Ex Parte Wood

Board of Patent Appeals and Interferences

Dec 8, 2008

10689500 (B.P.A.I. Dec. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DOUGLAS A. WOOD
____________________

Appeal 2008-2322
Application 10/689,5001
Technology Center 2100
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Decided: December 8, 2008
____________________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
STEPHEN C. SIU, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1, 2, and 4 through 9. Claims 3 and 10 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Filed on October 20, 2003. The real party in interest is IBM Corp.
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The Invention
Appellant invented a method and system for detecting the root cause
behind the failure of one or more computer assets. (Spec. 3, ¶ [0023].) As
depicted in Figure 3, upon detecting a failure (308) in one of the computer
assets (306) being monitored, a monitoring application generates a system
incident report (304). The monitoring application then matches the causes
of the detected failure with corresponding symptoms from a list of pre-
identified symptoms (206, 207, 208) stored in a diagnostic database (309) to
thereby activate potential symptoms associated with the detected failure.
(Spec. 7, ¶¶ [0049-0050].) An incident tracking application then presents to
a service representative the system incident report including a set of
activated symptoms and associated causes that characterize the current state
of the computer assets. Further, the incident tracking application generates a
user incident report containing symptoms observed and described by the
user, and matches them with corresponding known causes. Additionally, the
service representative compares the observed symptoms in the user incident
report with the activated symptoms in the system incident report to
determine common symptoms therebetween to thus gain a better indication
of the root cause of the detected failure. (Spec. 8, ¶ [0054].)

Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
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1. A system for providing root cause failure information about a
computer system to a user, comprising:
a monitoring application that monitors a plurality of assets in the
computer system and that generates a system incident report when a failure
of an asset of the plurality of assets is detected;
a diagnostic database that lists a plurality of pre-identified symptoms,
including a set of potential symptoms, each pre-identified symptom being
linked to at least one failure of an asset, wherein a potential symptom is
activated when the monitoring application detects a failure linked to the pre-
identified symptom; and
an incident tracking application configured to present to the user a set
of activated symptoms that characterize a current state of the plurality of
assets, the incident tracking application also configured to receive from the
user a user incident report that includes a user-observed symptom selected
by the user that corresponds to one of the set of activated symptoms the
incident tracking application also configured to associate a user incident
report with a system incident report when the user incident report includes a
user-observed symptom that corresponds to one of the set of activated
symptoms.

Prior Art Relied Upon

The Examiner relies on the following prior art as evidence of
unpatentability:
Douik US 6,012,152 January 4, 2000 (filed August 21, 1997)
Hiliger US 5,127,012 June 30, 1992 (filed February 19, 1991)

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1, 2, and 4 through 9 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Douik and Hiliger.
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Appellant’s Contentions
Appellant argues that the combination of Douik and Hiliger does not
teach or suggest (1) activating a symptom from a list of symptoms in
response to an asset failure to thereby present the activated symptom to the
user, and (2) associating a user incident report with a system incident report
to find symptoms common to both reports, as recited in independent claim 1.
(App. Br. 5-8, Reply Br. 1-4.) Particularly, Appellant argues that while the
combination of Douik and Hiliger generally discusses correlating all
possible symptoms including observable ones, these symptoms are neither
activated nor presented to the user. (Id.) Accordingly, Appellant contends
that the Examiner erred in rejecting the claimed invention over the cited
combination. (Id.)

Examiner’s Findings
The Examiner finds that Douik discloses a diagnosis agent that maps
out all possible suspect causes of a software defect. Further, the Examiner
finds that Hiliger discloses a diagnosis agent that, with the help of a repair
engineer, precisely identifies errors within a specified software block. (Ans.
8.) Additionally, the Examiner finds that Hiliger teaches providing a list of
symptoms to a user for selecting a condition describing the state of a
document production device. (Id.) Therefore, the Examiner finds that the
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combination of Douik and Hiliger teaches the limitation in dispute, and thus
renders claim 1 unpatentable.

