Ex Parte Rivera et al

Board of Patent Appeals and Interferences

Jun 4, 2009

10680039 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THEODORE F. RIVERA, ADAM TATE, and SCOTT A. WILL
____________________

Appeal 2008-004470
Application 10/680,039
Technology Center 2100
____________________

Decided:1 June 5, 2009
____________________

Before JOHN C. MARTIN, HOWARD B. BLANKENSHIP, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal the Examiner’s final rejection of claims 1-16 under
35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
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I. STATEMENT OF THE CASE
A. INVENTION
According to Appellants, “[t]he present invention is a system and
method for assessing the probability of business transaction success in a
target computer environment. The system gathers defect data for the all [sic]
software applications used to complete a given business transaction,
analyzes the defect data across these software applications, and predicts a
business transaction failure rate within the computer environment” (Spec. 2,
¶ [0007]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:

1. A method for assessing the probability of
transaction success of a business transaction that will interact
with one or more software applications in a target computer
environment, the method comprising the steps of:

gathering a plurality of defect data items corresponding
to the first software application;

relative to a specific business transaction in a target
computer environment and for each item of the gathered defect
data, generating an item-specific predicted business transaction
failure rate based on the defect data items;

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combining each item-specific predicted business
transaction failure rate so as to generate a combined business
transaction failure rate within the computer environment; and

generating an output indicating the combined business
transaction failure rate within the computer environment.

C. REJECTIONS
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Siegel U.S. 5,548,718 Aug. 20, 1996

Claims 1-16 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Siegel.

II. ISSUES
1) Have Appellants shown the Examiner erred in
finding that Siegel discloses “an item-specific predicted
business transaction failure rate based on the defect data items”
(claim 1)?
2) Have Appellants shown the Examiner erred in
finding that Siegel discloses “combining each item-specific
predicted business transaction failure rate” (claim 1)?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
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Siegel
1) Siegel’s mapping mechanism determines a “hazard
rate” for each “area” of a software product by dividing the
number of area failures by the number of area “hits” (col. 5, ll.
61-65), where an “area” is a logical grouping of software
commands (col. 4, l. 67 – col. 5, l. 1) and a “hit” refers to one
execution of a command (col. 5, l. 65).
2) The mapping mechanism determines a “mean hits-
to-failure” for each area by inverting the respective hazard rate
(col. 6, ll. 1-5).
3) The mapping mechanism normalizes the mean
hits-to-failure for each area by dividing it by the total mean
hits-to-failure for all areas (col. 6, ll. 5-10).

IV. PRINCIPLES OF LAW
Under 35 U.S.C. § 102, “[a] single prior art reference that discloses,
either expressly or inherently, each limitation of a claim invalidates that
claim by anticipation.” Perricone v. Medicis Pharm.Corp., 432 F.3d 1368,
1375 (Fed. Cir. 2005) (citation omitted). “Anticipation of a patent claim
requires a finding that the claim at issue ‘reads on’ a prior art reference.”
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999).
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
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F.3d 1367, 1372 (Fed. Cir. 2000)). The claims must be given the broadest
reasonable interpretation consistent with the specification. In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997). However, “limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).
If the body of a claim fully and intrinsically sets forth all of the
limitations of the claimed invention, and the preamble merely states, for
example, the purpose or intended use of the invention, rather than any
distinct definition of any of the claimed invention’s limitations, then the
preamble is not considered a limitation and is of no significance to claim
construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999); see also Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997) (“[W]here a patentee defines a structurally complete invention in
the claim body and uses the preamble only to state a purpose or intended use
for the invention, the preamble is not a claim limitation.”).

