Ex Parte Kaminsky

Patent Trial and Appeal Board

Jun 8, 2013

11534824 (P.T.A.B. Jun. 8, 2013)

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.
11/534,824 09/25/2006 David L. Kaminsky RSW920060105US1 (251) 6605
46320 7590 06/08/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
GEBRESENBET, DINKU W
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
06/08/2013 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 DAVID L. KAMINSKY
____________

Appeal 2010-010925
Application 11/534,824
Technology Center 2100
____________

Before JOHN A. JEFFERY, DAVID C. McKONE, and
DANIEL N. FISHMAN, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

STATEMENT OF THE CASE
Appellant’s invention verifies configuration changes in network
architecture by (1) receiving a proposed change to apply to a configuration
management database (CMDB); (2) applying the proposed change to a
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Application 11/534,824

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CMDB clone; and (3) evaluating the modified clone. See generally
Abstract. Claim 1 is illustrative:
1. A computer-implemented change verification method comprising:
receiving a proposed configuration change for application to a
configuration management database (CMDB);
cloning at least a portion of the CMDB to produce a clone;
applying the proposed configuration change to the clone; and,
evaluating the clone as modified by the proposed configuration
change.

THE REJECTION
The Examiner rejected claims 1-16 under 35 U.S.C. § 102(e) as
anticipated by Kilpatrick (US 2007/0100712 A1; published May 3, 2007;
filed Oct. 28, 2005). Ans. 3-10.1

CONTENTIONS
The Examiner finds that Kilpatrick discloses every recited element of
claim 1 including applying a proposed configuration change to a clone of at
least part of a CMDB, namely via the process associated with adding
configuration items (CIs) in Figure 7. Ans. 3-4, 11-12. Kilpatrick is also
said to evaluate this clone before deploying the proposed changes. Ans. 4,
11.
Appellant argues that Kilpatrick does not apply a proposed
configuration change to the recited clone, let alone evaluate the modified
clone as claimed. App. Br. 6-8; Reply Br. 3-6. According to Appellant, the
Examiner not only fails to properly construe the recited received proposed

1 Throughout this opinion, we refer to (1) the Appeal Brief filed February 7,
2010 (“App. Br.”); (2) the Examiner’s Answer mailed April 29, 2010
(“Ans.”); and (3) the Reply Brief filed June 28, 2010 (“Reply Br.”).
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configuration change (as opposed to receiving an actual change), but the
Examiner’s reliance on Kilpatrick’s Figure 7 is misplaced in connection with
applying this proposed change to the clone as claimed. Id. Appellant also
argues various other recited limitations summarized below.

ISSUES
Under § 102, has the Examiner erred by finding that Kilpatrick:
(1)(a) applies a received proposed configuration change to a clone of
at least part of a CMDB, and (b) evaluates the modified clone as recited in
claim 1?
(2) proceeds to apply the proposed configuration change to a
corresponding resource referenced by the clone based on the evaluation as
recited in claim 2?
(3) clones the entire CMDB to produce a clone as recited in claim 3?
(4)(a) loads a set of configuration rules, and (b) evaluates data in the
clone according to the rules as recited in claim 4?

ANALYSIS
Claims 1 and 6-12
On this record, we find no error in the Examiner’s anticipation
rejection of representative claim 1. Kilpatrick’s system implements changes
to enterprise resource configurations by evaluating the risk and impact of
proposed changes before deployment. Kilpatrick, Abstract; ¶ 0004. This
process is detailed in Kilpatrick’s Figures 1A and 1B where, after receiving
a change request, configuration changes are defined in terms of proposed
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additions, deletions, or updates to CIs2 in a configuration database in step
108. Kilpatrick ¶¶ [0027-28]; Fig. 1A (steps 102-108).
Kilpatrick further details this configuration definition step in Figure 7
which is central to this dispute. Kilpatrick ¶¶ [0028], [0054-56].
Specifically, the Examiner relies on the user’s ability to add CIs—a process
beginning at step 704. Ans. 3-4, 11-12 (citing Kilpatrick ¶ [0056]; Fig. 7).
To this end, an existing CI can be cloned by copying all information from an
existing CI except its relationships to other CIs. Kilpatrick ¶ [0056]; Fig. 7
(steps 7083 and 712). Then, the cloned CI is (1) populated with additional
information via parent records or categorical information, and (2) completed.
Id. (steps 714 and 716).
Despite Appellant’s arguments to the contrary (App. Br. 7-8; Reply
Br. 5), Kilpatrick’s populating additional information and completing the
cloned CI in steps 714 and 716 fully meets applying a proposed
configuration change to the clone as claimed. As noted above, the process
of Figure 7 results from a change request, and therefore includes received
proposed configuration changes. See Kilpatrick ¶¶ [0027-28]; [0054-56];
Fig. 1A (steps 102-108). These changes include not only the clone created
responsive to this change proposal, but also any additional associated data
applied to the clone that is likewise responsive to the proposal. See id.

