Ex Parte Arnott et al

Patent Trial and Appeal Board

Jan 28, 2013

11534569 (P.T.A.B. Jan. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL S. ARNOTT and REX G. MARTIN
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Appeal 2010-009193
Application 11/534,569
Technology Center 2400
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Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and LYNNE E.
PETTIGREW, Administrative Patent Judges.

NAPPI, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2010-9193
Application 11/534,569

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 9 and 17 through 24.

We affirm-in-part.
INVENTION
The invention is directed a method which makes use of a product
catalog that is accessed by a rules service which permits examinations
regarding the health of a system. See paragraphs 0009 through 0012 of
Appellants’ Specification. Claim 1 is representative of the invention and
reproduced below:
1. A computer implemented method for executing a rules
service using a product catalog by a rules service engine, the
method comprising:
identifying at least one rule from the rules service to
conduct analysis of a computer system comprising a plurality of
components;
accessing a product catalog stored in memory to return to
the rules service engine a set of product reference data for at
least one of the components identified in the rule;
collecting input data about the computer system
including telemetry data for the at least one of the components;
parsing the input data;
correlating the parsed input data with the set of product
reference data including comparing the collected telemetry data
with expected telemetry data for the at least one of the
components;
responsive to the parsed input data correlating with the
identified product reference data, providing to the rules service
engine product reference data about the at least one of the
plurality of components from the product catalog;
responsive to the parsed input data failing to correlate with the
identified product reference data, matching another at least one
of the plurality of components to the parsed input data by
querying the product catalog and providing to the rules service
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engine product reference data about the another at least one of
the plurality of components; and
running the at least one rule.

REJECTIONS AT ISSUE
The Examiner has rejected claim 1 under 35 U.S.C. § 112, second
paragraph as being indefinite. Answer 3.
1

The Examiner has rejected claims 1 through 9 and 17 through 24
under 35 U.S.C. § 102(a) as anticipated by Srinivas (U.S. 2006/0150008
A1). Answer 4-10.

ISSUES
Anticipation rejection of claims 1, 3 through 9, and 17 through 20
Appellants argue on pages 7 through 13 of the Appeal Brief that the
Examiner’s rejection of independent claims 1, 3 through 9, and 17 through
20 under 35 U.S.C. § 103(a) is in error.
2
These arguments present us with
the issues:
a) Did the Examiner err in finding Srinivas teaches accessing a
product catalog stored in memory to provide a set of product
reference data to a rules service engine as recited in
representative claim 1?

1
Throughout this opinion we refer to the Examiner’s Answer mailed on
March 15, 2010.
2
Throughout this opinion we refer to Appellants’ Appeal Brief filed on
December 11, 2009.
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Application 11/534,569

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b) Did the Examiner err in finding Srinivas teaches correlating
parsed input data with the set of product reference data as
recited in representative claim 1?

Anticipation rejection of claim 2
Appellants argue on page 13 of the Appeal Brief that the rejection of
claim 2 is in error for the reasons discussed with respect to claim 1 and
additionally because claim 2 recites that the product catalog recites a list of
product reference data. Thus, with respect to claim 2 we are presented with
the additional issue:
c) did the Examiner err in finding Srinivas teaches a product
catalog which recites a list of product reference data?

Anticipation rejection of claims 21 and 22
Appellants’ arguments, on pages 14 and 15 of the Appeal Brief that
the rejection of claims 21 and 22 is in error present us with the additional
issue:
d) did the Examiner err in finding Srinivas teaches a product
catalog which provides contributing factors to the rules
engine?
Anticipation rejection of claim 23
Appellants’ arguments, on page 15 of the Appeal Brief that the
rejection of claim 23 is in error present us with the additional issue:
e) did the Examiner err in finding Srinivas teaches a rules engine
accessing a database to obtain additional information as
recited in claim 23?
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Anticipation rejection of claim 24
Appellants’ arguments, on page 15 of the Appeal Brief that the
rejection of claim 24 is in error present us with the additional issue:
f) did the Examiner err in finding Srinivas teaches a step of
determining that the set of factors is incomplete and in
response accessing one or more referential sources to
identify data as recited in claim 24?

