Ex Parte O et alDownload PDFPatent Trial and Appeal BoardJan 29, 201311939391 (P.T.A.B. Jan. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN J. O’CONNOR and THOMAS M. NIERMANN ____________ Appeal 2010-010797 Application 11/939,391 Technology Center 2100 ____________ Before SCOTT R. BOALICK, JOHN A. JEFFERY, and JAMES B. ARPIN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants’ information technology (IT) enterprise management system includes data groups organized according to IT services, resources, and consumers. Information in one group may use a link to other information in another data group. In one example, the system provides Appeal 2010-010797 Application 11/939,391 2 tools for managing portfolio IT projects through various stages of their lifecycles. See generally Abstract. Claim 1 is illustrative: 1. A computer-implemented information technology (IT) enterprise management system, the system comprising: a server; a computer-implemented relational database running on the server, the database including data entities organized into data groups, the data groups comprising: an information technology (IT) services data group, the IT services data group including information about an IT service provided to an organization; an IT resources data group, the IT resources data group including information about an IT resource of the organization used to provide the IT service; and an IT consumers data group, the IT consumers data group including information about an IT consumer within the organization that receive the IT service, the IT consumers data group comprising: an IT resources identifier, the IT resources identifier configured to link the IT consumer to an associated IT resource; an application interface configured to store the computer-implemented relational database and to query the computer-implemented relational database according to the data groups. RELATED APPEAL This appeal is related to a pending appeal in connection with Application No. 10/745,837 (Appeal No. 2010-007089). Br. 2; Ans. 2.1 Although method claim 2 of the present appeal is broader than method claim 19 in the ‘837 application and recites similar subject matter, these claims were nonetheless rejected under different grounds and different prior art references. Compare Ans. 4 of the present application (rejecting claim 2 as anticipated over Buteau) with Ans. 4 of the ‘837 application (rejecting claim 1 Throughout this opinion, we refer to the Appeal Brief filed January 28, 2010 (Br.) and the Examiner’s Answer mailed April 28, 2010 (Ans.). Appeal 2010-010797 Application 11/939,391 3 19 as obvious over different references). Although Appellants do not separately argue method claim 2 in the present appeal, but rather system claim 1 (see Br. 22-25), to the extent that our findings and conclusions in connection with the appeal of the method claims in the ‘837 application apply to the present application (e.g., claim construction for commensurate limitations), they likewise apply here. THE REJECTION The Examiner rejected claims 1-28 under 35 U.S.C. § 102(b) as anticipated by Buteau (US 6,442,557 B1; Aug. 27, 2002). Ans. 4-10. CONTENTIONS The Examiner finds that Buteau’s IT enterprise management system in Figure 7 has every recited element of representative claim 1 including a relational database organized into (1) an “IT services data group” (services entity 720); (2) an “IT resources data group” (entities corresponding to hardware 700, software 690, organization people 260, and implementation 610); and (3) an “IT consumers data group” (person-type entity 240 and process entity 360). Ans. 4-5, 13-16. According to the Examiner, the consumers data group includes an IT resources identifier (key) configured to link an IT consumer to an associated resource as shown by the respective links between person-type entity 240 and (1) organization people entity 260, or (2) hardware and software entities 690 and 700. Ans. 5, 17. Appellants argue that Buteau does not disclose the recited IT services and resources data groups, let alone an IT consumers data group with the recited resources linking identifier. Br. 22-25. Although Appellants Appeal 2010-010797 Application 11/939,391 4 acknowledge that Buteau’s entity relationship diagrams depict linking relationships, Appellants nonetheless contend that traversing five linked relationships in Figure 7 to arrive at the Examiner’s proposed link does not disclose the recited link. Br. 24-25. Appellants also argue various other recited elements summarized below. Br. 26-32. ISSUES Under § 102, has the Examiner erred by finding that Buteau discloses: (1) a relational database organized into (a) an IT services data group including information about an IT service