Ex Parte Beckett et alDownload PDFPatent Trial and Appeal BoardAug 31, 201611305060 (P.T.A.B. Aug. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111305,060 12/16/2005 25461 7590 09/02/2016 SMITH, GAMBRELL & RUSSELL SUITE 3100, PROMENADE II 1230 PEACHTREE STREET, N.E. ATLANTA, GA 30309-3592 FIRST NAMED INVENTOR Stephen Marshall Beckett 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. 061666/064227.001 1825 EXAMINER AGUILERA, TODD ART UNIT PAPER NUMBER 2196 NOTIFICATION DATE DELIVERY MODE 09/02/2016 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): ATLdocketing@sgrlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte STEPHEN MARSHALL BECKETT, ANTONY J. CASTAGNO, DAMON GERARD LOCKWOOD and HORACE DANIEL McDOUGALD Appeal2014-009285 Application 11/305,060 Technology Center 2800 Before CARL W. WHITEHEAD JR., BRUCE R. WINSOR, and MELISSA A. RAAP ALA, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the Final Rejection of claims 1, 3-7, 9-20, 29-31, 33-39, and 42--48 under 35 U.S.C. § 134(a). 1 Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We affirm. Introduction "The present invention relates generally to graphical programming and visual software development and, more specifically, to building 1 An Oral Hearing was held on August 16, 2016. Appeal2014-009285 Application 11/305,060 solutions integrating disparate software systems without programming." Specification [0001]. Representative Claim (disputed limitations emphasized) 1. A system, comprising a processor, memory accessible by the processor, and program instructions stored in the memory and executable by the processor to implement: a first adapter configured to interrogate at least one element of an existing first software system built on an existing first software platform and, in response, generate automatically a plurality of first descriptions associated with the at least one element of the first software system, the first adapter being associated with the first software platform, and the first adapter interrogating the at least one element of the first software system by invoking functionality exposed by the first software system via an existing interface of the first software platform, wherein the existing software system and the existing interface have not been designed, modified or extended so as to be interrogated by the first adapter; an integrated development environment (IDE) configured to build a first design by using at least two descriptions of the plurality of first descriptions, the IDE having a user interface configured to select graphically a first description and a second description of the at least two first descriptions, and to create an interconnection between the first description and the second description, the first design customizing the at least one element according to a user-defined algorithm, and the first description and the second description and the interconnection collectively defining the user-defined algorithm; and a loader configured to effect the user-defined algorithm in response to the selection of the first description and the second description and the creation of the interconnection. 2 Appeal2014-009285 Application 11/305,060 Rejections on Appeal Claims 1, 3-7, 9-20, 29-31, 33-39, and 42--48 stand rejected under 35 U.S.C. § l 12(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Final Rejection 7-9.2 Claims 11-18 stand rejected under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventors or a joint inventor, or for pre-AIA the Applicants regard as the invention. Final Rejection 9-10. Claims 1, 3-7, 11, 13-17, 29, 33, 35-39, 41, and 42 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Beckett (US Patent Number 6,564,368 Bl; issued May 13, 2003). Final Rejection 10-15. Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Beckett, Burgess (US Patent Number 6, 182, 160 B 1; issued January 30, 2001), and Sakamoto (US Patent Number 5,815,711; issued September 29, 1998). Final Rejection 15-16. Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Beckett, Burgess, Hurst (US Patent Application Number 2004/0128644 Al; published July 1, 2004), and Gendron (US Patent Number 4,860,204; issued August 22, 1989). Final Rejection 16. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Beckett and Charisius (US Patent Application Number 2002/0108101 Al; published August 8, 2002). Final Rejection 16-17. 2 The rejection statement indicates that claims "42-28" stand rejected instead of claims "42-48." Final Act. 7. The Examiner notes this was a typographical error. Answer 2. We view this as harmless error. 3 Appeal2014-009285 Application 11/305,060 Claims 1, 3-7, 11-17, 29-31, 33-39, and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Beckett and Seto (US Patent Application Number 2004/0015858 Al; published January 22, 2004). Final Rejection 17-34. Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Beckett, Seto, Burgess, and Sakamoto. Final Rejection 35-38. Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Beckett, Seto, Burgess, Hurst (US Patent Application Publication Number 2004/0128644 Al; published July 1, 2004) and Gendron. Final Rejection 38--42. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Beckett, Seto, and Charisius. Final Rejection 42--43. Claims 43--48 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Beckett, Seto, and Moon (US Patent Application Publication Number 2004/0078105 Al; published April 22, 2004) Final Rejection 43-50. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed June 8, 2014), the Reply Brief (filed August 28, 2014), the Examiner's Answer (mailed July 3, 2014) and the Final Rejection (mailed October 9, 2013) for the respective details. We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner has erred. We adopt as our own (1) the findings and reasons set forth by the Examiner in the Final Office Action 4 Appeal2014-009285 Application 11/305,060 from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief, except where noted. 35 U.S.C. § l l 2(a) rejection Appellants argue the 35 U.S.C. § 112(a) rejection is erroneous because the Specification discloses the claimed system and interface have not been designed so as to be interrogated. Appeal Brief 22. The Examiner finds: The specification discloses that "the target application does not have to be modified or extended to be operated upon," and "the target application does not have to be designed against" but does not disclose that the system and interface have not been designed so as to be interrogated. (See Specification at pars. [0111], [0113]). Final Rejection 8. Appellants cite to the Specification page 30, line 5, 6, and 19-25 and argue: From these descriptions in the specification, one of ordinary skill in the art would understand that the automation component, including the adapter, interrogates a target application that has not been designed, modified, or extended so as to be interrogated. The specification makes clear that it is the adapter that is designed to interrogate the target application, without the target application having been designed to be interrogated. Appeal Brief 22-23. We find Appellants' argument persuasive. In particular, the Examiner's findings are unsubstantiated because it is apparent from the cited portions of the Specification that the claims comply with the written description requirement under 35 U.S.C. § 112(a). 5 Appeal2014-009285 Application 11/305,060 35 U.S.C. § 103(a) rejection Appellants argue that Beckett fails to disclose: "an existing first software system built on an existing first software platform", using "an existing interface of the first software platform", and "wherein the existing software system and the existing interface have not been designed, modified or extended so as to be interrogated by the first adapter." None of Burgess, Sakamoto, Charisius, Seto, or Hurst, whether taken singly or in combination, cures the deficiencies of Beckett '368 with respect to these claimed features. Appeal Brief 21-22. The Examiner finds Seto teaches the disputed limitations. See Final Act. 19-20. Appellants fail to address, with any degree of specificity, the deficiency of the cited references relied upon by the Examiner to establish obviousness under 35 U.S.C. § 103(a). 3 Once the Examiner has satisfied the burden of presenting a prima facie case of obviousness, the burden then shifts to Appellants to present evidence and/or arguments that persuasively rebut the Examiner's prima facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Appellants did not particularly point out errors in the Examiner's reasoning to persuasively rebut the Examiner's prima facie case of obviousness; the obviousness rejections of claims 1, 3-7, 9-20, 29-31, 33-39, and 42--48 are therefore sustained. 3 For the first time in the Reply Brief, Appellants present substantive arguments addressing Seto. See Reply Brief 4. In the absence of showing of good cause explaining why the argument could not have been presented in the principle Brief, we decline to consider this argument and deem it waived. See 37 C.F.R. § 41.41(b)(2) (2012). 6 Appeal2014-009285 Application 11/305,060 We need not reach the merits of the 35 U.S.C. § 102(b) rejection because the merits of the claims have been addressed under the 35 U.S.C. § 103(a) rejection. Further, we sustain the 35 U.S.C. § 112(b) rejection of claims 11-18 because Appellants did not argue the merits of the rejection. DECISION The Examiner's 35 U.S.C. § 112(a) rejection of claims 1, 3-7, 9-20, 29-31, 33-39, and 42--48 is reversed. The Examiner's 35 U.S.C. § 112(b) rejection of claims 11-18 is affirmed. The Examiner's obviousness rejections of claims 1, 3-7, 9-20, 29-31, 33-39, and 42--48 are affirmed. 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). See 37 C.F.R. § 1.136(a)(l)(v). AFFIRMED 7 Copy with citationCopy as parenthetical citation