Ex Parte Birsan et al

Patent Trial and Appeal Board

Feb 4, 2016

12241444 (P.T.A.B. Feb. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/241,444 09/30/2008
57736 7590 02/08/2016
PATENTS ON DEMAND, PA IBM-RSW
4581 WESTON ROAD
SUITE 345
WESTON, FL 33331
FIRST NAMED INVENTOR
DORIAN BIRSAN
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.
GB920070205US 1 7105
EXAMINER
GOLDBERG, ANDREW C
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
02/08/2016 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):
brian.buchheit@patentsondemand.com
docketing 1@patentsondemand.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DORIAN BIRSAN, ALLEN V. CHAN,
CHRISTOPHER F. MARKES, and ROBERT W. PHIPPEN
Appeal2014-004369
Application 12/241,444
Technology Center 2400
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is International Business
Machines, Inc. Br. 3.
Appeal2014-004369
Application 12/241,444
STATEMENT OF THE CASE
Introduction
Appellants' present patent application relates to message schemas
with variable portions that can be dynamically modified by a user. Spec.
i-f 2. Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for deriving overlay information from a user
input for a base message schema associated with a node in a
message flow, the method comprising:
presenting a base message schema to the user, the base
message schema having at least one variable portion;
receiving a user selection of a variable portion of the base
schema;
providing the user with possible overlay schema
information for the selected variable portion;
receiving a user selection of the schema to be overlaid on
the selected variable portion; and
associating the selected overlay schema with the base
schema.
The Examiner's Rejections2
Claims 1-16 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Collie (US 2006/0190814 Al; Aug. 24, 2006). See Ans. 5-7.
Claims 17-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Collie and Hartmann (US 2007/0150806 Al; June 28, 2007). See Ans.
8-18.
2 In the Answer, the Examiner added a new ground of rejection, rejecting
claims 1-7 and 16-20 under 35 U.S.C. § 101 as directed to non-statutory
subject matter. This rejection was later withdrawn in the Miscellaneous
Communication to Applicant, mailed July 3, 2013.
2
Appeal2014-004369
Application 12/241,444
ANALYSIS
Appellants argue the Examiner erred in finding that Collie teaches or
suggests "receiving a user selection of a variable portion of the base
schema." Br. 11-12. In particular, Appellants argue that Collie does not
disclose a schema with a "variable portion" or a user selecting a variable
portion of a base schema. Br. 11. Appellants argue the Examiner's rejection
citing "variable data" for the "variable portion" limitation is in error in the
context of the claim as a whole. Br. 11-12.
The Examiner responds that Collie discloses a "second schema to be
imported and integrated into the spreadsheet" that corresponds to the
"variable portion." Ans. 19. The Examiner further responds that the,
[ v ]ariable portion is the part of the base schema that is able to
be connected to other schemas (therefore, the base schema is
not fixed ... but a portion must be variable in nature in order
for multiple imported schemas to be associated with it upon
user selection).
Id.
We agree with Appellants that the Examiner erred in finding that
Collie teaches or suggests "receiving a user selection of a variable portion of
the base schema." Collie teaches a user selecting an XML mapping to apply
to a spreadsheet by importing XML files into a spreadsheet using XML data
mappings that define relationships between fields in an XML file and fields
in the spreadsheet. See, e.g., Collie i-f 11. The user may subsequently select
another XML mapping if more than one XML data mapping is associated
with a spreadsheet (see Collie i-f 41 ). Each of these mappings may be
associated with the same fields in the spreadsheet, depending on the
relationships defined in the mapping. Id. The subsequent selection,
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Appeal2014-004369
Application 12/241,444
however, does not modify the original XML schema, and instead, may
override data imported from the original XML file. Collie's disclosure of
selecting an XML mapping to use for importing data therefore does not
teach or suggest "receiving a user selection of a variable portion of the base
schema" because the user's selection of a second mapping is not related to
the base schema. Accordingly, we find that the Examiner has not
demonstrated that Collie teaches this limitation. We therefore do not sustain
the rejection of independent claim 1. 3
CONCLUSIONS
On the record before us and in view of the analysis above, we are
persuaded by Appellants' contentions that the Examiner erred in rejecting
claim 1. Therefore, we do not sustain the rejection of claim 1, independent
claims 8 and 15 which recite similar limitations, and claims 2-7, 9-14, and
16-20 dependent therefrom.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED
3 Because we are persuaded of error with regard to the identified issue,
which is dispositive of the rejection over Collie, we do not reach the
additional issues raised by Appellants' arguments.
4