Ex Parte Arthursson et al

Patent Trial and Appeal Board

Nov 30, 2016

12240820 (P.T.A.B. Nov. 30, 2016)

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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/240,820 09/29/2008 Daniel Arthursson XCER131482 6077
26389 7590 12/02/2016
rTTRTSTRNSFN OTONNOR TOHNSON KTNDNFNN PT T C EXAMINER
1201 THIRD AVENUE TRUONG, LECHI
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SEATTLE, WA 98101-3029 ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
12/02/2016 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL ARTHURS SON and MARCUS BRISTAV
Appeal 2015-005418
Application 12/240,820
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-005418
Application 12/240,820
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—5, 8—10, 30, and 33.1 Claims 6, 7, and 29 have been
objected to as being allowable if rewritten in independent form to include all
of the limitations of base independent claim 1 and intervening dependent
claim 5, and remaining independent claims 31 and 32 have been indicated as
being allowable (Final Act. 10; Ans. 10). We reverse.
The Examiner has rejected (i) claims 1, 2, 5, 8—10, 30, and 33 under
35 U.S.C. § 103(a) as being unpatentable over Hulai et al. (US
2003/0060896 Al; Mar. 27, 2003), Heifets et al. (US 7,752,212 B2; July 6,
2010), and Chen et al. (US 2006/0069774 Al; Mar. 30, 2006) (Final Act. 2-
8);2 and (ii) claims 3 and 4 under 35 U.S.C. § 103(a) as being unpatentable
over Hulai, Heifets, Chen, and Lee et al. (US 2010/0306773 Al; Dec. 2,
2010) (Final Act. 8-9).
1 As Appellants point out, there is a related Appeal in a related case (Appeal
No. 2013-004782), Application No. 12/240,898 (which claimed priority to
the same provisional applications as the instant application on appeal). App.
Br. 2; Reply Br. 2. In the Decision for Appeal No. 2013-004782, the Board
reversed a rejection of claims 2—21 over different references than applied in
this case, and dealt with different claim limitations than at issue in this case,
such as generating a variable representing a selection state and using a state
manager to propagate a selection state.
2 Although claims 3 and 4 are included in the heading for the statement of
the rejection for obviousness over Hulai, Heifets, and Chen (Final Act. 2;
Ans. 3), claims 3 and 4 are not discussed on the merits within the body of
the rejection (see Final Act. 7; Ans. 8). Therefore, we consider this harmless
error, and only consider claims 1, 2, 5, 8—10, 30, and 33 to be rejected over
Hulai, Heifets, and Chen. Notably, the Examiner separately rejects and
discusses merits of claims 3 and 4 in the rejection over Hulai, Heifets, Chen,
and Lee (see Final Act. 8—9; Ans. 9-10).
2
Appeal 2015-005418
Application 12/240,820
We have reviewed Appellants’ arguments in the Briefs (App. Br. 6—11
and Reply Br. 6—11), the Examiner’s rejection (Final Act. 2—9; Ans. 3—10),
and the Examiner’s response (Ans. 11—14) to Appellants’ arguments.
The Examiner relies upon Chen (see 10, 40, 43—45, 58, 81; Fig. 4)
as teaching the instance object recited in claim 1 (Final Act. 4—6; Ans. 5—7
and 11—12). However, we find no disclosure in Chen of persisting changes
to the application’s runtime state while the stateless process object executes
the operation handlers indicated by the application process code, as recited
in independent claim 1, and as similarly recited in remaining dependent
claims 2—5, 8—10, 30, and 33. Chen does not teach or suggest the salient
limitation of independent claim 1, i.e., “the instance object is provided to the
operation handlers to provide access to and persist changes to the
application’s runtime state while the stateless process object executes the
operation handlers indicated by the application process code” (claim 1)
(emphasis added).
We agree with Appellants that Chen’s changes are applied directly to
data center resources, and are not persisted by the WSDL file (cited by the
Examiner as being equivalent to the claimed “instance object”) (Reply Br.
10). We also agree with Appellants (Reply Br. 9) that nothing in the record
supports an interpretation that Chen’s input parameters, WSDL file, and/or
WSDL definition file location are the same as an instance object that is
“provided to the operation handler to provide access to and persist changes
to the application’s runtime state” as claimed. Therefore, we concur with
Appellants’ arguments (App. Br. 9—10; Reply Br. 8—10) that the Examiner
erred in finding that Chen, and thus the combination of the references,
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Appeal 2015-005418
Application 12/240,820
teaches or suggests the instance object that persists changes as recited in sole
independent claim 1 on appeal.
In view of the foregoing, we do not sustain the Examiner’s
obviousness rejections of independent claim 1, as well as claims 2—5, 8—10,
30, and 33 depending variously therefrom.
CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claims 1, 2, 5, 8—10, 30, and 33.
DECISION3
The decision of the Examiner to reject claims 1, 2, 5, 8—10, 30, and 33
is reversed.
3 We have decided the appeal before us. However, should there be further
prosecution of claim 1, which recites an instance object “to provide access
and persist changes to the application’s runtime state” (claim 1), the
Examiner’s attention is directed to 35 U.S.C. § 112, first paragraph, for
consideration of whether the operation of the instance object to “persist
changes” has written description support in Appellants’ Specification as
originally filed. Specifically, the Examiner may wish to consider at least
page 38, line 31 through page 39, line 11 of the Specification in making such
a determination. Notably, Appellants cite most of this portion of the
Specification as support for the “provide access to and persist changes to”
recitation in claim 1 (see App. Br. 4—5). This limitation was added to claim
1 by Appellants’ amendment filed on June 13, 2013 (see p. 2 showing the
amendment to claim 1 which replaced the term “manage” with “provide
access to and persist changes to”). In the amendment filed June 13, 2013
(see generally pp. 8—10), Appellants did not cite any support in the
originally filed Specification for the amended language.
4
Appeal 2015-005418
Application 12/240,820
REVERSED
5