Ex Parte Pramer et alDownload PDFPatent Trial and Appeal BoardDec 2, 201411699211 (P.T.A.B. Dec. 2, 2014) Copy Citation 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. 11/699,211 01/26/2007 David M. Pramer 10022/732 5871 28164 7590 12/02/2014 BGL/Accenture - Chicago BRINKS GILSON & LIONE P O BOX 10395 CHICAGO, IL 60610 EXAMINER ARAQUE JR, GERARDO ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 12/02/2014 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 DAVID M. PRAMER, JOANNA M. OLSEN, JOSEPHINE L. SPENCE, TANYA S. LEAKE, and ANDREW J. BODART ___________ Appeal 2012-0036861 Application 11/699,2112 Technology Center 3600 ___________ Before BIBHU R. MOHANTY, BART A. GERSTENBLITH, and KEVIN W. CHERRY, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David M. Pramer, et al. (Appellants) seek review under 35 U.S.C. § 134 of the Examiner’s Final Rejection of claims 1–11 and 74– 93, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision refers to Appellants’ Appeal Brief (“App. Br.”), filed August 22, 2011, and Reply Brief (“Reply Br.”), filed January 6, 2012, and the Examiner’s Answer (“Ans.”) mailed November 8, 2011. 2 Appellants’ Appeal Brief identifies Accenture Global Services Limited as the real party in interest (App. Br. 1). Appeal 2012-003686 Application 11/699,211 2 Appellants’ claimed invention relates to a system for assisting users in managing their personal information technology/electronics environments (Spec. ¶ 1). Claim 80, which is reproduced below, is illustrative of the subject matter on appeal. 80. A system for managing an electronics environment comprising: a first database storing user profile data comprising data identifying an inventory and configuration of electronic components of the electronics environment, wherein the inventory and configuration data comprises information identifying a physical location of each of the electronic components within the electronics environment; a second database storing product data including compatibility and interconnection data corresponding to a specified product not included within the electronics environment; a communications interface; and a processor in communication with the first database, second database, and communications interface, the processor adapted to: compare the compatibility and interconnection data of the specified product with the data identifying the inventory and configuration of the electronic components of the electronics environment; determine, based on the comparison, whether the specified product is compatible with the electronic components of the electronics environment; and based on a determination that the specified product is not compatible with the electronic components of the electronics environment: Appeal 2012-003686 Application 11/699,211 3 identify one or more additional products that, if included in the electronics environment, would make the specified product compatible electronic components of the electronics environment; and suggest the one or more additional products to a user via the communications interface. (App. Br. 19–20, Claims App’x). Rejections Claims 1–4, 6–9, 74–77, 80–82, 84–87, 90, and 91 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Mancisidor (US 6,745,172 B1, iss. June 1, 2004). Claims 5, 10, 11, 78, 79, 83, 88, 89, 92, and 93 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mancisidor and Official Notice.3 SUMMARY OF DECISION We AFFIRM-IN-PART. ANALYSIS Claims 1–4, 6–9,and 75–77 Appellants argue claims 1–4, 6–9, and 75–77 as a group (App. Br. 13). We select claim 1 as representative, and claims 2–4, 6–9, and 75–77 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). We are not persuaded by Appellants’ argument that the Examiner erred because Mancisidor does not disclose identifying compatible products in the manner recited in claim 1 (App. Br. 13). Appellants argue that, unlike 3 Claim 79 is rejected under this combination (Ans. 17), but it is not included in the list of claims for this rejection (Ans. 14). Appeal 2012-003686 Application 11/699,211 4 the system recited in claim 1, Mancisidor is not directed to a system that determines compatibility between electronic components (Id.). Appellants also argue that “Mancisidor does not recite a database storing data identifying the inventory and configuration of electronic components of an electronics environment, let alone determining the compatibility of another product with the electronic components of the electronics environment based on that inventory and configuration data” (Id.). However, we agree with and adopt the reasoning stated in Paragraph 37 of the Examiner’s Answer on pages 27 and 28, as to why Mancisidor discloses these elements of claim 1. Thus, we sustain the rejection of claims 1–4, 6–9, and 75–77. Claims 80–82, 84–87, 90, and 91 We are persuaded by Appellants’ argument that the Examiner erred in rejecting claim 80 as anticipated by Mancisidor because Mancisidor fails to disclose “identify[ing] one or more additional products that, if included in the electronics environment, would make the specified product compatible electronic components of the electronics environment; and suggest the one or more additional products to a user via the communications interface,” as recited in claim 80 (App. Br. 9–13; Reply Br. 2–4). In the Answer, the Examiner argues that such a limitation is inherently taught by Mancisidor (Ans. 24–26). However, “[i]nherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). While the Examiner does discuss elaborate hypothetical situations where the system of Mancisidor could meet this limitation, we find that there is no evidence in the record that Appeal 2012-003686 Application 11/699,211 5 establishes that such a limitation is necessarily disclosed by Mancisidor. Thus, we cannot sustain the rejection of claim 80. Claims 81, 82, 84–87, 90, and 91 all depend from claim 80. The Examiner’s rejection of these claims relies, in part, on the same reasoning relied on by the Examiner for claim 80. As discussed above, we find that the Examiner has failed to show that Mancisidor discloses certain limitations of claim 80. Thus, we cannot sustain the rejection of those claims as well. Claim 74 Claim 74 depends from claim 1, and contains a limitation similar to the limitation discussed above for claim 80. As discussed above with respect to claim 80, we find that the Examiner has failed to show that Mancisidor inherently discloses this limitation. Thus, we cannot sustain the rejection of claim 74. Claims 5, 10, 11, and 79 Claims 5, 10, 11, and 79 all depend from claim 1. Appellants offer no separate argument for these claims besides the arguments raised with respect to claim 1. As discussed above with respect to claim 1, we did not find those arguments persuasive. Thus, we also sustain the rejection of claims 5, 10, 11, and 79. Claims 83, 88, 89, 92, and 93 Claims 83, 88, 89, 92, and 93 all depend from claim 80. The Examiner’s rejection of these claims relies, in part, on the same reasoning relied on by the Examiner for claim 80. As discussed above, we find that the Examiner has failed to show that Mancisidor inherently discloses certain limitations of claim 80. Thus, we cannot sustain the rejection of claims 83, 88, 89, 92, and 93. Appeal 2012-003686 Application 11/699,211 6 DECISION The rejections of claims 1–11 and 75–79 are affirmed. The rejections of claims 74 and 80–93 are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED-IN-PART rvb Copy with citationCopy as parenthetical citation