Ex Parte Nishimura et al

Patent Trial and Appeal Board

Jun 29, 2018

13565002 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/565,002 08/02/2012
37945 7590 07/03/2018
DUKEW. YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Y asutaka Nishimura
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.
JP920100059US2 9517
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUT AKA NISHIMURA, T AKASHI OGURA,
AKIRA OHKADO, and TADASHI TSUMURA
Appeal2017-002044
Application 13/565,002 1
Technology Center 3600
Before CARLA M. KRIVAK, AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 2
1 Appellants' Brief ("App. Br.") identifies International Business Machines
Corporation as the real party in interest. App. Br. 1.
2 Although we do not sustain all claim rejections, we sustain at least one
ground of rejection for each pending claim. 37 C.F.R. § 41.50(a)(l).
Appeal2017-002044
Application 13/565,002
CLAIMED SUBJECT MATTER
The claims are directed to managing access to assets associated with
time-specific work orders based on a security policy that monitors the
location of the asset. Spec. i-fi-19-10. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of processing by a computer to manage
an access right to at least one asset associated with at least one
digital work order, the method comprising steps executed by the
computer of:
at a scheduled start time for a work order to be executed,
or in response to reception of a report indicating a start of work
for the work order to be executed or a report indicating a
completion of work for a preceding work order to the work order
to be executed:
loading into a memory of the computer a security policy
associated with the work order to be executed, or an asset
associated with the work order to be executed, and
starting to monitor a location of the asset associated with
the work order to be executed; and
generating an event for managing the asset in response to
a fact that the loaded security policy is violated by the location,
or a change in the location of the asset associated with the work
order that was obtained by the monitoring.
App. Br. 32 (Claims Appendix).
REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter.
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ratcliff et al. (US 2008/0163347, published July 3, 2008)
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("Ratcliff') and Mitchell et al. (US 8,321,253 B2, issued Nov. 27, 2012 3)
("Mitchell").
ANALYSIS
SECTION 101 REJECTION
Legal Standard for Patent-Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int'!., 134 S. Ct. 2347 (2014). The Supreme Court
instructs us to "first determine whether the claims at issue are directed to a
patent-ineligible concept," Alice, 134 S. Ct. at 2355, and, in this case, the
inquiry centers on whether the claims are directed to an abstract idea. If the
initial threshold is met, we then move to the second step, in which we
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as a search for "an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at
72-73).
3 Although issued after the effective filing date of Appellants' application,
Mitchell qualifies as prior art under 35 U.S.C. § 102(e) based on its filing
date of June 24, 2009.
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The Examiner's Findings
The Examiner rejects claims 1-21 under the two-step Alice
framework. Under the first step, the Examiner finds the claims are directed
to the abstract idea of "loading a security policy associated with a work
order." Final Act. 2, 4. The Examiner finds the concept to which the claims
are directed amounts only to "comparing new and stored info[rmation] and
using rules to identify options, which corresponds to concepts identified as
abstract ideas by the courts." Ans. 2. Analyzing the claims under the
second step of the Alice framework, the Examiner finds the "additional
claim limitations beyond the concepts of loading a security policy with a
work order and monitoring the security policy are recited at a high level of
generality and are recited as performing generic computer functions
routinely used in computer applications." Id. at. 3. The Examiner further
determines that considering the claim limitations as an ordered combination
"adds nothing that is not already present when looking at the elements taken
individually." Id. at. The Examiner explains that "[t]here is no indication
that the combination of elements improves the functioning of a computer or
improves any other technology." Id. at 3--4.
Appellants 'Arguments-Claim 1
Appellants present several arguments in favor of eligibility. First,
Appellants argue the Examiner has failed to follow the Office guidelines on
eligibility because "loading a security policy associated with a work order"
and similar concepts have "not been held by a precedent court as being an
'abstract idea'." App. Br. 6. Appellants characterize their invention as
"directed towards a technique that uses an asset-location monitoring
technique to dynamically generate an asset-managing event in response to
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the asset-location violating a security policy associated with the work-order
or asset." App. Br. 7. Appellants contend the claimed concept is
"inextricably tied to computer technology and distinct from the types of
concepts found by the courts to be abstract" under Alice step 1. Id.
With respect to the Examiner's Alice step 2 determination, Appellants
argue that "[ c ]laim 1 recites an inventive concept of managing an access
right to an asset associated with a work order such that an event is generated
in response to the fact that a security policy associated with such work order
or asset is violated." App. Br. 8. Appellants argue there is a "synergistic
interplay" that goes beyond "mere generic computer-implemented steps
implemented by a generic computer" as evidenced by Appellants' analysis
of the rejections made under 35 U.S.C. § 103. Id. at 8. Appellants also
argue the Examiner's analysis of the claims as an "ordered combination" is
flawed because "when viewing the combination of steps interoperating
together ... there is a synergistic interplay (1) between the work order and
security policy, and (2) between the security policy violation (that is asset-
location based) and the generation of an event for managing the asset whose
'location' caused the security policy violation to occur." Reply Br. 3--4.
