Ex Parte Benayon et alDownload PDFPatent Trial and Appeal BoardSep 25, 201311201611 (P.T.A.B. Sep. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/201,611 08/11/2005 Jay W. Benayon CA920050053US1 (039) 6903 46320 7590 09/26/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 EXAMINER WANG, JIN CHENG ART UNIT PAPER NUMBER 2677 MAIL DATE DELIVERY MODE 09/26/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAY W. BENAYON, PABLO DANIEL IRASSAR, and HUMIE LEUNG ____________ Appeal 2011-004398 Application 11/201,611 Technology Center 2600 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a second non-final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and sua sponte dismiss the appeal as to the claims subject to the new ground of rejection. (Ans. 25). Appeal 2011-004398 Application 11/201,611 2 STATEMENT OF THE CASE Appellants’ claimed invention “relates to the field of process modeling and[,] more particularly[,] to importing a visually specified process model.” (Spec. ¶[0001]). Independent claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A computer-implemented visual process model importation method comprising: identifying in an importer executing in memory by a processor of a data processing system, an arrangement of a plurality of visual objects in a visual process model, the visual process model comprising a plurality of different source shapes arranged to represent a set of activities to be performed in a dynamic or static system; selecting associations by the importer between said visual objects and corresponding representative elements for a target process model; mapping by a mapper executing in the memory of the data processing system said visual objects in a source model into said selected corresponding representative elements for said target process model; and, producing by a file reader executing in the memory of the data processing system said target process model for said visual process model using said mapping. (Disputed limitations emphasized). Appeal 2011-004398 Application 11/201,611 3 REJECTIONS The Examiner rejected claims 1-21 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.1 The Examiner rejected claims 1-21 under 35 U.S.C. § 102(b) as being anticipated by BPMI (BUSINESS PROCESS MANAGEMENT INITIATIVE (BPMI) BPMI.ORG, BUSINESS PROCESS MODELING NOTATION (BPMN),Version 1.0, May 2. 2004, pp. 1-296). ANALYSIS Claims 14-21-New Ground of Rejection under § 101 Regarding the new ground of rejection (different rationale) under § 101 for claims 14-21, the Examiner notes Appellants “amended paragraph 0027 of the specification to delete the words ‘propagate’, ‘infrared’ and ‘propagation medium’ . . . .” to overcome the rejection. (Ans. 15; see also the amendment to the Specification filed concurrently with the Notice of Appeal on Aug. 20, 2009). However, our reviewing court guides “[a] description can be broadened by removing limitations” which is “classical new matter.” Anascape, Ltd. v. Nintendo of Am., Inc., 601 F. 3d 1333, 1338 (Fed. Cir. 2010) (citing Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008)). Thus, deleting subject matter from the Specification is ineffective to overcome the basis for the Examiner’s §101 rejection (i.e., “the term ‘computer usable medium’ covers transitory 1 The Examiner rejected claims 1-21 under § 101 in the non-final office action mailed May 20, 2009 (p. 9). As a new ground of rejection, the Examiner presented a new rationale for the §101 rejection of claims 14-21 in the Answer (3, 14, and 15). Appeal 2011-004398 Application 11/201,611 4 propagating signals per se.” (Ans. 15). We also observe each element in the body of claim 14 is directed to “computer usable program code,” i.e., software per se. We agree with the Examiner that “the language of the specification is open-ended . . . .” (Ans. 15). Nor does the originally-filed Specification include an express disclaimer or a definition excluding signals. (Ans. 15).2 Signals are not patentable eligible subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See also United States Patent and Trademark Office (USPTO), Subject Matter Eligibility of Computer Readable Media, the policy statement by former USPTO Director David J. Kappos, as published in the Official Gazette of the USPTO.3 The aforementioned USPTO policy statement guides: The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. (Emphasis added). 2 See also Electro Medical Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“particular embodiments appearing in the specification will not be read into the claims when the claim language is broader than such embodiments” (citation omitted)). “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (quotation and citations omitted). 3 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), available at http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20 Appeal 2011-004398 Application 11/201,611 5 As set forth in the aforementioned USPTO policy guidance, a claim drawn to a computer readable medium that covers both transitory and non- transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation “non-transitory” to the claim.4 (Id.). See also MPEP § 2106 (I) (8th ed. Rev. 9 Aug. 2012) and Ex parte Mewherter, 2013 WL 3291360 (PTAB May 8, 2013) (precedential). Here, in response to the new grounds of rejection (Ans. 14-15), Appellants have not filed: (1) a request that prosecution be reopened; or (2) a request that the appeal be maintained by filing a Reply Brief as set forth in § 41.41. See 37 C.F.R. § 41.39(b).5 Therefore, we sua sponte dismiss the appeal as to claims 14-21 subject to the Examiner’s new ground of rejection under § 101. (Id.). 