Ex Parte Breh et al

Patent Trial and Appeal Board

Feb 29, 2016

11106319 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111106,319 04/14/2005
46429 7590 03/02/2016
CANTOR COLBURN LLP-IBM POUGHKEEPSIE
20 Church Street
22nd Floor
Hartford, CT 06103
Jochen Breh
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.
DE920040024US 1 4300
EXAMINER
RUTTEN, JAMES D
ART UNIT PAPER NUMBER
2197
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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 JOCHEN BREH, GERD BREITER, SAMUEL MUELLER, and
HENDRIK WAGNER
Appeal2014-000813
Application 11/106,319
Technology Center 2100
Before MAHSHID D. SAADAT, KRISTEN L. DROESCH, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8, 10-16, 18, and 19.2 We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines, Inc. (Br. 1 ).
2 Claims 9, 1 7, and 20 have been cancelled.
Appeal2014-000813
Application 11/106,319
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to deploying services into a distributed
network architecture (Abstract). Claim 1 is illustrative of the invention and
reads as follows.
1. A method for deploying services offered by a
resource provider into a service container that is part of a
service-oriented architecture, wherein said service container
executes on a data processing unit and comprises:
receiving, at a registration service operating on the data
processing unit for deploying services during runtime into said
service container, a service description from a description
provider that is separate from the resource provider offering
the service, wherein said service description represents a
service of a resource and is modeled in a declarative
description language;
automatically creating and offering a service interface
for said service description at said service container when said
service description has been registered successfully;
in response to a plurality of instantiate requests of a
plurality of service consumers containing at least a description
handle referring to said registered service represented by said
service description, creating, at an instantiate service, a new
service instance for each of the plurality of service consumers
in said service container and registering said new service
instance, wherein said service interface exposes service
operations in said new service instances and the service
container is created before the instantiate requests are
received;
receiving a deregistration request from the description
provider to deregister the service description; and
deregistering the service description when it is not used
anymore and no service instances of the service remain.
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Appeal2014-000813
Application 11/106,319
The Examiner's Rejections
Claims 1-8 and 10-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fletcher (US 2003/0055624 Al; Mar. 20, 2003), DRA
(Figure 1 of the drawings and paragraphs 3-8 of the description of the
related art section of Appellants' Specification), Slaughter (WO 01/86420
A2, Nov. 15, 2001), Masuoka (US 2004/0230636 Al, Nov. 18, 2004),
Ainsworth (US 5,327,532, July 5, 1994), and Robinson (US 2004/0128345
Al, July 1, 2004). (Final Act. 3.)
Claims 13-16 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fletcher, DRA, Slaughter, Masuoka, Ainsworth,
Robinson, and Hollberg (US 6,182,153 Bl, Jan. 30, 2001). (Final Act. 11.)
Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Fletcher, DRA, Slaughter, Masuoka, Ainsworth, Robinson, and
Hollberg, and Williams (US 2004/0015564 Al, Jan 22, 2004). (Final Act.
17.)
Issues on Appeal
Appellants' contentions with respect to the rejection of claim 1
present us with the following issues:
1. Did the Examiner err in finding Robinson teaches or suggests
"a description provider that is separate from the resource provider offering
the service," as recited in independent claim 1 ?3
2. Did the Examiner err in combining Fletcher and Robinson?
3 With respect to claims 2-8, 10-16, 18, and 19, Appellants do not provide
separate patentability arguments and rely on the reasons presented for claim
1. (Br. 4---6). Except for our ultimate Decision, these claims are not
discussed further herein.
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Appeal2014-000813
Application 11/106,319
ANALYSIS
The Examiner finds Robinson teaches a resource provider that is
separate from a description provider (see Final Act. 5---6; Ans. 2-3). More
specifically, the Examiner finds (1) Robinson's service registries,
comprising a directory of services available on a network, teaches the
claimed description provider; and (2) Robinson's description of services
being provided to the network via an access point that is separate from the
service registries, teaches a resource provider that is separate from the
description provider (id.).
Appellants assert, via a single, conclusory statement, "that none of the
elements ... of Robinson identified in the Office Action is a description
provider" (Br. 5). We disagree. As found by the Examiner, Robinson
teaches that its registries contain a UDDI4 compliant description of services
(id.). Appellants' assertion has not persuaded us of error in the Examiner's
finding that Robinson's registries teach a description provider (see also Ans.
2-3).
Appellants additionally argue, in the event that the registry (depicted
in Robinson as part of an access point) is considered a description provider,
it does not provide the description to a service container because it is the
service container (Br. 5). Appellants' argument is not commensurate with
the scope of the claims. Claim 1 does not qualify communications between
the description provider and the service container or specify any specific
manner of communication. Additionally, as explained by the Examiner,
Robinson was not relied upon as teaching a service container (see Ans. 3).
4 Universal Description, Discovery and Integration standard. (Robison, i-fi-13,
19, 23.)
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Application 11/106,319
Nevertheless, the Examiner further finds, even if Robinson's registry is
provided on the same physical device as a service container (e.g., access
point), Robinson depicts multiple, separate, access points having service
registries that communicate with each other (see Ans. 3). Thus, contrary to
Appellants' argument, Robinson teaches a description provider that provides
a description of a service to a separate service container.
Appellants further contend the Examiner's reliance on Robinson to
teach separate resource and description providers is improper because it "is
tantamount to asserting that because there is some teaching that computer
elements may be separate, that one of ordinary skill in the art would be
motivate[ d] to separate any type of elements in any situation" (Br. 5). We
are not persuaded by this contention because it does not point out any
specific error in the Examiner's findings.
Appellants additionally argue it is not permissible to modify Fletcher
with the teachings of Robinson because paragraph 24 of Robinson "makes
clear that when separated, certain elements may not know of services
offered" (Br. 5---6). Furthermore, according to Appellants, had that occurred,
"Fletcher could not keep track of what services it was offering and, as such,
the operation of Fletcher would be substantially changed by the proposed
combination and, i[t] may not even work" (Br. 6).
We agree with the Examiner (see Ans. 4) that paragraph 24 of
Robinson teaches that a global registry may not learn of services registered
with a central registry because the central registry is transitory, not because
elements are separated. Moreover, when considering motivation to combine
references, if there are tradeoffs involved, regarding features, costs,
manufacturability, or the like, such do not necessarily prevent the proposed
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Appeal2014-000813
Application 11/106,319
combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) ("a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine."); Winner Int'! Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another."). Accordingly, we are not persuaded by Appellants' argument that
the proposed combination of Fletcher and Robinson is improper.
DECISION
The decision of the Examiner to reject claims 1-8, 10-16, 18, and 19
under 35 U.S.C. § 103(a) is affirmed.
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
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