V. ANALYSIS
35 U.S.C. § 102
In the Appeal Brief, Appellants argue that Siegel does not disclose
“the action of (or a circuit for) generating ‘an item-specific predicted
business transaction failure rate based on the defect data items’” (App. Br.
5). With respect to this limitation, Appellant further argues that the cited
teaching of Siegel “discloses only a system in which a mapping mechanism
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receives failure-related data for an area of a single application, not for a
business transaction that can interact with several different applications, as
recited in the independent claims.” (App. Br. 5-6; emphasis added).
The Examiner responds that Siegel discloses the above limitation by
way of generating a “failure rate” for each of “multiple commands that are
executed by the users as transactions in a computer environment” (Ex. Ans.
8-9). The Examiner also responds that the “limitations of claim 1 are merely
directed to a single software application” and, in that regard, notes that
“claim 1 recites ‘a business transaction that will interact with one or more
software applications . . .’ and ‘gathering plurality of defect data items
corresponding to the first software application’” (Ex. Ans. 8; Examiner’s
emphasis).
In view of the above, we address whether claim 1 requires a “business
transaction” that interacts with more than one software application or,
alternatively, may interact with only one software application. We also
address whether Siegel discloses “an item-specific predicted business
transaction failure rate based on the defect data items” (claim 1).
We give the claims their broadest reasonable interpretation. See
Bigio, 381 F.3d at 1324. Since the language “for assessing the probability of
transaction success of a business transaction that will interact with one or
more software applications in a target computer environment” is recited in
the preamble of claim 1, we will not limit claim 1 to that language. In
particular, we find the preamble is not limiting, but rather recites the purpose
or intended use of the claimed invention. See Pitney Bowes, Inc., 182 F.3d
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at 1305; see also Rowe v. Dror, 112 F.3d at 478.
However, even assuming the preamble were limiting in this instance,
contrary to Appellants’ arguments, the preamble of claim 1 would not limit
the recited “business transaction” to being a transaction that interacts with
several different software applications (App. Br. 5-6). We note that the
language of the preamble of claim 1 permits a “business transaction” that
interacts with a single software application because the preamble recites “a
business transaction that will interact with one or more software
applications” (emphasis added). The terms “one or more” allow for any
number of software applications. Thus, even assuming the preamble were
limiting in this instance, we would interpret the recited “business
transaction” as reading on a transaction that interacts with only one software
application.
Moreover, the steps of claim 1 permit a “business transaction” that
interacts with a single software application because the “defect data items,”
from which each “item-specific predicted business transaction failure rate” is
generated, are recited as “corresponding to the first software application”
(claim 1; emphasis added). That is, the “defect data items” are not recited as
corresponding to more than one software application, e.g., as corresponding
to first and second software applications. Accordingly, for the above
reasons, we interpret the recited “business transaction” as reading on a
transaction that interacts with only one software application.
We now address whether Siegel discloses “an item-specific predicted
business transaction failure rate based on the defect data items” (claim 1).
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With respect to this limitation, claim 1 particularly recites “an item-specific
predicted business transaction failure rate” which is generated “for each item
of the gathered defect data” but also “based on the defect data items”
(emphasis added). From the language of claim 1, we find it unclear as to
whether claim 1 permits a one-to-one correspondence between each “defect
data item” and “item-specific predicted business transaction failure rate.”
However, the Specification states that “for each item of the gathered defect
data, i.e. each potential factor for transaction failure given the known defect,
the system generated a predicted business transaction failure rate based upon
that item” (Spec. 5, ¶ [0017]; emphasis added). Thus, consistent with the
Specification, we interpret claim 1 as permitting a one-to-one
correspondence between each “defect data item” and “item-specific
predicted business transaction failure rate.”
In view of our interpretation of claim 1, consistent with the
Specification, we agree with the Examiner’s finding that Siegel discloses
“for each item of the gathered defect data, generating an item-specific
predicted business transaction failure rate based on the defect data items.”
Siegel’s mapping mechanism determines a “hazard rate” for each area of a
software product by dividing the number of failures in an “area” by the
number of “hits” in the area (FF 1). The mapping mechanism also
determines a “mean hits-to-failure” for each area by inverting the respective
hazard rate (FF 2). Thus, just as claim 1 recites “an item-specific predicted
business transaction failure rate” that is generated for each “defect data
item,” Siegel discloses a mean hits-to-failure that is generated for each
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hazard rate. We conclude an artisan would have understood the recited
“defect data item” as reading on Siegel’s hazard rate, and would have further
understood the recited “item-specific predicted business transaction failure
rate” as reading on Siegel’s mean hits-to-failure.
In view of the above, we conclude Appellants have not shown the
Examiner erred in finding that Siegel discloses “an item-specific predicted
business transaction failure rate based on the defect data items” (claim 1).
In the Appeal Brief, Appellants also argue that Siegel “does not
disclose the action of (or a circuit for) ‘combining each item-specific
predicted business transaction failure rate’” (App. Br. 5). With respect to
this limitation, Appellants further argue that “Siegel is only determining a
mean hits-to-failure for a software product (which, as discussed above, is a
single software application, such as a word processor) by normalizing the
hits-to-failure of each area (an area being a portion of an application, such as
a font handler or a file manipulation module) that is part of a single software
product” (App. Br. 7).
The Examiner responds that Siegel discloses the above limitation by
way of combining failure rates to generate a software reliability metric (Ex.
Ans. 9). As previously noted, the Examiner also responds that the
“limitations of claim 1 are merely directed to a single software application”
(Ex. Ans. 8).
In view of the above, we repeat our conclusion that the recited
“business transaction” of claim 1 reads on a transaction that interacts with a
single software application. We now address, below, whether Siegel
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discloses “combining each item-specific predicted business transaction
failure rate” (claim 1).
We agree with the Examiner’s finding that Siegel discloses this
limitation by way of generating the software reliability metric. In doing so,
Siegel’s mapping mechanism normalizes the mean hits-to-failures by
dividing the mean hits-to-failure for each area by the total mean hits-to-
failure for all areas (FF 3). We conclude an artisan would have understood
this normalization of each mean hits-to-failure (i.e., this division by the
aggregate of all mean hits-to-failures) to be “combining” the means hit-to-
failures of Siegel. As such, since we have already concluded an artisan
would have understood the recited “item-specific predicted business
transaction failure rate” as reading on Siegel’s mean hits-to-failure (see
above), we further conclude an artisan would have understood the recited
“combining each item-specific predicted business transaction failure rate” as
reading on Siegel’s normalization of each mean hits-to-failure.
In view of the above, we conclude Appellants have not shown the
Examiner erred in finding that Siegel discloses “combining each item-
specific predicted business transaction failure rate” (claim 1). Appellants
also have not shown the Examiner erred in finding that Siegel discloses “an
item-specific predicted business transaction failure rate based on the defect
data items” (claim 1). Accordingly, Appellants fail to show that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b) as anticipated
by Siegel.
Appellants do not provide separate arguments for independent claim 9
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or dependent claims 2-8 and 10-16 (depending from claims 1 and 9,
respectively). Therefore, Appellants fail to show that the Examiner erred in
rejecting claims 1-16 under 35 U.S.C. § 102(b) as anticipated by Siegel.

CONCLUSIONS OF LAW
(1) Appellant has not shown the Examiner erred in finding that
claims 1-16 are anticipated by Siegel.
(2) Claims 1-16 are not patentable.

DECISION
We affirm the Examiner’s decision rejecting claims 1-16 under
35 U.S.C. § 102(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

msc

Gerald R. Woods
IBM Corporation T81/503
PO Box 12195
Research Triangle Park NC 27709