Ex Parte Bau et al

Board of Patent Appeals and Interferences

Mar 28, 2007

10082794 (B.P.A.I. Mar. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID BAU III, ADAM BOSWORTH, GARY S. BURD
RODERICK A. CHAVEZ, and KYLE W. MARVIN
____________

Appeal 2007-0435
Application 10/082,794
Technology Center 2100
____________

Decided: March 28, 2007
____________

Before KENNETH W. HAIRSTON, HOWARD B. BLANKENSHIP, and
JEAN R. HOMERE, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-52, the only claims pending in this
application. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a).
Appeal 2007-0435
Application 10/082,794

INTRODUCTION
The claims are directed to the development of stateful Web services.
Claim 1 is illustrative:
1. A method of specifying a stateful web service within a procedural
programming environment, the method comprising:
providing a source code representation of at least a portion of web
service logic,
the logic including one or more methods;
identifying one of said one or more methods to be exposed as part of
the stateful web service; and
specifying one or more declarative annotations to cause a compiler to
generate one or more persistent components to maintain conversational state
related to the identified method.
The Examiner relies on the following prior art references to show
unpatentability:
Pagé US 5,812,768 Sep. 22, 1998
Chan US 6,230,160 B1 May 8, 2001

BEA Weblogic Server 4.5 (“BEA”), Using Weblogic Enterprise
JavaBeans (1999), available at http://www.weblogic.com/docs/cl...

Richard Monson-Haefel (“Monson-Haefel”), Enterprise Java Beans,
2nd Edition (2000), available at http://proquest.safaribooksonline.com/
1565928695.

dreamBean Software (“dreamBean”), EJBDoclet (2000), available at
http://sourceforge,net/projects/ejbodoclet/.

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Application 10/082,794

The rejections as presented by the Examiner are as follows:
1. Claims 1-52 are provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable
over claims 1, 3-22, 24-30, 33, 35-38, 41-63, 66-75, 77-80, 83, and 84
of copending Application No. 10/082,807.
2. Claims 1-4, 10-12, 15-17, 22-24, 26, 31, 32, 34, 36, 38, 39, 41, 44-46,
and 48, are provisionally rejected under the judicially created doctrine
of obviousness-type double patenting as being unpatentable over
claims 1-8, 19-23, 26, 27, 31-36, 38, 39, 43, and 44 of copending
Application No. 10/784,492.
3. Claims 1, 4, 10, 11, 16, 17, 22, 38, 39, and 44 are rejected under
35 U.S.C. § 102(b) as being anticipated by BEA.
4. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over BEA and dreamBean.
5. Claims 5-8, 18, 23-25, 28-30, 40, 45-47, and 50-52 are rejected under
35 U.S.C. § 103(a) as being unpatentable over BEA and Monson-
Haefel.
6. Claim 9, 19, and 41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over BEA and Pagé.
7. Claims 12, 31, and 34 rejected under 35 U.S.C. § 103(a) as being
unpatentable over BEA and Chan.
8. Claims 13, 20, and 42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over BEA and admitted prior art (“Background of the
Invention” section appearing on pages 1-3 of the originally filed
specification) (“APA”).
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Application 10/082,794

9. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over BEA, APA, and Pagé.
10. Claims 15, 21, 26, 27, 43, 48, and 49 are rejected under 35 U.S.C. §
103(a) as being unpatentable over BEA, APA, and Monson-Haefel.
11. Claims 32 and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over BEA, Chan, and dreamBean.
12. Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over BEA, Chan, and APA.
13. Claim 36 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over BEA, Chan, APA, and Pagé.
14. Claim 37 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over BEA, Chan, APA, and Monson-Haefel.

OPINION
In the obviousness type double patenting rejection over Application
No. 10/082,807, the Examiner compares instant claim 1 with claims 1 and 3
of the ′807 application.1 Appellants in response (Br. 6-7) submit that the
claims of the ′807 application are drawn to “an asynchronous web service”
as recited in claim 1 of that application, and not to “a stateful web service as
recited in claim 1 of the instant application.” Appellants do not, however,
provide any reasons why a “stateful” and an “asynchronous” web service
should be regarded as patentably distinct.

