Ex Parte Sailer et al

Patent Trial and Appeal Board

Feb 5, 2016

12568079 (P.T.A.B. Feb. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/568,079 09/28/2009 Anca Sailer
48063 7590 02/09/2016
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
YOR920090098US 1 5679
EXAMINER
GOLDBERG, IV AN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/09/2016 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):
nyoffice@rml-law.com
wel@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANCA SAILER, HIDAYATULLA H. SHAIKH,
DENNIS G. SHEA, YANG SONG, andMAHESHVISWANATHAN
Appeal2013-007651 1
Application 12/568,0792
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and AMEE A. SHAH,
Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 25, 2013) and Reply Brief ("Reply Br.," filed May 29, 2013), and
the Examiner's Answer ("Ans.," mailed May 8, 2013) and Non-Final Office
Action ("Non-Final Act.," mailed January 16, 2013).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 2.
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Application 12/568,079
CLAIMED INVENTION
Appellants' claimed invention "relates to the electrical and electronic
arts, and, more particularly, to information technology (IT) and the like"
(Spec. 1, 11. 5---6).
Claims 1 and 25, reproduced below, are illustrative of the subject
matter on appeal:
1. A method comprising the steps of:
facilitating registration of a plurality of customers, each
having an information technology infrastructure, with a
manager of remote services;
facilitating registration of a plurality of service partners
with said manager;
detecting, by said manager in an absence of customer
intervention, of an issue with a given one of said information
technology infrastructures of a given one of said customers;
responsive to said detecting, facilitating responses from a
subset of said service partners for potential selection to address
said issue;
ranking said subset of said service partners based at least
in part on ratings of said service partners in a rating database;
and
assigning in an absence of customer intervention a top-
ranked one of said service partners to address said issue,
wherein one or more steps of said method are performed by one
or more hardware devices.
25. An apparatus comprising:
means for facilitating registration of a plurality of
customers, each having an information technology
infrastructure, with a manager of remote services;
means for facilitating registration of a plurality of service
partners with said manager;
means for detecting, by said manager in an absence of
customer intervention, of an issue with a given one of said
information technology infrastructures of a given one of said
customers;
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Application 12/568,079
means for, responsive to said detecting, facilitating
responses from a subset of said service partners for potential
selection to address said issue;
means for ranking said subset of said service partners
based at least in part on ratings of said service partners in a
rating database; and
means for assigning in an absence of customer
intervention a top-ranked one of said service partners to address
said issue.
REJECTIONS3
Claims 1-25 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1--4, 12-15, 19-21, 24, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Allen (US 2003/0182413 Al, pub. Sept. 25,
2003) and Hussain (US 2006/0288118 Al, pub. Dec. 21, 2006).
Claims 5, 7-10, 17, 18, and 23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Allen, Hussain, and Appellants' Admitted Prior Art
("AAP A").
Claims 6, 11, 16, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Allen, Hussain, and Zang (US 2004/0220910 Al,
pub. Nov. 4, 2004).
ANALYSIS
Written Description
In rejecting claims 1-25 under 35 U.S.C. § 112, first paragraph, the
Examiner finds that there is no written description support in the
3 The rejection of claim 25 under 35 U.S.C. § 112, second paragraph, has
been withdrawn. Ans. 13.
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Application 12/568,079
Specification for a manager detecting an issue of a customer in an absence
of customer intervention, i.e., "detecting, by said manager in an absence of
customer intervention, of an issue with a given one of said information
technology infrastructures of a given one of said customers," as recited in
independent claim 1 and similarly recited in independent claim 25 (Non-
Final Act. 5-7). The Examiner also asserts, "[m]oreover, contrary to
Applicant's [sic] remarks on pg. 16 of the remarks of 11/21/12, there does
not seem to be support in the specification for barring all human action
regarding the ratings" (id. at 6).
Appellants maintain that the rejection is improper and that the
requisite written description support is found in the Specification at page 4,
lines 15-16 and 25-27, page 6, lines 1-2, page 7, lines 8-9, and page 10,
lines 11-14, and in Figure 1 (App. Br. 12-14; see also Reply Br. 4--5).