Appellants also dispute the Examiner's finding that the claimed invention
does not improve the functioning of a computer, arguing that security
management technology is improved by solving the problem of "asset-
location-based security policy violations pertaining to a specific work
order." Id. at 4.
Analysis-Claim 1
We are not persuaded by Appellants' arguments, and we address each
in tum. We disagree with Appellants that "loading a security policy
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associated with a work order" and similar concepts have "not been held by a
precedent court as being an 'abstract idea'." App. Br. 6. We see substantial
similarity between this concept and the concept found abstract in
FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089 (Fed. Cir. 2016)
("FairWarning"). There, the Federal Circuit considered the eligibility of
claims directed to fraud detection and misuse of computer information. The
claim at issue in Fair Warning recited:
A method of detecting improper access of a patient's
protected health information (PHI) in a computer environment,
the method comprising:
generating a rule for monitoring audit log data
representing at least one of transactions or activities that are
executed in the computer environment, which are associated with
the patient's PHI, the rule comprising at least one criterion
related to accesses in excess of a specific volume, accesses
during a pre-determined time interval, accesses by a specific
user, that is indicative of improper access of the patient's PHI by
an authorized user wherein the improper access is an indication
of potential snooping or identity theft of the patient's PHI, the
authorized user having a pre-defined role comprising authorized
computer access to the patient's PHI;
applying the rule to the audit log data to determine if an
event has occurred, the event occurring if the at least one
criterion has been met;
storing, in a memory, a hit if the event has occurred; and
providing notification if the event has occurred.
FairWarning IP, 839 F.3d at 1092. Thus, like the claim at issue here, the
claim found ineligible by the Federal Circuit in Fair Warning was directed to
a computer-based method that implements security policies ("authorized
user having a pre-defined rule comprising authorized computer access")
based on scheduled times ("accesses during a predetermined time interval")
that detects violations of those policies ("indicative of improper access")
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with respect to an asset ("patient's PHI") and generates a notification when
such unauthorized access occurs ("providing notification if the event has
occurred"). As such, we agree with the Examiner that Appellants' claim 1 is
similar to those previously found abstract by the courts, and we are not
persuaded by this argument.
We also are not persuaded by Appellants' argument that claim 1 is not
abstract because tracking an asset's location results in an invention
"inextricably tied to computer technology and distinct from the types of
concepts found by the courts to be abstract." App. Br. 7. In finding the
Fair Warning claims abstract, the Federal Circuit noted the "claims merely
implement an old practice in a new environment." Fair Warning IP, 839
F.3d at 1094. Here, the claimed location-tracking concept is little different
from the longstanding practice of using retail security systems with clothing
alarm tags to ensure items of clothing are not removed and stolen from a
store. As such, the claim here, as was the case in Fair Warning, merely
implements an old practice in a new environment.
We also are unpersuaded by Appellants' contentions with respect to
Alice step 2. As we noted above, Appellants argue claim 1 reflects an
inventive "synergistic interplay" that goes beyond "mere generic computer-
implemented steps implemented by a generic computer." Reply Br. 3--4.
Appellants' contention is undermined by various statements made in the
Specification. In describing the allegedly inventive location-based asset
security policy, the Specification indicates determining the location of an
asset was well-known and conventional. For example, the Specification
states "[a]n appropriate technique known to a person skilled in the art may
be used for obtaining the location, location change, or the elapsed time at a
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certain position." Spec. i-f 34. The Specification also teaches that "a location
detection engine known to a person skilled in the art may be used for the
location detection means." Spec. i-f 151.
Thus, the key technological innovation relied upon by Appellants-
determining security violations based on location-is implemented using
techniques and means "known to a person skilled in the art." We also note
our reviewing court recently stated that to pass muster under Alice step 2,
"[w]hat is needed is an inventive concept in the non-abstract realm." SAP
Am., Inc. v. InvestPic, LLC, No. 2017-2081, 2018 U.S. App. LEXIS 12590,
Slip. Op. 13 (Fed. Cir. May 15, 2018). Here, the alleged inventive concept
closely tracks the abstract idea. Indeed, Appellants' characterization of the
claims as embodying an "inventive concept of managing an access right to
an asset associated with a work order such that an event is generated in
response to the fact that a security policy associated with such work order is
violated" is simply another way of saying the invention is directed to
implementing security policies for work orders, which, as we noted above, is
abstract. Accordingly, we agree with the Examiner that, considering the
limitations as an ordered combination, the claim does not amount to
significantly more than the abstract idea itself, and we therefore sustain the
rejection of claim 1under35 U.S.C. § 101.
