Ex Parte FLORES et al

Patent Trial and Appeal Board

Nov 28, 2018

13887609 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/887,609 05/06/2013 ROMELIA H. FLORES
73109 7590 11/30/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CHA920110002US2_8134-0129 4306
EXAMINER
GEORGANDELLIS, ANDREW C
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMELIA H. FLORES, JOSEPH E. HACKETT,
and LEONARD S. HAND
Appeal 2018-002767
Application 13/887,609 1
Technology Center 2400
Before JEREMY J. CURCURI, BARBARA A. BENOIT, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 21-24 and 26-29. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Technology
The application relates to "utilizing asset signatures to detect and
manage derelict items within an asset management system" in an
information technology environment. Spec. ,r 1, claim 21.
1 Appellants state that the real party in interest is IBM Corp. App. Br. 1.
Appeal 2018-002767
Application 13/887,609
Illustrative Claim
Claim 21 is illustrative and reproduced below with certain limitations
at issue emphasized:
21. A computer-implemented method, comprising:
generating, for a particular asset, an asset signature
including a signature evaluation formula and a signature status
formula;
evaluating, using the asset signature and a multi-stage
screening process, the asset to determine an asset state of the
asset;
reclaiming, based upon a determination that the asset state
is derelict, resources in an information technology (IT)
environment consumed by the asset, wherein the asset represents
a fundamental structural unit of the IT environment,
the signature status formula is configured to perform an
evaluation of the asset over a time range,
the signature evaluation formula is configured to perform
a point-in-time evaluation of the asset.
Rejection on Appeal
Claims 21-24 and 26-29 stand rejected under 35 U.S.C. § I02(e) as
anticipated by Detro (US 2012/0151036 Al; June 14, 2012). Non-Final
Act. 9. 2
2 The Examiner withdrew the rejections under 35 U.S.C. § 112, including
the only rejection against claim 25. Ans. 3. We also note that neither the
Non-Final Action nor the Examiner's Answer appear to address claims 30-
35, despite the similarity between independent claim 31 and the other
independent claims.
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Appeal 2018-002767
Application 13/887,609
ISSUE
Did the Examiner err in finding Detro discloses "generating, for a
particular asset, an asset signature including a signature evaluation formula
and a signature status formula," as recited in independent claim 21?
ANALYSIS
Claim 21 recites "generating,/or a particular asset, an asset signature
including a signature evaluation formula and a signature status formula."
The Examiner identifies Detro' s "processing rules 150" as the claimed
"asset signature." Ans. 4. "Detro discloses that the suspect rules 152 and
stray rules 154 are included in the processing rules 150." Id. at 3--4 (citing
Detro ,r,r 39, 45); see also Detro Fig. 1. The Examiner identifies Detro's
"suspect rules 152" as the claimed "signature evaluation formula" and
Detro's "stray rules 154" as the claimed "signature status formula." Non-
Final Act. 10 ( citing Detro ,r 40).
Appellants argue that "the suspect rules 152 and stray rules 154 of
Detro are not found in an asset signature that corresponds to a particular
asset" and instead are "independent of the environment assets 110 being
evaluated by the rules 152, 154." App. Br. 18. According to Appellants,
Detro' s rules are "generically used for any asset" and are "not generated for
a particular asset, as claimed." Reply Br. 2.
We agree with Appellants that Detro' s rules are generated for a
particular asset. Detro does disclose that its rules "can be customized to
specific types of environmental assets 11 O," such as "suspect" routers with a
particular port open despite no active OPENVPN session. Detro ,r 40
( emphasis added); Ans. 4. However, the Examiner has not shown how
applying a rule to find specific types of assets discloses generating a rule for
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Appeal 2018-002767
Application 13/887,609
a particular asset. In contrast to Detro, the Specification discloses that the
asset signature 130 can include information of a particular asset such as "a
unique asset identifier" and "an asset name." Spec. ,r,r 28-29. Yet the
Examiner has not identified anything in Detro' s rules that indicates a rule
was generated for a particular asset rather than a more generic type of asset.
Accordingly, we do not sustain the Examiner's rejection of claims 21-
24 and 26-29.
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 21-24 and 26-29 under§ 102.
REVERSED
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