Ex Parte Babich et al

Patent Trial and Appeal Board

Jun 20, 2018

14060091 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/060,091 10/22/2013
75532 7590 06/22/2018
LEE LAW, PLLC
IBM SVLIP
P.O. BOX 189
PITTSBORO, NC 27312
FIRST NAMED INVENTOR
Alan F. Babich
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.
RSW920120144US2 1333
EXAMINER
MCATEE,PATRICK
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
docketing@leelawpllc.com
docketing_archive@leelawpllc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN F. BABICH, XIN FENG, MIKE A. MARIN,
CYNTHIA M. ROBERTS, MIMI P. VO, and ALAN T. YAUNG
Appeal 2016-00617 4
Application 14/060,091 1
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-24. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (Appeal Br. 3.)
Appeal2016-006174
Application 14/060,091
CLAIMED SUBJECT MATTER
Appellants' "invention relates to case management. More
particularly, the present invention relates to case management integration
with external content repositories." (Spec. ,r 2.)
Claims 1, 9, and 1 7 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method, comprising:
detecting, by a programmed processor executing an
inbound event handler of a distributed integration framework
that integrates a case management system with an external
content repository, a case creation event originating from the
external content repository that invokes the inbound event
handler of the distributed integration framework to cause
creation of a case within the case management system;
instructing, via the inbound event handler, the case
management system to create the case within the case
management system; and
instructing, via an outbound event handler of the
distributed integration framework, the external content
repository to create a proxy case to remotely represent the case
created within the case management system.
REJECTIONS
Claims 1-24 are provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1, 2, 9, 10, 17, and 18 of
copending Application No. 13/655,004 (hereinafter "the '004 application" or
"the Copending Application").
Claims 1-24 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
2
Appeal2016-006174
Application 14/060,091
Claims 1-24 are rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to point out and distinctly claim the subject matter that Appellants
regard as the invention.
Claims 1-24 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 2, 9, 10, 17, and 18 are rejected under 35 U.S.C. § I02(b) as
anticipated by Johnson (US 2006/0085412 Al, pub. Apr. 20, 2006).
Claims 3-8, 11-16, and 19-24 are rejected under 35 U.S.C. § I03(a)
as unpatentable in view of Johnson, Kandasamy (US 5,513,314, iss.
Apr. 30, 1996) and Memorandum from the Network Working Group, NFS
Version 3 Protocol Specification (June 1995) (hereinafter "Sun
Microsystems").
ANALYSIS
The provisional double patenting re;ections of claims 1-24
Claims 1---6, 8-14, 16-22, and 24 are provisionally rejected on the
ground of nonstatutory double patenting in view of the '004 application.
(Answer 109-10.) In particular, independent claims 1, 9, and 17 of the
present application are rejected in view of claims 1, 9, and 17 of the '004
application. (Non-Final Action 4--5.)
Appellants do not separately argue claims 1-6, 8-14, 16-22, and 24.
Therefore, these claims will stand or fall together. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellants argue that "there is no claimed integration of a case
management system with any other component recited in the independent
claims of the Copending Application. In contrast, the processing claimed
3
Appeal2016-006174
Application 14/060,091
within the Copending Application is limited to content management systems
.... " (Appeal Br. 32.)
Appellants have not persuasively argued that the "content
management system" recited in the Copending Application is "patentably
distinguishable from any generic computing device," i.e., the case
management system of the present application. (See Answer 111.) In
particular, Appellants do not persuasively argue why claim 1 of the
Copending Application, that recites "a first content management system to
store proxy objects for root case instance folders" and "a second content
management system to store real objects for the root case instance folders,"
i.e., for the same folders, is not an integration of the first management
system with the second management system.
Appellants also argue that the claims in the present application
instruct
the respective components to each "create" the respective case
and proxy case. In contrast, the independent claims of the
Copending Application recite only "modify" actions - not create
actions . . . . The modify actions claimed in the Copending
Application are fundamentally different from the claimed
instructions that cause creation of cases and proxy cases in the
present application.