Dependent Claims 2-10
Appellants present separate arguments for patent-eligibility of claims
2-8 and 10, which depend from claim 1. For each claim, Appellants submit
two arguments. First, they "urge error in the rejection of [the claim] for
reasons given above with respect to Claim 1 (of which [the claim] depends
upon)." See, e.g., App. Br. 9 (claims 2, 3), 10 (claims 4, 7), 11 (claims 8,
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10). 4 Second, Appellants characterize the functionality of each claim and
argue the functionality "is not a generic computer-implemented step, as
further described below in the 35 U.S.C. § 103 analysis." See id. Because
Appellants have not shown error in the Examiner's conclusion with respect
to claim 1, we are not persuaded by the first argument.
We also are not persuaded by Appellants' contentions regarding the
functionality in each of claims 2-10 not being a "generic computer-
implemented step, as further described below in the 35 U.S.C. § 103
analysis." It is well-established that patent-eligibility under Alice step 2 and
patentability under section 35 U.S.C. §§ 102 and 103 are separate and
distinct inquiries. Two-Way Media Ltd v. Comcast Cable Communs., LLC,
874 F.3d 1329, 1340 (Fed. Cir. 2017) ("Eligibility and novelty are separate
inquiries."). Merely arguing that claims involve an inventive concept
because they are allowable over prior art is insufficient to establish
eligibility. Accordingly, we are not persuaded the Examiner erred in
determining dependent claims 2-10 are ineligible under 35 U.S.C. § 101.
Independent Claim 11
Appellants primarily argue that independent claim 11 is eligible "for
similar reasons to those given above with respect to Claim 1." App. Br. 11.
We do not find this argument persuasive for the reasons discussed above.
Appellants further argue the Examiner erred because "[t]he Examiner fails to
address the moving-object aspects of Claims 11 - which advantageously
improves upon the art of security managements .... " App. Br. 11. We are
not persuaded of Examiner error. Although slightly different in scope, we
agree with the Examiner that claim 11 is, just as claim 1, directed to the
4 Claim 9 is not argued separately, and it falls with claim 1.
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abstract idea of "loading a security policy associated with a work order."
Like claim 1, claim 11 is directed to a concept bearing substantial similarity
to that found abstract in Fair Warning. Moreover, as was the case with claim
1, the features relied upon by Appellants to argue the claim is not abstract-
tracking the location of moving objects the duration of the object in a
location-are implemented using techniques and means "known to a person
skilled in the art." Spec. i-f 34 ("An appropriate technique known to a person
skilled in the art may be used for obtaining the location, location change, or
the elapsed time at a certain position."). Accordingly, we are not persuaded
independent claim 11 possesses sufficient inventiveness such that the Alice
inquiry leads to a different result.
Dependent Claims 12-19 and 21
Appellants present separate arguments for patent-eligibility of claims
12-19 and 21, which depend from claim 11. 5 App. Br. 12-13. The
arguments for these claims largely reiterate the arguments presented for
dependent claims 2-8 and 10, discussed above. For the same reasons, we
are not persuaded by these arguments.
SECTION 103 REJECTIONS
Independent Claim 1
In rejecting claim 1, the Examiner finds the limitations are taught by
the combination of Ratcliff and Mitchell. The Examiner relies on Ratcliff
for teaching using access rights and loading security policies in connection
with controlled access points. Final Act. 5-6; Ans. 9. The Examiner relies
on Mitchell for teaching using work orders and scheduling work orders for
5 Claim 20 is not argued separately, and it falls along with claim 11.
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assets. Final Act. 6; Ans. 8-9. The Examiner finds a person of ordinary
skill in the art would have combined Ratcliff and Mitchell "in order to
schedule a work order for a client." Final Act. 6.
Contesting the rejection of claim 1, Appellants present four
arguments. First, Appellants argue the references do not teach or suggest the
recitation in the preamble of "at least one asset associated with at least one
digital work order." Specifically, Appellants argue the work orders taught
by Ratcliff are not "executed" as required by the language in the preamble,
do not have any "asset" associated with them, and are not associated with a
"security policy." App. Br. 15.
Second, Appellants argue the prior art fails to teach or suggest
"generating an event for managing the asset in response to a fact that the
loaded security policy is violated . ... " App. Br. 16 (citing Ratcliffi-f 23).
