Ex Parte Danielson et al

Patent Trial and Appeal Board

Mar 18, 2013

11555201 (P.T.A.B. Mar. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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Ex parte PHILIP G. DANIELSON and FRANK J. MCPHERSON 7
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Appeal 2011-004247 10
Application 11/555,201 11
Technology Center 3600 12
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
MEREDITH C. PETRAVICK, Administrative Patent Judges. 17
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FETTING, Administrative Patent Judge. 19
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DECISION ON APPEAL22
Appeal 2011-004247
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STATEMENT OF THE CASE1 1
Philip G. Danielson and Frank J. McPherson (Appellants) seek review 2
under 35 U.S.C. § 134 of a final rejection of claims 1-20, the only claims 3
pending in the application on appeal. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented a way for managing workflow by managing 6
task requests for changing technology infrastructures (Spec., para. 0001). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A computer-implemented method comprising: 11
[1] identifying, 12
by a computer, 13
components needed 14
for a specific task comprising 15
a change in a technology infrastructure 16
for an enterprise, 17
wherein identifying one or more of the needed 18
components comprises 19
comparing 20
the specific task 21
to 22
a mapping of tasks to components need for 23
each task, 24
the mapping stored in a database; 25
[2] comparing, 26
by the computer, 27
one or more of the needed components 28
to 29

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 28, 2010) and Reply Brief (“Reply Br.,” filed November 10,
2010), and the Examiner’s Answer (“Ans.,” mailed October 5, 2010).
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an inventory of available components; 1
[3] determining, 2
by the computer, 3
a price 4
for at least one of the needed components 5
that is included in the inventory; 6
[4] determining, 7
by the computer, 8
a total price 9
for the needed components, 10
wherein the total price comprises 11
a sum of the prices 12
of more than one of the needed components; 13
and 14
[5] transmitting, 15
by the computer, 16
at least one of 17
the total price, 18
identities of one or more of the needed 19
components, 20
or 21
task information 22
to one or more approvers 23
for approval to purchase one or more 24
of the needed components. 25
The Examiner relies upon the following prior art: 26
Dalnekoff US 4,931,932 Jun. 5, 1990
Carmody US 2003/0055749 Al Mar. 20, 2003
Seubert US 2007/0150387 Al Jun. 28, 2007
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable 27
over Carmody, Seubert, and Dalnekoff. 28
Appeal 2011-004247
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ISSUES 1
The issues of obviousness turn primarily on whether Carmody’s bundles 2
are components and Carmody’s relationship between those bundles and the 3
tasks to acquire those bundles are a mapping within the scope of the 4
independent claims. 5
FACTS PERTINENT TO THE ISSUES 6
The following enumerated Findings of Fact (FF) are believed to be 7
supported by a preponderance of the evidence. 8
Facts Related to the Prior Art 9
Carmody 10
01. Carmody is directed to Information Technology (IT) asset 11
management, and to a life cycle process to develop and monitor 12
the processes and metrics to perform the orderly planning, 13
acquisition, entry use, insight, refresh, and retirement of all IT 14
assets. Carmody, para. 0001. 15
02. The purpose of Carmody called Information Technology Asset 16
Management (ITAM) is to develop and monitor the processes and 17
metrics to perform the orderly planning, acquisition, entry, use, 18
insight, refresh, and retirement of all IT assets (desktop 19
computers, servers, network components, software, etc.). The 20
goal of Carmody is to lower the Total Cost of Ownership (COT), 21
increase a company's technological agility, and improve the 22
company's cash management. Other benefits are cycle-time 23
reduction in the procurement, payment, and accounting of IT 24
assets, with substantial cost savings in software licensing, property 25
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taxes, and stealth (or shadow) support. Some examples of 1
processes include processes within Acquisition/Procurement, 2
Deployment/Accounts Receivable, Accounts Payable, Desktop 3
Setup/Configuration, End User Support such as Support Center 4
functions of Problem Resolution, Moves/Adds/Changes, and 5
Application Support, financial insight processes such as Baseline 6
Inventory, Asset Reconciliation, Software License Management, 7
Asset Tech Refresh, Asset Reallocation and Asset Disposal. 8
Carmody, para. 0009. 9
03. Carmody manages information technology assets for an enterprise 10
by determining an inventory of IT assets for the enterprise and 11
storing information concerning the IT assets in an asset repository. 12
The IT assets are periodically automatically monitored and any 13
inventory changes are stored in the asset repository. The 14
information stored the asset repository is used for reducing the 15