(Appeal Br. 33.)
We do not find this argument persuasive. The Copending Application
broadly defines the term modify, i.e., "modify ( e.g., create, update, delete
etc.)." ('004 application Spec. ,r 58.) Indeed, claim 1 of the '004 application
recites "a first operation to modify" and claim 2 recites "wherein the first
operation [ to modify] is one of creating, updating, deleting, filing, unfiling,
and querying."
4
Appeal2016-006174
Application 14/060,091
Appellant also argues that "there is no claimed distributed integration
framework that integrates a case management system with an external
content repository, as is claimed to be performed within the present
application, found to be recited within the claims of the Copending
Application." (Appeal Br. 33-34.)
The Examiner finds, and we agree, that
the "distributed integration framework" is merely a logical
software interface, and a person having ordinary skill in the art
would have understood that an equivalent software interface is
present in the claims of [the '004 application] as it would be
required for a processor of a computer to perform the functions
recited in [the '004 application]. Again, the exact title given to
the software does not patentably distinguish the present
invention.
(Answer 112.)
Appellants other arguments were considered but were not found
persuasive of error.
In view of the above, we are not persuaded that the Examiner erred in
provisionally rejecting claims 1---6, 8-14, 16-22, and 24 for double
patenting.
Dependent claims 7, 15, and 23 are provisionally rejected for
obviousness-type double patenting in view of Kandasamy and Sun
Microsystems. (Non-Final Action 8-11.) However, Appellants do not
provide separate arguments regarding these claims. (See Appeal Br. 35.)
Therefore, for the reasons discussed above, we are not persuaded that the
Examiner erred in provisionally rejecting dependent claims 7, 15, and 23 for
obviousness-type double patenting.
5
Appeal2016-006174
Application 14/060,091
The § l l 2(a) reiection o(claims 1~24
Claim 1 recites "detecting, by a ... processor ... , a case creation
event originating from the external content repository that invokes the
inbound event handler ... to cause creation of a case within the case
management system." (Emphasis added.) Claims 9 and 17 contain similar
language.
"[T]he Examiner finds that the specification describes event handler
invoking ... API calls [0055, 0063], and that events themselves may be
invoked [0079], but does not find support for invoking an event handler
(either inbound or outbound)." (Non-Final Action 12.) Specifically, the
Examiner finds that "every use of the term 'invoke' in Appellant's [sic]
specification refers to an action by an event handler on an event or API
rather than an action on an event handler." (Answer 115.) Therefore, the
Examiner finds, "one of skill in the art would have understood from the
original disclosure that 'invoke' refers to action by the event handler to
cause an event or API call, not that 'invoke' refers to an action on the event
handler as 'invoke' is used in the claim amendment." (Id. at 116.)
Appellants disagree and cite paragraph 79 of the Specification.
(Appeal Br. 39--40.) Paragraph 79 discloses that "process 700 creates a
document in a content repository at block 712 .... At block 714, the
process 700 triggers the distributed inbound event handler to notify the case
manager to create a case folder and to create a proxy document." (Spec.
,r 79, emphasis added.) Appellants argue that, in view of the teachings in the
Specification, "[a] person of ordinary skill ... would recognize that
Appellant was in full possession of the subject matter as claimed." (Appeal
Br. 40.)
6
Appeal2016-006174
Application 14/060,091
If . . . the specification contains a description of the claimed
invention, albeit not in ipsis verb is (in the identical words), then
the examiner or Board, in order to meet the burden of proof, must
provide reasons why one of ordinary skill in the art would not
consider the description sufficient. Once the examiner or Board
carries the burden of making out a prima facie case of
unpatentability, "the burden of coming forward with evidence or
argument shifts to the applicant." To overcome a prima facie
case, an applicant must show that the invention as claimed is
adequately described to one skilled in the art. "After evidence or
argument is submitted by the applicant in response, patentability
is determined on the totality of the record, by a preponderance of
the evidence with due consideration to persuasiveness of
argument."
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (citations omitted).
