Ex Parte Pini

Patent Trial and Appeal Board

Nov 26, 2014

11134819 (P.T.A.B. Nov. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte JAMES M. PINI
_____________

Appeal 2012-004528
Application 11/134,819
Technology Center 2100
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Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
DANIEL N. FISHMAN, Administrative Patent Judges.

Per Curiam

DECISION ON APPEAL
Appeal 2012-004528
Application 11/134,819

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STATEMENT OF CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–8, 12–38, and 40–42. Claims 9–11
and 39 have been withdrawn. App. Br. 4. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellant’s invention involves a system and method to provide for
matching, indexing, and management of corresponding discovery and
ownership records. See Spec. 3, ll. 5–6.
Claim 1 is representative of the invention and reproduced below, with
disputed matter highlighted:
1. A method of managing discovered information and
ownership information for a plurality of assets, comprising:
defining matching rules for matching a plurality of
discovery records stored in a first database of an enterprise with
a plurality of ownership records stored in a second database of
the enterprise, wherein:
the plurality of discovery records include
discovered information about a plurality of assets
discovered during a network scan;
the plurality of ownership records include
ownership information about the plurality of assets
entered when the assets were acquired; and
the matching rules specify at least a first field
included in each of the plurality of discovery records to
be matched with at least a second field included in each
of the plurality of ownership records;
applying the matching rules to match one of the plurality
of discovery records stored in the first database of the enterprise
Appeal 2012-004528
Application 11/134,819

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to one of the plurality of ownership records stored in the second
database of the enterprise and create a matched record;
applying the matching rules to identify at least one of the
plurality of discovery records stored in the first database of the
enterprise without a corresponding ownership record stored in
the second database of the enterprise; and
in response to identifying the at least one discovery
record stored in the first database of the enterprise without a
corresponding ownership record stored in the second database
of the enterprise, using a processor in automatic mode to
automatically generate a new ownership record for storage in
the second database of the enterprise, at least one field of the
new ownership record populated with overlapping information
from the at least one discovery record stored in the first
database of the enterprise; and
wherein the matched record includes a first pointer to the
one of the plurality of discovery records and a second pointer to
the one of the plurality of ownership records.

REJECTION AT ISSUE1
The Examiner rejected claims 1, 2, 5–7, 12–16, 19–21, 23–28, 31–33,
35–38, and 42 under 35 U.S.C. § 103(a) as being unpatentable over Thukral
(US 2006/0129415 A1, June 15, 2006) and Wu (EP 0 455 402 A2, Nov. 6,
1991).2 Ans. 9–17.

1 Throughout this opinion we refer to the Examiner’s Answer (“Ans.”)
mailed on November 28, 2011.
2 The Examiner included claim 34 in the list of claims rejected over Thukral
and Wu (Ans. 9) but claim 34 is only rejected over Thukral, Wu, and
Mamou (Ans. 19). Appellant responded to the proper rejection (App. Br.
27) and thus, we find the Examiner’s error to be harmless error.
Appeal 2012-004528
Application 11/134,819

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The Examiner rejected claims 3, 4, 8, 17, 18, 22, 29, 30, 34, 40, and
41 under 35 U.S.C. § 103(a) as being unpatentable over Thukral, Wu, and
Mamou (US 2005/0235274 A1, Oct. 20, 2005). Ans. 17–20.

ISSUE
Appellant has presented several arguments as to why the combination
of the references does not teach or suggest the features recited in
independent claims 1, 15, and 27.3
These contentions present us with the issue: did the Examiner err in
finding that the combination of Thukral and Wu teaches or suggests the
highlighted features recited in representative claim 1, supra, and similarly
recited in independent claims 15 and 27?4
ANALYSIS5
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. The Examiner cited Thukral for all
the claim elements except for “using a processor in automatic mode to
automatically generate a new ownership record for storage in the second
database of the enterprise, at least one field of the new ownership record
populated with overlapping information from the at least one discovery

3 Throughout this opinion we refer to the Appeal Brief (“App. Br.”) dated
August 15, 2011, and Reply Brief (“Reply Br.”) dated January 30, 2012.
4 Separate patentability is not argued for claims 2, 4–8, 12–14, 17–19, 22–
26, 28–38, 41, and 42. App. Br. 23, 27.
5 Appellant presented arguments regarding the Examiner’s refusal to
consider an IDS (App. Br. 17–18). The objection relates to petitionable
subject matter under 37 C.F.R § 1.181 and the Patent Trial and Appeal
Board does not have the jurisdiction to review petitionable matters.
Appeal 2012-004528
Application 11/134,819

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record.” The Examiner relied upon Wu for the element missing in Thukral.
Ans. 11, 25–26.
Further, we have reviewed the Examiner’s response to Appellant’s
arguments. The Examiner has provided a comprehensive response to each
argument presented by the Appellant on pages 23 through 31 of the Answer.
We have reviewed this response and concur with the Examiner’s findings
and conclusions. Regarding dependent claims 3, 4, and 40, while Appellant
raised additional arguments for patentability of the cited dependent claims
(App. Br. 24–26), the Examiner has rebutted in the Answer each and every
one of those arguments supported by sufficient evidence. Ans. 26–31. We
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief. Ans. 9–20, 23–31. We have considered Appellant’s Reply Brief but
find it unpersuasive to rebut the Examiner’s responses.

DECISION
The decision of the Examiner to reject claims 1–8, 12–38, and 40–42
is 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)(1)(iv).

AFFIRMED

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