Ex Parte Bhagat et al

Patent Trial and Appeal Board

Sep 23, 2013

11081898 (P.T.A.B. Sep. 23, 2013)

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.
11/081,898 03/16/2005 Rajesh M. Bhagat RSW920050020US1 6213
75949 7590 09/24/2013
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
09/24/2013 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 RAJESH M. BHAGAT,
REDHA M. BOURNAS,
VISHWANATH NARAYAN,
DAVID NOLLER,
PAUL D. PETERS, and
DAVID J. SALKELD
____________

Appeal 2011-005169
Application 11/081,898
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-26. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 26 is illustrative:
26. A computer readable storage medium having stored
thereon a computer program for dynamically configuring an
assembly line having process points where events can be
triggered, the computer program comprising a routine set of
instructions which when executed by a computer machine cause
the computer machine to perform the steps of:
configuring services comprising imported Web Services;
and
configuring processes to be implemented in response to
triggered events at the process points, wherein each of the
processes comprises a sequenced list of the services to be
invoked in response to the triggered event.

Appellants appeal the following rejections:
Claims 1-26 rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 1-26 rejected under 35 U.S.C. § 102(e) as being anticipated
by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over
Klerk (US 2006/0225032 A1; pub. Oct. 5, 2006).
Claims 1-26 rejected under 35 U.S.C. § 103(a) as unpatentable over
Klerk and Alleged Admitted Prior Art (hereinafter “AAPA”).
Claims 1-26 rejected under 35 U.S.C. § 103(a) as unpatentable over
Klerk, AAPA, and Matichuk (US 2002/0158864 A1; pub. Oct. 31, 2002).

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FINDINGS OF FACT
We find the following findings of fact and those in the Analysis
section below are supported at least by a preponderance of the evidence1.
1. Appellants’ Specification states:
an assembly line generally includes work “cells” that are
logically referred to as “process points.” Each process point
performs a specific operation as a good passes through a line.
For example, one process point could be responsible for
painting the exterior of an automobile, while another could be
responsible for putting tires on the automobile . . . work
performed at a process point could be associated with one or
more computer processes. In such cases, an operator at the
process point will trigger the computer process using a device
connected to a central computer that controls the line.
Alternatively, the computer process could be triggered
automatically as a good reaches the process point. In either
event, the results of the computer process will either be returned
to the process point device, stored in a local database system, or
forwarded to another system.
(Spec. 1, para. [0002]).
2. Appellants’ Specification further states:
[i]n today’s manufacturing environment, work cells and
process points are statically configured with the central
computer. That is, the assembly line configuration is defined
before the goods are assembled, and will remain unchanged
throughout the complete assembly of goods. The central
computer will typically use a hard-coded file to identify
requests coming from the work cells, and associate the requests
with processes to perform their functions. The hard-coded file
is linked with computer software to run the assembly line prior
to starting the assembly of goods.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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(Spec. 1-2, para. [0003]).

ANALYSIS
Indefiniteness of claims 1-26
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claims 1, 14, and 26 under 35 U.S.C. § 112, second
paragraph, as being indefinite (App. Br. 12-13; Reply Br. 9-10). We agree
with Appellants that the Examiner has not established that independent
claims 1, 14, and 26 are indefinite because the claims recite “configuring
service” (Ans. 10-11). In doing so, we agree with Appellants that one of
ordinary skill in the art would understand the meaning of the phrase
“configuring service” in light of the Specification (App. Br. 12-13). For
example, Appellants’ Specification describes “various ways in which a
service can be configured prior to invocation, including defining the
circumstances under which the service will be invoked, removing a service
from being invoked, updating a service, and the like” (App. Br. 13; see Spec.
14-16).
We are also persuaded by Appellants’ argument that the Examiner
erred in asserting that the term “Web Services” renders independent claims
1, 14, and 26 indefinite because the term is capitalized (App. Br. 13-14;
Reply Br. 8-9). The Examiner does not explain why the term renders the
claims indefinite, but rather merely asserts that the use of capital letters is
improper (Ans. 11). Thus, the Examiner has failed to establish that
independent claims 1, 14, and 26 are indefinite based on the term “Web
Services.” See Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370
F.3d 1354, 1366, (Fed. Cir. 2004) (internal citations omitted) (“[t]he
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requirement to ‘distinctly’ claim means that the claim must have a meaning
discernible to one of ordinary skill in the art when construed according to
correct principles. Only when a claim remains insolubly ambiguous without
a discernible meaning after all reasonable attempts at construction must a
court declare it indefinite”).
We are persuaded by Appellants’ argument that the Examiner erred in
asserting claims 1, 14, and 26 are indefinite because “it’s not clear the
relationship between the ‘processes’ of the ‘process configurator’ and
‘process points’ [as t]hey both refer to ‘process’ and normally could be
related due to common word” (Ans. 11; see App. Br. 14-15). We agree with
Appellants that the plural use of the term “processes” has a discernible
meaning to one of ordinary skill in art given that the claim recites
configuring processes in response to “triggered events at the process points.”
We are also persuaded by Appellants’ argument that the Examiner
erred in asserting claims 2, 7, 8, 10, and 11 fail to comply with the
definiteness requirement of 35 U.S.C. § 112, second paragraph (App. Br. 10-
12; Reply Br. 4-8). The Examiner asserts that claims 2, 7, 8, 10, and 11 are
impermissibly directed to both an apparatus and a process (Ans. 11).
However, claims 2, 7, 8, 10, and 11 are all directed to an apparatus and
dependent on independent claim 1 which is also directed to an apparatus that
includes components that are configured to perform certain functions. Such
functional claiming is permissible in an apparatus claim and does not
constitute a process claim.