"[T]he applicant must ... convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563---64
(Fed. Cir. 1991). Here, the question is whether the disclosure of
"trigger[ing] the distributed inbound event handler" would convey to one
skilled in the art possession of the invention as claimed, i.e., "invokes the
inbound event handler."
The Examiner recognizes that "invoke" refers to an action that causes
an event. (See Non-Final Action 116.) This is in accord with the dictionary
definition. The Cambridge Dictionary defines "invoke" as "to cause
something to be used; bring into effect." (https://dictionary.cambridge.org/
us/dictionary/english/invoke, last visited June 19, 2018.) The Cambridge
Dictionary defines "trigger," the term used in paragraph 79, as "to cause
something to start." (https :// dictionary .cambridge. org/us/ dictionary/ english/
trigger, last visited June 19, 2018.)
7
Appeal2016-006174
Application 14/060,091
In this context, we agree with Appellants that one of ordinary skill in
the art would understand from the Specification, including at least
paragraph 79, that Appellants were in possession of the claimed subject
matter at issue.
The § l l 2(b) reiections o(claims 1-24
Claim 1 recites, in relevant part,
detecting, by a programmed processor executing an inbound
event handler of a distributed integration framework that
integrates a case management system with an external content
repository, a case creation event originating from the external
content repository that invokes the inbound event handler of the
distributed integration framework to cause creation of a case
within the case management system.
Independent claims 9 and 17 contain similar language. The Examiner
concludes that
[ t ]he limitation is indefinite because it is not clear whether [ 1]
the distributed integration framework, [2] the external content
repository, or [3] the case management system "invokes" the
inbound event handler, and subsequently it is not clear whether
the distributed integration framework, the external content
repository, the case management system, or the inbound event
handler "causes" creation of a case within the case management
system.
(Non-Final Action 13-14.)
Appellants disagree and argue "that the detected case creation event
invokes (causes/triggers) the inbound event handler," i.e., [4] the detected
case creation event invokes the inbound event handler. (Appeal Br. 42.)
Appellants also argue that "it is the detection of the case creation event that
8
Appeal2016-006174
Application 14/060,091
invokes (causes/triggers) the inbound event handler," i.e., [5] the detection
of the case creation event invokes the inbound handler. (Id.)
The Federal Circuit has stated that
when the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ 112(b).
In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). In this case, the
Examiner presents a well-grounded rejection identifying why it is unclear
what "invokes the inbound event handler." Appellants' arguments do not
overcome the rejection and, indeed, demonstrate that the claims are unclear.
Claims 9-16 are further rejected under§ 112(b). Claim 9 recites:
9. A system, comprising:
a distributed integration framework that integrates a case
management system with an external content repository; and
a processor programmed to:
detect, at an inbound event handler of the
distributed integration framework, a case creation event
originating from the external content repository that
invokes the inbound event handler of the distributed
integration framework to cause creation of a case within
the case management system;
instruct, via the inbound event handler, the case
management system to create the case within the case
management system; and
instruct, via an outbound event handler, the external
content repository to create a proxy case to remotely
represent the case created within the case management
system.
9
Appeal2016-006174
Application 14/060,091
The Examiner concludes that claims 9-16 are
indefinite because the limitation a processor is singular, meaning
there is a single processor or a single computing device
performing the actions. However, the claims recite actions
performed by event handlers of a distributed integration
framework, a case management system, and an external content
repository, and it is not clear whether these are parts of a single
computing device (such as computer with an extra hard drive
content repository and a framework to represent content between
the main hard drive and the extra hard drive) or whether they are
separate computing devices.
(Non-Final Action 14.)
Appellants disagree and argue:
Appellant [sic] does not claim a single processor carrying
out operations on different devices. In contrast, Appellant claims
a programmed processor executing within a distributed
integration framework that integrates a case management system
with an external content repository. This language is also clear
if properly considered.
The claimed programmed processor executes the claimed
inbound event handler. As clearly taught and claimed by
Appellant, the inbound event handler forms a portion of the
distributed integration framework that integrates a case
management system with an external content repository ....
