Ex Parte Bernelas et alDownload PDFPatent Trial and Appeal BoardSep 20, 201613284715 (P.T.A.B. Sep. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/284,715 10/28/2011 75949 7590 IBM CORPORATION C/O: Fabian Vancott 215 South State Street Suite 1200 Salt Lake City, UT 84111 09/22/2016 FIRST NAMED INVENTOR Jean Michel Bernelas 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. RSW920110039US 1 8517 EXAMINER JEON, JAE UK ART UNIT PAPER NUMBER 2193 NOTIFICATION DATE DELIVERY MODE 09/22/2016 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): patents@fabianvancott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN MICHEL BERNELAS, SYLVAIN DEHORS, CYRIL MATHEY, and STEPHANE MERY Appeal2015-006381 Application 13/2 84, 715 1 Technology Center 2100 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 10, 15-19, 22-26, and 28-30. Appellants have previously canceled claims 1-9, 11-14, 20, 21, and 27. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is IBM Corp. App. Br. 2. Appeal2015-006381 Application 13/284,715 STATEMENT OF THE CASE2 The Invention Appellants' claimed invention relates to providing a user with "an intuitive mechanism for creating a domain specific language." Spec. if 18. Exemplary Claim Claim 10, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 10. A computing system comprising: a processor; and a memory communicatively coupled to said processor; in which said processor is configured to: receive from a user, a number of annotations for at least one of a set of statements within a problem domain, said annotations identifying a set of elements within said statement; form a set of grammar rules for said problem domain based on said annotations; parse said set of statements using said set of grammar rules; present said user with an error message notifying said user of an error in response to detecting said error when parsing said set of statements; receive at least one additional annotation from said user in response to said error message; 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Jan. 13, 2015 ); Reply Brief ("Reply Br.," filed June 6, 2015 ); Examiner's Answer ("Ans.," mailed Apr. 8, 2015 ); Final Office Action ("Final Act.," mailed Sept. 17, 2014 ); and the original Specification ("Spec.," filed Oct. 28, 2011 ). 2 Appeal2015-006381 Application 13/284,715 update said set of grammar rules according to said at least one additional annotation received from the user; and use said updated set of grammar rules to re-parse said set of statements; in which said annotations comprise an identifier to denote a specific type of element is variable. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: J amthe et al. US 2002/0013155 Al Jan. 31, 2002 ("Jamthe") Acero et al. US 2003/0212544 Al Nov. 13, 2003 ("Acero") Sprecher et al. US 2009/0254337 Al Oct. 8, 2009 ("Sprecher") Cams US 2010/0293451 Al Nov. 18, 2010 Li et al. US 2011/0029857 Al Feb. 3, 2011 ("Li") Bemelas et al. US 2013/0031529 Al Jan. 31, 2013 ("Bemelas") Horowitz WO 02/089113 Al Nov. 7, 2002 3 Appeal2015-006381 Application I3/284,7I5 Rejections on Appeal RI. Claims I 0 and I 5-I 93 stand rejected under the judicially- created doctrine of nonstatutory obviousness-type double patenting (OTDP) over claims I and 5-9 of co-pending Application No. I3/4302 I 7 ("'2 I 7 application"). Ans. 4--9. R2. Claims I9 and 22-25 4 stand rejected under 35 U.S.C. § IOI as being directed to non-statutory subject matter. Ans. 9-IO. R3. Claims 26, 28-30 5 stand rejected under 35 U.S.C. § IOI as being directed to non-statutory subject matter. Ans. IO. R4. Claims IO and I9 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Acero, Li, and Jamthe. Ans. IO-I4. R5. Claims I5-I 7 and 22-24 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Acero, Li, Jamthe, and Sprecher. Ans. I4-I6. R6. Claims I8 and 25 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Acero, Li, Jamthe, Sprecher, and Horowitz. Ans. I 6-I 7. R7. Claim 26 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Cams, Li, and Jamthe. Ans. I 7-2 I. 3 The Examiner incorrectly indicates that claim I 4 is also rejected under Rejection RI, but claim I4 has been canceled. 4 The Examiner incorrectly indicates that claim 2 I is also rejected under Rejection R2, but claim 2 I has been canceled. 5 The Examiner incorrectly indicates that claim 27 is also rejected under Rejection R3, but claim 27 has been canceled. 4 Appeal2015-006381 Application 13/284,715 R8. Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cams, Li, Jamthe, and Sprecher. Ans. 21-22. R9. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cams, Li, Jamthe, Sprecher, and Horowitz. Ans. 22-23. CLAIM GROUPING Based on Appellants' arguments (App. Br. 15-20), we decide the appeal of the § 103 Rejection R4 of independent claims 10 and 19 on the basis of representative claim 10. We decide the appeal of the§ 103 Rejection R7 of independent claim 26, separately, infra. We address the § 103 Rejections R5, R6, R8, and R9 of claims 15-18, 22-25, and 28-30, not separately argued, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(vii). 