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Obviousness of claims 1-26
We are not persuaded by Appellants’ argument that the Examiner
erred in asserting that a combination of Klerk and AAPA teaches or suggests
“configuring processes to be implemented in response to triggered events at
the process points, wherein each of the processes comprises a sequenced list
of the services to be invoked in response to the triggered event,” as recited
by exemplary independent claim 26. App. Br. 16-17, 27-29; Reply Br. 12-
14. Specifically, Appellants argue that Klerk “only discuss[es] the concept
of ‘trigger and action relationship[s]’ in business software,” which does not
teach or suggest “anything about ‘triggered events’ at specific ‘process
points’ on an assembly line,” as the claim requires. App. Br. 17; Reply Br.
12-13. However, the Examiner does not rely solely on Klerk to disclose
trigger events at specific process points on an assembly line, but rather on
AAPA. (Ans. 20).
In particular, AAPA discloses that it was known in an assembly line
for work cells to be referred to as process points and the work performed at a
process point could be associated with one or more computer processes (FF
1). Additionally, AAPA describes that as a good reaches a process point, a
computer process can automatically be triggered using a device connected to
a central computer that controls the assembly line (FF 1). Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We are also not persuaded of error on the part of the Examiner by
Appellants’ argument that Klerk does not teach or suggest that “each of the
processes comprises a sequenced list of the services to be invoked in
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response to the triggered event,” as recited by exemplary independent claim
26. App. Br. 18, 27-29; Reply Br. 13. Klerk discloses a graphical user
interface for developing business applications which allows for business
processes to be imported from external elements such as Web Services and
output into a workflow designer which maps the business objects to a
customizable hierarchy that allows the designer to create different trigger
and action relationships (paras. [0002], [0257] – [0263]; see fig. 19). Thus,
we agree with the Examiner that the Klerk discloses that “each of the
processes comprises a sequenced list of the services to be invoked in
response to the triggered event,” as recited by exemplary independent claim
26.
We are also not persuaded of error on the part of the Examiner by
Appellants’ argument that “[n]o one having ordinary skill in the art would
have seen any reason or motivation to expend the substantial effort required
to completely redesign Klerk in order to accommodate the control of
physical assembly lines” (App. Br. 29; Reply Br. 13). In making this
determination, we find that the combination proposed by the Examiner
would not require a complete redesign of Klerk in order to control the
assembly line having processing points disclosed in AAPA. Instead, we
agree with the Examiner that the addition of AAPA to Klerk would not
change Klerk’s operation or require a redesign, but rather just require a
simple modification to the type of process implemented in response to a
different triggered event, which one of ordinary skill in the art would
appreciate to be obvious given Klerk’s disclosure that its system has the
ability to create triggers from any type of event or business object property
(para. [0263]). “A person of ordinary skill is also a person of ordinary
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creativity, not an automaton.” KSR Int'l v. Teleflex Inc., 550 U.S. 398, 421
(2007).
Moreover, to the extent Appellants seek an explicit suggestion or
motivation in the reference itself, this is no longer the law in view of the
Supreme Court’s holding in KSR, 550 U.S. at 418. Instead, we hold that the
Examiner has provided an articulated reasoning with rational underpinning
for why a person with ordinary skill in the art would modify Klerk’s
graphical user interface for developing trigger and action relationship
business applications using Web Services with the known process points and
their associated triggers disclosed in the statically computer-configured
assembly line taught by AAPA (FF 2; see also Ans. 20, 26). See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”).
In view of the foregoing, we will sustain the Examiner’s rejection of
independent claim 26 and substantially similar independent claims 1 and 14
which rely on the same arguments made with respect to claim 26 (App. Br.
30-33). We will also sustain the Examiner’s rejection of remaining claims
2-13 and 15-25 because Appellants have not argued the separate
patentability of these dependent claims. Additionally, because we have
affirmed the rejection of claims 1-26 under 35 U.S.C. § 103(a) as
unpatentable over Klerk and AAPA, we find it unnecessary to reach a
decision about the cumulative rejections of claims 1-26. See 37 C.F.R.
§ 41.50(a)(1) (“The affirmance of the rejection of a claim on any of the
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grounds specified constitutes a general affirmance of the decision of the
examiner on that claim . . . .”)

DECISION
We reverse the Examiner’s rejection of claims 1-26 under 35 U.S.C.
§ 112, second paragraph.
We affirm the Examiner’s rejection of claims 1-26 under 35 U.S.C.
§ 103(a) as unpatentable over Klerk and AAPA.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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