Appellants contend Ratcliff fails to teach generating any managing event
that is invoked or triggered based on a location-induced security policy
violation. According to Appellants, Ratcliff merely describes control access
points and information included in access rights files. Id. at. 16 (citing
Ratcliff i-f 26).
Third, Appellants contend the references do not teach "loading into a
memory of the computer a security policy associated with the work order to
be executed, or an asset associated with the work order to be executed." Id.
at 17. Appellants argue the portions of Mitchell cited by the Examiner in the
final Office Action make no reference to any security policy, and merely
describe scheduling and monitoring the progress of work orders. Id. at. 18-
19.
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Finally, Appellants challenge the rationale for combining Ratcliff and
Mitchell. Appellants argue the Examiner has failed to articulate any
reasoning because the rationale provided is conclusory. Id. at. 19-20.
We are not persuaded by Appellants' arguments, and we address each
argument in tum. However, before we tum to the merits of Appellants
arguments, we first address a point of contention raised by Appellants in the
Reply Brief. In the Reply Brief, Appellants argue the Examiner made new
determinations and analysis in the Answer. See, e.g., Reply Br. 9.
Appellants argue that the reliance by the Examiner on these allegedly new
grounds proves the rejection in the Final Action was deficient. Appellants,
accordingly, argue that the Answer includes several new grounds of
rejection; Appellants do not, however, request remand to the Examiner to
reopen prosecution, but instead ask for reversal based on the state of the
rejection in the Final Action while also presenting arguments purporting to
show error in these allegedly new grounds.
Appellants' assertion that the Board should reject the Examiner's
allegedly new arguments as untimely (Reply Br. 6) is contrary to the
guidance provided by MPEP § 1207.03(b), based on 37 C.F.R. § 41.40,
which sets out the exclusive procedure for an appellant to request review of
the primary examiner's failure to designate a rejection in the Answer as a
new ground of rejection via a petition to the Director under 37 C.F.R.
§1.181:
[37 C.F.R. § 41.40] sets forth the exclusive procedure for an
appellant to request review of the primary examiner's failure to
designate a rejection as a new ground of rejection via a petition
to the Director under [3 7 C.F .R. § 1.181], This procedure should
be used if an appellant feels an answer includes a new ground of
rejection that has not been designated as such and wishes to
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reopen prosecution so that new amendments or evidence may be
submitted in response to the rejection. However, if appellant
wishes to submit only arguments, the filing of a petition under
[3 7 C.F .R. § 1.181] would not be necessary because appellant
may submit the arguments in a reply brief. Any such petition
under [37 C.F.R. § 1.181] must be filed within two months from
the entry of the examiner's answer and prior to the filing of a
reply brief.
MPEP § 1207.03(b). As Appellants did not petition to reopen prosecution,
the Examiner's rejection, including the determinations and analysis from the
Answer, are before us in the record.
Turning back to the merits of Appellants' arguments, we are not
persuaded by Appellants' argument that the prior art references fail to teach
or suggest "at least one asset associated with at least one digital work order."
App. Br. 15. The Examiner finds, under the broadest reasonable
interpretation of the term "asset," the technicians assigned work orders in
Ratcliff teach an "asset associated with at least one digital work order."
Ans. 9 (citing Ratcliffi1i123, 25, 26). We agree with the Examiner that the
broadest reasonable interpretation of "asset" encompasses Ratcliff s
technicians. The Specification does not provide a definition for "asset," nor
does it exclude humans from being "assets." Moreover, the Examiner's
broad interpretation is consistent with the dictionary definition for the term
which provides that "asset" means "a useful or valuable thing, person, or
quality." Asset, New Oxford American Dictionary 3d Ed., p. 96 (2010).
Thus, we are not persuaded the Examiner erred in finding Ratcliff teaches
the recited "asset associated with at least one digital work order." We also
agree with the Examiner that the recited work order is "to be executed" as
taught by Ratcliff s disclosure that a technician shows up for an "assigned
shift" by arriving at "the section of Building A in which their assigned
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production line operates" (Ratcliff i-f 26). Finally, we also agree that
Ratcliff s "work order" has "a security policy" because it teaches access to
the location of the production line may be limited to specific workers and
specific times. Ratcliff i-f 25. Accordingly, we are not persuaded by
Appellants' first argument.
Appellants' second argument that Ratcliff does not teach the
"generating" limitation of claim 1 is also unpersuasive. Appellants argue
Ratcliff does not describe any event that is generated in response to a
violation of a security policy due to the location of the asset. App. Br. 16;
Reply Br. 9-10. We agree with the Examiner, however, that Ratcliff s
teachings are sufficient to render obvious this limitation. Ratcliff teaches a
security policy that is based on the location of an employee because if the
employee is not at the correct building (i.e., location), an access right is not
granted to the employee. Ratcliff i-f 26. A person of ordinary skill in the art
would have appreciated that enforcement of the location policy would have
entailed generating an event such as setting a keycard to prevent them from
entering a location in violation of the policy. 6 Accordingly, we agree with
the Examiner that the teachings of Ratcliff are sufficient to render obvious
the "generating" limitation of claim 1.