Addressing the Examiner's assertion that "there does not seem to be support
in the specification for barring all human action regarding the ratings,"
Appellants further maintain that the claims require an absence of customer
intervention, not an absence of all human intervention (App. Br. 13).
Responding to Appellants' arguments in the Response to Argument
section of the Answer, the Examiner asserts that "[ s Jome amount of
customer action would have to occur if there is an issue with a customer"
and that "[t]here still is not support for completely barring all customer
action regarding the ratings" (Ans. 14).
The Specification discloses a method and system for providing remote
managed services, e.g., desktop management, server management,
applications management, and the like, in a marketplace environment, and
describes that "[ o ]ne significant value" of remote managed services is that
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"it helps global enterprises and SMBs [small to medium businesses] to cut
down costs for infrastructure management and to gain access to expert
skills" (Spec. 4, 11. 14--16), i.e., to avoid the costs associated with performing
these tasks themselves. The Specification, thus, describes a first non-
limiting exemplary embodiment where a customer subscribes to remote
monitoring and managed services with a service provider (see, e.g., id. at 4,
11. 25-27); the service provider monitors the customer's information
technology ("IT") infrastructure (see id. at 6, 11. 1-2; Fig. 1 (disclosing
steady-state monitoring by monitor module 114)), detects any issues with the
customer's IT infrastructure, e.g., using the monitoring module (see, e.g., id.
at 10, 11. 11-14), and, if an issue is detected, enlists and pays service delivery
agents and business partners to address the issue so that the process is
transparent to the customer (see, e.g., id. at 4, 1. 25-5, 1. 2; 7, 11. 8-11). The
Specification, in Figure 1, shows customer 104 separate from the service
provider's remote managed infrastructure services (RMIS) shared
infrastructure 108 and, therefore, separate from monitor 114 responsible for
steady-state monitoring of the customer's IT infrastructure and also separate
from 130 representing the assignment of the top-ranked service delivery
agent to address the detected issue (see, e.g., id. at 6, 11. 15-21 ).
In our view, the Specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, Appellants were in
possession of the invention as recited in independent claims 1 and 25,
including "detecting, by said manager in an absence of customer
intervention, of an issue with a given one of said information technology
infrastructures of a given one of said customers" and "assigning in an
absence of customer intervention a top-ranked one of said service partners to
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address said issue." See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed. Cir. 1991). Therefore, we do not sustain the Examiner's
rejection of claims 1-25 under 35 U.S.C. § 112, first paragraph.
Obviousness
Independent claims 1, 13, 19, and 25, and dependent claims 2--4, 12, 14, 15,
20, 21, and 24
Appellants argue independent claims 1, 13, 19, and 25 as a group
(App. Br. 17-19). We select claim 1 as representative. Claims 13, 19, and
25 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting claim 1under35 U.S.C. § 103(a) because neither Allen
nor Hussain, alone or in combination, discloses or suggests "detecting, by
said manager in an absence of customer intervention, of an issue with a
given one of said information technology infrastructures of a given one of
said customers," as recited in claim 1 (App. Br. 17-18). Instead, we agree
with the Examiner that Hussain teaches this feature at least at
paragraphs 16-20 and 22-27 (Non-Final Act. 10-11; see also Ans. 14--15).
Hussain is directed to a system that establishes a "centralized point of
management" of operations services for customer networks being provided
by various operation service providers (Hussain i-f 16). Hussain discloses an
operations service provider (OSP) network 106, with reference to Figure 1,
including an operations switch (OSW) 102 that serves as a centralized point
of control and management for operation services being provided to
customers of OSP 106 (e.g., OSCs 140, 148 in Figure 1 ); these customers
are end users needing operations services, e.g., configuring and monitoring
their network, network devices, or services at the customer premises (id.
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iii! 16-20). Hussain discloses that service providers may include operations
application providers (OAP) 108, 112, and 136 and operations feature
providers (OPP) 110, 116, 118, 120, and 144 (id. if 18). OSW 102
provisions the operations services, including operation applications and
operation features, by receiving customer requests and establishing links
between the customer network that requires operation services and the
operations application servers and operations feature servers (id. if 24).
Hussain discloses that the operation application services may include "fault
management applications," including monitoring performance parameters of
individual components of a network or of the network as a whole (id. if 25);
the operation feature services may similarly include "monitoring of network
equipment of a specific network, where the monitoring of network
equipment involves determining whether the network equipment has a failed
or other status" (id. if 26).