overall total cost of ownership for the inventory of IT assets. 16
Carmody, para. 0068. 17
04. Carmody’s asset planning stage includes an IT capital planning 18
process and a forward pricing process. The IT capital planning 19
process is used to predict the needs of the enterprise for the 20
following year based on feedback from the ITAM process. Based 21
on the IT capital planning process, the forward pricing process is 22
used to provide estimates for volume purchasing of IT assets such 23
as desktops, etc. Advantageously, using volume purchasing, 24
desktop acquisition costs can be greatly reduced. Carmody, para. 25
0098. 26
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05. The initial externally supported process in the asset entry stage is 1
the acquisition process of desktop microcomputer systems, 2
hardware and software. The acquisition process will include a 3
web-based ordering process that accommodates ordering by pre-4
defined bundles of hardware and software. These bundles will be 5
the standard definition of hardware configuration and software 6
content by user-classification and by level of platform (Standard, 7
Mid, High or Mobile). The user of ITAM should provide access 8
to the most accurate cost configurations both through a web page 9
accessible by all employees, but also by providing an electronic 10
file to their Procurement organization for posting on a frequency 11
of at least monthly. The ordering process shall have the ability to 12
accept license/serial numbers for software products that the 13
organization already owns and is redeploying to the new asset. 14
Carmody, para. 0100. 15
06. Prior to delivery, a configuration process configures, integrates 16
and makes operational each requested configuration provided by 17
the acquisition process. The integration process includes loading 18
the required operating and system support software, designated 19
software applications and integrating any organizationally 20
provided software or equipment. The software and equipment to 21
be integrated should be identified on each delivery order. The 22
user of ITAM provides the support necessary for the using 23
organization to provide in electronic media and by remote access, 24
software build images by user type for configuration at an ITAM 25
user's integration facility or at a manufacturer's facility, as well as 26
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the capability to make replacements or modifications to these 1
builds. The user of ITAM provides the control and configuration 2
management of these build images. The user of ITAM will 3
maintain control over the original build images, as well as making 4
them available to site administrators for local rebuilds, if 5
necessary. The configuration process will support crediting the 6
purchase of software licenses against any special licensing 7
agreements. The configuration process ends with the bar code 8
tagging, or equivalent, of the asset and the preparation of an 9
electronic asset record to be transmitted in a time frame 10
coincidental to the delivery of the equipment. The asset record 11
shall pass through key information fields from the delivery order, 12
to include, for example, user data, location destination 13
information, financial information, such as charge number, and 14
hardware/software ordered, with any retained license information. 15
The configuration process updates this record with the actual 16
attributes of the hardware/software, in particular all license and 17
version numbers of loaded software. Carmody, para. 0101. 18
07. A Deployment (Receiving) and Asset Registry process is depicted 19
at 228. The process for reporting missing or defective items 20
within shipment should permit initiation of corrective within 48 21
hours. Upon the successful completion of the deployment 22
process, the electronic asset record will be accepted into a 23
Registry/Asset Management system. Carmody, para. 0102. 24
08. During an asset's useful life, an ITAM user provides Moves, Adds 25
and Changes (MACs) designed to allow for immediate incidental 26
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enhancements to the existing infrastructure. MACs may range 1
from simple to complex and may include installing, uninstalling, 2
moving to a new location, reinstalling, adding a device, and 3
installing new cabling. Carmody, para. 0110. 4
Seubert 5
09. Seubert is directed to generation and use of consistent interfaces 6
derived from a business object model and to the generation and 7
use of consistent interfaces that are suitable for use across 8
industries, across businesses, and across different departments 9
within a business. Seubert, para. 0014. 10
Dalnekoff 11
10. Dalnekoff is directed to an electronic inventory clearance system 12
which has utility as a system for electronically buying and selling 13
items and particular utility as a reservation system for travel 14
accommodations such as airline reservations. Dalnekoff 1:7-11. 15
ANALYSIS 16
Appellants separately argue each of claims 1, 13, 19, 2, 5, 6 and 16, 7 17
and 17, 9, 11 and 18, 15, and 20. The Examiner responded with findings to 18
