Ex Parte Beckett et al

Patent Trial and Appeal Board

Aug 31, 2016

11305060 (P.T.A.B. Aug. 31, 2016)

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.
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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.
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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.
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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
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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).
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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).
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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
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