2 A CI record contains its own dependencies, attributes, relationships,
components, and parameters. Kilpatrick ¶ 0039. A CI’s components,
parameters, or attributes can also be changed via appropriate processes. Id.
3 Although Kilpatrick labels step 708 as “Close” in Figure 7, this is a
typographical error and should have been labeled “Clone” in light of the
corresponding discussion as Appellant acknowledges. Reply Br. 5.
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Nor does the claim preclude Kilpatrick’s evaluating this modified
clone before deployment as the Examiner indicates. Ans. 4, 11 (citing
Kilpatrick ¶ [0004]). Not only does Kilpatrick validate all CI changes via
error checking and as a batch in steps 110 and 112 of Figure 1A, but the
impact of these changes is separately determined at step 118—a step which
notably precedes implementing the changes at step 126 in Figure 1B.
Kilpatrick ¶¶ [0028-29], [0032]; Figs. 1A-1B. Thus, these changes—
including those made to the clone—are merely proposed before they are
evaluated and implemented. Therefore, to the extent that Appellant
contends that these changes are not “proposed” since they have already been
made (App. Br. 7-8), this argument is unavailing in view of Kilpatrick’s
preliminary changes and associated evaluation before implementation.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 6-12 not separately argued with
particularity.

Claims 2 and 13
We also sustain the Examiner’s rejection of representative claim 24
reciting proceeding to apply the proposed configuration change to a
corresponding resource referenced by the clone based on the evaluation.
Ans. 4, 13 (citing Kilpatrick ¶¶ [0004], [0014], [0028]). As emphasized
above, the claim does not affirmatively apply the proposed configuration
change, but rather proceeds to apply that change.

4 Although claim 2 lacks a period at the end of the claim, we treat this error
as harmless.
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Turning to the rejection, although the relied-upon passages do not
explicitly disclose a corresponding resource referenced by the clone, they
nonetheless refer to the previously discussed evaluation of proposed
configuration changes including those involving a cloned CI. See id. Since
CIs reference corresponding resources (see Kilpatrick ¶¶ [0039-40]),
Kilpatrick therefore at least proceeds to apply a proposed configuration
change to a corresponding resource referenced by a cloned CI based on the
evaluation noted above. See Kilpatrick ¶¶ [0028-29], [0032]; Figs. 1A-1B.

Claims 3 and 14
We do not, however, sustain the Examiner’s rejection of claim 3
reciting cloning the entire CMDB to produce a clone. Ans. 4-5, 13.
Although an existing CI record is cloned as noted above, Kilpatrick is silent
regarding cloning the entire CMDB as claimed. Apparently recognizing this
deficiency, the Examiner takes the position that if the CMDB has more than
one record, repeating Kilpatrick’s cloning process in paragraph [0056]
would clone the entire CMDB. Ans. 13. But as Appellant indicates (Reply
Br. 8), the Examiner’s position is merely speculative and factually
unsupported within the four corners of Kilpatrick. This is a crucial defect in
establishing inherent anticipation which requires that Kilpatrick necessarily
clones the entire CMDB—which it does not. See In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999) (“Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.”) (citations omitted).
That said, to the extent that cloning the entire CMDB would have been
obvious over Kilpatrick is a question not before us; nor will we speculate in
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that regard here in the first instance on appeal. But what we can say is that
the Examiner’s anticipation rejection is untenable on this record.
We are therefore constrained to find that the Examiner erred in
rejecting (1) claim 3, and (2) claim 14 which recites commensurate
limitations.5

Claims 4 and 15
We sustain the Examiner’s rejection of representative claim 4 reciting,
in pertinent part, (1) loading a set of configuration rules, and (2) evaluating
data in the clone according to the rules. We see no error in the Examiner’s
reliance on Kilpatrick’s paragraph [0004] in connection with this feature
(Ans. 14)—a passage that was also relied on in connection with the clone
evaluation step in claim 1 as noted above. The pre-deployment evaluation of
proposed changes discussed in this passage refers to, among other things,
Kilpatrick’s validating all CI changes before implementation—including
those involving a cloned CI as noted above. See Kilpatrick ¶¶ [0004],
[0028-29], [0032]; Figs. 1A (steps 110, 112, 118); Fig. 1B (step 126). To
perform these pre-deployment evaluations, some form of “configuration
rules” would be loaded to at least form a basis for evaluation.
To be sure, the Examiner’s additional reliance on paragraph [0054] in
this regard (Ans. 5, 14) is problematic since these preliminary evaluations
occur before creating or updating CIs (and the associated clones). See
Kilpatrick ¶ [0054] (referring to demand management activities in step 104

5 Whether claim 10 is commensurate with cloning the entire CMDB despite
omitting the word “entire” (particularly when compared with claim 11) is a
question we decline to reach, for it was not raised before us on appeal.
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of Figure 1 in connection with the preliminary evaluations). Therefore, data
in the clones cannot be evaluated by these preliminary evaluations since they
occur before the clones are created in step 108 and the associated process in
Figure 7. See Kilpatrick ¶ [0028]. Nevertheless, we treat this error as
harmless, for apart from merely reiterating the alleged failure of Kilpatrick’s
steps following creating the clone in Figure 7 as disclosing the disputed
limitations (Reply Br. 8-9), Appellant does not persuasively rebut the
Examiner’s reliance on Kilpatrick’s paragraph [0004] when considered in
light of its associated evaluation functionality noted above.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 4, and claim 15 not separately argued with particularity.

CONCLUSION
Under § 102, the Examiner did not err in rejecting claims 1, 2, 4-13,
15, and 16, but erred in rejecting claims 3 and 14.

ORDER
The Examiner’s decision rejecting claims 1-16 is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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