provided to an organization; (b) an IT resources data group including information about an IT organizational resource used to provide the service; and (c) an IT consumers data group including information about an IT consumer within the organization that receives the service, where the consumers data group includes an IT resources identifier configured to link the consumer to an associated IT resource, as recited in claim 1? (2) the IT resources data group comprises information about an IT asset, where this information includes information about an asset identifier including a model identifier, as recited in claim 7? (3) the IT resources data group comprises information about an IT vendor, where this information includes information about an IT vendor descriptor, as recited in claim 9? (4) an IT Projects data group including information about at least one IT project of the organization, as recited in claim 14? Appeal 2010-010797 Application 11/939,391 5 (5) a report generation engine configured to generate a report using the data entities and the organization into the data groups, as recited in claim 15? ANALYSIS Claims 1-6, 8, 10-13, 16-19, 21, and 23-26 We begin by noting that apart from the recited IT resources identifier (which has a linking function), the data groups recited in representative claim 1 constitute non-functional descriptive material for they merely recite data arrangements and informational content that do not functionally limit the claimed invention. Although the recited application interface is configured to query the database “according to the data groups,” the grouped information is not tied to this implementation with reasonable specificity to impart meaningful functionality to the particular descriptive material to achieve this result. Therefore, apart from the resources identifier, the recited data groups constitute non-functional descriptive material that does not patentably distinguish over prior art that otherwise renders the claims unpatentable.2 Nevertheless, we see no error in the Examiner’s finding that Buteau’s relational database in Figure 7 is organized at least partly into (1) an “IT services data group”; (2) an “IT resources data group”; and (3) an “IT consumers data group”. Ans. 4-5, 13-16. Given the scope and breadth of 2 See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing cases pertaining to non-functional descriptive material). Appeal 2010-010797 Application 11/939,391 6 the claim language, nothing in the claim precludes this interpretation—a position that we adopt as our own. Despite Appellants’ contentions to the contrary (Br. 23-24), Buteau’s service entity 720 amply meets the recited services data group. As its name suggests, Buteau’s service entity is associated with a service, namely a segment of a service layer that provides a set of automated functions (e.g., a data dictionary or window management functions). Buteau, col. 20, ll. 14- 32; Figs. 6-7. This entity, therefore, includes information provided about an IT service provided to an organization as claimed. Appellants’ arguments regarding Buteau’s models not anticipating the recited resources data group (Br. 24) are likewise unavailing, for nothing in the claim precludes Buteau’s entities representing organizational resources as corresponding to the recited resources data group as the Examiner indicates, namely hardware, software, people, and implementation. Ans. 13- 14. See Buteau, col. 18, ll. 12-56; Figs. 6-7. Lastly, we find no error in the Examiner’s position that the identified consumers data group in Buteau’s Figure 7 includes an IT resources identifier (key) configured to link an IT consumer to an associated resource, as shown by the respective links between person-type entity 240 and (1) organization people entity 260 or (2) hardware and software entities 690 and 700. Ans. 5, 17. See also Buteau, col. 9, ll. 13-16 (noting that each instance of the organizational people entity 260 is uniquely identified by a primary key using a combination of keys inherited from the organization and type of person entities). Leaving aside the direct link between entities 240 and 260 in Figures 4 and 7, nothing in the claim precludes the indirect link between entities 240 and 690/700, as the Examiner indicates. Ans. 17. Appellants’ Appeal 2010-010797 Application 11/939,391 7 arguments to the contrary (Br. 24-25) are unavailing. Notably, Appellants’ arguments regarding linking IT consumer and resource data groups (Br. 25) are not commensurate with claim 1 which does not link groups, but rather consumers and associated resources. Nevertheless, Appellants’ arguments are unpersuasive for they are not commensurate with the scope of the claim. We are, therefore, not