Appellants' third argument also fails to persuade us of error.
Appellants argue Mitchell does not disclose the use of any security policy.
App. Br. 17-19. However, the Examiner also relies on Ratcliff for the
recited security policy (Ans. 9), a finding with which we agree. As we noted
6 We note that Ratcliff teaches "[ c ]ontrolled access points may require the
use of keys, codes, biometric, or other devices by which the controlled
access point may restrict or control access." Ratcliff i1 23.
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above in connection with Appellants' second argument, Ratcliff teaches the
use of a security policy that is associated with both a work order (i.e., the
requirement that an employee work at a particular location) and an asset
(i.e., the employee). As such, we agree with the Examiner that Ratcliff
teaches the "loading a security policy" limitation, and we are not persuaded
by Appellants argument.
We find Appellants' fourth argument-that the Examiner has not
provided an adequate rationale for combining Ratcliff and Mitchell-to be
unpersuasive. Appellants merely assert that the Examiner's proffered
rationale is "conclusory" and violates the requirement of "some articulated
reasoning with some rational underpinning." App. Br. 19-20. However,
Appellants do not explain how or why the Examiner's rationale is deficient.
The Examiner finds a person of ordinary skill in the art would have sought
to supplement Ratcliff' s system with Mitchell to add a scheduling
component as taught by Mitchell. Final Act. 6. We discern no error in this
determination. As we explained above, Ratcliff teaches managing access
rights in connection with work assignments, workers, and work facilities.
See, e.g., Ratcliffi-f 23-27. Mitchell teaches the use of scheduling operations
in connection with work orders. Mitchell, Abstract. Mitchell also teaches
"[ s ]cheduling and dispatch services may help to manage a mobile technician
workforce." Mitchell col. 1, 11. 16-18. An ordinarily skilled artisan would
have appreciated the benefit of adding a scheduling component to Ratcliff
because it is beneficial to provide scheduling in managing a workforce.
Without an explanation of why a skilled artisan would have been dissuaded
from doing so, we are not persuaded the Examiner erred in combining the
pertinent teachings of Ratcliff and Mitchell.
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Because we are not persuaded by Appellants' arguments with respect
to independent claim 1, we sustain its rejection under 35 U.S.C. § 103.
Claim 2
Claim 2 depends from claim 1 and recites the limitation "in response
to the generation of the event, cancelling or invalidating an access right to at
least one access control device associated with an access to the asset
associated with the work order already started." App. Br. 32 (Claims
Appendix). The Examiner finds claim 2 is unpatentable as obvious in light
of Ratcliff s description of terminating employee access when an employee
leaves. Ans. 11 (citing Ratcliffi-f 68). Appellants contend the Examiner has
erred in two respects. First, Appellants argue an employee leaving is not
equivalent to the claimed "event" because the recited event is "generated"
and an employee leaving is not "generated/performed in response to a
security policy violation." Reply Br. 12. Appellants also argue the
termination of the employee's access right disclosed by Ratcliff is not the
same as the claim because it "fails to address what the specific 'access right'
of Claim 2 pertains to - that being an access right to at least one 'access
control device' associated with an access to the asset associated with the
work order." Reply Br. 12.
We are not persuaded by Appellants' argument. The cited portion of
Ratcliff teaches that access rights can be granted and revoked with respect to
specific areas or locations of a building. Ratcliffi-f 68. Moreover, as we
noted above in connection with claim 1, a person of ordinary skill in the art
would have understood the "event" generated in response to a security
policy violation such as disabling a keycard or other access control device to
prevent the employee from entering a location in violation of the policy.
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Taken together, these teachings at least suggest that when an employee
(asset) attempts to enter a restricted area, their access to an access control
device (keycard and lock) can be restricted or revoked. Accordingly, we are
not persuaded the Examiner erred in rejecting claim 2, and we sustain its
rejection.
Claim 3
Claim 3 depends from claim 1 and recites the limitation "in response
to the generating of the event, monitoring the asset violating the security
policy by a monitor zooming-in, panning, or viewpoint adjustment on the
asset associated with the at least one digital work order." App. Br. 32-33
(Claims Appendix). In rejecting claim 3, the Examiner does not find this
limitation taught in any reference, but instead takes Official Notice that the
limitation is "common and well known in prior art in reference to security to
utilize video surveillance in order to detect intrusion of personnel into
unauthorized areas." Final Act. 7. In response to Appellants' challenge to
the Examiner cites U.S. Patent No. 6,727,938 ("Randall").
