Ex Parte Porter

Patent Trial and Appeal Board

May 15, 2017

12712707 (P.T.A.B. May. 15, 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.
12/712,707 02/25/2010 Mark A. Porter END920100007US1 3252
37945 7590 05/17/2017
DTTKFW YFF
EXAMINER
YEE AND ASSOCIATES, P.C. SCHALLHORN, TYLER J
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. PORTER
Appeal 2015-004260
Application 12/712,707
Technology Center 2100
Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
AARON W. MOORE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—19, 21, and 22, all the pending
claims in the present application. See Claim Appendix. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to automating the processes of
organizing and analyzing client inventory data. See Abstract.
Appeal 2015-004260
Application 12/712,707
Claim 1 is illustrative:
1. A method for managing inventory data, the method
comprising:
receiving, by a processor, a first set of inventory data in a
first multiplicity of categories in a first worksheet format, the first set
of inventory data including descriptions of computer hardware;
copying the first set of inventory data to corresponding
categories of a second multiplicity of categories in a second set of
inventory data in a different standard format worksheet based on
mappings, at least some of the first multiplicity of categories differing
from the second multiplicity of categories, and subsequently
executing a first set of subroutines to standardize terms in the second
set of inventory data and add to the second set of inventory data a
specification for a processor unit identified, by the processor, based on
components of the computer hardware;
executing, by the processor, a second set of subroutines
with the second set of inventory data to sort assets described by the
second set of inventory data listed in the standard format worksheet
by asset type and determine a total count of assets in each asset type;
and
determining, by the processor, a replacement
recommendation for the computer hardware based on the specification
for the processor unit for the components of the computer hardware.
Appellant appeals the following rejections:
Rl. Claims 1, 3—15, 17—19, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Raja (US 2007/0277090 Al, Nov. 29,
2007), Etheridge {Excel® 2007 Data Analysis: Your visual blueprint™ for
creating and analyzing data, charts, and PivotTables, pub. Visual (July 23,
2007) ISBN: 9780470132296), and Yuyitung (US 8,209,687 B2, June 26,
2012); and
R2. Claims 2 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raja, Etheridge, Yuyitung, and Mensink {Plow to: Split
data table into multiple worksheets (and save time), http://www.asap-
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Appeal 2015-004260
Application 12/712,707
utilities.com/blog/index.php/2010/02/11/how-to-split-data-table-into-
multiple-worksheets/).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. We concur with Appellant’s conclusion that the Examiner erred
in finding that the combination of the references, particularly Yuyitung,
teaches or suggests adding to the second set of inventory data a specification
for a processor unit identified, as set forth in each of independent claims 1,
14, and 15.
Appellant contends, and we agree, “the Examiner has failed to allege
[in the Final Action] where the claimed ‘add’ action/step is alleged to be
taught by the cited references” (App. Br. 11). Although the Examiner makes
a finding as to where Yuyitung teaches determining computer hardware
recommendations based upon the specification of the existing hardware
inventory (see Final Act. 5), the Examiner fails to identity in the Final
Action where Yuyitung, or any other reference, teaches adding to the second
set of inventory data a specification. In the Answer, in an attempt to cure
this deficiency in the Final Action, the Examiner newly explains that
“Yuyitung teaches adding benchmark values, determined using the hardware
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Appeal 2015-004260
Application 12/712,707
specifications, to the data used for the server upgrade analysis” (Ans. 3,
citing Yuyitung 28:40-50).
However, we agree with Appellant that “[tjhere is no mention of
‘adding’ anything to a ‘second set of inventory data’, as claimed. Instead,
benchmark values are used to ‘normalize’ CPU workload data” (Reply Br.
4). Specifically, Yuyitung discloses “industry benchmarks can be employed
by the analysis program 10 to normalize the CPU workload data. . . . The
analysis program 10 can be configured to use a variety of comprehensive
CPU benchmark tables to determine the appropriate benchmark value of the
physical systems based on the server model, processors and type of
workload” (28:39-51). In other words, Yuyitung discloses “using” industry
benchmarks to normalize workload data, however, the Examiner fails to
show where Yuyitung adds such benchmarks to the second set of inventory
data, as required by the claims. At best, Yuyitung uses a specification to
normalize workload data, instead of adding a specification to inventory data.
Thus, we disagree with the Examiner’s finding that Yuyitung teaches
the “add” step, as recited in each of the independent claims. The Examiner
also does not find any of the other references of record teach this feature.
Since we agree with at least one of the arguments advanced by Appellant,
we need not reach the merits of Appellant’s other arguments.
Accordingly, we will not sustain the Examiner’s obviousness
rejections R1 and R2 of claims 1—19, 21, and 22.
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Appeal 2015-004260
Application 12/712,707
DECISION1
The decision of the Examiner to reject claims 1—19, 21, and 22 is
reversed.
REVERSED
1 In the event of further prosecution, we leave it to the Examiner to consider
if the computer readable storage device claims, claims 14—19, should also be
rejected under 35 U.S.C. § 101. We are compelled to note that the ordinary
and customary meaning of “computer readable storage medium” to a person
of ordinary skill in the art is broad enough to encompass both non-transitory
and transitory media. Appellant’s Specification clearly indicates that the
medium can be a propagation medium (see ]Hf 87—88). Signals are not
patentable eligible subject matter under § 101. In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007). See also MPEP § 2106(1) (8th ed. Rev. 9 Aug. 2012)
and Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential).
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