II. ISSUE
The pivotal issue before us is whether Appellant has shown that the
Examiner erred in concluding that one of ordinary skill would have found
the combination of Douik and Hiliger teaches presenting to a user a set of
activated symptoms, and generating a user incident report including one of
the activated symptoms, as recited in independent claim 1. We answer this
inquiry in the negative.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Douik
1. Douik discloses a fault management software for managing
software faults in a mobile communication network. (Abstract.)
Particularly, as depicted in Figure 2, Douik discloses an event report handler
(24) for accepting an indication of a trouble condition as an observed
symptom from an alarm and/or as a trouble report from a user to thereby
generate fault reports (25) containing the respective symptoms obtained
from the user and the network . (Col. 15, ll. 16-20, col. 36, ll. 30-34.)
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2. Douik discloses a correlation agent (26) that receives the fault
reports (25) from the event report handler (24). The correlation agent
formulates fault explanations, which it associates with the symptoms. The
correlation agent subsequently correlates the received symptoms through the
use of a functional model to produce a smaller set of symptoms common to
both the user-entered symptoms and the network generated symptoms. (Col.
15, ll. 20-27, col. 36, ll. 35-49.)
3. Douik discloses a diagnosis agent (28) (human operator/
automated system) that analyzes and tests software components against their
modeled behavior to verify the fault explanation obtained from the
correlation agent to thereby output the software component that needs
repairing. (Col. 15, ll. 32-40, col. 36, ll. 51-61.)

Hiliger
4. Hiliger discloses a diagnostic system for determining the
condition of replaceable units in a document production system. (Abstract.)
Particularly, Hiliger discloses displaying a list of system generated
symptoms, each corresponding to a known cause and from which a repair
person selects the ones that best describe the condition of the document
production device. (Col. 3, ll. 7-23.)

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IV. PRINCIPLES OF LAW
OBVIOUSNESS
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 127 S. Ct. at 1734 (“While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739). “One of the ways in which a
patent's subject matter can be proved obvious is by noting that there existed
at the time of invention a known problem for which there was an obvious
solution encompassed by the patent's claims.” KSR, 127 S. Ct. at 1742.
The reasoning given as support for the conclusion of obviousness can
be based on interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 127 S. Ct. at 1740-41. See also Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).

V. ANALYSIS
As detailed in the Findings of Fact section above, Douik teaches an
event report handler that, upon receiving system generated alarms and/or
trouble reports from a user indicating a failure of a software component on
the network, generates fault reports including symptoms associated with the
failure. (FF. 1.) Further, Douik teaches a correlation agent that, upon
receiving the fault reports from the event report handler, associates the
symptoms with corresponding causes, and compares the contents of the fault
reports to detect common symptoms between them. (FF. 2.) Additionally,
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Hiliger teaches providing a user with a list of system-generated symptoms in
response to detecting a failure in a document production system. (FF. 4.)
We find that Douik’s disclosure of the event report handler receiving the
system generated alarm or the user input trouble report reasonably teaches
activating a symptom in response to failure. In other words, the received
alarm or trouble report are triggered or activated upon detecting the failure
of a software component being monitored. Similarly, we find that Douik’s
disclosure of the event report handler generating fault reports reasonably
suggests the creation of at least one fault report having symptoms pertaining
to the system-generated alarm, and one fault report containing symptoms
pertaining to the user’s observed failure. Accordingly, we find that Douik’s
disclosure of comparing the fault reports to detect common symptoms
therebetween reasonably teaches the claimed limitation of associating a user
incident report with a system incident report based on symptoms common to
both reports. Therefore, one of ordinary skilled in the art would readily
recognize that Hiliger’s teaching of providing the user with a list of
symptoms in response to a failure would allow the user of Douik’s software
fault management system to be presented with activated symptoms before
generating the user incident report. Appellant has provided no evidence that
incorporating Hiliger’s presentation of activated symptoms to a user into
Douik’s software fault management system was “uniquely challenging or
difficult for one of ordinary skill in the art” (Leapfrog Enter., Inc. v. Fisher-
Price, Inc., 485 F.3d at 1162) nor has Appellant presented evidence that this
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incorporation would yield more than expected results. Rather, Appellant’s
invention is simply an arrangement of the well-known teachings of
presenting activated symptoms to a user with the known teaching of
allowing the user to create an incident report upon receiving a system-
generated report. The Supreme Court has determined that “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 127 S. Ct. at 1742. Therefore, it is our view that a person of ordinary
skill would have been able to fit the teachings of the cited references
together like pieces of a puzzle.
Accordingly, we find that claim 1 would have been obvious over the
teachings of Douik and Hiliger. It follows that Appellant has not shown that
the Examiner erred in concluding that the combination of Douik and Hiliger
renders independent claim 1 unpatentable.
Appellant does not separately argue claims 1, 2, and 4 through 9.
Therefore, we select independent claim 1 as being representative of the cited
claims. Consequently, claims 2, and 4 through 9 fall together with
representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

VI. CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in concluding that
the combination of Douik and Hiliger renders claims 1, 2, and 4 through 9
unpatentable under 35 U.S.C. § 103(a).

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VII. DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, and 4
through 9 as being unpatentable under 35 U.S.C. § 103(a) .
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