1 According to the electronic image file wrapper of the ′807 application,
claim 3 was cancelled and the limitations of claim 3 were incorporated into
base claim 1 by an amendment filed February 7, 2007. Current claim 1 in
the ′807 application is identical in substance to the claims of the ′807
application evaluated in the Answer.
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Appeal 2007-0435
Application 10/082,794

The Examiner in response points out, inter alia, that claim 4 of the
′807 application expressly claims “a stateful conversation between the client
and the web service . . . .” (Answer 6-7.) Appellants in the Reply Brief (at
1) “continue to maintain that the rejection is improper” but offer to provide a
terminal disclaimer “if the appeal process terminates with a holding that
Appellants’ claims are allowable in their current form.” Appellants do not,
however, offer any reasons in support of the belief that the rejection for
double patenting is improper.
Because Appellants have not shown that the rejection is improper, we
sustain the provisional rejection of the instant claims over the claims of
copending Application No. 10/082,807.
In the obviousness type double patenting rejection over Application
No. 10/784,492, the Examiner compares instant claim 1 with claims 1 and 3
of the ′492 application. Appellants’ remarks in the Reply Brief seem to
acknowledge that the Brief’s remarks about “domination” do not
demonstrate error in the rejection for double patenting. Being not persuaded
of error, we sustain the provisional rejection of the instant claims over the
claims of copending Application No. 10/784,492.
In response to the rejections over the prior art, Appellants argue that
instant claim 1 is not anticipated by BEA.
The minimum requirements of claim 1 are providing a source code
representation, identifying a method, and specifying a declarative
annotation. The claim is drawn to producing source code (i.e., producing a
computer program listing) as depicted in instant Figure 2.
Appellants’ arguments regarding the informational content of the
source code are not persuasive. The product of the method is what has come
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Appeal 2007-0435
Application 10/082,794

to be known as nonfunctional descriptive material, as discussed in Manual of
Patent Examining Procedure (MPEP) § 2106.01 (8th Ed., Rev. 5, Aug.
2006).2 Appellants also seem to rely on the intended use of what the source
code may cause a compiler to do. The final step of claim 1, however, is
“specifying” annotations. The claim is not limited to any compiler function;
nor, for that matter, limited to any type of machine function.
The content of the nonfunctional descriptive material carries no
weight in the analysis of patentability over the prior art. Cf. In re Ngai, 367
F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (“‘[w]here the
printed matter is not functionally related to the substrate, the printed matter
will not distinguish the invention from the prior art in terms of
patentability,’” (quoting In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,
404 (Fed. Cir. 1983)); In re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031,
1034 (Fed. Cir. 1994) (“Lowry does not claim merely the information
content of a memory. . . . [N]or does he seek to patent the content of
information resident in a database.”).
BEA is thus sufficient to show anticipation of the subject matter of
instant claim 1. We sustain the § 102(b) rejection of claim 1.
Appellants rely on the arguments in support of claim 1 in response to
the rejection of the remainder of the claims over the applied prior art.3

2 As explained in the referenced MPEP section, an invention directed to a
mere program listing is nonstatutory. The Examiner should evaluate the
claims under contemporary 35 U.S.C. § 101 Office guidelines in the event of
further prosecution of claims similar to instant claim 1.
3 Appellants repeat language of claim 16 (Br. 11), which is not an argument
for separately patentability. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”). Moreover, Appellants do
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Appellants having not persuaded us of error in the rejection of any claim, we
sustain all the rejections over the applied prior art.

CONCLUSION
In summary, the provisional rejection of claims 1-52 under the
judicially created doctrine of obviousness-type double patenting over claims
1, 3-22, 24-30, 33, 35-38, 41-63, 66-75, 77-80, 83, and 84 of copending
Application No. 10/082,807 is affirmed. The provisional rejection of claims
1-4, 10-12, 15-17, 22-24, 26, 31, 32, 34, 36, 38, 39, 41, 44-46, and 48 under
the judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-8, 19-23, 26, 27, 31-36, 38, 39, 43, and 44 of
copending Application No. 10/784,492 is affirmed. The rejection of claims
1, 4, 10, 11, 16, 17, 22, 38, 39, and 44 under 35 U.S.C. § 102(b) and the
rejection of claims 2, 3, 5-9, 12-15, 18-21, 23-37, 40-43, and 45-52 under 35
U.S.C. § 103(a) are affirmed.

not respond to the Examiner’s findings in support of the rejection, much less
demonstrate error in any of the findings.
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Application 10/082,794

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR §1.136(a). See 37 CFR
§ 1.136(a)(1)(iv).

AFFIRMED

PGC

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