Ex Parte UrdangDownload PDFPatent Trial and Appeal BoardFeb 27, 201713835286 (P.T.A.B. Feb. 27, 2017) Copy Citation 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. 13/835,286 03/15/2013 Erik Gwyn Urdang 0445-US-01 4380 83579 7590 03/01/2017 LEVEL 3 COMMUNICATIONS, LLC Attn: Patent Docketing 1025 Eldorado Blvd. Broomfield, CO 80021 EXAMINER WOOD, WILLIAM C ART UNIT PAPER NUMBER 2193 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): patent, docketing @ leve!3. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK GWYN URDANG1 Appeal 2016-005477 Application 13/835,286 Technology Center 2100 Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and JON M. JURGOVAN, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL LLC.1 The Real Party in Interest is LEVEL 3 COMMUNICATIONS, Appeal 2016-005477 Application 13/835,286 SUMMARY Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejections of claims 1—18. App. Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1,7, and 13 as obvious under 35 U.S.C. § 103(a). STATEMENT OF THE CASE Appellant describes the present invention as follows: Aspects of the present disclosure disclose systems and methods for consolidating business assets currently being employed by the enterprise to perform business tasks. In various aspects, a well[-]defined application programming interface (“API”) may be generated or otherwise provided that enables access to portions of an enterprise's assets and subsequently exposes such business assets in a standard format to requesting applications. Abstract. 2 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the following documents for their respective details: the Final Action mailed May 14, 2015 (“Final Act.”); the Appeal Brief filed September 14, 2015 (“App. Br.”); and the Examiner’s Answer mailed February 23, 2016 (“Ans.”). 2 Appeal 2016-005477 Application 13/835,286 Independent claim 1, reproduced below, is illustrative of the appealed claims: 1. A consolidation system comprising: at least one processor to: generate an application programming interface for exposing at least two business assets to at least one requesting application; and consolidate the at least two business assets into at least one business asset without modifying the implementation of the application programming interface and the implementation of the at least one requesting application. Claims 1, 4, 5, 7, 10, 11, 13, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McCrae (US 2011/0119689 Al; published May 19, 2011) in view of Branson (US 7,904,916 B2; issued Mar. 8, 2011). Claims 2, 8, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McCrae, Branson, and Lee (US 2010/0223231 Al; issued Sept. 2, 2010). Claims 3,9, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McCrae, Branson, and Caplis (US 2013/0179942 Al; published July 11, 2013). Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McCrae, Branson, and Bauch (US 7,260,599 B2; issued Aug. 21,2007). We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 3 Appeal 2016-005477 Application 13/835,286 CLAIMS 1, 4, 5, 7, 10, 11, 13, 16, AND 17 Findings and Contentions The Examiner finds that McCrae discloses at least one processor to generate an application programming interface (API) for exposing at least two business assets to at least one requesting application, but does not disclose consolidating the at least two business assets into at least one business asset without modifying the implementation of the API and the implementation of the at least one requesting application. Final Act. 4. The Examiner finds that Branson teaches the consolidation step (id. (citing Branson col. 16,11. 16—24)), and the Examiner sets forth motivation for modifying McCrae’s business programming library to include Branson’s capability of isolating changes to underlying business assets (id. at 4). Appellant argues, inter alia, that the cited passage of Branson does not mention consolidating business assets. App. Br. 6. Appellant further argues that Branson’s “unified system management interface is provided ‘without replacing the existing system management applications or modifying any of the managed systems.’” Id. (citing Branson, col. 16, 11. 22—24) (emphasis added by Appellant). According to Appellant, “Branson appears to merely supply server 205 as a way to communicate with the different existing systems. Branson’s data appears to remain in a static configuration. Thus, Branson does not teach consolidation of assets.” Id. The Examiner does not question Appellant’s description of what the cited passage of Branson teaches. See generally Ans.; see also the cited passage of Branson: 4 Appeal 2016-005477 Application 13/835,286 It is envisioned that a consolidated system management apparatus as described herein will be retrofitted on an existing computer complex having multiple different system management applications located on different servers. One of the advantages of the present invention, according to the preferred embodiment thereof, is that it is possible to provide a unified system management interface to operators without replacing the existing system management applications or modifying any of the managed systems. Branson, col. 16,11. 