support the rejections as to all of these claims. We adopt the Examiner’s 19
findings of fact and analysis from the Answer at pages 4-23 and reach 20
similar legal conclusions. 21
In particular, as to the independent claims 1, 13, and 19, we are not 22
persuaded by the Appellants’ argument regarding limitation [1] that 23
[n]one of the cited portions of Carmody teach or even suggest 24
comparing an identified specific infrastructure change task to a 25
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database stored mapping of tasks to components needed for the 1
task. 2
Appeal Br. 12. As the Examiner found 3
[i]n describing what is being entered in this asset entry, 4
Carmody clearly states that "the acquisition process 224 will 5
include a web-based ordering process that accommodates 6
ordering by pre-defined bundles of hardware and software" (see 7
at least ¶ 0100) Therefore, the Examiner believes that it was 8
reasonable to interpret this asset entry process as an "asset entry 9
of a bundle." In terms of Carmody's teaching, there is certainly 10
mapping of tasks to components needed for the tasks. An asset 11
entry task (a specific task comprising acquiring, ordering, 12
configuring, and deploying/redeploying certain technology) is 13
being mapped to its corresponding pre-defined bundles of 14
hardware/software, by an "ordering process that accommodates 15
ordering by pre-defined bundles of hardware and software ... " 16
(see at least ¶ 0100). By this disclosure, Carmody teaches 17
"identifying one or more of the needed components," and 18
Carmody accomplishes this by its acquisition process 224 that 19
establishes ordering of corresponding pre-defined bundle, 20
which teaches "comparing the specific task to a mapping of 21
tasks to components needed for each task." 22
Ans. 13-14. This limitation does not narrow the manner in which the 23
task or components are represented in the computer, or even the nature or 24
characteristics of such tasks or components. The components are needed for 25
the task, but the nature of that need and what function or attribute results in 26
that need are unspecified. Thus Carmody’s pre-defined bundles by 27
definition are composed of components and the variety of tasks defined by 28
Carmody such as determining need, requisitioning, purchasing, receiving 29
and others, for that bundle would constitute a mapping. 30
Appellants then argued that 31
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[u]se of pre-defined bundles is different from mapping tasks to 1
components needed for each task as required by claim 1 at least 2
because Carmody fails to teach or suggest that the bundles are 3
mapped to tasks. Instead, Carmody teaches that bundles are 4
related to user-classifications and platform levels which are not 5
tasks. 6
Reply Br. 2. Appellants read Carmody too narrowly. Carmody relates 7
each of the asset lifecycle tasks to each of the assets, including bundles. 8
Such a relationship is a mapping. Again, the claim does not narrow the 9
manner of such mapping. 10
We are also not persuaded by the Appellants’ argument regarding 11
limitation [5] that 12
Seubert fails to teach or suggest transmitting any information to 13
the "buyer party entity," much less any of the information 14
required by the present limitations of claim 1. Moreover, 15
Seubert teaches authorizing delivery or services, while claim 1 16
requires "approval to purchase one or more components." 17
Authorizing delivery or service fails to teach or suggest 18
approval to purchase components. 19
Appeal Br. 12. As the Examiner found 20
Seubert discloses that the invoice party package contains "an 21
invoice buyer party entity characterizing a party authorizing 22
deliveries or services," and also "an item package containing: 23
an item buyer party entity characterizing a party authorizing 24
deliveries or services." It is clear from these disclosures that the 25
party authorizing deliveries or services (indicated in the 26
invoice) are involved in the transaction process. 27
Ans. 16. This limitation does not narrow the manner in which the task 28
or approval are represented in the computer, or even the nature or 29
characteristics of such tasks. The limitation does not even recite approving 30
as a step, but merely provides approval as an aspirational objective, so the 31
argument regarding what may or may not constitute approval is not 32
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commensurate with the scope of the claim. We find Appellants’ arguments 1
at Reply Brief 2-3 to be similar to those in the Appeal Brief and are similarly 2
unpersuasive. 3
Again, the Examiner similarly responded to each of the separately 4
argued dependent claims and we adopt the Examiner’s findings and analysis 5
as to the rejection of those claims. 6
CONCLUSIONS OF LAW 7
The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable 8
over Carmody, Seubert, and Dalnekoff is proper. 9
DECISION 10
The rejection of claims 1-20 is affirmed. 11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13
§ 1.136(a)(1)(iv) (2011). 14
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AFFIRMED 16
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hh 19