Ex Parte Eidt et al

Patent Trial and Appeal Board

Jun 27, 2016

12262017 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/262,017 10/30/2008 Erik Eidt
56436 7590 06/29/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82242845 5406
EXAMINER
GLASS, RUSSELLS
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
06/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK EIDT, MATHIAS SALLE, MATTHEW NEWMAN,
SAMBER VAIDYA, JACKS. W ALICK!, RUSSELL DANIELS, and
CHRISTOPHER PELTZ
Appeal2013-007578 1
Application 12/262,0172
Technology Center 3600
Before NINA L. MEDLOCK, KEVIN W. CHERRY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Erik Eidt et al. (Appellants) seek review under 35 U.S.C. § 134 of a
final rejection of claims 11-13 and 15-22,3 the only claims pending in the
1 Our decision references the Appellants' Appeal Brief ("Appeal Br."), filed
November 13, 2012, and Reply Brief ("Reply Br.") filed May 28, 2013, and
the Examiner's Answer ("Ans."), mailed March 25, 2013.
2 Appellants' brief identifies Hewlett-Packard Development Co. L.P., as the
real party in interest for this appeal (Appeal Br. 1 ).
3 The Claims Appendix states that claim 14 has been cancelled (Appeal
Br. 14, Claims App.)
Appeal2013-007578
Application 12/262,017
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
Appellants' claimed invention relates to a system and method to
"provide an architecture that is capable of designing and delivering IT
services that are entered as a configure to-order compared to a build-to-order
provided by traditional ITSM services" (Spec. i-f 17).
Claim 11, one of two independent claims, is illustrative of the subject
matter on appeal and is reproduced below.
11. A method for managing services comprising:
capturing declarative specifications of the services as
service models;
combining the service models into a plurality of service
offerings to provide a catalog of orderable services;
receiving an order for at least one orderable service
selectable from the catalog of orderable services;
in response to receiving the order, initiating instantiating
the at least one orderable service to generate an instantiated
ordered service, the initiating instantiating including
automatically resolving one or more dependencies of the at least
one orderable service; and
fulfilling the order in accordance with the instantiated
ordered service, thereby generating a tangible information
technology (IT) artifact in an IT infrastructure.
(Appeal Br. 14, Claims App.).
Rejection
Claims 11-13 and 15-22 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Jones (US 2009/0037875 Al, pub. Feb. 5, 2009).
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Appeal2013-007578
Application 12/262,017
ANALYSIS
We are persuaded by Appellants' argument that the Examiner erred in
finding that Jones discloses "in response to receiving the order, initiating
instantiating the at least one orderable service to generate an instantiated
ordered service, the initiating instantiating including automatically resolving
one or more dependencies of the at least one orderable service," as recited in
independent claim 11 (Appeal Br. 5-7; Reply Br. 1---6). Although the
Examiner is correct that Jones discloses creating a catalog of IT services in
Paragraph 24 (Ans. 5), the claim requires that the "instantiating" occur "in
response to receiving an order" and the order be of services selectable from
the catalog. Thus, as Appellants explain (Reply Br. 1--4), merely disclosing
the creation of a catalog is not enough to satisfy the language of claim 11.
As for Paragraph 35 and Figures 5A-5D of Jones, which are cited by the
Examiner (Ans. 5), we agree with Appellants (Appeal Br. 6-7; Reply
Br. 2, 4---6), that the Examiner has failed to show that Jones discloses
automatically resolving the dependencies in response to the order.
Although the discussion of Figures 5A-5D in Jones does disclose
automatically resolving dependencies, Jones discloses doing so when the
catalog is created (see Jones i-f 38), not when the order is received (see Jones
i-fi-146-50). Instead, we agree with Appellants (see Appeal Br. 6-7; Reply
Br. 3---6) that Jones appears to require user input (see Fig. 5D (block 541 ))
before the dependencies are resolved in response to the order. Thus, we
agree with Appellants that the Examiner erred in finding that Jones discloses
this step of method of claim 11. Therefore, we do not sustain the rejection
of claim 11 as anticipated by Jones.
Claims 12, 13, 15, and 21 all depend from claim 11 and rely on the
same analysis considered above (Appeal Br. 7-9, 12). Accordingly, we do
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Appeal2013-007578
Application 12/262,017
not sustain the rejections of claims 12, 13, 15, and 21, for the reasons set
forth above.
Appellants further argue that the Examiner erred in finding that Jones
anticipates claim 16 because Jones fails to disclose "in response to receipt of
the order, instantiate the at least one orderable service, to generate an
instantiated ordered service, instantiation to include initiating a binding
phase to bind one or more dependent models to the at least one orderable
service," as recited in claim 16 (Appeal Br. 10; Reply Br. 6). As with
claim 11, Appellants argue that Jones fails to disclose resolving the
dependencies models in response to an order without the intervention of the
user (i.e., automatically), as they contend this limitation requires (Appeal
Br. 10). For the reasons stated above with respect to claim 11, we agree
with Appellants that the Examiner erred in finding that Jones anticipates
claim 16. Therefore, we do not sustain the rejection claim 16 as anticipated
by Jones.
Claims l 7, 18, 19, 20, and 22 all depend from claim 16 and rely on
the same analysis considered above (Appeal Br. 11-13). Accordingly, we
do not sustain the rejection of claims 17, 18, 19, 20, and 22 as anticipated by
Jones, for the reasons set forth above.
DECISION
The Examiner's decision to reject claims 11-13 and 15-22 is
reversed.
REVERSED
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