Ex Parte 6002854 et al

Board of Patent Appeals and Interferences

Jul 18, 2012

90010173 (B.P.A.I. Jul. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/010,173 05/22/2008 6002854 8332.003.854 5333
33438 7590 07/18/2012
HAMILTON & TERRILE, LLP
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/18/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VERSATA DEVELOPMENT GROUP, INC.
____________________

Appeal 2012-006710
Reexamination Control 90/010,173
Patent 6,002,8541
Technology Center 3900
____________________

Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

1 The involved patent (hereinafter the “’854 Patent”) issued on
December 14, 1999.
Appeal 2012-006710
Reexamination Control 90/010,173
Patent 6,002,854

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A. STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed May 22, 2008. Versata Development Group, Inc.
(“Versata”), the owner of the patent under reexamination2, appeals under 35
U.S.C. §§ 134(b) and 306 from a final rejection of claims 1, 2, 4-15, 19-26,
30-37, 39-45, 49-51, and 55-99. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We reverse.

Reference Relied on by the Examiner
F. Frayman & S. Mittal, COSSACK: A Constraints-Based Expert System
for Configuration Tasks, in Knowledge Based Expert Systems in
Engineering: Planning and design 143 (D. Sriram & R.A. Adey eds, 1987)
(“Frayman”)

The Rejections on Appeal3
The Examiner rejected claims 1, 2, 4-15, 19-26, 30-37, 39-45, 49-51,
and 55-99 under 35 U.S.C. § 102(b) as anticipated by Frayman.

The Invention
The ‘854 Patent characterizes its disclosed invention as follows (‘854
Patent, 5:30-41):

2 See Patent Assignment Abstract of Title, Reel 019035 Frame
0545which was entered into the record of this proceeding as “Title Report”
on May 29, 2008.

3 The rejection of some claims under 35 U.S.C. § 112 set forth in the
Final Office Action mailed September 21, 2009 was withdrawn by the
Examiner in an Advisory Action mailed June 23, 2010.
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Reexamination Control 90/010,173
Patent 6,002,854

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The present invention employs a generative approach for configuring
systems such that a system may be configured based on component or
resource requests, or input in the form of need. The present invention
provides a constraint-based configuration system using a functional
hierarchy that comprehends hierarchical and non-hierarchical
structure, and associated constraints that can reason about and
generate structural relationships. Then structural aspects of the model
provide the ability to define a model element as being contained in, or
by, another model element.

Claim 1 is illustrative of the subject matter on appeal and is
reproduced below (App. Br. Claims App’x, 1):
1. (Amended) A method of generating a configuration for a system
comprising the steps of:

defining in a computer system an element model consisting of
elements used to configure said system and structural relationships
between said elements in said model wherein one of said elements
comprises a container base class; and

creating in said computer system a plurality of components of
said system that are instances of one or more elements of said model
in response to configuration requests, wherein a first of said
components is derived from said container base class to allow a
second component to be contained by said first component and
creating in said computer system a plurality of components further
comprises creating said second component as contained by said first
component.
B. ISSUE
Did the Examiner correctly find that all the features of Versata’s
claims are disclosed in Frayman, including that a second component is
“contained by” a first component?
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Reexamination Control 90/010,173
Patent 6,002,854

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C. ANALYSIS
The Examiner rejected all claims on appeal as anticipated by
Frayman. Claims 1, 6, 13, 19, 23, 24, 25, 26, 30, 39, 40, 41, 44, 45, and 49
are independent claims. Each of those claims includes recitation of a
“container base class” as a part of a computer system and first and second
components associated with the container base class. (App. Br. Claims
App’x.) Each claim also requires that the relationship of the components is
derived from the container base class such that the second component is
understood as being “contained by” the first component. (Id.)
In rejecting the claims as anticipated by Frayman, the Examiner found
that the required “contained by” relationship of the first and second
components is disclosed by Frayman at its Figure 2. (E.g., Ans., 5-6.)
Versata challenges the Examiner’s finding, arguing that, in the context of the
‘854 Patent, the “contained by” requirement of its claims designates a
physical relationship between the components which is lacking from
Frayman’s disclosure, and in particular its Figure 2. (App. Br., 21-23.) That
is, Versata urges that the involved systems of the claims must indicate that
the second component is contained by, i.e., physically resides within, the
first component, and that such a relationship is not disclosed in Frayman.
We agree with Versata as to the meaning of “contained by” in
connection with the claims. The specification of the ‘854 Patent makes clear
that when a component is designated as “contained by” another, that
indicates a particular configuration of one component physically “within”
the other and is distinguished from other types of component relationships,
such as mere connection. (E.g., ‘854 Patent, 10:33-64.)
Appeal 2012-006710
Reexamination Control 90/010,173
Patent 6,002,854

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Frayman describes its Figure 2 as displaying a “component hierarchy”
(Frayman, 149) which is also characterized as indicating organization of
components generally in a “functional hierarchy” (id. at 148.) The ‘854
Patent itself describes Frayman as disclosing only a “functional hierarchy-
based configuration system” which “does not make structure explicit” or
“provide mechanisms for reasoning about or with structural information.”
(‘854 Patent, 4:66-5:13.) Indeed, it is that recognized deficiency in the prior
art, and particularly Frayman, i.e., in failing to convey certain structural
relationships between various components, which is described as being
addressed by the invention of the ‘854 Patent. (E.g., id. at 5:30-42.)
We observe that although Frayman’s Figure 2 illustrates that certain
components have some type of association or connection with other
components, it is simply not apparent from the figure what, if any, specific
structural relationships are conveyed. While the Examiner concludes that
what is shown in Figure 2 is sufficient to account for the particular
“contained by” feature of the claims (Ans., 45), the Examiner does not
adequately explain the underlying basis for that conclusion.
A rejection based on anticipation, which is the only rejection before
us, requires that each and every feature of the pertinent claims be disclosed
in the applied prior art. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
On this record, we are not persuaded that the particular “contained by”
feature of Versata’s claims with respect to components of a container base
class is suitably disclosed in Frayman so as to properly establish the
reference as anticipating the claims. Accordingly, we do not sustain the
Appeal 2012-006710
Reexamination Control 90/010,173
Patent 6,002,854

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Examiner’s rejection of Versata’s claims 1, 2, 4-15, 19-26, 30-37, 39-45, 49-
51, and 55-99 as anticipated by Frayman.
D. CONCLUSION
The Examiner did not correctly find that all the features of Versata’s
claims are disclosed in Frayman including that a second component is
“contained by” a first component.
E. ORDER
The rejection of claims 1, 2, 4-15, 19-26, 30-37, 39-45, 49-51, and 55-
99 under 35 U.S.C. § 102(b) as anticipated by Frayman is reversed.

REVERSED

Appeal 2012-006710
Reexamination Control 90/010,173
Patent 6,002,854

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PATENT OWNER:

HAMILTON & TERRILE, LLP
P.O. BOX 203518
AUSTIN, TX 78720

THIRD PARTY REQUESTER:

NOVAK DRUCE & QUIGG, LLP
NDQ REEXAMINATION GROUP
1000 LOUISIANA STREET, 53RD FLOOR
HOUSTON, TX 77002