Ex Parte Dawson et al

Patent Trial and Appeal Board

Aug 30, 2016

13106380 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/106,380 05/12/2011
79980 7590 09/01/2016
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
FIRST NAMED INVENTOR
Christopher J. Dawson
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920110062US 1 5139
EXAMINER
NGUYEN, LINH T
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
09/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
drubbone@kdiplaw.com
Docket@Kdiplaw.com
lcronk@kdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. DAWSON, LYDIA M. DO,
BRIAN M. O'CONNELL, and JAMES W. SEAMAN
Appeal2015-005479
Application 13/106,380
Technology Center 2400
Before JEFFREYS. SMITH, JON M. JURGOV AN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005479
Application 13/106,380
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-9, and 11-20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to "a dynamic, user-driven service catalog
based on real-time inputs by an end-user based on an automated evaluation
process." (Abstract.) Claim 1, reproduced below, is illustrative:
1. A system for implementing a dynamic, user-driven service
catalog comprising:
at least one processing unit;
a computer-readable memory operably associated with the at
least one processing unit; and
a catalog update tool storable in the computer-readable
memory and executable by the at least one processing unit, the
catalog update tool comprising program instructions, stored on
the computer readable memory for execution by the catalog up-
date tool and the at least one processing unit, to:
receive a request to add a service to a service catalog,
the request received directly from an end-user of the service
catalog without pre-approval from another user;
evaluate whether the service can be added to the service
catalog based on an analysis of system-integrated criteria;
determine a cost for fulfilling the request to add the
service to the service catalog; and
1 Appellants identify International Business Machines Corporation as the
real party in interest. (See App. Br. 2.)
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Appeal2015-005479
Application 13/106,380
add the service to the service catalog based on the
analysis of system-integrated criteria and the cost for
fulfilling the request to add the service to the service catalog.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Putt US 2003/0097296 Al May 22, 2003
Soares et al. US 2005/0044099 Al Feb.24,2005
Tate et al. US 2006/0218127 Al Sept. 28, 2006
Shestakov et al. US 2007 /0038566 Al Feb. 15,2007
Koretz et al. US 2008/0195506 Al Aug. 14, 2008
Smith et al. US 7,467,126 B2 Dec. 16, 2008
Edson Manoel and Sebastien Fardel, Implementation Best
Practices for IBM Tivoli License Manager (IBM International
Technical Support Organization, May 2006)
THE REJECTIONS
1. Claims 1, 4, 5, 9, 12, and 15-18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Soares and Tate. (See Final Act. 5-11.)
2. Claims 3 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Soares, Tate, and Shestakov. (See Final Act. 11-12.)
3. Claims 6, 13, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Soares, Tate, and Koretz. (See Final Act. 12-14.)
4. Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Soares, Tate, and Putt. (See Final Act. 14--15.)
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Application 13/106,380
5. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Soares, Tate, and Smith, and Manoel. (See Final Act. 15-
16.)
6. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Soares, Tate, and Manoel. (See Final Act. 16-17.)
7. The Answer newly rejected claims 1, 3-9, and 11-20 under
35 U.S.C. § 101 on the grounds that the claimed invention is directed to non-
statutory subject matter. (See Ans. 2-7.)
APPELLANTS' CONTENTIONS
Appellants argue the rejections are in error for the following reasons:
1. Soares and Tate fail to disclose, either alone or in combination,
the "receive ... ,""evaluate ... ,""determine ... ,"and "add ... "steps
because "neither reference focuses on actually adding a service to a service
catalog, and defining steps/requirements for doing so." (App. Br. 9.)
2. "Soares fails to disclose, inter alia, determining a cost for
fulfilling the request to add the service to the service catalog." (App. Br.
10.)
3. Tate does not disclose "adding the service to the service catalog
based on the analysis of system integrated criteria and the cost for fulfilling
the request to add the service to the service catalog" because "Tate provides
an approach for end users to request/subscribe a service for use from the
service catalog." (App. Br. 11.)
4. With respect to the Section 101 rejection, "the claimed
invention is not drawn to an abstract idea and does not foreclose upon an
area of impermissible activity." (Reply 3.)
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Application 13/106,380
ANALYSIS
Regarding their first contention, Appellants argue that "Soares, e.g.,
teaches a 'service to be brought into existence'" and "further teaches an