Appellants argue the Examiner improperly failed to substantiate the
assertion of Official Notice despite Appellants' demand to do so in a
response filed September 17, 2015, and that the teachings of Randall are
inapposite. We agree. As noted by Appellants, Randall's abstract merely
describes the use of rotatable surveillance cameras, and the language of
claim 3 requires more than mere video surveillance. Reply Br. 13. Rather
claim 3 requires monitoring during a specific situation-when an asset
violates a security policy. Randall is not sufficient to substantiate the
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Examiner's assertion of Office Notice of claim 3, and we do not sustain the
rejection under 35 U.S.C. § 103.7
Claim 4
Claim 4 depends from claim 1 and recites the limitation "stopping or
interrupting the monitoring at a scheduled completion time for the work
order, or in response to reception of a report indicating the completion of
work for the work order or a report indicating the start of work for a
succeeding work order to the work order already started." App. Br. 33
(Claims Appendix). Here, again, the Examiner relies on Official Notice
(Final Act. 7), and again Appellants challenge the Examiner's assertion
(App. Br. 22). Unlike, claim 3, where the Examiner responded to
Appellants' challenge, with respect to claim 4, the Examiner merely states
"the rejection of Claim 4 is proper for reasons given above with respect to
Claim 1 (of which Claim 4 depends upon)." Ans. 12. The Examiner's
conclusion with respect to claim 4 is erroneous for two reasons. First, the
Examiner has failed to respond to Appellants' demand for substantiation of
the assertion of Official Notice. Second, because claim 4 is a dependent
claim, it is by definition, narrower than claim 1 and includes additional
limitations that must be taught or suggested by the prior art in order to be
found unpatentable. As such, the Examiner's reasons for rejecting claim 1
are not, standing alone without any citation to prior art (due to the reliance
on Official Notice), sufficient to reject claim 4. Accordingly, we do not
sustain the rejection of claim 4 under 35 U.S.C. § 103.
7 Although Randall is insufficient to substantiate an assertion of Official
Notice, we express no opinion on whether it would, as part of a proper
combination under§ 103, be sufficient to render obvious the limitation of
claim 3.
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Claim 5
Claim 5 depends from claim 1 and recites the limitation "wherein the
event changes depending on a level or a type of security policy violation."
The Examiner finds this limitation taught by Ratcliff. Final Act. 7 (citing
Ratcliff i1i123, 26). In the Answer, the Examiner further finds this limitation
disclosed in paragraph 61 ofRatcliff. 8 Ans. 12. Appellants argue claim 5
requires that the "event" generated in response to a security policy violation
in claim 1 changes based on the type or level of the violation. App. Br. 22.
Appellants further contend the Examiner has not identified any specific
teaching in the cited paragraphs that demonstrates any change in the event
based on the nature of the violation. Id. Appellants further contend the
newly cited passage in the Answer is also insufficient because it merely
describes that "people (primary data owners) change access rights for other
people (John Doe/Jane Smith)." Reply Br. 13-14. We agree with
Appellants. Although Ratcliff discusses revoking access rights for
employees, the cited passage does not provide any indication that the nature
of that revocation depends on a type or level of security policy violation. As
such, we are persuaded the Examiner has erred in concluding claim 5 is
obvious, and we do not sustain the rejection under 35 U.S.C. § 103.
Claim 6
Claim 6 depends from claim 1 and recites the additional limitation
"wherein the event changes depending on the work order or the asset." App.
Br. 33 (Claims Appendix). The Examiner rejects claim 6, again citing the
8 As we noted above, because Appellants did not petition the director to
designate the Examiner's additional finding as a new ground, the aspect of
the rejection is properly before us.
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teachings of Ratcliff. Final Act. 7-8 (citing Ratcliffi1i123, 26). Appellants
argue the Examiner has erred because the cited passages merely disclose
control access points and access rights files. We are not persuaded by
Appellants' argument. As we explained in connection with claim 1, the
"asset" in Ratcliff is the employee, the "work order" is the employee's
obligation to work at a particular location and time. The generated "event"
enforcing the location policy would have entailed generating an event such
as disabling a keycard to prevent the specific employee from entering a
location in violation of the policy. Because the event would have been
specific to the employee, Ratcliff teaches or suggests that the event "changes
depending on the ... asset." Accordingly, we are not persuaded the
Examiner erred in rejecting claim 6, and we sustain the rejection under 35
U.S.C. § 103.
