Ex Parte Paulus et al

Board of Patent Appeals and Interferences

Apr 26, 2012

11245996 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SACHAR M. PAULUS,
GUIDO WAGNER, and
GUNTER BITZ
___________

Appeal 2010-012331
Application 11/245,996
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012331
Application 11/245,996

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STATEMENT OF THE CASE
Sachar M. Paulus et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-6. We have jurisdiction under 35
U.S.C. § 6(b). Claims 7-9 have been cancelled.

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
This invention is “a knowledge processing system for risk assessment
and analysis.” Spec. 1:3-4.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer program product, tangibly
embodied in a tangible machine-readable
storage medium, for execution by a processor,
the computer program product being operable
to cause data processing apparatus to:
present a questionnaire form on display,
the form adapted to collect reporting data from
a plurality of users pertaining to a set of
measures;
receive asset data representing a set of
assets, the asset data including a respective
value for each asset in the set of assets having a
value;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 30, 2009) and Reply Brief (“Reply Br.,” filed Jun. 29,
2010), and the Examiner’s Answer (“Ans.,” mailed Apr. 29, 2010).

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receive threat data representing a set of
threats, each threat in the set of threats
potentially reducing the value of one or more of
the assets in the set of assets;
receive measures data representing the
set of measures, each measure in the set of
measures protecting the value of one or more
assets such that i) asset data representing one of
the assets in the set of assets or ii) measures
data representing a measure in the set of
measures, is based on reporting data collected
from the plurality of users through the
questionnaire form;
automatically calculate a loss expectancy
based upon the value of the assets, a potential
reduction of value cause by the threats, and a
protection of value caused by the measures;
receive project data representing a
simulated project, the simulated project
modifying one or more assets, threats, or
measures;
automatically calculate a revised loss
expectancy based upon the value of the assets,
the potential reduction of value caused by the
threats, and the protection of the value caused
by the measures as modified by the simulated
project;
automatically calculate a savings caused
by the simulated project based upon the loss
expectancy and revised loss expectancy; and
generate a report, the report including at
least one of the savings caused by one or more
simulated projects.

Appeal 2010-012331
Application 11/245,996

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Goldberg US 2007/0016955 A1 Jan. 18, 2007
Huaqiang Wei, et al., Cost-Benefit Analysis for Network Intrusion
Detection Systems, CSI 28th Ann. Comp. Sec. Conf., 1-14 (Oct. 29-31,
2001) (Hereinafter, CSI).

Scott Berinato, Finally, a real return on security spending, 15 CIO, 43
(Feb. 15, 2002) (Hereinafter, Berinato).

The following rejections are before us for review:
1. Claims 1 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goldberg and CSI.
2. Claims 2, 3, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goldberg, CSI, and Berinato.

ISSUE
The issue is whether claims 1 and 4 are unpatentable under 35 U.S.C.
§ 103(a) over Goldberg and CSI. Specifically, the major issue is whether
Goldberg teaches a computer program product that is operable to cause a
processor to present a questionnaire form on display, the form adapted to
collect reporting data from a plurality of users pertaining to a set of
measurers. The rejection of claims 2, 3, 5, and 6 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Goldberg, CSI, and Berinato.

Appeal 2010-012331
Application 11/245,996

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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Examiner states that “[a] questionnaire is defined by Merriam-
Webster’s dictionary as ‘a set of questions for obtaining
statistically useful or personal information from individuals.’”
Ans. 8.
2. Goldberg states “[a]fter creating the mandatory model entities with
the Threat Builder, the analyst is prompted to utilize the Model
Explorer Tool for entering details the required for calculation of
threat risk and countermeasure cost-effectiveness.” Para. [0153].

ANALYSIS
The rejection of claims 1 and 4 under § 103(a) as being unpatentable over
Goldberg and CSI
We are persuaded by the Appellants’ argument that the Examiner
erred in finding that Goldberg teaches a computer program product that is
operable to cause a processor to present a questionnaire form on display.
Reply Br. 4-7. See also App. Br. 6-8. We agree with the Appellants that the
Examiner’s own cited definition of questionnaire (see FF 1) undermines the
Examiner’s assertion that Goldberg’s paragraph [0153]’s description of
prompting an analyst to use a Model Explorer to enter details (see FF 2)
teaches the limitation at issue. See Reply Br. 6-7. A prompt to an analyst
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fails to teach the presentation of a form having a set of questions on a
display, where the form is adapted to collect reporting data from a plurality
of users pertaining to a set of measurers. Further, we also agree with the
Appellants that the lists of inputted information described in Goldberg’s
paragraphs [0033], [0035]-[0041], [0048]-[0053], and [0153]-[0154] fail to
teach the limitation at issue. See Reply Br. 7-8. Displaying a list of
information, such as available assets, for selection (see para. [00152]) fails
to teach the limitation at issue, especially in light of the Examiner’s
definition of questionnaire.
We note that the Examiner did not rely upon the CSI reference to
teach the limitation at issue or provide any other evidence or rationale as to
the use of a questionnaire for inputting information. The Examiner has
failed to establish a prima facie showing of obviousness because of this
missing item.
Independent claim 4 recites a similar limitation and is rejected using
the same rationale (see Ans. 3). Accordingly, the rejection of claims 1 and 4
under 35 U.S.C. § 103(a) as being unpatentable over Goldberg and CSI is
reversed.

The rejection of claims 2, 3, 5, and 6 under § 103(a) as being unpatentable
over Goldberg, CSI, and Berinato
This rejection is directed to claims dependent on claim 1, whose
rejection we have reversed above. For the same reason, we will not sustain
the rejection of claims 2, 3, 5, and 6 over the cited prior art. Cf. In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious
if the independent claims from which they depend are nonobvious.").
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DECISION
The decision of the Examiner to reject claims 1-6 is reversed.

REVERSED

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