Ex Parte Lun et al

Patent Trial and Appeal Board

Apr 30, 2013

11530250 (P.T.A.B. Apr. 30, 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.
11/530,250 09/08/2006 Kei-Leung Albert Lun CA920060028US1 (048) 9322
46320 7590 05/01/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
THIAW, CATHERINE B
ART UNIT PAPER NUMBER
2493
MAIL DATE DELIVERY MODE
05/01/2013 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 KEI-LEUNG ALBERT LUN, TINNY MEI CHI NG,
LINH DINH NGUYEN, and
CHRISTOPHER PAUL PARSONS
____________________

Appeal 2010-011018
Application 11/530,250
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JUSTIN BUSCH, and HUNG H. BUI,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011018
Application 11/530,250

2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction
Appellants’ invention relates to “enterprise computing and network
administration, and more particularly to the analysis of an information
architecture of multiple data repositories.” Spec. ¶ [0001].

STATEMENT OF THE CASE

Exemplary Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A contextual analysis method for an information
architecture comprising:
identifying by contextual analysis logic executing in a
host computing platform a set of roles accessing information
within the information architecture;
locating artifacts within the information architecture and
determining information systems providing access to the
located artifacts;
linking the roles in the set with the determined
information systems; and,
producing a top-down, multi-faceted contextual view of
the information architecture with the roles, artifacts and
information systems, the view showing a relationship between
different aspects of usage of artifacts in the information
architecture according to different roles of different users.

Appeal 2010-011018
Application 11/530,250

3
References
Kulkarni US 5,848,243 Dec. 8, 1998
Salim US 2002/0035593 A1 Mar. 21, 2002
Fischer US 2007/0156649 A1 Jul. 5, 2007

Rejections
Claims 9-14 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 3-4.
Claims 1-14 have been rejected under 35 U.S.C. § 103(a) as being
unpatentable over Salim, Kulkarni, and Fischer. Ans. 4-17.

ISSUES
Appellants state that they have filed an amendment to their
Specification on January 27, 2010, arguing that the amendment obviates the
Examiner’s rejection of claims 9-10 under 35 U.S.C. § 101. App. Br. 7.
Appellants argue claim 1 is not obvious in view of the cited prior art.
App. Br. 7-12. Specifically, Appellants argue that the Examiner has not
addressed the limitation of “the view showing a relationship between
different aspects of usage of artifacts in the information architecture
according to different roles of different users,” as recited in independent
claims 1, 7, and 9. App. Br. 11.
Issue 1: Has the Examiner erred in rejecting claims 9-14 as being
directed to non-statutory subject matter?
Issue 2: Has the Examiner erred in rejecting claims 1-14 as being
obvious over the combination of Salim, Kulkarni, and Fischer?
Appeal 2010-011018
Application 11/530,250

4

ANALYSIS
We have only considered those arguments Appellants actually raised
in the Appeal Brief. Arguments Appellants could have made but chose not to
make in the Appeal Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). We have reviewed the
Examiner’s rejections in light of Appellants’ arguments that the Examiner
has erred. We disagree with Appellants’ conclusions.
Appellants’ amendment to the Specification filed on January 27,
2010, has not been entered. Therefore, we sustain the Examiner’s rejection
of claims 9-14 under 35 U.S.C. § 101 pro forma. 1
The Examiner finds Fischer discloses the disputed limitation. The
Examiner points out paragraphs 12 through 14 of the Final Office Action
mailed August 27, 2009, apply Fischer to the disputed limitation and provide
a basis for the combination of Fischer with Salim and Kulkarni. Ans. 17-18
(paragraph 38). Appellants have not apprised us of error in the Examiner’s
application of Fischer to the disputed limitation in paragraph 13, nor in the
Examiner’s rationale for combination in paragraph 14. Therefore, we sustain
the Examiner’s rejection of independent claims 1, 7, and 9, as well as
dependent claims 2-5, 8, and 10-14, which depend therefrom.

1 We further note that Appellants acknowledge the problem with the claim
through their submitted amendment, yet the submitted amendment retains
the language covering media that can “transport” the program. Moreover,
the “computer usable medium” language used in claims 9-14 is not able to
be corrected by merely eliminating language in the Specification. We direct
Appellants to Director’s Memo Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
Appeal 2010-011018
Application 11/530,250

5
DECISION
For the above reasons, the Examiner’s rejection of claims 1-14 is
affirmed.
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

ke