Ex Parte Marsnik et al

Board of Patent Appeals and Interferences

Nov 29, 2011

11227762 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JAMIE B. MARSNIK, OMKAR A. NALAMWAR,
and THOMAS M. SMALLEY
_____________

Appeal 2009-012577
Application 11/227,762
Technology Center 2100
______________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
DAVID M. KOHUT, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 14.
We reverse.
INVENTION
The invention is directed to a method of assessing value of a computer
program installed in a company computer. See page 2 of Appellants’
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Application 11/227,762

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Specification. Claim 1 is representative of the invention and is reproduced
below:
1. A computer implemented method for assessing value of a
computer program installed in a computer of a company, said
method comprising three or more of the following steps:

determining an order that the computer program is started
in a startup sequence of the computer;

determining whether the computer is used for production
purposes;

determining how frequently or at what interval said
computer program or data generated by said computer program
is backed up;

determining an order or time in which said computer
program is scheduled for recovery in event of disaster;

determining a type of a library which contains said
computer program;

determining an amount of usage of said computer
program by said company; and

determining how recently the computer program or data
generated by said computer program has been accessed; and

said method further comprising the step of applying
respective weighting factors to results of said three or more
determining steps and combining the weight factored results to
yield an assessed value of the computer program.

REFERENCES
Read US 2005/0049973 A1 Mar. 3, 2005
Sherkow US 2005/0149447 A1 Jul. 7, 2005

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Application 11/227,762

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REJECTION AT ISSUE
The Examiner has rejected claims 1 through 14 under 35 U.S.C.
§ 103(a) as being obvious over Read in view of Sherkow. The Examiner’s
rejection is on pages 3 through 10 of the Answer. 1

ISSUE
Appellants argue on pages 20 and 21 of the Brief that the Examiner’s
rejection of independent claim 1 is in error because the references do not
teach a determination of whether the computer is used for production
purposes. 2 These arguments present us with the issue: did the Examiner err
in finding that Sherkow teaches a determination of whether the computer is
used for production purposes as claimed?3

ANALYSIS
We have reviewed Appellants’ arguments in the Brief and we concur
with Appellants’ conclusion that the Examiner erred in finding the
combination of the references teaches a determination of whether the
computer is used for production purposes.

1 Throughout this decision we refer to the Answer dated February 4, 2009.
2 Throughout this decision we refer to the Brief dated December 4, 2008.
3 We note that Appellants’ arguments directed to this rejection present
additional issues. One directed to a weighting of variables which we find
unpersuasive. The second directed to the Examiner’s rationale to combine
the references, which the Examiner has not addressed. We will do not
provide further analysis of these additional issues as the above identified
issue is dispositive of the Appeal.
Appeal 2009-012577
Application 11/227,762

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Independent claim 1 recites a method that performs three of a list of
steps. The Examiner has found that Read teaches the step of determining an
amount of usage and determining how recently the computer program or
data generated by the computer program has been accessed. Answer 3. We
concur with these findings by the Examiner. Further, the Examiner finds
that Sherkow teaches keeping historical logs which track the usage of the
computer and that this teaching meets the claimed step to determine whether
the computer is used for production. Answer 4, 12. Appellants argue that
generating a log file is not determining whether a computer is used for
production purposes. Brief 20. We concur. The Examiner has not found or
otherwise made a showing that the references teach any of the other steps
recited in claim. Accordingly, we do not find that the Examiner has shown
that the combination of the references teaches a method comprising three or
more of the listed steps. Thus, we will not sustain the Examiner’s rejection
of independent claim 1 or claims 2-6 which depend thereupon.
Independent claims 7, 13, and 14 recite similar limitations directed to
performing three or more tasks from a list of steps and the Examiner applies
the same teachings of Read and Sherkow. Accordingly, we will not sustain
the Examiner’s rejection of claims 7 through 14 for the same reasons
discussed with respect to claim 1.

CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claims 1 through 14.
DECISION
The decision of the Examiner to reject claims 1 through 14 is
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Application 11/227,762

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reversed.4

REVERSED

msc

4 We have decided the appeal before us. However, should there be
further prosecution of these claims; the Examiner's attention is directed to
recently issued guidance from the Director and our reviewing court as
follows:
Should there be further prosecution of claims 13 which recites a
computer readable medium the Examiner’s attention is directed to In re
Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) and the Director’s Memo
Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat.
Office 212 (Feb. 23, 2010).
Should there be further prosecution of claim 7, the Examiner’s
attention is directed to Ariad Pharms., Inc. v. Eli Lilly & Co, 598 F.3d 1336
(Fed. Cir. 2010) (en banc); Aristocrat Techs. Australia Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328 (Fed. Cir. 2008); and Suppl. Examination Guidelines
for Determining Compliance with 35 U.S.C. 112 and for Treatment of
Related Issues in Patent Applications, 76 Fed. Reg. 7162, 7167-71
(Feb. 9, 2011).