Ex Parte Galloway et al

Board of Patent Appeals and Interferences

May 29, 2012

10807623 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEVIN DAVID GALLOWAY and
JONATHAN MICHAEL POWER
____________
Appeal 2010-000826
Application 10/807,623
Technology Center 2100
____________

Before MAHSHID D. SAADAT, MICHAEL R. ZECHER, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-23 and 47-64. Claims 24-46 have been
cancelled. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and computer program product for
costing and planning the migration of computer-based applications from
source computer-based platforms to target computer-based platforms. Spec.
¶ [0002].
Illustrative Claim
1. A computer-implemented method for estimating a
cost for migrating a computer-based application from a source
platform to a target platform, said method comprising the steps
of:
receiving identifications of one or more migration tasks
for migrating said computer-based application from said source
platform to said target platform;
receiving at least one assessment type selected for
estimating a cost for migrating said computer-based application
from said source platform to said target platform, wherein said
at least one assessment type received comprises at least one of:
a first assessment type, a second assessment type and a third
assessment type, and wherein said first assessment type
delineates a degree of accuracy for estimating said cost that is
greater than said second assessment type and wherein said
second assessment type delineates a degree of accuracy for
estimating said cost that is greater than said third assessment
type;
correlating base costs to said one or more migration
tasks;
receiving identifications of migration attributes that
affect said base costs;
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correlating cost factors to said one or more migration
tasks, each of said cost factors indicating an amount by which a
migration attribute affects a base cost of a migration task; and
estimating said cost for each migration task, by applying
said cost factors for said each migration task to said base cost of
said each migration task.

Prior Art Relied Upon
Strothmann US 5,745,880 Apr. 28, 1998

Rejection on Appeal
Claims 1-23 and 47-64 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Strothmann. Ans. 3-14.
Examiner’s Findings and Conclusions
The Examiner finds that Strothmann’s disclosure of selecting a time
period to evaluate and compare platforms (e.g., TIME2—which comprises at
least nine years duration or nine assessment types) describes selecting at
least one assessment type for estimating a cost for migrating a computer-
based application from a source platform to a target platform, as required by
independent claims 1 and 47. Ans. 3-4 and 15-16. Moreover, the Examiner
finds that since independent claims 1 and 47 recite “comprises at least one
of[,]” the Examiner only needs to address one assessment type, not all three
assessment types. Ans. 16 (emphasis omitted). As such, the Examiner finds
that Strothmann’s TABLES A-P describe at least one assessment type that
delineates a degree of accuracy for estimating costs. Ans. 16. Nonetheless,
the Examiner finds that Strothmann’s Figure 1 illustrates three different
assessment types (e.g., “total costs,” “cost of generic application,” and
“personnel, hardware, and facility”) that vary in the degree of accuracy for
estimating costs. Ans. 4 and 16. Further, the Examiner reiterates the same
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position with respect to independent claims 13 and 56. See Ans. 9-10 and
16-17.
Appellants’ Contentions
Appellants contend that Strothmann fails to describe the “receiving at
least one assessment type” method step recited in independent claim 1. Br.
13-14. In particular, Appellants argue that the estimation of training costs
disclosed in Strothmann’s TABLE C does not describe receiving a selected
assessment type that delineates a degree of accuracy for estimating cost
based on the type of assessment chosen. Br. 14. Instead, Appellants allege
that Strothmann’s disclosure—namely column 2, lines 43-47—teaches away
from the disputed claim limitation because it does not describe receiving a
selected assessment type to effectuate the degree of accuracy for estimating
costs for migrating an application function. Id. Further, Appellants offer the
same arguments for the anticipation rejection of independent claim 1 to rebut
the anticipation rejection of independent claims 13, 47, and 56. See Br. 17-
35.

