Ex Parte Bloom et alDownload PDFPatent Trial and Appeal BoardJul 15, 201612544933 (P.T.A.B. Jul. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/544,933 08/20/2009 48915 7590 07119/2016 CANTOR COLBURN LLP-IBM YORKTOWN 20 Church Street 22nd Floor Hartford, CT 06103 FIRST NAMED INVENTOR Bard Bloom 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. YOR920010656US3 1331 EXAMINER KONERU, SUJAY ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 07/19/2016 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BARD BLOOM, IAN D. SIMMONDS, PAUL T. KEYSER, and MARK N. WEGMAN Appeal2014-003391 Application 12/544,933 Technology Center 3600 Before HUBERT C. LORIN, BIBHU R. MOHANTY, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 5-9, 14, 19, and 21-23. We have jurisdiction under 35 U.S.C. § 6(b ). 1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed Oct. 21, 2013) and Reply Brief ("Reply Br.," filed Jan. 21, 2014), the Examiner's Answer ("Ans.," mailed Nov. 20, 2013), and the Final Office Action ("Final Action," mailed May 20, 2013). 2 Appellants identify the real party in interest as "International Business Machines Corporation" (Appeal Br. 2). Appeal2014-003391 Application 12/544,933 STATEMENT OF THE DECISION We REVERSE. CLAIMED INVENTION The claimed invention relates to "a system and method for determining if a business process satisfies certain properties" (Spec. 6: 1-5). Claims 1, 14, and 19 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal (Appeal Br. 29, Claims App.). 1. A computer-implemented method for a processing system for determining if business process application software satisfies certain predetermined properties, said method comprising the steps of: said processing system: building a model for the business process application software, the model comprising a data model of objects in a multiple dynamic classification hierarchy wherein objects may have multiple classes and a control model comprising a plurality of actions on the objects each having a body of code and at least one of a precondition and a postcondition; constructing specifications as finite state programs for predetermined properties, said specifications being statements in branching temporal logic and indicating both states of the business process with temporal connectives and an order in which the states may occur; determining if the model satisfies the specifications for the predetermined properties by comparing the outcomes of each of said plurality of actions to said specifications to determine whether the outcomes violate said states and said order; and modifying at least one of said model, said business process, and said specifications when the model fails to satisfy the specifications. 2 Appeal2014-003391 Application 12/544,933 REJECTIONS 1. Claims 1, 5, 6, 9, 14, 19, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Flores (US 5,734,837; iss. Mar. 31, 1998) and Du (US 6,308,163 Bl; iss. Oct. 23, 2001). 2. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Flores, Du, and Geist (US 7,120,568 Bl; iss. Oct. 10, 2006). 3. Claims 21and22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Flores, Du, and Caswell (US 6,662,355 B 1; iss. Dec. 9, 2003). ANALYSIS Independent claim 1 requires, inter alia, the processing system "modifying at least one of said model, said business process, and said specifications when the model fails to satisfy the specifications" (Appeal Br. 29, Claims App.). The Examiner acknowledges that Flores fails to disclose this limitation, and instead finds this limitation disclosed in Du at column 13, lines 55---63 and column 4, lines 20-30 (Final Act. 7-8). According to the Examiner, "[a] workflow can be considered a model and substitution of resources for a workflow can be considered modifying such model" and "satisfying a requirement policy can be considered equivalent to a determination of whether or not a model fails to satisfying [sic] specifications" (Ans. 6). Appellants dispute this finding (Appeal Br. 15-17; Reply Br. 12-13). We are persuaded by Appellants' arguments. 3 Appeal2014-003391 Application 12/544,933 With respect to the above limitation, the Specification describes determining "if the model satisfies the specifications, wherein failure to satisfy the specifications indicates that the model (and the underlying business application) is problematic and requires some modification." (Spec. 38:4--8). A rejection based on § 103 clearly must rest on a factual basis. The Examiner has the initial duty of supplying the factual basis for the rejection and may not resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis. We have reviewed the cited portions of Du, and we see no disclosure of modifying a model when the model fails to satisfy a specification. Du discloses that "[a] requirement policy defines additional conditions that a resource must satisfy in order to perform a given workflow activity" (Du, 13 :55---63). In other words, Du discloses that if a resource does not satisfy a requirement policy, then a workflow activity is not performed by that resource. The Examiner has not sufficiently shown why substituting one unavailable resource for another for a given workflow activity can reasonably be interpreted as modifying the claimed model. Thus, we fail to see and the Examiner does not adequately explain how a resource not performing a workflow activity is equivalent to modifying a model when the model fails to satisfy a specification, as required by claim 1. Accordingly, we do not sustain the rejection of independent claim 1 as obvious over Flores and Du. For the same reasons, we do not sustain the rejections of claims 5-9 and 21-23 dependent thereon. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Independent 4 Appeal2014-003391 Application 12/544,933 claims 14 and 19 recite similar limitations and the Examiner's rejection of claims 14 and 19 as obvious over Flores and Du relies on the same findings as in claim 1. Thus, for the same reasons, we do not sustain the rejections of independent claims 14 and 19. DECISION The Examiner's decision to reject claims 1, 5-9, 14, 19, and 21-23 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation