Ex Parte Morozov

Patent Trial and Appeal Board

Sep 27, 2017

12570628 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
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.
12/570,628 09/30/2009 Vitaly Morozov 0081-161001/08-023-US 1497
93236 7590 09/29/2017
Brake Hughes Bellermann LLP
c/o CPA Global
900 Second Avenue South
Suite 600
Minneapolis, MN 55402
EXAMINER
VO, CECILE H
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
docketing@brakehughes.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VITALY MOROZOV1
Appeal 2017-002306
Application 12/570,628
Technology Center 2100
Before LARRY J. HUME, JOHN P. PINKERTON, and
KIMBERLY McGRAW, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—31. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is BMC Software, Inc.
App. Br. 1.
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Application 12/570,628
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention "relate[]
generally to the field of ITIL®-based (Information Technology Infrastructure
Library) Configuration Management Databases (CMDBs). . . . [which] are
emerging as a prominent technology for Enterprise Management Software."
Spec. 12.
Exemplary Claim
Claims 1,9, 16, and 21 are independent. Claim 1, reproduced below,
is representative of the subject matter on appeal (emphases, labeling, and
formatting added to contested limitations):
1. A computer system comprising:
a programmable control device programmed to perform
resource reconciliation for a configuration management
database (CMDB) having a plurality of data partitions stored in
a memory medium comprising:
accessing metadata hierarchy information describing one
or more unidentified resources of configuration objects stored
within a data partition in the CMDB;
[LI] creating a list of all candidate classes for each of
the one or more unidentified resources of the configuration
objects,
[L2] wherein the list of all candidate classes is
determined by the application of one or more specified
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Mar. 4, 2016); Reply Brief ("Reply Br.," filed Nov. 22, 2016); Examiner's
Answer ("Ans.," mailed Sept. 22, 2016); Final Office Action ("Final Act.,"
mailed July 10, 2015); and the original Specification ("Spec.," filed
Sept. 30, 2009).
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reconciliation properties including identifying downstream-
el asses and upstream classes', and
identifying each of the one or more unidentified
resources of the configuration objects with a resource stored
within another data partition in the CMDB, wherein the act of
identification considers resources of the another data partition
in the CMDB that are instances from any of the candidate
classes in the list of all candidate classes.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Trinon et al. ("Trinon") US 2006/0136459 A1 June 22, 2006
Robinson et al. ("Robinson") US 2009/0319932 Al Dec. 24, 2009
Rejections on Appeal
R1. Claims 1—27 stand rejected under pre-AIA 35 U.S.C. § 102(e)
as being anticipated by Robinson. Final Act. 3.
R2. Claims 28—31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Robinson and Trinon. Final Act. 11.
CFAIM GROUPING
Based on Appellant's arguments (App. Br. 7—11), we decide the
appeal of anticipation Rejection R1 of claims 1—27 on the basis of
representative claim 1.
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Remaining claims 28—31 in Rejection R2, not argued separately or
substantively, stand or fall with the respective independent claim from which
they depend.3
ISSUE
Appellant argues (App. Br. 7—11; Reply Br. 2—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by
Robinson is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a
computer system that includes "a programmable control device programmed
to perform resource reconciliation for a configuration management database
(CMDB) having a plurality of data partitions stored in a memory medium"
that includes, inter alia, the functions in limitations LI and L2, as recited in
claim 1?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1—31
and, unless otherwise noted, we incorporate by reference herein and adopt as
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
Limitation LI — Creating a List of All Candidate Classes For
Each of the One or More Unidentified Resources of the
Configuration Objects
Appellant contends the Examiner erred in equating the purportedly
simple priority list of Robinson with the recited "list of all candidate classes
for each of the one or more unidentified resources of the configuration
objects." App. Br. 8 (citing Final Act. 12—14). Appellant further argues
"[t]he Office has provided no evidence that 'a simple priority list' is
equivalent to 'a list of all candidate classes for each of the one or more
unidentified resources of the configuration objects.'" App. Br. 8. Appellant
also argues Robinson's prioritization lists 152, described in paragraph 22, is
not the same as a list of all candidate classes because "fal simple priority list
or the prioritization listfl 152 does not allow an identification process to
occur for unidentified resources that are instantiated in different classes."
App. Br. 9 (emphasis added).
In response, the Examiner cites Robinson paragraphs 22, 24, and 32 as
disclosing:
[a] prioritization list associated with different ones of the data
elements [that] can be associated with different levels of a
model inheritance hierarchy. The data elements in the
prioritization list can be update data that can conflict with pre­
existing data elements contained within the database (see
Robinson: paragraph [0023]); and these update data elements in
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prioritization list can be interpreted as unidentified resources,
that use to determine whether an original value for a data
element is to be retained or update. Thus, the simple priority
list or prioritization list can be interpreted as "a list of all
candidate classes for each of the one or more unidentified
resources of the configuration object".
Ans. 3^4. The Examiner further finds Robinson paragraphs 10 and 25
disclose "the simple priority list or prioritization list can be an ordered list
of data sources, whereby a data source at the top position of the list retains
highest priority, as upstream classes and a data source at the lowest position
in the list retains the lowest priority, as downstream classes." Ans. 5.
As cited by the Examiner, we find Robinson discloses:
[Pjriority array 152 can be any data structure, such as a list,
containing an ordered arrangement of data sources each
associated with a priority value. The priority array 152 can be
utilized to easily present and manage data source priority for
configuration items. In one embodiment, array 152 can be an
ordered list of data sources for an associated attribute. The first
data source in the array can be assigned the highest priority and
the last data source assumes the lowest priority .... Further, a
priority array 152 can be associated with other elements such
as classes, subclasses, and arrays of classes. That is, a priority
array 152 can be associated with any element in a data set. A
unique priority array 152 can be determined for any
reconciliation event based upon a known controlling element.
Robinson 125 (emphasis added). We also find Robinson paragraphs 31
and 32 disclose:
[0031] .... When reconciliation component 122 determines
more than one version of the Cl data exists, Cl reconciliation
can be performed. Each data source in update 130 providing Cl
information for the attribute can be determined. Engine 128 can
search table 150 for a matching priority array 152 based on
class, subclass, or attribute identity. If a priority array for the
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class, subclass, or attribute is found, engine 128 can determine
the highest priority data source. . . . The data that is
overwritten can be contained to a single attribute, a subclass,
or an entire class level of data, depending on the level at which
priority array 152 is defined for that class.
[0032] Prioritization levels can be defined and evaluated for
each level in the data element handler 124. Levels can include
classes, subclasses, class attributes and arrays of classes.
Using prioritization levels, only the elements of the defined
priority level are queried. For example, when class level
priority is defined, only classes of the Cl are queried for
defined priority arrays. Handler 124 can provide improved
reconciliation efficiency and speed.
Robinson H 31 and 32 (emphasis added).
Thus, contrary to Appellant's allegations that Robinson merely
discloses a "simple" prioritization list, we agree with the Examiner's finding
that Robinson discloses "creating a list of all candidate classes for each of
the one or more unidentified resources of the configuration object," as
recited in claim 1, as exemplified by priority lists (array) 152, which can be
implemented as a simple priority list, multiple tiered priority list, or using
classes and subclasses, instead of merely a simple priority list. See
Robinson Fig. 1; 124.4
4 Although we understand the Examiner's position (Ans. 4) with respect to
Appellant's initial argument regarding the "identifying" step that an
"identification process" is not recited ipsissimis verbis (App. Br. 9), we
agree with Appellant that the system claim does recite "identifying" and
"wherein the act of identification," which may be considered an
"identification process."
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Limitation L2 — Wherein the List of All Candidate Classes is
Determined by the Application of One or More Specified
Reconciliation Properties Including Identifying Downstream
Classes and Upstream Classes
Similar to Limitation LI, supra, Appellant contends:
A person of ordinary skill in the art would not equate "a simple
priority list . . . associated with different ones of the data
elements can be associated with different levels of a model
inheritance hierarchy" with "the list of all candidate classes is
determined by the application of one or more specified
reconciliation properties including identifying downstream
classes and upstream classes."
App. Br. 10. Appellant points to the Specification at paragraph 38 as
disclosing '"all candidate classes, i.e., classes upstream or downstream from
the unidentified instance'" . . . and "by identifying all candidate classes and
identifying downstream classes and upstream classes, the identification
process is enhanced and improved over prior processes which were limited
to just the class of the unidentified instance." App. Br. 10 (quoting Spec.
138).
In response, the Examiner finds Appellant's Specification (| 39;
Fig. 3) discloses downstream classes and upstream classes are classes/levels
in a hierarchy, and Robinson discloses in paragraphs 10 and 23, "the simple
priority list or prioritization list can be an ordered list of data sources,
whereby a data source at the top position of the list retains highest priority,
as upstream classes and a data source at the lowest position in the list retains
the lowest priority, as downstream classes." Ans. 5.5
5 See also Robinson 122 ("Each prioritization list 152 can be associated
with a data element, definable at a variety of levels. Different ones of the
data elements can be associated with different levels of a model inheritance
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Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitations of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Accordingly, we sustain the
Examiner's anticipation rejection of independent claim 1, and grouped
claims 2—27 that fall therewith. See Claim Grouping, supra.
§103 Rejection R2 of Claims 28—31
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R2 of claims 28—31 under § 103 (see App. Br. 11),
we sustain the Examiner's rejection of these claims. Arguments not made
are waived.* * * * * 6
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2—5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
hierarchy."); and see Robinson 135 ("When inheritance of a priority array is
permitted, interface 224 can present an inherit priority 234 selection.
Selection of the inherit priority 234 option can apply the specified priority
array to subordinate nodes in the CL"). We find these passages of Robinson
disclose upstream and downstream classes by the nature of hierarchical data
structures that include sub classes (downstream classes) that may inherit
properties of parent or upstream classes.
6 Appellant merely argues, "Trinon is not relied upon by the Office to reject
the independent claims and Trinon does not remedy the shortcoming of
Robinson. Therefore, based at least on their dependency from independent
claims 1,9, 16 and 21, Appellant respectfully requests the Board to reverse
the Examiner." App. Br. 11.
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Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS7
(1) The Examiner did not err with respect to anticipation Rejection
R1 of claims 1—27 under 35 U.S.C. § 102(e) over the cited prior art of
record, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 28—31 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1—31.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
7 In the event of further prosecution, we invite the Examiner's attention, as a
matter of claim construction, to consider whether system claim 1, reciting a
single element, i.e., "a programmable control device programmed to perform
resource reconciliation," is limited by the contested "wherein" clause
because the clause does not further limit the system/apparatus claim to a
particular structure. Our reviewing court guides that patentability of an
apparatus claim "depends on the claimed structure, not on the use or purpose
of that structure." Catalina Marketing Int'L, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 809 (Fed. Cir. 2002).
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