Ex Parte Beaton et al

Patent Trial and Appeal Board

Feb 3, 2016

12266448 (P.T.A.B. Feb. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/266,448 11/06/2008
46320 7590 02/05/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Murray J. Beaton
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.
CA920080040US1 (096) 4109
EXAMINER
PRATT, EHRINLARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/05/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MURRAY J. BEATON, CHRISTINA P. LAU,
and SCOTT P. PEDDLE
Appeal2013-002563 1
Application 12/266,448
Technology Center 3600
Before: MICHAEL W. KIM, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the Examiner's Final rejection of claims 1-13.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally "to managing process model assets."
Spec. para. 1.
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 2.
Appeal2013-002563
Application 12/266,448
Claims 1 and 4 are illustrative:
1. A collaborative business process model (BPM)
modeling data processing system configured for managing
reusable BPM assets, comprising:
a reusable asset manager executing in a server and
configured to manage a repository of reusable BPM assets;
a plurality of process modeling tools, each
communicatively coupled to the reusable asset manager over a
computer communications network;
a publish asset module coupled to both the reusable asset
manager and the process modeling tools, the publish asset
module comprising program code enabled to identify related
BPM assets for a selected BPM process in one of the process
modeling tools, to specify relationships between the related
BPM assets and to upload each of the selected BPM process,
the related BPM assets and the specified relationships into the
repository of reusable BPM assets; and,
an import asset module coupled to both the reusable asset
manager and the process modeling tools, the import asset
module comprising program code enabled to identify required
BPM assets in the repository of reusable BPM assets for a
selected BPM asset, and to import selected ones of the selected
and required BPM assets into one of the process modeling
tools.
4. A method for managing reusable business process
model (BPM) assets, the method comprising:
selecting a BPM asset in a repository of reusable BPM
assets;
retrieving a list of BPM assets in the repository required
by the selected BPM asset;
selecting individual ones of the selected and retrieved
BPM assets for importation into a process modeling tool; and,
importing into the process modeling tool the selected
individual ones of the selected and retrieved BPM assets from
the repository over a computer communications network.
2
Appeal2013-002563
Application 12/266,448
Claims 1-3 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-13 are rejected under 35 U.S.C. § 102(b) as anticipated by
Carlson (US 2003/0046282 Al, pub. Mar. 6, 2003).2
We AFFIRM.
ANALYSIS
Rejection of Claims 1-3 as Directed to Non-Statutory Subject Matter
We are persuaded the Examiner erred in asserting that claims 1-3
recite non-statutory subject matter because they are directed to software
per se. App. Br. 4--7. Independent claim 1 recites "a reusable asset manager
executing in a server and configured to manage a repository of reusable
BPM assets; a plurality of process modeling tools, each communicatively
coupled to the reusable asset manager over a computer communications
networ~' (emphasis added). In other words, although the recited "reusable
asset manager" is itself software, it is recited as residing on a server, and
although the recited "process modeling tools" themselves are also software,
independent claim 1 recites that they are communicatively coupled over a
computer communications network. Accordingly, as independent claim 1 as
a whole is tied to or resides on servers and networks, we are persuaded that
claims 1-3 are not directed to software per se. As this is the only basis
articulated by the Examiner for rejecting claims 1-3 under 35 U.S.C. § 101,
we do not sustain this rejection.
2 The following rejections are withdrawn: claims 2, 7, 8, 12, and 13 under
35 U.S.C. § 112, second paragraph, for indefiniteness; claims 4--8 under
35 U.S.C. § 101 for failing to recite statutory subject matter. Ans. 11-13.
3
Appeal2013-002563
Application 12/266,448
Rejection of Claims 1-13 as Anticipated by Carlson
We are unpersuaded that the Examiner erred in asserting that Carlson
does not disclose "selecting individual ones of the selected and retrieved
BPM assets for importation into a process modeling tool," as recited in
independent claim 4. App. Br. 9-14. Independent claims 1 and 9 each
recites a similar limitation.
The Examiner has mapped "functions from a list" in Carlson to the
recited "BPM assets." The Appellants assert that this is error, because the
two are not co-extensive. We are unpersuaded. The Specification discloses
the following concerning "BPM assets": "[i]n a business process model
(BPM), the tasks, activities, actors, elements and the relationship there
between can be individually grouped as BPM assets." Spec. i-f 4. The
Appellants have not shown persuasively why the "functions from a list" in
Carlson would not be considered one of the tasks or activities that make up a
BPM asset, and thus a BPM asset itself.
The Appellants assert further that Carlson does not disclose importing
that BPM asset in a "process modeling tool," as required by independent
claim 1. The Appellants describe a "process modeling tool" as "a tool used
for business process modeling." We are unpersuaded by the Appellants'
assertions. Carlson discloses the following:
The asset capture and identification tools of the invention
allow resources to be mapped to a domain reference model
(DRM) ....
A DRM identifies both atomic and higher-level tasks or
process elements. Preferably, these elements are organized in
two different models. The first model is the structural model,
which is similar in organization to a library of code
components. . . .
4
Appeal2013-002563
Application 12/266,448
The second model is generally a business process model,
which identifies higher-level areas within the domain and
breaks them into processes and subprocesses. At the atomic
level, the processes are broken down to "use cases," which
detail the necessary steps of a particular task. These steps are
associated with the components, interfaces, and functions in the
structural model, and may be repeated in different combinations
in the various use cases.
Carlson i-fi-f 117-119. Accordingly, Carlson discloses a tool for mapping
assets or resources to a DRM, a component of the DRM is a BPM, and the
BPM is made up of assets, steps, tasks, components, interfaces, and
functions. Carlson discloses further that the "steps are associated with the
components, interfaces, and functions in the structural model," indicating
that the components, interfaces, and functions were preexisting, and thus
needed to be either created anew or imported from elsewhere. This latter
point is confirmed by other portions of Carlson, which disclose that
functions may be selected for inclusion in a DRM. Carlson i-fi-f 114, 116,
123, 143. In particular, Carlson discloses that "the user can selectively
retain the assets for a software project." Carlson i-f 116.
For these reasons, we sustain the rejection of independent claims 1, 4,
and 9. The rejection of dependent claims 2, 3, 5-8, and 10-13 is not argued
separately. Accordingly, their rejection is also sustained.
DECISION
We REVERSE the rejection of claims 1-3 under 35 U.S.C. § 101.
We AFFIRM the rejection of claims 1-13 under 35 U.S.C. § 102(b).
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).
5
Appeal2013-002563
Application 12/266,448
rvb
AFFIRMED
6