Ex Parte Bailey et al

Patent Trial and Appeal Board

Apr 1, 2016

13405325 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/405,325
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
02/26/2012
04/05/2016
FIRST NAMED INVENTOR
Thomas J. Bailey
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.
GB920100027US2 7439
EXAMINER
PATEL, HITESHKUMARR
ART UNIT PAPER NUMBER
2446
NOTIFICATION DATE DELIVERY MODE
04/05/2016 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. BAILEY, CHRISTOPHER D. JENKINS,
JONATHAN M. ROBERTS, and KIERAN P. SCOTT
Appeal2014-006915
Application 13/405,325
Technology Center 2400
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
KAMRAN JIV ANI, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-006915
Application 13/405,325
INVENTION
The invention is directed to locating service endpoints from a service
registry in a Service Oriented Architecture (SOA). (Spec. 1.) Claim 1 is
illustrative and is reproduced below:
1. A method, operable by a service registry in a service
oriented environment for provisioning a service within the
environment, the method comprising:
receiving a request for a service from a service requester
in the environment;
checking details of the requested service as registered in
the service registry;
characterized by;
in response to the service requested not being registered,
sending the request to one or more service providers to provide
a new service; and
in response to a service provider providing the new
service, updating, by a processor, the service registry with the
new service and responding to the service requester that the
service is available.
REFERENCES
Knauerhase US 2004/0236633 Al Nov. 25, 2004
REJECTIONS AT ISSUE
Claims 1-10 are rejected under 35 U.S.C. § 102 as unpatentable over
Knauerhase. (Final Act. 7.)
ISSUES
Did the Examiner err in finding that Knauerhase discloses "in
response to the service requested not being registered, sending the request to
one or more service providers to provide a new service" as recited in
independent claims 1?
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Appeal2014-006915
Application 13/405,325
ANALYSIS
Independent claim 1 recites, inter alia, "in response to the service
requested not being registered, sending the request to one or more service
providers to provide a new service."
Appellants argue Knauerhase does not disclose this limitation. (App.
Br. 6; Reply Br. 3.) Appellants argue Knauerhase does not disclose
"sending the request to one or more service providers to provide a new
service in response to the service requested not being registered." (App. Br.
6.) Specifically, Appellants argue "Knauerhase only discusses confirming
continued availability of a service provider." (Reply Br. 3.)
The Examiner finds Knauerhase's figure 3 and paragraphs 29 and 30
disclose requesting multiple service providers provide a new service and
updating the service registry. (Final Act. 8.) The Examiner further cites
Knauerhase's paragraphs 33, and 35-37 and figures 3 and 4. (Ans. 4--5.)
However, nowhere in these sections ofKnauerhase do we find any
discussion of a "new service."
Knauerhase' s paragraph 3 7 discloses querying service providers for
status updates and updating the meta-data associated with the provider.
Knauerhase' s paragraph 20 discloses "[ m ]eta-data may include information
about the Service Providers and their capabilities." Knauerhase discloses in
response to the provider being unavailable to delete the provider from the
service registry database. (See Knauerhase i-f 35 and figure 4 step 404.)
None of these teachings may reasonably be considered as sending a request
to a service provider to provide a new service.
Accordingly, we agree with Appellants' arguments (see App. Br. 6, 8;
Reply Br. 3), that Knauerhase does not disclose "in response to the service
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Appeal2014-006915
Application 13/405,325
requested not being registered, sending the request to one or more service
providers to provide a new service" as recited in claim 1. Dependent claims
2-10 each depend from independent claim 1. Therefore, we cannot sustain
the Examiner's rejection of claims 1-10 as anticipated by Knauerhase.
This issue is dispositive. Therefore, we do not reach consideration of
Appellants' remaining arguments.
DECISION1
The Examiner's decision to reject claims 1-10 is reversed.
REVERSED
1 In the event of further prosecution we leave it to the Examiner to consider
whether the instant claims are obvious under 35 U.S.C. § 103 or not. For
example, the Examiner may consider US 200710011126 A 1 Conner et al.
and other relevant prior art.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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