persuaded that the Examiner erred in rejecting representative claim 1, and claims 2-6, 8, 10-13, 16-19, 21, and 23-26 not separately argued with particularity. Claims 7 and 20 We likewise sustain the Examiner’s rejection of representative claim 7 reciting, in pertinent part, the IT resources data group comprises information about an IT asset, where this information includes at least one of (1) an asset identifier including a model identifier; (2) an asset vendor identifier; or (3) a location identifier. As emphasized above, the information need include only one of these recited alternatives to meet the limitation. Appellants’ arguments regarding Buteau’s lacking the recited location identifier are, therefore, not germane to the Examiner’s position which relies on a different alternative in claim 7, namely the asset identifier with its associated model identifier. Compare Br. 26-27 with Ans. 19 (citing Buteau, col. 18, ll. 34-36, 40-41). We are, therefore, not persuaded that the Examiner erred in rejecting representative claim 7 and claim 20 not separately argued with particularity. Appeal 2010-010797 Application 11/939,391 8 Claims 9 and 22 We also sustain the Examiner’s rejection of representative claim 9 reciting, in pertinent part, the IT resources data group comprises information about an IT vendor, where this information includes information about an IT vendor descriptor. Despite Appellants’ arguments to the contrary (Br. 27- 28), nothing in the claim precludes information associated with implementation entity 610 as corresponding to information about an IT vendor as the Examiner indicates (Ans. 8, 20), for Buteau’s exemplary email implementation includes information about particular software from different vendors. Buteau, col. 17, ll. 46-49. Nor does the claim preclude the implementation’s associated attributes as corresponding to information at least about an IT vendor descriptor as the Examiner indicates. Ans. 20. We are, therefore, not persuaded that the Examiner erred in rejecting representative claim 9 and claim 22 not separately argued with particularity. Claims 14 and 27 We also sustain the Examiner’s rejection of representative claim 14 reciting an IT Projects data group including information about at least one IT project of the organization. Despite Appellants’ arguments to the contrary (Br. 29-31), nothing in the claim precludes the Examiner’s equating Buteau’s implementation entity with the recited projects data group, where the services provided by the entity correspond to information at least about the project. Ans. 21 (citing Buteau, col. 17, l. 39 – col. 18, l. 11). Even assuming, without deciding, that Buteau’s implementation entity is limited to containing IT project results, as Appellants seem to suggest (Br. 30), that Appeal 2010-010797 Application 11/939,391 9 information would still be about that project and therefore fully meet the claim. We are, therefore, not persuaded that the Examiner erred in rejecting representative claim 14 and claim 27 not separately argued with particularity. Claims 15 and 28 We do not, however, sustain the Examiner’s rejection of claim 15 reciting “a report generation engine configured to generate a report using the data entities and the organization into the data groups,” for the reasons indicated by Appellants. Br. 31-32. Buteau’s “organizational role people entity” 270 does not generate a report as the Examiner asserts (Ans. 21), but rather pertains to the restricted roles played by an organization with respect to a process which, in one example, involves the restricted use of a generated report within an organization (e.g., by only those at a certain managerial level). Buteau, col. 9, ll. 22-43. Although this entity involves the limited use of a generated report, it does not actually generate that report to function as a report generation engine, as claimed. To the extent that the Examiner’s position is based on equating the entity’s recording this restricted role involving the report (Buteau, col. 9, ll. 28-31) with generating a report using the data entities and data group organization, as claimed, such a position has not been adequately articulated on this record. Nor will we speculate in that regard here in the first instance on appeal. We are, therefore, persuaded that the Examiner erred in rejecting claim 15 and claim 28 which recites commensurate limitations. Appeal 2010-010797 Application 11/939,391 10 CONCLUSION Under § 102, the Examiner did not err in rejecting claims 1-14 and 16- 27, but erred in rejecting claims 15 and 28. ORDER The Examiner’s decision rejecting claims 1-28 is affirmed-in-part. 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 rwk Copy with citationCopy as parenthetical citation