Ex Parte Joshi et al

Patent Trial and Appeal Board

Dec 9, 2014

12208973 (P.T.A.B. Dec. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NEERAJ JOSHI and DAVID L. KAMINSKY
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Appeal 2012-009883
Application 12/208,973
Technology Center 2100
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Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and MINN
CHUNG, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-009883
Application 12/208,973

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STATEMENT OF CASE1
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–21. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claim
Exemplary claim 1 under appeal read as follows (emphasis and
formatting added):
1. A method of providing action management in a computing
environment, comprising:
receiving an electronically communicated request to perform an action
within a computing environment, where the request is received by a policy
management system executing on a computer processing device and the
request is communicated from or on behalf of a resource within the
computing environment;
obtaining an indication of a computing environment climate that is
of interest in evaluating the requested action;
obtaining at least one policy from a storage device, where each
obtained policy is associated with at least one of:
the action associated with the request,
the resource associated with the request, and
the computing environment climate that is of interest in
evaluating the requested action,
wherein each obtained policy includes information that defines climate
conditions that govern the applicability of the corresponding policy;
evaluating each obtained policy in view of the obtained indication of
computing environment climate; and
responding to the request to perform the action based upon the results
of the policy evaluation.

1 In Appellants’ Specification at the last sentence of paragraph [0037], we
read “outsize” as ––outside––. Correction by Appellants is requested.
Appeal 2012-009883
Application 12/208,973

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Rejections on Appeal 2
1. The Examiner rejected claims 1–9, 11–19, and 21 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Vinberg (US
2008/0256593 A1) and Bugwadia (US 2007/0268516 A1).
2. The Examiner rejected dependent claims 10 and 20, as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Vinberg,
Bugwadia, and Gilat (“Autonomic Computing - Building Self-Managing
Computing Systems”; pp. 34-40; 2005).

Appellants’ Contention
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Appellants respectfully disagree with the Examiner that
Bugwadia discloses:
obtaining at least one policy from a storage
device, ... wherein each obtained policy includes
information that defines climate conditions that
govern the applicability of the corresponding
policy[.]
(App. Br. 12)(Appellants’ emphasis omitted; Panel emphasis added).
Further:
Paragraphs [0017] - [0019] of the present specification explain
that a policy is utilized by a policy enforcement system to
determine whether a denial or approval of a requested action
should be issued. This interpretation of “policy” is reflected in

2 As to the rejection of independent claims 1, 11, and 21, separate
patentability is argued only for claim 1. As to the dependent claims 2–10
and 12–20, we find the arguments for claim 1 to be controlling. Therefore,
except for our ultimate decision, claims 2–21 are not discussed further
herein.
Appeal 2012-009883
Application 12/208,973

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the claim language which recites that a policy includes
information that defines climate conditions that govern
applicability of the policy.
(App. Br. 13)(emphasis added).

Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?

ANALYSIS
We agree with the Appellants’ above recited contention.
Appellants’ Specification repeatedly points out that a climate
condition is information about a condition external to the workflow
associated with the action requested, e.g., “information external to the
workflow or other information that contextualizes the computing
environment of components thereof” (Abstract). Contrary to the Examiner’s
rejection, our review of Bugwadia does not find the “information that
defines climate conditions” required by claim 1.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1–21 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.
Appeal 2012-009883
Application 12/208,973

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DECISION
The Examiner’s rejections of claims 1–21 are reversed.

REVERSED

lv