Appellants argue that Hussain does not disclose or suggest finding
faults in the customer network (150 in Figure 1 ); instead, according to
Appellants, the network faults detected in Hussain are faults within the
networks of the various service providers, e.g., OSPs 106, OAPs 108, 112,
and 136, and OFPs 110, 116, 118, 120, 132, and 144 (App. Br. 17-18).
Thus, according to Appellants, Hussain does not disclose or suggest
"detecting ... an issue with a given one of said information technology
infrastructures of a given one of said customers." Appellants' argument is
not persuasive.
As the Examiner observes, Hussain discloses that OSC (operation
service customers) 140, 148 are customers of OSP 106, i.e., "end users
needing operations services such as configuring and monitoring" of their
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networks and network devices (Hussain iii! 19, 20). It also is clear from a
fair reading of Hussain paragraphs 25 and 26 that the operations services are
those provided to OSCs 140, 148, and that the network and network devices
(i.e., the "network equipment of a specific network, as disclosed in
paragraph 26) being monitored are the customer network and network
devices.
Appellants assert in the Reply Brief that "the general disclosure of
paragraphs 0025 and 0026 of Hussain is not sufficient to conclude that
detecting is performed in the absence of customer intervention" (Reply
Br. 6). Yet Hussain discloses the "absence of customer intervention" at least
to the same extent as disclosed in Appellants' Specification. Thus, much
like Appellants, Hussain discloses that OSCs 140, 148 are "end users
needing operation services, such as configuring and monitoring their
network, network devices or services at the customer premises" (Hussain
if 19) and that OSC 140 "rather than ... being required to implement its own
operation services to manage its own network ... may rely upon the
operations services being provided from the OAPs and OFPs once
established by the OSP 106 via the OSC 102" (id. if 20). Hussain also
discloses, in paragraphs 25 and 26, activities performed by the OAPs and
OFPs, i.e., fault management and monitoring of network equipment,
including determining whether the network equipment has failed, without
referring to any need for customer intervention.
We also are not persuaded of error on the part of the Examiner by
Appellants' further argument that Hussain fails to disclose or suggest
"assigning in an absence of customer intervention a top-ranked one of said
service partners to address said issue," as recited in claim 1 (App. Br. 19; see
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also Reply Br. 6-7). Appellants maintain that because the operations service
server in Hussain is determined based on the customer's requested services,
"Hussain requires customer intervention to assign a service partner, and does
not disclose assigning a top-ranked service partner in the absence of
customer intervention," as recited in claim 1 (App. Br. 19). However, we
agree with the Examiner that although a customer may have chosen to
subscribe to a particular operation service, no customer intervention is
involved in Hussain in assigning the user selection/request to one of multiple
available operations application or feature providers (Ans. 15-16). Instead,
Hussain discloses that where the customer has chosen an operations
application or feature to which there are multiple operations application or
feature providers, "the applications server 202 [of OSW 102] may apply
particular criteria to determine which operations service server should be
selected" (Hussain i-f 36; see also id. i-f 28).
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 103(a) of independent claim 1, and independent claims 13, 19,
and 25, which fall with claim 1. We also sustain the Examiner's rejection of
dependent claims 2--4, 12, 14, 15, 20, 21, and 24, which are not argued
separately except based on their dependence on claims 1, 13, or 19 (App.
Br. 19).
Dependentclaims5-ll, 16--18, 22, and23
Appellants do not provide any argument in support of the patentability
of claims 5-11, 16-18, 22, and 23 except to assert that neither AAP A nor
Zang cures the alleged deficiencies in the combination of Allen and Hussain,
and that the claims are allowable based on their dependence on independent
claims 1, 13, or 19 (App. Br. 20). We are not persuaded for the reasons set
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forth above that the Examiner erred in rejecting independent claims 1, 13,
and 19 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner's
rejections of claims 5-11, 16-18, 22, and 23 under 35 U.S.C. § 103(a) for
substantially the same reasons.
DECISION
The Examiner's rejection of claims 1-25 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner's rejections of claims 1-25 under 35 U.S.C. § 103(a)
are affirmed.
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).
AFFIRMED
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