Claim 7
Claim 7 depends from claim 1 and recites the limitation "wherein the
event notifies a work manager of the security policy violation and includes
evidence of the security policy violation with recorded content before the
security violation occurred having been removed." App. Br. 33 (Claims
Appendix). The Examiner finds this limitation taught by Ratcliff. Final Act.
8 (citing i1i1 39--40). In the Answer, the Examiner also determines the
limitation recited in claim 7 is not entitled to patentable weight because it
"merely states the result of the limitations in the claim [and] adds nothing to
the patentability or substance of the claim." Ans. 13 (case citations omitted).
Appellants contend the cited paragraphs of Ratcliff do not teach the
limitation of claim 7. App. Br. 24--25. Specifically, Appellants argue
paragraph 39 of Ratcliff describes "generating a 'record' when a segregation
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of duties conflict has been identified." App. Br. 25. Appellants argue the
record discussed in paragraph 39 is unrelated to the events described in
paragraphs 23-26 relied upon by the Examiner. Appellants further argue
that although paragraph 40 of Ratcliff describes the use of notifications,
those notifications are dissimilar to the claim because they do not provide
any notification of a security policy violation. App. Br. 25. Appellants
further argue the Examiner's failure to accord the limitation patentable
weigh is in error because the cases relied upon by the Examiner do not
support such an interpretation. Reply Br. 14--16.
As an initial matter, we are persuaded the Examiner erred in finding
the claim is not entitled to patentable weight. Appellants' have persuasively
distinguished this situation from the cases cited by the Examiner. See Reply
Br. 15-16. However, we are not persuaded that the teachings of Ratcliff do
not render claim 7 obvious. We first note that the "recorded content" need
not be video content, and as such, the recited "evidence of the security
policy violation" may include various forms of "recorded content." We
further note the cited passages in Ratcliff indicate that it was known to
record information and provide notifications to data owners (i.e.,
supervisors) regarding anomalous security situations. Although the example
described in Ratcliff paragraph relates specifically to "a segregation of
duties conflict," a person of ordinary skill in the art would have appreciated
that this content recording and notification procedure could be utilized in
connection with the security violations taught in Ratcliff i-fi-1 23-26. As such,
we are not persuaded the Examiner erred in rejecting claim 7, and we sustain
the rejection under 35 U.S.C. § 103.
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Claim 8
Claim 8 depends from claim 1 and recites the limitation "further
comprising applying, responsive to a change in the security policy associated
with the work order, a worker entity security policy associated with the
worker entity designated in the work order to be executed." App. Br. 33
(Claims Appendix). In rejecting claim 8, the Examiner relies on paragraphs
26 and 47 of Ratcliff. Final Act. 8; Ans. 13.
Appellants argue Ratcliff fails to teach or suggest any "worker entity
security policy" because the description in paragraph 26 only describes
access rights and access rights files. App. Br. 26. Appellants further argue
that the cited passage in paragraph 4 7 is deficient because it only teaches
changing access rights for employees when needed. Reply Br. 17. We
agree. Although the Examiner cites two passages of Ratcliff in support of
the rejection, the Examiner provides no explanation for how those
paragraphs teach the specific limitations. The Examiner merely states that
the rejection of claim 8 "is proper for reasons given above with respect to
Claim 1 which is in parallel with claim 8." Ans. 13. This reasoning is
insufficient, and together with the Examiner's failure to explain the mapping
of the cited paragraphs to the specific limitations in the claim, we are
persuaded the Examiner has erred. Accordingly, we do not sustain the
rejection of claim 8 under 35 U.S.C. § 103.
Claim 10
Claim 10 depends from claim 1 and recites:
The method according to claim 1, wherein:
the computer includes a configuration management system and a
configuration management database;
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the asset is a configuration item maintained in the configuration
management database; and
the work order is issued by a change management process or a
release management process of the configuration management
system.
App. Br. 34 (Claims Appendix). In rejecting claim 10, the Examiner cites to
Ratcliffi-fi-f 17, 24--26. Final Act. 9; Ans. 13. Appellants argue paragraph 17
merely describes the use of a database, and provides no teaching of a
"configuration management database." Reply Br. 17. Appellants further
contend the cited portions of Ratcliff do not teach or suggest a work order
that is "issued by a change management process or a release management
process." Id. According to Appellants, Ratcliff "describes that 'access
rights' are stored in a conventional database." Id. We agree with
Appellants. The Examiner does not identify anything in Ratcliff that
corresponds to the recited work order "is issued by a change management
process or a release management process." Accordingly, we are persuaded
the Examiner erred in rejecting claim 10, and we do not sustain the rejection
under 35 U.S.C. § 103.
