Ex Parte Wong et al

Patent Trial and Appeal Board

Jan 11, 2013

10887738 (P.T.A.B. Jan. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WAI WONG and ALAN YOUNG
1

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Appeal 2011-004557
Application 10/887,738
Technology Center 3600
____________________
Before, ANTON W. FETTING, KEVIN F. TURNER, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
2

Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1
Computer Associates Think, Inc., is the real party in interest.
2
Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed February 2, 2010), Supplemental Appeal Brief (“Supp. Br.,” filed
March 24, 2010), and Reply Br. (“Reply Br.,” filed October 5, 2010) and the
Examiner’s Answer (“Ans.,” mailed August 5, 2010).
Appeal 2011-004557
Application 10/887,738

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THE INVENTION
Appellants’ disclosure relates to a system and method for managing
information technology through auto discovery analysis by forming an
information model based on components and business processes in an IT
infrastructure discovered during monitoring. (Abs.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for managing information technology (IT) through
auto discovery analysis to achieve business relevance,
comprising:
providing one or more IT services operable to monitor an IT
infrastructure and thereby discover managed components of the
infrastructure and discover business processes which are
supported by the infrastructure; and
forming, using a computer system, an object-based information
model based on the discovered components and the discovered
business processes, the information model modeling one or
more mappings of business processes to associated managed
components that support the business processes such that a
business impact can be determined based on the monitoring.
(App. Br., Claims Appendix A.1.)

PRIOR ART REJECTION
The prior art reference relied upon by the Examiner in rejecting the
claims is:
Bowman-Amuah US 6,370,573 B1 Apr. 9, 2002

Appellants respond to the following rejections:
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Application 10/887,738

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Claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-38, and 42 rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
3

Claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66
rejected under 35 U.S.C. § 102(e) as being anticipated by Bowman.

ISSUE
Does Bowman-Amuah disclose “forming . . . an object-based
information model,” as generally recited by independent claims 1, 39, 42,
43, 46, and 47, such that it anticipates the subject matter of claims 1, 3-6, 8-
9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66 under 35 U.S.C.
§ 102(e)?

FINDINGS OF FACT
1. Bowman-Amuah is directed to a system for managing an
environment in a development architecture framework based on service level
agreements and/or operations level agreements which utilizes performance
modeling tools to determine if system resources are sufficient to meet a
desired performance level. (Abs; col. 2, ll. 28-41.)
2. Bowman-Amuah describes that its system provides data modeling
tools which provide a graphical depiction of the logical data requirements

3
The Examiner’s Answer is silent as to a rejection of claims 1, 3-6, 8-9, 11,
17-18, 21, 25-26, 30, 33-38, and 42 being directed to non-statutory subject
matter under 35 U.S.C. § 101. It appears Examiner dropped this rejection
between the Final Rejection and Answer. Accordingly, we treat this
rejection of these claims as withdrawn, and so we decline to address
Appellants’ arguments regarding this rejection.
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for the system to support diagramming entities, relationships, and attributes
of the business being modeled. (Col. 72, ll. 17-22.)
3. Bowman-Amuah states that “[w]hen a component or object-based
approach is used, data modeling is not performed. Rather, the object model
contains both the data and the behavior associated with an object. In most
systems relational databases are used and the object model must be mapped
to the data model.” (Col. 72, ll. 34-41.)

ANALYSIS
Claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66
rejected under 35 U.S.C. § 102(e) as being anticipated by Bowman.
Independent claims 1, 39, 42, 43, 46, and 47
Appellants argue inter alia that Bowman-Amuah fails to disclose the
step of “forming . . . an object-based information model based on the
discovered components and the discovered business processes, the
information model modeling one or more mappings of business processes to
associated managed components that support the business processes such
that a business impact can be determined based on the monitoring,” as
presently recited by independent claim 1. (App. Br. 29; Reply Br. 4.)
Independent claims 39, 42, 43, 46, and 47 recite a substantially similar
limitation. (App. Br. 33.)
To address this limitation, the Examiner asserts that Bowman-
Amuah’s “system has data model or diagram for high-level descriptions of
conceptual data models, and it provides a graphical notation for representing
such data models in the form of entity-relationship diagrams” [sic]. (Ans. 4,
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7.) Appellants disagree with the Examiner and assert that the data model
referred to in Bowman-Amuah is not the same as the “object-based
information model” recited by independent claims 1, 39, 42, 43, 46, and 47.
(App. Br. 30; Reply Br. 5.) We agree with Appellants.
While we agree with the Examiner that Bowman-Amuah describes
mapping an object to a data model (FF 2), we cannot agree with the
Examiner that Bowman-Amuah’s system discloses forming an object-based
information model, as required by independent claims 1, 39, 42, 43, 46, and
47. To the contrary, as Appellants point out, Bowman-Amuah clearly
discloses that “[w]hen a component or object-based approach is used, data
modeling is not performed.” (FF 3.)
Thus, we find the Examiner’s reliance on Bowman-Amuah
impermissibly reads the requirement for an “object-based information
model” out of the claims, where each of the independent claims explicitly
recites the formation of an “object-based information model,” and as such,
cannot anticipate the subject matter of independent claims 1, 39, 42, 43, 46,
and 47. See Texas Instr., Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165,
1171 (Fed. Cir. 1993) (Claim language cannot be mere surplusage. An
express limitation cannot be read out of the claim). The Examiner appears
to have selected a reference that affirmatively negates the very limitation the
Examiner makes findings toward. We express no opinion regarding
patentability in light of any similar reference not before us that did not
include such an express disclaimer.
Accordingly, we cannot sustain the Examiner’s rejection of
independent claims 1, 39, 42, 43, 46, and 47, and claims 3-6, 8, 9, 11, 17-18,
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21, 25-26, 30, 33-38, and 48-66, from which they depend, under 35 U.S.C.
§ 102(e) as anticipated by Bowman.

CONCLUSION
We conclude that Bowman fails to disclose “forming . . . an object-
based information model,” as generally recited by independent claims 1, 39,
42, 43, 46, and 47, and as such, fails to anticipate the subject matter of
claims 1, 3-6, 8-9, 11, 17-18, 21, 25-26, 30, 33-39, 42-43, and 46-66 under
35 U.S.C. § 102(e).

DECISION
We reverse the Examiner’s rejection of claims 1, 3-6, 8-9, 11, 17-18,
21, 25-26, 30, 33-39, 42-43, and 46-66.

REVERSED

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