16—24. Rather, the Answer explains that the last limitation of claim 1 uses the term “consolidate”—not the term “combine.” Ans. 16. In the Examiner’s view, “‘consolidate’ does not mean that two entities are combined into a single entity.” Id. at 17. The Examiner explains that according to the broadest reasonable interpretation, Branson’s disclosure of providing a common interface, and thereby making the disclosed capabilities more readily available, reasonably may be interpreted as consolidating assets, within the meaning of claim 1. Id. at 18. Analysis The Examiner’s interpretation of what it means to consolidate assets, as claimed, is unreasonably broad. As noted above, claim 1 first sets forth the step of generating an API for “exposing” assets and then sets forth the step of “consolidat[ing]” the assets. App. Br. 12. The express claim language implies, then, that exposing assets means something different than consolidating assets. And the usage of the terms “expose” and “consolidate” within Appellant’s Specification (see, e.g., Spec. Tflf 14—15, 17, 22—25) indicates that Branson’s teaching of providing consolidation management application server 205 within multiple computer system complex 200 more reasonably corresponds to exposing Branson’s consolidation management 5 Appeal 2016-005477 Application 13/835,286 application server to multiple different system management applications (or “assets”). This step does not correspond to consolidating the disclosed assets, as that term is used in the Specification. [The claims] are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in view of the specification .... [T]he specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. Phillips v. AWHCorp., 415 F.3d 1303, 1315 (citations omitted) (internal quotation marks omitted). For the foregoing reasons, Appellant has persuaded us of error in the Examiner’s obviousness rejection of independent claim 1, as well as independent claims 7 and 13, which recite similar consolidating steps. Accordingly, we will sustain the Examiner’s rejection of claims 1,7, and 13, as well as claims 4, 5, 10, 11, 16, and 17, which depend from these independent claims. CLAIMS 3, 6, 9, 12, 15, AND 18 With respect to the rejections of dependent claims 3, 6, 9, 12, 15, and 18, the Examiner does not rely on the teachings of the additionally cited references Caplis and Bauch to cure the deficiency of the obviousness rejection explained above. Ans. 12—15. Accordingly, we do not sustain the Examiner’s rejections of these dependent claims. 6 Appeal 2016-005477 Application 13/835,286 CLAIMS 2, 8, AND 14 Dependent claim 2 reads as follows: 2. The system of claim 1, wherein the at least two business assets includes a first data base and a second database and wherein the processor to consolidate the first database and the second database comprises the processor configured to: merge data between the first database and the second database to generate a single dataset; store the single dataset within a single database; and disassociate the first database and the application programming interface so that the application programming interface no longer exposes the first database to the at least one requesting application. Claim 2 more narrowly sets forth the manner in which the consolidation step of claim 1 is carried out. The Examiner relies on Lee to teach this specific type of consolidation and sets forth motivation for combining Lee’s teachings with those of McCrae and Branson, final Act. 9-12. That is, presuming Lee does teach the language of claim 2 and presuming that it would have been obvious combine Lee with McCrae and Branson, the Examiner’s additional reliance on Lee would cure the above-noted deficiency of the obviousness rejection of claim 1 over McCrae and Branson. Appellant does not present any substantive arguments regarding the further teachings of Lee or the Examiner’s rationale for combining Lee with McCrae and Branson. App. Br. 9. Therefore, the propriety of the obviousness rejection of claims 2, 8, and 14 depends solely on the persuasiveness of Appellant’s additional arguments relating the combinability of McCrae and Branson. See App. Br. 7—8; See Hyatt v. Dudas, 551, L.3d 1307, 1313—14 (Led. Cir. 2008) (the Board may treat 7 Appeal 2016-005477 Application 13/835,286 arguments Appellant failed to make for a given ground of rejection as waived). In relation to the proffered motivation to combine, Appellant argues that while the Examiner sets forth the benefit that would result from combining the teachings of McCrae and Branson, the Examiner never recites the motivation for why these references should be combined. Id. This argument is unpersuasive because Appellant does not contest the accrued benefit asserted by the Examiner and the asserted benefit is, itself, the recited motivation. Accordingly, Appellant has not persuaded us of error in the Examiner’s motivation. We therefore sustain the obviousness rejection of claims 2, 8, and 14 over the combination of McCrae, Branson, and Lee. NEW GROUND OF REJECTION In the preceding section, we sustained the obviousness rejection of dependent claims 2, 8, and 14 over the combination of McCrae, Branson, and Lee. These claims respectively depend from independent claims 1, 7, and 13. Accordingly, claims 1, 7, and 13 are likewise rendered obvious by the combination of McCrae, Branson, and Lee. Where dependent claims “were found to have been obvious, the broader [independent claims] must also have been obvious.” Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007). Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), then, we enter a new ground of rejection for claim 1, 7, and 13 under 35 U.S.C. § 103(a) as being obvious over McCrae, Branson, and Lee. 8 Appeal 2016-005477 Application 13/835,286 Although we decline to reject dependent claims 3, 6, 9, 12, 15, and 18 pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does not mean that the remaining claims are necessarily patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. See MPEP § 1213.02. DECISION The Examiner’s decision rejecting claims 1, 2, 7, 8, 13, and 14 is affirmed. The Examiner’s decision rejecting claims 3—6, 9-12, and 15—18 is reversed. Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claim 1,7, and 13 under 35 U.S.C. § 103(a). Rule 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Rule 41.50(b) also provides the following: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of 9 Appeal 2016-005477 Application 13/835,286 Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure (MPEP) § 1214.01 (9th Ed., Rev. 9, Nov. 2015). 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)(l)(iv). AFFIRMED-IN-PART 37 C.F.R, $ 41.50(b) 10 Copy with citationCopy as parenthetical citation