II. ISSUE
Did the Examiner err in finding that Strothmann describes “receiving
at least one assessment type selected for estimating a cost for migrating said
computer-based application from said source platform to said target
platform, wherein said at least one assessment type received comprises at
least one of: a first assessment type, a second assessment type and a third
assessment type, and wherein said first assessment type delineates a degree
of accuracy for estimating said cost that is greater than said second
assessment type and wherein said second assessment type delineates a
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degree of accuracy for estimating said cost that is greater than said third
assessment type,” as recited in independent claim 1, and similarly recited in
independent claims 13, 47, and 56.

III. ANALYSIS
Claims 1, 13, 47, and 56
Based on the record before us, we do not find error in the
Examiner’s anticipation rejection of independent claim 1, which
recites the disputed limitation set forth supra.
Appellants’ arguments regarding Strothmann are not persuasive for
several reasons. First, Appellants’ arguments are not responsive to the
textual portions of Strothmann relied upon by the Examiner in the
anticipation rejection. That is, the Examiner relies on Strothmann—namely
Figure 1 and column 3, lines 45-47—to describe the “receiving at least one
assessment type” method step recited in independent claim 1. See Ans. 3-4
and 15-16. However, Appellants only offer arguments directed to
Strothmann’s disclosure at column 2, lines 43-47, and TABLE C. See Br.
14. Therefore, absent contrary argument or evidence, we are not persuaded
of error in the Examiner’s finding that Strothmann’s disclosure of evaluating
the categorical costs in a computer platform for a selected time period (i.e.,
TIME 2) (see Figure 1; col. 3, ll. 45-47) describes the disputed claim
limitation. See Ans. 3-4 and 15-16.
Second, Appellants’ arguments are not commensurate with the scope
of the claimed invention. We note that independent claim 1 does not require
receiving an assessment type for a first, second, and third assessment type.
Rather, since independent claim 1 explicitly recites “at least one assessment
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type received comprises at least one of: a first assessment type, a second
assessment type and a third assessment type[,]” independent claim 1 only
requires receiving one assessment type—in this case either the first, second,
or third assessment type. See Ans. 16. As a result, we find that
Strothmann’s disclosure of evaluating the categorical cost of a computer
platform (e.g., the total platform cost, the cost of generic application, or the
costs of personnel, hardware, and facility) for a selected time period (see
Figure 1; col. 3, ll. 45-47) sufficiently describes receiving a selected
assessment type to effectuate the degree of accuracy for estimating costs for
migrating a source computer platform to a target computer platform, as
required by independent claim 1.
Nonetheless, even if we were to consider all three assessment types to
be necessary for the “wherein” clauses recited in independent claim 1, which
require that the first assessment type delineate a degree of accuracy for
estimating costs that is greater than the second assessment type, and the
second assessment type delineate a degree of accuracy for estimating costs
that is greater than the third assessment type, we agree with the Examiner
that Strothmann sufficiently describes such a hierarchical arrangement. See
Ans. 16. That is, Strothmann’s disclosure of evaluating the costs of
personnel, hardware, and facility for a selected time period delineates a
greater degree of accuracy than estimating the cost of a generic application,
which in turns delineates a greater degree of accuracy than estimating the
total platform costs. See Figure 1.
Further, Appellants’ argument that Strothmann’s disclosure—namely
column 2, lines 43-47—teaches away from claim invention (see Br. 14-15)
is misplaced because the Examiner rejects the claims under 35 U.S.C.
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§ 102(b). Our reviewing court has determined that “[t]eaching away is
irrelevant to anticipation.” Seachange Int'l, Inc., v. C-Cor, Inc., 413 F.3d
1361, 1380 (Fed. Cir. 2005). It follows that the Examiner has not erred in
finding that Strothmann anticipates independent claims 1, 13, 47, and 56.
Claims 2-12, 14-23, 48-55, and 57-64
Since Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 2-12, 14-23, 48-55, and 57-64
(see Br. 15, 21, 27, and 33), these dependent claims fall with their respective
independent claims 1, 13, 47, and 56. See 37 C.F.R. § 41.37(c)(1)(vii).

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1-23 and 47-64 as
being anticipated under 35 U.S.C. § 102(b).

V. DECISION
We affirm the Examiner’s decision to reject claims 1-23 and 47-64.
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

ELD