4 But cf. Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). ("Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material."). 5 See MPEP Rev. 8, July 2010. Note: In the instant appeal, Appellants filed a Notice of Appeal on Aug. 20, 2009. The date of filing the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. Appeal 2011-004398 Application 11/201,611 6 Claims 1-13 rejected under § 1016 We are cognizant the case law regarding section § 101 continues to evolve at the Court of Appeals for the Federal Circuit and at the Supreme Court, particularly regarding exactly what constitutes an abstract idea. Regarding independent claim 1, we consider the language of the claim as a whole. We are of the view the computer-implemented limitation in the preamble, which is supported in the body of the claim by processor and memory computer components, in combination with the “importer,” “mapper,” and “file reader” software components, each positively recited as “executing in the memory” (claim 1), are sufficient to limit claims 1-8 to a statutory process that executes an application in a statutory machine under §101. We conclude at least the software components positively recited as “executing in the memory” provide meaningful limitations that restrict the scope of the claims to an application, rather than preemption of an abstract idea. See Ultramercial, Inc. v. Hulu, LLC, No. 2010-1544, 2013 WL 3111303, at *8 (Fed. Cir. June 21, 2013) (“[T]he relevant inquiry is whether a claim, as a whole, includes meaningful limitations restricting it to an application, rather than merely an abstract idea.” (Citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., ___ U.S. ___, 132 S. Ct. 1289, 1297 (2012)). 6 Although the Examiner presents a new rationale for rejecting claims 14-21 as a new ground of rejection (Ans. 2-3), the Examiner has not withdrawn the § 101 rejection of claims 1-13. (Ans. 2). The Examiner “has no comment on the [A]ppellant's statement of the grounds of rejection to be reviewed on appeal” (id.). We observe Appellants traverse the § 101 rejection of all claims 1-21 in the Brief. (App. Br. 6-9). Therefore, the rejection under § 101 of claims 1-13 is before us on appeal. Appeal 2011-004398 Application 11/201,611 7 Moreover, the Examiner fails to address Appellants’ arguments regarding the § 101 rejection of claims 1-13. (See App. Br. 6-9). Therefore, we reverse the Examiner’s §101 rejection of claims 1-8. Independent claim 9 is directed to “A data processing system” and presents similar issues. For essentially the same reasons discussed above regarding claim 1, we also reverse the Examiner’s §101 rejection of claims 9-13. REJECTION UNDER § 102 Regarding independent claims 1, 9, and 14, Appellants contend, inter alia: [The] Examiner's claim construction [] obliterates the plain language intent of claims 1, 9 and 14--that a target process model is produced from a visual process by way of a mapping (and thus must enjoy distinct differences). To apply the [same] claim construction afforded by Examiner to both "visual process model" and "target process model" would necessarily obviate any meaning applied to the limitations of the claims including the necessity of the mapping limitation of claim 1, by way of example. Indeed, there would be no need to perform the mapping and producing steps of claim 1 where the visual process model and the target process model to be defined as the same thing. By comparison, Appellants usage of "visual process model" and "target process model" is entirely consistent with the plain meaning of both terms as evidenced by paragraph [0020] of Appellants' specification: [0023] Returning to FIG. 1, the source model 130 can be provided to a mapper 140. The mapper 140 can produce visual object mappings 150 of the visual objects of the visual process model 110 as represented within the source model 130, to process element constructs which can be imported into the application 190. Optionally, groupings of the visual objects of the visual process model 110, Appeal 2011-004398 Application 11/201,611 8 as represented within the source model 130 can be mapped within swimlane mappings 160 which can be imported into the application 190. Finally, each of the source model 130, visual model mappings 150 and swimlane mappings 160 can be processed by the importer 170 into a target process model 180 able to be utilized by the application 190. (App. Br. 12-13). Appellants further contend: [The] Examiner is reminded of [the] Examiner's responsibility under M.P.E.P. 1207.02(A)(I)(9)(e) to map every claim term in any of claims 1, 9 or 14 to the BPMI reference. In this regard, for the convenience of the Examiner the entirety of is provided herein: For each rejection under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims correspond to features in the prior art even after the examiner complies with the requirements of paragraphs (c) and (d) of this section, the examiner must compare at least one of the rejected claims feature by feature with the prior art relied on in the rejection. The comparison must align the language of the claim SIDE-BY-SIDE with a reference to the specific page, line number, drawing reference number, and quotation from the prior art, as