Rejection of claim 1 under 35 U.S.C. § 112, second paragraph
Appellants have not presented any arguments directed to this
rejection. Accordingly, there is no issue before us and we sustain this
rejection pro forma.

ANALYSIS
Anticipation rejection of claims 1. 3 through 9, and 17 through 20
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellants’ conclusion the Examiner erred in
finding that Srinivas teaches accessing a product catalog stored in memory
to provide a set of product reference data to a rules service engine and
correlating parsed input data with the set of product reference data as recited
in claim 1. Appellants present several arguments directed to each of these
issues and the Examiner has provided a comprehensive response to each of
these arguments on pages 10 through 14 of the Answer. The Examiner
equates Srinivas’s healthy model and rules database with the claimed
product catalog and rules engine. In this response, the Examiner also
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provides an explanation as to how Srinivas’s rules database interacts with
the model in the same manner that the claimed rules engine interacts with
the product catalog. We concur with the Examiner’s conclusions and
findings in the Answer and adopt them as our own. Accordingly, we sustain
the Examiner’s anticipation rejection of claims 1, 3 through 9, and 17
through 20.

Anticipation rejection of claim 2
Appellants’ arguments with respect to claim 2 have not persuaded us
the Examiner erred in finding Srinivas teaches a product catalog which
recites a list of product reference data. The Examiner finds Srinivas’s
healthy model provides the rules database with parameters and values
associated with components of a computer system which meets the claimed
product reference data. Answer 15. We concur with these findings by the
Examiner and note that the Appellants have not demonstrated a functional
difference between claimed data and the data disclosed by Srinivas.
3

Accordingly, we sustain the Examiner’s anticipation rejection of claim 2.

3
We note that even if Appellants had shown a difference between the
claimed data and the data in the prior art, the Appellants have not shown that
this data is related to the substrate or relates to a functional difference in the
claimed method. The Examiner need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1583-84 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004) and our decision in Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005).
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Anticipation rejection of claims 21 and 22
Appellants’ arguments with respect to claims 21 and 22 have not
persuaded us the Examiner erred in finding Srinivas teaches a product
catalog which provides contributing factors to the rules engine. The
Examiner provides an explanation supporting the finding that Srinivas’s
healthy model provides contributing factors to the rules engine. Answer 16-
17. We concur with these findings by the Examiner and note as with claim 2
discussed above, Appellants have not demonstrated a functional difference
between claimed data and the data disclosed by Srinivas. Accordingly we
sustain the Examiner’s anticipation rejection of claims 21 and 22.

Anticipation rejection of claim 23
Appellants’ arguments with respect to claim 23 have not persuaded us
the Examiner erred in finding Srinivas teaches a rules engine accessing a
database to obtain additional information as recited in claim 23. The
Examiner, in response to this argument, finds that Srinivas teaches the rules
database accessing additional information as claimed. Answer 17-18. We
concur with the Examiner’s finding as it is supported by ample evidence.
Additionally, we note Appellants’ argument that the specification identifies
the rules engine accessing different sources is not commensurate in scope
with claim 23. Brief 15. Accordingly, we sustain the Examiner’s anticipation
rejection of claim 23.

Anticipation rejection of claim 24
Appellants’ arguments with respect to claim 24 have persuaded us the
Examiner erred in finding Srinivas teaches a teaches a step of determining
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that the set of factors is incomplete and in response accessing one or more
referential sources to identify data as recited in claim 24. In response to
Appellants’ arguments, the Examiner finds that Srinivas teaches constantly
or periodically monitoring state information, and that when a user request to
diagnose a system is made the system gathers additional information.
Answer 18-19. The Examiner considers this to meet the claim. We disagree;
the Examiner has not shown that this gathering of additional information is
predicated by a determination that the set of factors is incomplete as recited
in claim 24. Accordingly, we will not sustain the Examiner’s anticipation
rejection of claim 24.

ORDER
The decision of the Examiner to reject claims 1 through 9 and 17
through 23 is affirmed.

The decision of the Examiner to reject claim 24 is reversed.

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-IN-PART

ELD