Ex Parte Kruempelmann et alDownload PDFPatent Trial and Appeal BoardSep 28, 201613299146 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/299,146 11/17/2011 32864 7590 09/30/2016 FISH & RICHARDSON, P,C (SAP) PO BOX 1022 MINNEAPOLIS, MN 55440-1022 FIRST NAMED INVENTOR Wulf Kruempelmann 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. 20017-028600112011 P00085 6892 EXAMINER KONERU, SUJAY ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WULF KRUEMPELMANN and CLEMENS JACOB Appeal2014-001531 Application 13/299,1461 Technology Center 3600 Before, HUBERT C. LORIN, JOSEPH A. FISCHETTI, and AMEE A. SHAH, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1--4, 6-12, and 14--20. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. 1 Appellants identify SAP AG as the real party in interest. App. Br. 1. Appeal2014-001531 Application 13/299,146 THE INVENTION Appellants claims relate to software, computer systems, and computer-implemented methods for managing information technology (IT) solution centers. Spec. i-f 1. Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A computer-implemented method for managing an information technology (IT) solution center, the method compnsmg: receiving, by a computer processor, a plurality of activities to be implemented by an information technology (IT) solution center, the plurality of activities received from one or more customers, wherein the IT solution center maintains a respective service level agreement (SLA) with each of the one or more customers, and wherein each customer's SLA specifies a maximum downtime; determining, by a computer processor, for each of the one or more customers, a list of remaining downtimes, each remaining downtime based on each customer's maximum downtime specified in each customer's SLA and each customer's total downtime that each customer has previously experienced; 2 Appeal2014-001531 Application 13/299,146 optimizing, by a computer processor, the activities based on the list of remaining downtimes such that an activity received from a customer with a higher remaining downtime has a lower priority relative to an activity received from a customer with a lower remaining downtime; and assigning, by a computer processor, the optimized activities with correlated actions, the correlated actions including at least one of: appointing, by a computer processor, one or more entries of the activities to customer relationship management or transferring, by a computer processor, one or more entries of the activities to a notification user interface. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Kloeffer et al. ("Kloeffer") Gerstel US 2007/0168874 Al US 2008/0008085 Al July 19, 2007 Jan. 10,2008 The following rejection is before us for review. 1. Claims 1--4, 6-12, 14--20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kloeffer in view of Gerstel. Final Act. 3. 3 Appeal2014-001531 Application 13/299,146 ANALYSIS We begin by construing the scope of the claims. Independent claim 1 covers a method claim, whereas independent claims 9 and 17 cover a product and system, respectively. We treat the steps of the method claim 1 differently from the functions recited in the device claims 9 and 1 7, because in the former case, these are positively recited claim elements, whereas in the latter case, the recited functions amount to no more than functional language in an article claim. As functional language, we are required to give this language weight only to the extent that the prior art is or is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). With this understanding, we find that each of independent claims 1, 9 and 1 7 require in one form or another: determining, by a computer processor, for each of the one or more customers, a list of remaining downtimes, each remaining downtime based on each customer's maximum downtime specified in each customer's SLA and each customer's total downtime that each customer has previously experienced; For all independent claims, the Examiner found the above limitation disclosed by Gerstrel in paragraphs 11-13. (Final Act. 4). The Examiner further found that "[p]ara [0011 ]-[0012] is cited by Examiner to show that Gerstel determines allowed downtime and to show that Gerstel is capable of 4 Appeal2014-001531 Application 13/299,146 determining different priorities amongst the different connections." (Answer 3). Concerning independent claim 1, which covers method steps, we do not agree with the Examiner's finding that because Gerstel is capable of performing a claimed method step, that the claim is obvious. This is because claim 1 positively recites steps in the context of a method. Since the Examiner rejects the claim under 35 U.S.C. § 103(a), these method steps must be resolved on the basis of underlying factual determinations based on the Graham factors. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Instead, the Examiner only finds that "Gerstel is capable of determining different priorities amongst the different connections" (id.), which is not the correct standard to apply here. Since claims 2--4 and 6-8 depend from claim 1, and since we cannot sustain the rejection of claim 1, the rejection of claims 2--4, and 6-8 likewise cannot be sustained. However, concerning the article claims 9 and 17, we agree with the Examiner that because these article claims use functional language, the applicable law is the prior art need only disclose structure which is capable of performing the claimed function. Schreiber, 1473. Here, the Examiner correctly found that Gerstel is capable of determining the total downtime that each customer has previously experienced (Answer 3), because Gerstel discloses a determining feature which is based on "varying priorities" (see Gerstel, para. 13) and monitors downtimes (see Gerstel, para. 11). Against 5 Appeal2014-001531 Application 13/299,146 these findings, Appellants argue that "actual downtime from failures on both links 12 and 13," "is not equivalent to" (Appeal Br. 8) the claimed "each remaining downtime based on each customer's maximum downtime specified in each customer's SLA and each customer's total downtime that each customer has previously experienced .... " This argument is unpersuasive because it is not congruent with the less strict Schreiber standard. We are also not persuaded by Appellants' argument that "the Office provides no explicit analysis or any articulated reasoning with some rational underpinning to support these conclusory statements." (Appeal Br. 11 ). To the extent Appellants seek an explicit suggestion or motivation in the references themselves, this is no longer the law in view of the Supreme Court's holding in KSR Int'! Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). We find that the Examiner has provided some articulated reasoning with some rational underpinning for why a person with ordinary skill in the art would modify the authentication subsystem in Kloeffer with the variable priority network connections of Gerstel. (Final Act. 5). Specifically, we find it reasonable to accommodate individual user connection needs by "adding different priorities based on service level would enable better more flexible support for maintaining connections for multiple SLAs (see Gerstel, [0004]-[0005])." Id. We further are not persuaded by Appellants argument that Gerstel teaches away (Appeal Br. 12) because Gerstel does not actually teach away 6 Appeal2014-001531 Application 13/299,146 from every aspect of all network connections. That is, we find that even in paragraph 20 of Gerstel (cited by Appellants as teaching away (id.)), Gerstel goes on to disclose that its system of prioritization is less rigid than that found in a fixed priority system in that it does at least consider actual downtime. See In re Gurley, 27 F.3d at 553. We also affirm the rejections of dependent claims 10-12, 14--16, and 18-20 since Appellants have not challenged such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)). CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 9-12, and 14--20 under 35 U.S.C. § 103(a). We conclude the Examiner did err in rejecting claims 1--4, and 6-8 under 35 U.S.C. § 103(a). DECISION No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 7 Copy with citationCopy as parenthetical citation