Ex Parte D et al

Board of Patent Appeals and Interferences

Oct 19, 2009

10845831 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SALVATORE D’ALO, ALEX DONATELLI, CLAUDIO
MARINELLI, and GIOVANNI LANFRANCHI
____________________

Appeal 2009-0018821
Application 10/845,831
Technology Center 2100
____________________

Decided: October 19, 2009
____________________

Before ALLEN R. MacDONALD, Vice Chief Administrative Patent Judge
JEAN R. HOMERE, and JAMES R. HUGHES, Administrative Patent
Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed May 14, 2004. The real party in interest is International Business
Machines Corp.
Appeal 2009-001882
Application 10/845,831

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1 through 30. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
Appellants invented a method and system for self-configuring a
subject entity to facilitate its correlation with other entities in a data
processing system. (Para. [0011].) As shown in Figure 1a, upon the subject
entity (110) retrieving one of the rules published by a ruling authority (105)
whereby the retrieved rule specifies a desired configuration for a category of
subjects and references another category for a further subject entity, the
subject entity applies the retrieved rule to configure itself, as well as to
associate its parameter to the parameter of the referenced subject entity.
(Para. [0026-0029.])

Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. An autonomic management method for self-configuring a subject
entity in a data processing system, wherein the subject entity belongs to at
least one of a plurality of categories, said method comprising:
the subject entity retrieving, from a set of rules published by an
authority entity, one or more rules corresponding to the at least one category
of the subject entity, wherein each rule defines a desired state for a category
and at least one retrieved rules includes at least one formal
parameter defining a correlation with at least one further category;
for each retrieved rule, the subject entity:
resolving each formal parameter included in the retrieved rule
by associating each further category specified in the formal parameter
Appeal 2009-001882
Application 10/845,831

3
with at least one further subject entity belonging to the further
category; and
applying the retrieved rule to configure the subject entity
according to the desired state specified in the retrieved rule.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:

Landesmann 6,735,572 B2 May 11, 2004
Bonneau 6,978,273 B1 Dec. 20, 2005
(filed June 18, 2001)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1 through 4, 7 through 14, 17 through 24, and 27 through 30
stand rejected as being anticipated by Bonneau.
2. Claims 5, 6, 15, 16, 25 and 26 stand rejected as being unpatentable
over the combination of Bonneau and Landesman.

Appellants’ Contentions
Appellants contend that Bonneau does not teach a subject entity in a
data processing system that retrieves a rule for configuring the subject entity
and for correlating the subject entity to another subject entity, as recited in
independent claim 1. (App. Br. 4-8.) According to Appellants, while
Bonneau discloses retrieving stock keeping units (SKUs) from a catalog
database in accordance to a rule set associated with a particular buyer, the
Appeal 2009-001882
Application 10/845,831

4
reference does not disclose a subject entity in a data processing system that
performs the cited steps as required by the claim. (Id. at 6-7.)

Examiner’s Findings
The Examiner finds that Bonneau’s disclosure of allowing a buyer to
use certain rules to customize a set of data items into a desired subset of data
items teaches a subject entity in a data processing system that retrieves a rule
for configuring the subject entity and for correlating the subject entity to
another subject entity. (Ans. 3-5.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that
Bonneau teaches a subject entity in a data processing system that retrieves a
rule for configuring the subject entity and for correlating the subject entity to
another subject entity?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Bonneau
1. Boneau discloses a system for allowing authorized buyers to
use assigned rules to customize data items in a central catalog database into
a subset of data items pertaining to the buyer. (Col. 4, ll. 36-44.)
2. As shown in Figure 2, upon being authorized to access the
seller’s central catalog database (10) via the Internet (40), a buyer (36)
Appeal 2009-001882
Application 10/845,831

5
utilizes a set of assigned rules to search the database to generate a
customized subset thereof. (Col. 5, ll. 39-47.)
3. The customized version of the database can be exported to other
buyers. (Col. 5, ll. 19-21, ll. 47-51.)

IV. PRINCIPLES OF LAW
Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(internal citations omitted).

V. ANALYSIS
Claims 1-4, 7-14, 17-24, and 27- 30
Independent claim 1 requires in relevant part a subject entity in a data
processing system that retrieves a rule for configuring the subject entity and
for correlating the subject entity to another subject entity.
Appeal 2009-001882
Application 10/845,831

6
As set forth in the Findings of Facts section, Bonneau discloses that a
buyer can generate a subset of a seller’s database by utilizing certain rules
assigned to the buyer to search the seller’s database. (FF. 1-2.) Bonneau
further discloses that the buyer can share the generated database subset with
other buyers. (FF. 3.) We find that Bonneau’s disclosure at best teaches a
buyer entity in a data processing system that retrieves a set of rules assigned
to the buyer to generate a customized version of the seller’s database, which
is shared or used to correlate the buyer entity with other buyer entities. We
agree with the Examiner’s interpretation that a subject entity can be
construed to include the buyer disclosed in Bonneau. We find that since the
disclosed buyer entity is identified or authenticated in Bonneau’s system by
way of the buyer’s ID, the buyer entity is thus a part of the data processing
as required by the claim. However, while we find that Bonneau’s use of the
buyer’s assigned rules can be construed as retrieving the rules, they are not
used to configure the buyer entity itself. Rather, the rules are used to
configure a customized version of the seller’s database. We therefore agree
with Appellants that Bonneau does not teach the buyer entity retrieving the
assigned rules to configure itself.
Since Appellants have shown at least one error in the rejection of
claim 1, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have shown that the Examiner erred in finding that
Bonneau anticipates independent claim 1.
Because claims 2 through 4, 7 through 14, 17 through 24, and 27
through 30 also recite the limitations discussed above, we find that
Appellants have also shown error in the Examiner’s rejection of these claims
for the reasons set forth in our discussion of independent claim 1.
Appeal 2009-001882
Application 10/845,831

7

Claims 5, 6, 15, 16, 25 and 26
Appellants argue that the combination of Bonneau and Landesman
does not render these dependent claims unpatentable since Landesman does
not cure the deficiencies of Bonneau, as argued for representative claim 1
above. (App. Br. 9.) We agree. It follows that Appellants have shown that
the Examiner erred in finding that the combination of Bonneau and
Landesman renders claims 5, 6, 15, 16, 25 and 26 unpatentable.

VI. CONCLUSIONS OF LAW
1. Appellants have established that the Examiner erred in rejecting
claims 1 through 4, 7 through 14, 17 through 24, and 27 through 30 as being
anticipated by Bonneau.
2. Appellants have established that the Examiner erred in rejecting
claims 5, 6, 15, 16, 25 and 26 as being unpatentable over the combination of
Bonneau and Landesman.

VII. DECISION
We reverse the Examiner's rejection of claims 1 through 30.

REVERSED

Appeal 2009-001882
Application 10/845,831

8

erc

DILLON & YUDELL LLP
8911 NORTH CAPITAL OF TEXAS HWY
SUITE 2110
AUSTIN TX 78759