Ex Parte Whitmore

Patent Trial and Appeal Board

Nov 18, 2013

10918239 (P.T.A.B. Nov. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES J. WHITMORE
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Appeal 2011-011252
Application 10/918,239
Technology Center 3600
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Before: ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-011252
Application 10/918,239

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of 1, 2, 4-9, 11-16, and 18-
211. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates to a systems and methods for designing IT
solutions using patterns (Spec., para. [0001]).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A system, comprising:
at least one computing device for generating an
information technology runtime model by performing a method
comprising:
selecting a business pattern;
providing a management integration table for the
business pattern, the management integration table including a
first axis including a plurality of management application
pattern types including provision, control, monitor, enforce, and
protect, and a second axis including a plurality of system
contexts including business process, information technology,
data, and security, wherein the management integration table
includes a plurality of cells, each cell representing at least one
management application pattern for a corresponding
combination of the management application pattern type and
the system context; and
generating a runtime model from the business pattern and
management integration table, wherein the generating
supplements the business pattern with management application
patterns selected using the management integration table,
additive patterns required to achieve an objective beyond the
business pattern and the management application patterns, and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 19, 2011) and Reply Brief (“Reply. Br.,” filed June 15,
2011), and the Examiner’s Answer (“Ans.,” mailed April 15, 2011).
Appeal 2011-011252
Application 10/918,239

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bridge patterns necessary to bridge two or more patterns in
order to generate the runtime model.

Claims 1-2 and 4-7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 2, 4-9, 11-16, and 18-21 are rejected under 35 U.S.C. §
103(a) as being unpatentable over IBM, IBM Patterns for e-business (2002)
(http://web.archive.org/web/20020210131756/www-
106.ibm.com/developerworks/patterns/) (last visited Jan. 15, 2009)
(hereinafter “Patterns I-A”) in view of Myrick (U.S. 2004/0143470 A1; pub.
Jul. 22, 2004).
We AFFIRM-IN-PART.
ANALYSIS
Indefiniteness Rejection of Claims 1, 2, and 4-72
Appellant has not challenged the rejection of independent claim 1 for
a lack of antecedent basis for “the generating system” (App. Br. 7).
We summarily sustain this rejection.
Obviousness Rejection of Claims 1, 2, 4-9, 11-16, and 18-21
We are persuaded the Examiner erred in asserting that a combination
of Patterns I-A and Myrick discloses or renders obvious
providing a management integration table for the
business pattern, the management integration table including a
first axis including a plurality of management application
pattern types including provision, control, monitor, enforce,

2 Although page 3 of the Examiner’s Answer lists claims 1-2 and 3-7 as
rejected, only claims 1-2 and 4-7 are pending (App. Br. 2). Accordingly, we
treat the erroneous inclusion of claim 3 as a typographical error.
Appeal 2011-011252
Application 10/918,239

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and protect, and a second axis including a plurality of system
contexts including business process, information technology,
data, and security,
as recited in independent claim 1 (App. Br. 7-10; Reply Br. 2-5; emphasis
added). Independent claims 8 and 15 recite similar limitations. The
Examiner asserts that the following portions of Myrick correspond to certain
limitations set forth above: “provision (Fig 22; at least App 11 - because
relates to networks) . . . enforce (Fig 22; App 1 - because relates to security.”
(Ans. 8-9). We disagree.
The Specification explicitly defines “provision” as follows: “creation
and maintenance of instances of objects” (Spec. 8). The Examiner cites
“App 11 (Networks)” of Figure 22 of Myrick as corresponding to the recited
“provision.” The Examiner has not adequately shown how “networks” are
related to “creation and maintenance of instances of objects.”
The Specification explicitly defines “enforce” as follows:
“manipulation of the execution of flows and actions within a process based
on policies” (Spec. 9). The Examiner cites “App [10] (Security)” of Figure
22 of Myrick as corresponding to the recited “enforce.” While “security” is
broadly related to the term “enforce” by itself, the Examiner has not shown
how “security” logically corresponds to “manipulation of the execution of
flows and actions within a process based on policies.”
We do not sustain the rejection of independent claims 1, 8, and 15, or
their dependent claims 2, 4-9, 11-16, and 18-21.

Appeal 2011-011252
Application 10/918,239

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DECISION
The decision of the Examiner to reject claims 1, 2, and 4-7 under 35
U.S.C. § 112, second paragraph, is AFFIRMED.
The decision of the Examiner to reject claims 1, 2, 4-9, 11-16, and 18-
21 under 35 U.S.C. § 103(a) is REVERSED.
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)(1)(iv).
AFFIRMED-IN-PART

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