Ex Parte Carrato et al

Patent Trial and Appeal Board

Nov 20, 2014

12330821 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY L. CARRATO,
SIEDS EITENS,
JOHN A. FALKL, and
ROBERT G. LAIRD
__________

Appeal 2012-004328
Application 12/330,8211
Technology Center 3600
____________

Before HUBERT C. LORIN, MICHAEL W. KIM, and
CARL L. SILVERMAN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Anthony L. Carrato, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

1 The Appellants identify International Business Machines Corporation as
the real party in interest. Br. 1.
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SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method of evaluating service
oriented architecture (‘SOA’) governance maturity, the method
comprising:
receiving, by a computer, from a plurality of
predetermined stakeholders in the SOA for a plurality of SOA
governance capabilities, a stakeholder assessed value
representing the current maturity of each of the plurality of
SOA governance capabilities;
determining, by the computer, for each of the plurality of
SOA governance capabilities in dependence upon the plurality
of stakeholder assessed values from the stakeholders, a
capability value for each of the plurality of SOA governance
capabilities;
assigning, by the computer, each of the SOA governance
capabilities to a domain;
determining, by the computer, in dependence upon the
capability values for each of the plurality of SOA governance
capabilities of each domain, a domain maturity value for each
domain; and

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Sep. 21, 2011) and the Examiner’s Answer (“Ans.,” mailed Oct. 26,
2011).
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communicating, by the computer, the domain maturity
value for each domain to the predetermined stakeholders of the
SOA.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kunjur

US 2008/0249825 A1 Oct. 9, 2008
Srikanth Inaganti and Sriram Aravamudan, “SOA Maturity Model,”
BPTrends, April 2007, pages 1-23. [“Inaganti”].

The following rejection is before us for review:
1. Claims 1-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Inaganti and Kunjur.

ISSUE
Did the Examiner err in rejecting claims 1-20 under §103 over
Inaganti and Kunjur?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Examiner takes the position that Inaganti discloses all the
limitations in the independent claims (claims 1, 9, and 14) but “does not
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specifically disclose communicating the domain maturity value for each
domain to the predetermined stakeholders of the SOA nor does Inaganti
explicitly teach the computer program product and system limitations of
claims 9 and 14” (Ans. 6) for which Kunjur is relied upon.
The Examiner found that
It would have been obvious to a person of ordinary skill in the
art at the time the invention was made to combine teachings of
Inaganti with Kunjur because communicating the maturity
value would provide a real world use for the SOA analysis and
would promote better overall IT maintenance and efficiency
(see Kunjur, para [0003]).
Furthermore, it would have been obvious to one of ordinary
skill in the art at the time of the invention to include IT
maintenance system as taught by Kunjur in the SOA maturity
model of Inaganti, since the claimed invention is merely a
combination of old elements, and in the combination each
element merely would have performed the same function as it
did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.
Ans. 7.
The Appellants argue, in part, that
Inaganti’s assessment process does not detail receiving from a
plurality of predetermined stakeholders in the SOA for a
plurality of SOA governance capabilities a stakeholder assessed
value; determining for each of the plurality of SOA governance
capabilities a capacity value; assigning a domain maturity
value.
Br. 6. Also, “Appellants further submit that - and this is key - the claims of
the present application are related to evaluating not just SOA maturity, but
more importantly SOA governance maturity.” Br. 7.
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In response, the Examiner points to Fig. 4 of Inaganti (reproduced at
Ans. 16).
The difficulty with the Examiner’s reasoning is that Inaganti is
directed to an assessment of the maturity of an SOA while the claimed
invention is directed to an assessment of the maturity of the governance of
an SOA.
The Examiner argues that “the maturity model discussed in Inaganti is
explicitly concerned with governance [and] Appellant’s specification on the
bottom of p. 4 lists various examples of SOA governance capabilities . . . .”
Ans. 18.
It is true that both the claimed invention and Inaganti involve
governance. However, Inaganti does not evaluate SOA governance maturity
and is therefore is not solely concerned with governance. Rather, it makes a
number of findings (including IT governance) to assess SOA maturity. See
p. 21 of Inaganti:
The major realms from which inputs are derived for the SOA
maturity assessment process are
1. Domain Study: This set of inputs for the assessment of SOA
maturity is resultant from a detailed study of the enterprise's
business domain.
2. IT Landscape Study: A detailed analysis of the company’s IT
landscapes, the applications, coding standards, documentation,
IT policies and governance mechanisms is conducted, and the
findings are consolidated to arrive at the IT maturity of the
organization.
3. Consulting Toolkits: The company's people, practices and
tools are analyzed by means of questionnaires, checklists,
workshops and discussions, in order to assess the overall
process maturity of the organization.
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The Examiner is correct that the Specification at pages 4-5 lists
various SOA governance capabilities. These “may be useful in
carrying out evaluating SOA governance maturity according to
embodiments of the present invention.” P. 8, lines 15-17. Emphasis added.
But the Specification does not equate the evaluation of SOA governance
maturity to an assessment of SOA maturity as Inaganti describes. There is
insufficient evidence on record showing that an evaluation of SOA
governance maturity reads on an assessment of SOA maturity.
Given that Inaganti does not disclose evaluating SOA governance
maturity as claimed, the question is whether one ordinary skill in the art
would have been led to evaluate SOA governance maturity as claimed given
Inaganti’s disclosure of assessing SOA maturity. That question, however,
has not been addressed.
As a result, we find that a prima facie case of obviousness has not
been made out in the first instance. Accordingly, the rejection is not
sustained.

DECISION
The decision of the Examiner to reject claims 1-20 is reversed.

REVERSED

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