The claims recite the inbound event handler ( executed by
the programmed processor) to be "detecting" and "instructing."
This is clear within the claim language itself.
(Appeal Br. 43--44.)
Appellants' Specification discloses:
Figure 6 is a flow chart of an example of an implementation of a
process 600 for case management integration with external
content repositories. At block 602, the process 600 detects, via
a processor executing an inbound event handler of a distributed
integration framework that integrates a case management system
with an external content repository, a case creation event
10
Appeal2016-006174
Application 14/060,091
originating from the external content repository that is
configured via the distributed integration framework to cause
creation of a case within the case management system. At block
604, the process 600 instructs, via the inbound event handler, the
case management system to create the case within the case
management system. At block 606, the process 600 instructs, via
an outbound event handler of the distributed integration
framework, the external content repository to create a proxy case
to remotely represent the case created within the case
management system.
(Spec. ,r 75.)
Thus, paragraph 7 5 of Appellants' Specification supports Appellants'
argument that a programmed processor executes the inbound event handler
and, therefore, is part of an integrated process. But this only adds to the lack
of clarity. Claim 9 recites "a processor programmed to: detect, at an
inbound event handler," "instruct, via the inbound event handler," and
"instruct, via an outbound case handler." Appellants appear to read into the
claim a requirement that the processor itself executes the inbound event
handler. We find no such requirement in the language of claim 9.
Therefore, we do not find Appellants' argument persuasive of error.
Moreover, even if we were to read claim 9 as proposed by Appellants, it
would not address the Examiner's concern regarding execution of the
outbound event handler.
In short, the Examiner has "issued a well-grounded rejection that
identifies ways in which language in a claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention, and thereafter the applicant fails to provide a satisfactory
response." In re Packard, 7 51 F .3d at 1311. We are not persuaded that the
11
Appeal2016-006174
Application 14/060,091
Examiner erred in rejecting independent claim 9 and claims 10-16 which
depend therefrom, under§ 112(b).
The § 1 OJ reiection of claims 1-24
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.'" Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
12
Appeal2016-006174
Application 14/060,091
As an initial matter, we note that all claims are argued together.
Therefore, the claims will stand or fall together. See 37 C.F.R.
§ 4I.37(c)(l)(iv). We select claim 1 as representative.
With regard to step one of the Alice framework, the Examiner
determines that "[t]he claims are directed to a distributed integration
framework having event handlers that send and receive instructions between
a case management system and external content repository in response to
events in the case management system." (Non-Final Action 15.) The
Examiner also determines that "the claims are directed to manipulation by
software of data in one or more computers, which is similar to using
categories to organize, store, and transmit information between the
computers, which is an abstract idea." (Id. at 16.) The Examiner also
determines that "the claims are directed to representing data, such as a
document, using proxy documents." (Id.) The Examiner also determines
that "the claims are directed to manipulating data by performing specific
operations ( e.g., create, unfile, delete) on the data based on detecting
events." (Id.)
Appellants argue that "the rejection is defective on its face for failing
to provide clarity with respect to which judicial descriptor of an abstract idea
is being alleged." (Appeal Br. 134.)
We are sympathetic to Appellants' argument. However, looking at
the Examiner's determinations more carefully, they reduce to a
determination that "[t]he claims are directed to a distributed integration
framework having event handlers that send and receive instructions between
a case management system and external content repository in response to
events in the case management system" and that "represent[ s] data, such as
13
Appeal2016-006174
Application 14/060,091
documents, using proxy documents." (Non-Final Action 15-16.) This
subsumes the Examiner's additional determinations, i.e., that the claims are
directed to the manipulation of data.
Regardless, under step one of the Alice framework, we "look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)). Moreover, because the focus of the analysis is on the claim as a
whole, a claim may incorporate multiple abstract ideas, but that "does not
render the claim non-abstract." RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the claimed
"invention relates to case management integration with external content
repositories." (Spec. ,r 2.) Claim 1 recites "[a] method comprising:
detecting ... a case creation event originating from the external content
repository," "instructing ... the case management system to create the case
within the case management system," "and instructing ... the external
content repository to create a proxy case."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). In this
case, that does not "impact the patentability analysis." See id. at 1241.
