is
reversed.

REVERSED

rvb