International Business Machines Corporation

Patent Trials and Appeals Board

Feb 2, 2022

2020005790 (P.T.A.B. Feb. 2, 2022)

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. 14/023,549 09/11/2013 Lu Liang CAM920120063US2_8150-0435 6435 112978 7590 02/02/2022 Cuenot, Forsythe & Kim, LLC 20283 State Road 7, Suite 300 Boca Raton, FL 33498 EXAMINER PAULINO, LENIN ART UNIT PAPER NUMBER 2193 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LU LIANG, ZHI QIANG SUN, BRIAN C. SCHIMPF, and YUHONG YIN Appeal 2020-005790 Application 14/023,549 Technology Center 2100 BEFORE JOHNNY A. KUMAR, JENNIFER L. McKEOWN, and, CATHERINE SHIANG, Administrative Patent Judges. MCKEOWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 26-35, which constitute all the claims pending in this application. Claims 1-25 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as IBM Corporation. Appeal Br. 1. Appeal 2020-005790 Application 14/023,549 2 CLAIMED SUBJECT MATTER The claims are directed to “[s]oftware lifecycle management include[ing], searching, using a processor, historical development data including prior development tasks for a software system.” Abstract. Claim 26, reproduced below, is illustrative of the claimed subject matter: 26. A computer-implemented method using a computer hardware system including a lifecycle management system for managing a change request to a software system, comprising: receiving, by the lifecycle management system, a trigger; identifying, in response to receiving the trigger, a current development task which is a particular computer-implemented change to be performed on the software system; returning, based upon a search of historical development data, a record identifying a previously-implemented change on the same software system and having an infinity to the current development task; and implementing, based upon the record being returned, the current development task into the software system, wherein the historical development data is a collection of records of prior changes that were actually implemented on the software system. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Peretz et al. (“Peretz”) US 2008/0127089 A1 May 29, 2008 Travison et al. (“Travison”) US 2008/0222501 A1 Sept. 11, 2008 Young et al. (“Young”) US 2010/0011337 Al Jan. 14, 2010 Sharma US 2013/0311968 Al Nov. 21, 2013 Appeal 2020-005790 Application 14/023,549 3 REJECTIONS The Examiner rejected claims 26-35 under nonstatutory double patenting as unpatentable over claims 26-45 of copending U.S. application No. 13/682, 308. Final Act. 4-10. The Examiner rejected claims 26-30, 33, and 35 under U.S.C. § 103(a) as unpatentable over Sharma and Young. Final Act. 11-15. The Examiner rejected claims 31 and 32 under U.S.C. § 103(a) as unpatentable over Sharma and Young. Final Act. 16-18. The Examiner rejected claim 34 under U.S.C. § 103(a) as unpatentable over Sharma and Young. Final Act. 18-19. OPINION THE NONSTATUTORY DOUBLE PATENTING REJECTION Claims 26-35 Appellants request to defer resolution of the double patenting rejections until further along in the prosecution. Appeal Br. 3, fn. 1. We do not reach the merits of the Examiner’s double patenting rejection. Panels have the flexibility to reach or not reach provisional double-patenting rejections. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). THE OBVIOUSNESS REJECTION BASED ON SHARMA AND YOUNG Claims 26-30, 33, and 35 The Examiner determines that Sharma teaches “returning, based upon a search of historical development data, a record identifying a previously- implemented change on the same software system and having an infinity to the current development task.” Final Act. 11-12 (citing Sharma ¶¶ 38, 71). Appeal 2020-005790 Application 14/023,549 4 In particular, the Examiner relies on Sharma’s processing of historical reports regarding past projects and of code metrics for the current project for predictive analytics. Ans. 3; see also Final Act. 11-12 (citing Sharma ¶¶ 38, 71) (“a set of historical reports on what happened in the past is used to create a model for how things generally operate.”). The Examiner further explains that Sharma’s teaching of predictive analytics “inherently would require to search recent and previous operations and analyze them in order to predict future outcomes, see Sharma paragraph [0037].” Ans. 3-4; see also Ans. 4 (noting Sharma teaches “[t]he tracked changes in the source code control system are collected by the previous history and system model 550 which is used to make the predictive analysis (i.e., searched).”). Appellant argues Sharma fails to teach or suggest “returning, based upon a search of historical development data, a record identifying a previously-implemented change on the same software system and having an infinity to the current development task.” Appeal Br. 8-12. Appellant argues Sharma’s predictive analytics do not inherently demonstrate searching for and returning a record identifying a previously-implemented change, as required by the claimed invention. Reply Br. 3-5. Appellant points out that the Examiner merely provides a conclusory assertion of inherency and fails to provide any supporting analysis. Reply Br. 4. Moreover, Appellant maintains that the claimed invention, returns, based on the search, a record identifying a previously-implement change. Id. In contrast, Sharma’s predictive analysis provides prediction results including, for example, “identifications of high risk areas of source code.” Reply Br. 5. Appeal 2020-005790 Application 14/023,549 5 We are persuaded of error. Namely, based on the record before us, the Examiner fails to support sufficiently the reliance on inherency. Sharma is directed to a predictive analysis system that collects and analyzes metrics for a current development project along with historical data to output useful future predictions. Sharma, Abstract. More specifically, Sharma describes the “predictive analysis engine 521 processes information the current project development metrics database 530 along with a previous software development history and system model 550 to develop a set of current predictions 525 for the current software development project.” Sharma ¶ 71. As Appellant points out (Reply Br 4), the claimed invention requires returning a record identifying a previously implemented change based on the claimed search. While Sharma generally analyzes data historical and current metrics, the Examiner has not shown that Sharma’s “processing information” necessarily includes searching for and returning the recited record. As Appellant also explains, Sharma’s analysis instead returns a set of predictions (Reply Br. 4-6), such future bug discover rates, customer found defects, and the probability of hitting a schedule ship date with a desired quality level. Sharma, Abstract. Therefore, we are persuaded that the Examiner erred in determining that Sharma inherently performs the claimed searching. Accordingly, based on the record before us, we do not sustain the rejection of claims 26-30, 33, and 35 as unpatentable over Sharma and Young. Appeal 2020-005790 Application 14/023,549 6 THE REMAINING OBVIOUSNESS REJECTIONS Claims 31, 32, and 34 Similarly, we are persuaded that the Examiner fails to sufficiently support the rejection of dependent Claims 31, 32, and 34. As discussed above, we are persuaded of error in the rejection of independent claim 26. The additional cited prior art fails to cure the deficiencies. As such, we do not sustain the rejections of claims 31, 32, and 34 as unpatentable over the cited combinations of prior art. CONCLUSION For the foregoing reasons, we reverse the Examiner’s obviousness rejections of claims 26-35. We do not reach the merits of the Examiner’s double patenting rejection of claims 26-35. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 26-30, 33, 35 103 Sharma, Young 26-30, 33, 35 31, 32 103 Sharma, Young, Peretz 31, 32 34 103 Sharma, Young, Travison 34 Overall Outcome 26-35 REVERSED