Moreover, here, the limitations do not recite implementation details.
14
Appeal2016-006174
Application 14/060,091
Instead, they recite functional results to be achieved. In other words, the
claims do not recite "a particular way of programming or designing the
software ... , but instead merely claim the resulting systems." Id.
Therefore, we are not persuaded that the Examiner erred in determining that
the claims are directed to an abstract idea.
Even if we "defer[red] our consideration of the specific claim
limitations' narrowing effect for step two," which we may do, see Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016), we would still not be persuaded that the claims recite
patent eligible subject matter.
Nonetheless, Appellants argue that the claims are directed to
"technological integration of devices by a distributed integration framework
that specifically as claimed integrates a case management system with an
external content repository." (Appeal Br. 131-32.) As such, Appellants
further argue, the claims are "directed to technology by which the two
disparate devices have been functionally integrated by the distributed
integration framework" and that this "enhances computing technology
itself." (Id. at 132.)
Analogizing to an earlier case, we note that in Alice, the Court found
claims directed to creating shadow records held independently by separate
institutions, adjusting shadow records as transactions are made, and issuing
related instructions, to amount to nothing more than "electronic record
keeping----one of the most basic functions of a computer." Alice, 134 S. Ct.
at 2359. Moreover, Appellants do not indicate where in the Specification
anything other than a generic processor programmed to perform the steps of
the abstract idea of the invention is disclosed. Indeed, Appellants'
15
Appeal2016-006174
Application 14/060,091
Specification discloses that the invention "may be implemented using any
technology appropriate for a given implementation. For example, the
respective computing devices may include devices such as a computing
devices [sic] (e.g., desktop, laptop, server, etc.), or any other device capable
of processing information as described above and in more detail below."
(Spec. ,r 40.)
The introduction of a generic processor to implement the claimed
steps does not alter the analysis at the second step. "[T]hese claims in
substance [are] directed to nothing more than the performance of an abstract
business practice ... using a conventional computer. Such claims are not
patent-eligible." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014).
Even considered as an ordered combination, the processor of
Appellants' method adds nothing that is not already present when the steps
are considered separately. The claims do not, for example, purport to
improve the functioning of the processor. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea. That is not enough to transform an abstract idea into a patent-
eligible invention. Alice, 134 S. Ct. at 2360.
In view of the above, we are not persuaded that the Examiner erred in
determining that the claims are directed to patent-ineligible subject matter.
16
Appeal2016-006174
Application 14/060,091
The§ 102(b) reiection o(claims 1. 2. 9. 10. 17. and 18
Claim 1 recites, in relevant part, "detecting ... a case creation event
... that invokes the inbound event handler ... to cause creation of a case,"
and "instructing ... the case management system to create the case."
Johnson discloses "[a] system for managing content and work items in
a plurality of disparate content repositories and workflow systems."
(Johnson, Abstract.) Johnson further discloses that its "software system ...
supports the creation of instances of virtual repositories that include content,
content organizing structure ( e.g. folders, folder hierarchies, taxonomies)
.... " (Id. ,r 25.) Johnson also discloses that "[i]n a preferred embodiment,
subscriptions to content, [and] content organizing structures ... can be
created and persisted in the system. A subscription is a request to track one
or more items and monitor it for change .... " (Id. ,r 60.) Additionally,
"[ w ]hen the items of a subscription are to be monitored for change ... , an
event is created. The event provides access to the subscription the event is
for .... " (Id. ,r 64.) Johnson further discloses that its system can host
"event handler ... modules that handle ... change events of the system.
Each handler receives the event and has a chance to respond .... These
handlers may perform any appropriate action .... " (Id. ,r 69.)