1. OTDP Rejection RI of Claims 10 and 15-19 Issue 1 Did the Examiner err in provisionally rejecting claims 10 and 15-19 under the doctrine of OTDP rejection over claims 1 and 5-9 of the copending '217 application? 5 Appeal2015-006381 Application 13/284,715 Analysis Appellants state "[a]s the present application was filed prior to co- pending U.S. Patent Application No 13/430,217, ifthe provisional double patenting rejection become the only rejection remaining, the present application should be allowed to issue without requiring a terminal disclaimer." App. Br. 13. Appellants do not contest Rejection RI, and we note arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv). 6 Therefore, we proforma sustain the Examiner's provisional OTDP rejection of claims 10 and 15-19. 2. § 101 Rejection R2 of Claims 19 and 22-25 Issue 2 Appellants argue (App. Br. 18) the Examiner's rejection R2 of claim 19, which specifically recites a "computer readable storage device," based on the claim scope including "electro-magnetic signals and carrier waves" fails to meet the statutory subject matter requirements under 35 U.S.C. § 101 is in error. These contentions present us with the following issue: Did the Examiner err in concluding the invention recited in claim 19 is directed to non-statutory subject matter encompassing transitory media including electro-magnetic signals and carrier waves? 6 5'ee Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a ground of rejection to the Board, section 1.192(c)(7) [(now section 41.37(c)(l)(iv))] imposes no burden on the Board to consider the merits of that ground of rejection .... [T]he Board may treat any argument with respect to that ground of rejection as waived."). 6 Appeal2015-006381 Application 13/284,715 Analysis Under our jurisprudence, the scope of the recited "computer readable storage device" encompasses transitory media such as signals or carrier waves. See Ex parte 1Wevvherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine-readable storage medium ineligible under § 101 since it encompasses transitory media). Here, the recited "computer readable storage device" is not claimed as non-transitory, and the originally-filed Specification does not expressly and unambiguously disclaim transitory forms, such as signals, via a definition. Therefore, the "computer readable storage device" of claims 19 and 22-25 is not limited to non-transitory forrns and is ineligible under§ 101. 3. § 101 Rejection R3 of Claims 26, and 28-30 Issue 3 Appellants argue (App. Br. 14--15) claim 26 recites hardware used by the processor and disagrees with the Examiner's interpretation of the claim term "processor," which the Examiner finds fails to meet the statutory subject matter requirements under 35 U.S.C. § 101. Ans. 25-29. See also Final Act. 10 ("Although claim 26 comprises a processor, however the processor herein can be interpreted as a software module [software per se] with the broadest reasonable interpretation .... "). These contentions present us with the following issue: Did the Examiner err in concluding the "processor" recited in claim 26 is directed to non-statutory subject matter as merely a software module? 7 Appeal2015-006381 Application 13/284,715 Analysis We do not agree with the Examiner's interpretation of the claim term "processor" (Ans. 10) because, consistent with Appellants' Specification, and under the plain meaning of the word, the scope of "processor," covers a machine, which is a statutory class of invention. 7 See Spec. i-fi-126, 29, 31 ). Nor has the Examiner shown that claim 26 is directed to an abstract idea implemented by a processor. See Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S.Ct. 2347, 2358 (2014) ("[T]he mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention."). We therefore do not sustain the rejection of claims 26, and 28-30 under 35 U.S.C. § 101. 4. § 103(a) Rejection R4 of Claim 10 Issue 4 Appellants argue (App. Br. 15-16) the Examiner's rejection of claim 10 under 35 U.S.C. § 103(a) as being obvious over the combination of Acero, Li and Jamthe is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a system that includes, inter alia, "an identifier to denote a specific type of element is variable," as recited in claim 1 O? 7 35 U.S.C. § 101 ("Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."). 8 Appeal2015-006381 Application 13/284,715 Analysis Appellants contend "although Jamthe may describe various types of elements/ data as asserted by the Action, J amthe does not describe that these types of elements are variable themselves or that an identifier denotes them as such." App. Br. 16. Appellants further contend "at best, Jamthe is describing a data segment is either an address, a phone number, an event or any other type of data but does not describe that these data segments are further variable." Reply Br. 8. Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The Examiner broadly but reasonably interprets the claim limitation "variable" in light of the specification (Ans. 31, Spec. i-fi-147, 59) as meaning II f • • • • 11 oJ vanatwn; variety or varwus type. We agree with the Examiner's finding the contested limitation "type of element is variable" broadly but reasonably reads on the other types of data and data field elements available for selection by Jamthe's field identification tags. Ans. 32, Jamthe i-f 19. We note Appellants have not cited to a definition of "variable" in the Specification that would preclude the Examiner's broader reading. 8 Appellants themselves admit Jamthe 8 Any special meaning assigned to a tenn "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to 9 Appeal2015-006381 Application 13/284,715 describes various types of data/elements, but argue such variables are not further variable. (Reply Br. 8). vVe find Appellants' argument unavailing that the recited variable needs to be.further variable because: (1) the claim is silent regarding the argued "further" limitation, and (2) the plain meaning of a "variable" is that it may be assigned a variety of values. Therefore, based on the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the disclosure of the cited prior art to teach or at least suggest the disputed limitation of claim 10, nor do we find error in the Examiner's resulting conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent representative claim 10 and grouped claim 19 which falls therewith. See Claim Grouping, supra. 5. § 103(a) Rejection R7 of Claim 26 Issue 5 Appellants contend: [T]he paragraphs cited to in J amthe by the Action do not exist (See, Action, p. 21 ). No argument has been presented by the Action using the references cited that suggests any of the cited references describe the subject matter of claim 26. Appellant is left to question under what reference (Cams, Li, or Jamthe) the Action was referring to. App. Br. 20. a ten11 a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). 10 Appeal2015-006381 Application 13/284,715 These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a system that includes, inter alia, 11 an identifier to denote that a specific type of element is variable within said at least one statement, 11 as recited in claim 26? Analysis In response to Appellants' contentions, the Examiner clarifies the basis for rejecting claim 26 in the Answer, which we incorporate herein and adopt as our own. Ans. 35-38. The disputed limitation in claim 26 is commensurate in scope with the disputed limitation of claim 10, discussed above. The Examiner's reasoning here is also similar to the reasoning in rejecting claim 10. Thus, we find that the Examiner has rebutted Appellants' arguments in the Answer by a preponderance of the evidence. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 26, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 26. 6. Rejections R5, R6, R8, and R9 of claims 15-18, 22-25, 28-30 In view of the lack of any substantive or separate arguments directed to the obviousness rejections R5, R6, R8, and R9 of claims 15-18, 22-25, and 28-30 under § 103 (App. Br. 19-20), we sustain the Examiner's rejection of these claims, as they fall with their respective independent claims. Arguments not made are waived. 11 Appeal2015-006381 Application 13/284,715 REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 4--11) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a reply briefthat were not raised in the appeal brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSIONS (1) The Examiner did not err with respect to OTDP Rejection RI of claims 10 and 15-19, and we sustain the rejection. (2) Appellants did not show the Examiner erred with respect to the non-statutory subject matter Rejection R2 of claims 19 and 22-25 under 35 U.S.C. § 101, and we proforma sustain the rejection. (2) The Examiner erred with respect to non-statutory subject matter Rejection R3 of claims 26, and 28-30under 35 U.S.C. § 101, and we do not sustain the rejection. (3) The Examiner did not err with respect to obviousness Rejections R4-R9 of claims 10, 15-19, 22-26, and 28-30 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we sustain the rejection. 12 Appeal2015-006381 Application 13/284,715 DECISION We affirm the Examiner's provisional obviousness-type double patenting rejection of claims 10 and 15-19. We affirm the Examiner's decision rejecting 19, and 22-25 under 35 U.S.C. § 101. We reverse the Examiner's decision rejecting 26, and 28-30 under 35 U.S.C. § 101. We affirm the Examiner's decision rejecting claims 10, 15-19, 22-26, and 28-30 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R. § 41.50(a)(l). 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). AFFIRMED 13 Copy with citationCopy as parenthetical citation