11541433 (B.P.A.I. Jun. 9, 2011)

Ex Parte Gerzymisch et al

Board of Patent Appeals and InterferencesJun 9, 2011

11541433 (B.P.A.I. Jun. 9, 2011)

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. 11/541,433 09/29/2006 Eric Gerzymisch 50V8265.02 9034 36738 7590 06/09/2011 ROGITZ & ASSOCIATES 750 B STREET SUITE 3120 SAN DIEGO, CA 92101 EXAMINER AN, IG TAI ART UNIT PAPER NUMBER 3687 MAIL DATE DELIVERY MODE 06/09/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ERIC GERZYMISCH, VIJAYANAND MURALIDHAR KALLIANPUR, SEAN PATRICK KENNEDY, MASAFUMI KUBOYAMA, BRIAN LEE, YOSHIRO MURAOKA, and VICTOR GLENN REHA ____________ Appeal 2010-004710 Application 11/541,433 Technology Center 3600 ____________ Before: MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004710 Application 11/541,433 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1 and 5-81. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). The claimed invention is directed to systems and methods for software and integration and factory deployment of the software (Spec. 1). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A method for managing computer production in an enterprise, comprising: receiving a block of software offerings, each block being associated with at least one product series, wherein a software offering includes at least one software class and at least one associated software specification, the software class being a specific type of software, software offerings being associated with respective product series to establish a configuration, specifications being individual software items that are associated with classes wherein a specification is an option that a customer may choose within a class, wherein a class may have more than one specification while a specification is assigned to only one class, software offerings being associated with respective individual product series to establish a configuration range, a configuration range for a stock keeping unit (SKU) representing a product when region, language, various operating system versions, and platforms are factored, a configuration range being a list of all the software offerings that are offered for a respective SKU; receiving a product series component structure defining parts for a respective product series; adding parts required for a product series to the block associated with the series, parts being assigned to each software class and related software specification pair in a block based on the part or parts required for the pair to thereby define a design structure; storing the data structure on a tangible computer readable medium; and 1 Claims 2-4 and 9-32 are withdrawn (App. Br. 2). Appeal 2010-004710 Application 11/541,433 3 establishing a software bill of materials (BOM) on the computer readable medium based on the design structure using at least one of: a template and/or a snapshot; and accessing the computer readable medium to provide software on a computer. Claims 1, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kroening (US Pat. 6,775,829 B1, iss. Aug. 10, 2004); and claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kroening in view of Amberg (US Pat. 5,995,757, iss. Nov. 30, 1999) and Fisher (US Pat. 6,092,189, iss. Jul. 18, 2000). We REVERSE. ISSUE Did the Examiner err in asserting that the customer software configuration method of Kroening renders obvious independent claim 1? FINDINGS OF FACT We adopt the Examiner’s findings of fact, as set forth on pages 3-5 and 10-13 of the Examiner’s Answer. ANALYSIS We are persuaded the Examiner erred in asserting that the customer software configuration method of Kroening renders obvious independent claim 1 (App. Br. 4-5; Reply Br. 1-3). The Examiner asserts that the custom software configuration method including receiving a plurality of requests for desired software configurations, as disclosed at column 2, lines 63-67 of Kroening, corresponds to “receiving a block of software offerings, each Appeal 2010-004710 Application 11/541,433 4 block being associated with at least one product series,” as recited in independent claim 1 (Exam’r’s Ans. 4, 10-13). We agree. The Examiner then goes on to assert, however, that [it] would have been obvious to the skilled artisan [to include the rest of the components set forth in the receiving step because it] would have been an obvious matter of design choice in light of the method and system already disclose[d] by Kroening. Such modification would not have otherwise affected the method and system of Kroening and would have merely represented one of numerous steps or elements that the skilled artisan would have found obvious for the purposes already disclosed by Kroening. Additionally, applicant has not persuasively demonstrated the criticality of providing this step versus the steps disclose[d] by Kroening. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). (Exam’r’s Ans. 6-7, 10-13). In re Japikse stands for the proposition that the rearrangement of certain components in the prior art is obvious. In order to make such a rearrangement, however, the Examiner must first show that Kroening discloses, either expressly or inherently, the components set forth in the receiving step of independent claim 1. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (to support the conclusion that the claimed combination is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed combination or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references). The Examiner has not done so. For example, independent claim 1 recites “a configuration range for a stock keeping unit (SKU).” The Examiner has not shown that Kroening discloses these components. Instead, the Examiner asserts that because Kroening discloses the high level components of a custom software configuration method, it would have Appeal 2010-004710 Application 11/541,433 5 been obvious to include the low level components, such as “a configuration range for a stock keeping unit (SKU),” as well. However, the Examiner has not provided a convincing line of reasoning as to why the custom software configuration method would include the specific lower level components recited in independent claim 1. The mere fact that choosing specific lower level components would have been a “design choice” is insufficient without an explanation as to why those specific lower level components would have been desirable. For example, the Examiner must articulate what purpose in Kroening would have been served by modifying it to include “a configuration range for a stock keeping unit (SKU),” as recited in independent claim 1. The decision of the Examiner to reject claims 1 and 5-8 is REVERSED. REVERSED hh