Independent Claim 11
Appellants argue separately for patentability of independent claim 11.
Although the Examiner rejected claim 11 as being substantively the same as
claim 1, Appellants argue claim 11 includes limitations that differ in scope,
and the Examiner failed to address the differences in those limitations. App.
Br. 27-28; Reply Br. 18.
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Claim 11 recites:
A method of processing by a computer to manage an
access right to at least one asset associated with at least one
digital work order, the method comprising steps executed by the
computer of:
at a scheduled start time for a work order to be executed,
or in response to reception of a report indicating a start of work
for the work order to be executed or a report indicating a
completion of work for a preceding work order to the work order
to be executed:
loading into a memory of the computer a security
policy associated with the work order to be executed or an
asset associated with the work order to be executed, and
starting to monitor a location of a moving object
present around the asset; and
generating an event for managing the moving object in
response to a fact that the loaded security policy is violated by an
elapsed time at the location of the moving object that was
obtained by the monitoring.
App. Br. 34 (Claims Appendix).
Appellants contend the Examiner has not shown that the cited
combination teaches "starting to monitor a location of a moving object
present around the asset." Id. at. 27-28. Appellants argue the Examiner's
collective findings addressing claim 1 and claim 11 concurrently fail to
address the "moving object" aspect of claim 11. Appellants further contend
the "generating" step of claim 11 includes the requirement that "the loaded
security policy is violated by an elapsed time at the location of the moving
object," another feature not addressed by the Examiner's findings.
We are not persuaded by Appellants' arguments because they do not
adequately explain the deficiencies in the Examiner's findings. As we
discussed above in connection with claim 1, Ratcliff teaches a security
policy that is based on the location of an employee such that if the employee
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is not at the correct building (i.e., location) during their correct work hours,
an access right is not granted to the employee. Ratcliff i-f 26 ("access rights
... limited to a period of time surrounding their assigned shift ... and the
section of Building A in which their assigned production operates").
Ratcliff teaches that access to locations may be provided by "keys, codes,
biometric, or other devices." Ratcliff i-f 23.
As such, a person of ordinary skill in the art would have appreciated
that enforcement of the location policy would have entailed generating an
event such as disabling or electronically modifying an access card, keycard,
or biometric device associated with the employee to prevent them from
entering a location in violation of the security policy. The location of the
Ratcliff s access card (the recited "object") carried by an employee (the
recited "present around the asset") would have been monitored at least to
detect its proximity to a keypad associated with the facility. As such, we
agree with the Examiner that Ratcliff teaches, or least suggests, "starting to
monitor a location of a moving object present around the asset," as recited in
claim 11.
We also are not persuaded Ratcliff is deficient with respect to the
"generating an event" step in claim 11. Ratcliff teaches that the access
granted to an employee hinges on both a location (their assigned work
facility) and a time (their assigned work hours). Thus, if an employee stays
at their work location beyond their assigned work hours, they violate
Ratcliff s security policy, and their access card is deactivated. The
deactivation of the access card is a generated "event" within the meaning of
Appellants' claims. Accordingly, we are not persuaded the Examiner erred
in rejecting claim 11, and we sustain the rejection under 35 U.S.C. § 103.
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Claim 13
Claim 13 depends from claim 11 and recites the limitation "in
response to the generation of the event, locking an access control device
associated with an access to the asset associated with the work order already
started." App. Br. 35 (Claims Appendix). The Examiner relies on Official
Notice in rejecting claim 13 (Final Act. 7), and further states "the rejection
of Claim 13 is proper for reasons given above with respect to Claim 11 (of
which Claim 13 depends upon)." Ans. 14. We agree with Appellants that
these findings are insufficient to establish unpatentability with respect to
claim 13. Accordingly, we do not sustain this rejection.
Remaining Claims
Claims 12 and 18 depend from claim 11 and are otherwise identical to
claims 2 and 7. Because we sustain the rejections of claims 2, 6 and 7, we
also sustain the rejections of claims 12, 17 and 18. Claims 14--16, 19, and
21 depend from claim 11 and are otherwise identical to claims 3-5, 8, and
10. Because we do not sustain the rejections of claims 3-5, 8, and 10 we
also do not sustain the rejections of claims 14--16, 19, and 21. Appellants do
not present separate arguments for patentability of claims 9 and 20. As such,
they fall with their respective independent claims.
DECISION
We affirm the Examiner's rejection of claims 1-21under35 U.S.C.
§ 101.
We affirm the Examiner's rejection of claims 1, 2, 6, 7, 9, 11, 12, 18,
and 20 under 35 U.S.C. § 103.
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We reverse the Examiner's rejection of claims 3-5, 8, 10, 13-17, 19,
and 21under35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
27