approval workflow for acquiring and installing a software step," but that
"this fails to specifically disclose a request to add a service to the service
catalog (emphasis added)." (App. Br. 9-10.) The Examiner finds that:
Soares teaches a computerized process to receive end user orders
for IT service, the process which executes on a computer, gener-
ates appropriate workflow and gathers statistics about cost to im-
plement the IT service, the process receives and stores user input
indicating a desire to create a new service (Soares: Fig. 3A, step
62; paragraph [0036]), Soares further teaches an approval work-
flow that eliminates the approval from another user if the cost to
purchase hardware equipment is within a preset threshold (para-
graphs [0115] and [0121]), furthermore this approval workflow
is one of a step in a series of step to add a service to the service
catalog. In other words, the approval workflow is part of the
process of adding a service to a service catalog, hence Soares
teaches both of the above-argued limitations.
(Ans. 8.) Appellants respond that "to the extent that Soares shows an
approval policy, the policy is at best based on a selection of conditions that
must be fulfilled or if unfulfilled is subject to user" and that "[a]s such,
Soares fails to teach a request from an end-user that is received without pre-
approval from another user." (Reply Br. 4--5.)
We agree with the Examiner. Soares states in paragraph 115 that the
service action "may also point to an approval workflow," meaning that it
also may not, and paragraph 121 specifically describes a "no approval"
policy where "the computer would automatically approve implementation."
This does teach or suggest "a request from an end-user that is received
without preapproval from another user."
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Application 13/106,380
Regarding their second contention, Appellants argue that "Soares fails
to disclose, inter alia, determining a cost for fulfilling the request to add the
service to the service catalog" because the cited portions of Soares "merely
provide[] a general discussion of assigning cost to a service." (App. Br. 10.)
Citing paragraphs 43--44 and 51, the Examiner responds that "Soares teaches
when a user requests for a new service, the cost to fulfill the service is
defined" and "furthermore the data structure that defines a service includes
cost information." (Ans. 8-9.) Consistent with the Specification,2 we
interpret the scope of "determine a cost for fulfilling the request to add the
service to the service catalog" to encompass that the cost for providing the
service is determined in assessing whether to add the service to the catalog.
(See Spec. i-f 24 ("Cost engine 158 provides the function of determining
whether the cost of a request/transaction exceeds a predetermined threshold
resulting in an unprofitable outcome (e.g., [cost of request]< [revenue] -
[operating costs]).").3) In view of that construction, we agree with the
Examiner that the cited portions of Soares teach or suggest the claimed
feature. (See Soares i-f 51 ("The data structure that defines a service includes
... cost information which are constants or formulas which define the cost
of creating and/or using the service .... ").)
2 See In re American Academy of Science Tech. Ctr., 367 F.3d 1359, 1369
(Fed. Cir. 2004).
3 The language "to add the service to the service catalog" was added by
amendment on May 28, 2013. The original disclosure does not describe
determining a cost of making an addition to a catalog, the amendment did
not identify any support, and page 3 of the Appeal Brief cites paragraph 23
of the Specification, which does not describe any costs, much less
calculating a cost associated with modifying a catalog.
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Application 13/106,380
Regarding their third contention, Appellants argue that "Soares fails to
disclose ... adding the service to the service catalog based on the analysis of
system integrated criteria and the cost for fulfilling the request to add the
service to the service catalog" and that Tate "fails to cure this deficiency, as
Tate provides an approach for end users to request/subscribe a service for
usefrom the service catalog." (App. Br. 11.) We agree with the Examiner
that Tate's disclosure of the consideration of technical parameters that may
include a minimum amount of available resources (i-f 20) would have taught
or suggested to one of skill in the art adding a service to a catalog based on
the analysis of system integrated criteria. In other words, we agree that it
would have been obvious to determine whether a service could, in fact, be
provided before adding it to a catalog.
For these reasons, we sustain the rejections of claims 1, 3-9, and 11-
20 under 35 U.S.C. § 103(a).
We do not reach a decision on the 35 U.S.C. § 101 rejection because
our decision on the 35 U.S.C. § 103(a) rejection is dispositive.
DECISION
The rejections of claims 1, 3-9, and 11-20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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