The Examiner finds that "the handler [of Johnson] receiving the event
and responding is equivalent to invoking the event handler ... , and the
change notification is equivalent to a case creation event." (Non-Final
Action 27, citing Johnson ,r,r 64 and 69.) The Examiner also finds that
"creation of content is equivalent to creating a case (i.e., a computer file)."
(Id. at 28, citing Johnson ,r 25.)
17
Appeal2016-006174
Application 14/060,091
Appellants argue that "the event that is disclosed within [the] Johnson
reference appears to be configured to provide 'access to' a subscription, not
creation of a case as claimed .... Stated differently, creating an event to
provide access to a subscription is not equivalent to detecting a case creation
event that is configured . . . to cause creation of a case within a completely
separate case management system." (Appeal Br. 60.) "Appellant [sic]
claims 'detecting' the specific case creation event itself." (J d. at 5 7.)
The Examiner disagrees and refers to pages 88-89 of the Final Action
dated June 12, 2014. (Answer 51-52.) In that Final Action, at page 89, the
Examiner found that
the step only requires detecting a case creation event. The
detecting can occur regardless of the origin of the case creation
event or what the event was configured to do in some other part
of the system or another computing device. What the event is
configured to do does not alter whether the event is detected, so
long as it is detected.
As noted above, claim 1 recites "detecting ... a case creation event
... that invokes the inbound event handler ... to cause creation of a case,"
and "instructing ... the case management system to create the case," i.e., to
create the case associated with the detected event/occurrence.
The portions of Johnson relied on by the Examiner disclose that "[a]
subscription is a request to track one or more items and monitor it for
change" (Johnson ,r 60), and that"[ w ]hen the items of a subscription are to
be monitored for change ... , an event is created. The event provides access
to the subscription the event is for .... " (Id. ,r 64.) In other words, Johnson
discloses detecting a change in a stored item.
But claim 1 also requires "instructing ... the case management
system to create the case," i.e., to create the case associated with the detected
18
Appeal2016-006174
Application 14/060,091
event/occurrence. For this, the Examiner relies on the disclosure in
paragraph 25 of Johnson. As noted above, paragraph 25 of Johnson
discloses that its "software system ... supports the creation of instances of
virtual repositories that include content, content organizing structure ( e.g.
folders, folder hierarchies, taxonomies) .... " (Johnson ,r 25.) But the
Examiner does not sufficiently explain where Johnson discloses that the
creations of virtual repositories are the result of instructions for the case
management system to create the case associated with the detected
event/ occurrence.
In view of the above, we agree that the Examiner erred in rejecting
claim 1 under § 102(b ). Independent claims 9 and 17 contain similar
language and the Examiner relies on similar arguments in rejecting those
claims under§ 102(b). (See Non-Final Action 30-40.) Thus, for similar
reasons, we find that the Examiner erred in rejecting claims 9 and 17, and
dependent claims 2, 10, and 18 under § 102(b ).
The§ 103(a) reiections o(claims 3-8, 11-16, and 19-24
In rejecting dependent claims 3-8, 11-16, and 19-24 under§ 103(a),
the Examiner additionally relies on Kandasamy and Sun Microsystems.
(Non-Final Action 41-59.) However, the Examiner does not rely on either
Kandasamy or Sun Microsystems to cure the above noted deficiency in
Johnson. Therefore, for the reasons discussed above, we agree that the
Examiner erred in rejecting claims 3-8, 11-16, and 19-24 under§ 103(a).
19
Appeal2016-006174
Application 14/060,091
DECISION
The Examiner's provisional rejections of claims 1-24 on the grounds
of nonstatutory double patenting are affirmed.
The rejection of claims 1-24 under 35 U.S.C. § 112(a) is reversed.
The rejections of claims 1-24 under 35 U.S.C. § 112(b) are affirmed.
The Examiner's rejection of claims 1-24 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1, 2, 9, 10, 17, and 18 under
35 U.S.C. § 102(b) is reversed.
The Examiner's rejections of claims 3-8, 11-16, and 19-24 under
35 U.S.C. § 103(a) are 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)(l )(iv).
AFFIRMED
20