appropriate. Specifically, Examiner must point out with particularity the precise teaching in BPMI that maps to the claimed elements while applying the ordinary meaning of "visual process model" and "target process model" as a proper claim construction under M.P.E.P. 2111.01(1). (App. Br. 15) (footnote omitted). Appeal 2011-004398 Application 11/201,611 9 The Examiner disagrees: [E]ven if the claimed representative elements are the visual elements as argued by Appellants, some of the corresponding visual elements of BPEL4WS are also described in Fig. 110 wherein Fig. 97 describes a Business Process Model/Diagram and Fig. 110 describes an Execution Flow Process Model/Diagram. BPMI clearly teaches in Chapter 6 mapping the visual elements in the source process model in terms of the Business Process Diagram to the representative elements in the target process model in terms of the BPEL4WS target process model at least in the BPEL4WS execution elements and the BPEL4WS structured execution elements are further illustrated in Figs. 107-110. For example, the visual elements of source process model BPD in Fig. 97 are mapped to representative elements of the BPEL4WS target process model in terms of BPEL4WS structured execution elements which are further illustrated in Fig. 110. The visual elements of the source process model BPD in Fig. 87 are mapped to the representative elements of the BPEL4WS target process model in terms of the BPEL4WS structured execution elements. The BPEL4WS structured execution elements have the corresponding relationship with the visual elements in Fig. 111 wherein Fig. 87 describes a Business Process Model/Diagram and Fig. 111 further describes the corresponding elements of an Execution Flow Process Model/Diagram. (Ans. 18-19). ANALYSIS § 102 ANTICIPATION REJECTION In reviewing the BPMI reference, we observe the Abstract describes the BPMN specification as providing a mapping between the graphics of the notation to the underlying constructs of execution languages, particularly BPEL4WS: The Business Process Modeling Notation (BPMN) specification provides a graphical notation for expressing business processes in a Business Process Diagram (BPD). The objective of BPMN Appeal 2011-004398 Application 11/201,611 10 is to support business process management by both technical users and business users by providing a notation that is intuitive to business users yet able to represent complex process semantics. The BPMN specification also provides a mapping between the graphics of the notation to the underlying constructs of execution languages, particularly BPEL4WS. (BPMI, p.1, Abstract) (emphasis added). This mapping from a graphical depiction of business processes to a textual language representation is clearly depicted in Figure 103, and Example 1, with both included on page 164 of the BPMI reference. Even if, arguendo, we agree with the Examiner (without deciding) that a broad but reasonable construction of the claimed target process model covers objects or elements that are not visual elements (Ans. 16), we particularly observe that throughout the statement of rejection and the “Response to Arguments” section of the Answer, the Examiner points to multiple cumulative figures, chapters, and pages in support of the anticipation rejection (see, e.g., Ans. 4-14). However, we find the specific mapping of the disputed claim elements (visual process model and target process model) is blurred by the many different citations to disparate portions of the BPMI reference. Our reviewing court guides that under § 102 “[i]t is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (citation omitted). Because the Examiner paints with a broad brush in making the anticipation rejection, we are left to speculate as to how each argued claim Appeal 2011-004398 Application 11/201,611 11 limitation is expressly or inherently described by the many different figures, pages and chapters of the BPMI reference pointed to by the Examiner. We note that the Board is a reviewing body and not a place of initial examination. Moreover, it is our view that the rigorous requirements of § 102 essentially require a one-for-one mapping of each argued claim limitation to the corresponding feature shown or described in the reference, which the Examiner must identify with particularity.7 For essentially the same reasons argued by Appellants in the Brief (as discussed above), on this record we cannot affirm the Examiner’s anticipation rejection of independent claims 1, 9, and 14, each reciting the disputed visual process model and target process model limitations. Therefore, we reverse the anticipation rejection of all claims before us on appeal. 7 We note that a simple claim chart using a table that clearly shows the mapping from each claim limitation to the corresponding feature of the reference is the most concise and effective way for an Examiner to set forth an anticipation rejection. Explanations need to be added only if the correspondence between the claim limitation and the corresponding feature of the reference is unclear. Appeal 2011-004398 Application 11/201,611 12 DECISION We sua sponte dismiss the appeal as to claims 14-21 subject to the Examiner’s new ground of rejection under § 101. See 37 C.F.R. §41.39(b). We reverse the Examiner’s decision rejecting claims 1-13 under §101. We reverse the Examiner’s decision rejecting claims 1-21 under §102. REVERSED llw Copy with citationCopy as parenthetical citation