Ex Parte Casati et al

Board of Patent Appeals and Interferences

Mar 12, 2010

10032363 (B.P.A.I. Mar. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FABIO CASATI and
MING-CHIEN SHAN
___________

Appeal 2009-006257
Application 10/032,363
Technology Center 3600
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Decided: March 12, 2010
____________

Before HUBERT C. LORIN, FRANCISCO C. PRATS, and
BIBHU MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Fabio Casati et al. (Appellants) seek our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-23. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM and enter a new grounds of rejection pursuant to 37
C.F.R. 41.50(b). 1

THE INVENTION
This invention is a method and system for performing a c-service
which is tailored to the specific user and their location. Specification 4:2-6.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for performing a context-dependent
service comprising:
executing a composite service;
utilizing a context repository to store context
information for a user, wherein said context
information is automatically detected without
requiring user interaction and wherein said context
information is based on a present user location;
accessing context information; and
automatically incorporating said context

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Mar. 4, 2008) and the Examiner’s Answer (“Answer,” mailed May 28,
2008).

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information with said composite service.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ramanathan
Stewart
US 6,182,136 B1
US 2002/0161688 A1
Jan. 30, 2001
Oct. 31, 2002
Fabio Casati, Ski Ilnicki, Li-Jie Jin, Vasudev Krishnamoorthy, Ming-
Chien Shan, eFlow:a Platform for Developing and Managing Composite e-
Services, HP Laboratories, March 2000. [Hereinafter, Casati.]

The following rejections are before us for review:
1. Claims 1-5, 7, 8, 10-14, 16-21, and 23 are rejected under 35
U.S.C. §102(b) as being anticipated by Casati.
2. Claims 6, 15, and 22 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Casati and Stewart.
3. Claim 9 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Casati and Ramanathan.

ARGUMENT
The Appellants and the Examiner dispute whether the paragraph
labeled 27, on page 345 of Casati describes that the context information is
automatically detected without requiring user interaction. See Br. 9-11 and
Answer 8. The Examiner equates this claim limitation to Casati’s “dynamic
process evolution, wherein for example, the user has booked a flight with an
air carrier hit by a strike and eFlow automatically detects the airline strike,
i.e., context information, and defines a new process.” Answer 4.
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The Appellants respond that Casati does not teach automatically
detecting the strike itself. Br. 10-11.

ISSUE
The issue is whether claims 1-5, 7, 8, 10-14, 16-21, and 23 under 35
U.S.C. §102(b) are anticipated by Casati. Specifically, the issue is whether
Casati describes that the context information is automatically detected
without requiring user interaction. The rejections of claims 6, 9, 15 and 22
will also turn on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Casati describes a composite service called eMove that supports
customers in relocating. Casati pg. 341, par. 4.
2. On page 345, in paragraph 27, Casati states:
Dynamic process evolution: eFlow allows service designers
to modify service process definitions and to apply the
changes to a subset of (or to all) the running instances of that
service. In addition, the service designer may specify that
newly started services should follow the new definition. For
instance, consider the situation in which a strike hit a big
airline company and is assumed to last for a long period:
clearly, it is not practically feasible to separately modify
each process instance; instead, with eFlow, the service
designer can define a new process and specify that all
running instances with a given property (in this case, all
instances in which the customer has booked a flight with the
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air carrier hit by the strike) should be migrated to the new
version.
The definition of service instances that need to be migrated
is performed through a very simple migration language,
consisting of a set of rules of the form IF
THEN MIGRATE TO . The condition is a
predicate over service process data and service process
execution state that identifies a subset of the running
instances, while denotes the process definition
version to which instances should be migrated. The set of
rules must define a partitioning over the set of active
instances, so that each instance is migrated to one version at
most. An example of migration rule is: IF (selectedAirlines
= “Flying High” and travelStatuts = “booked”) THEN
MIGRATE TO “A.00.02.” Casati 345.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
Section 103 forbids issuance of a patent
when ‘the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
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between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-5, 7, 8, 10-14, 16-21, and 23 under §102(b) as
being anticipated by Casati.
The Appellants argue claims 1-5, 7, 8, 10-14, 16-21, and 23 as a
group. Br. 9-11. We select claim 1 as the representative claim for this
group, and the remaining claims 2-5, 7, 8, 10-14, 16-21, and 23 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Claim 1 recites “wherein said context information is automatically
detected without requiring user interaction.” We note that claim 1 is silent
as to what the context information is being detected from, and does not
preclude the claimed “detecting” from being detecting the presence of the
context information in a set of data.
Casati’s describes an example where an airline, named “FlyHigh,” is
experiencing a strike and processes need to be modified so that flights are
rebooked. See FF 2. The name “FlyHigh” can be considered the claimed
user context information, since it is the airline that pertains to the user.
Casati “detects” the presence of the name “FlyHigh” in the running instances
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using a migration rule; for example, if “selectedAirlines” in the data equals
“FlyHigh.” Id. The migration rule is part of a newly defined process (id.),
which can be considered to be performing the detection automatically
without requiring user interaction.
As Casati states, the service designer does not manually go through all
of the running instances to find the instances where “selectedAirlines”
equals “FlyHigh,” as this would not be “practically feasible.” Id. Rather,
the migration rule put into place by the designer automatically detects the
user’s airline information. Thus, the detection is automatic, by way of the
migration rule, despite the fact that the service designer set the migration
rule.
We find that the Appellants have not overcome the prima facie case of
anticipation. Accordingly, we sustain the rejection of claims 1-5, 7, 8, 10-
14, 16-21, and 23 under §102(b) as being anticipated by Casati.

The rejection of claims 6, 15, and 22 under §103(a) as being unpatentable
over Casati and Stewart.
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 6, 15, and 22 as being unpatentable over Casati and
Stewart since the Appellants have not made any arguments beyond those
previously discussed with regard to the Casati reference, thereby allowing
claims 6, 15, and 22 to stand or fall with their parent claim. See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).

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The rejection of claim 9 under §103(a) as being unpatentable over Casati
and Ramanathan.
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claim 9 as being unpatentable over Casati and Ramanathan since
the Appellants have not made any arguments beyond those previously
discussed with regard to the Casati reference, thereby allowing claim 9 to
stand or fall with its parent claim. See In re Nielson, 816 F.2d 1567, 1572
(Fed. Cir. 1987).

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b) (2009), we enter a new ground of
rejection on claims 17-23. Claims 17-23 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
Taking claim 17 as representative, claim 17 recites “[a] computer-
usable medium having a computer-readable program code embodied
therein.” We note that the Specification is silent as the meaning of
“computer-usable medium.” Giving claim 17 the broadest reasonable
construction, we find that claim 17 encompasses forms of the computer
program code being embodied on transitory propagating signals per se. 2 A
signal does not fit within at least one of the four statutory subject matter
categories under 35 U.S.C. §101. In re Nuijten, 500 F.3d 1346, 1357 (Fed.
Cir. 2007).

2 See U.S. Patent & Trademark Office, Subject Matter Eligibility of
Computer Readable Media, Jan. 26, 2010, available at
http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf.
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Accordingly, we reject claims 17-23 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

CONCLUSIONS OF LAW
We conclude that the Appellants have not over come the prima facie
showing of anticipation in the rejections of claims 1-5, 7, 8, 10-14, 16-21,
and 23 under 35 U.S.C. §102(b) as being anticipated by Casati and the
Appellants have not over come the prima facie showing of obviousness in
the rejection of:
claims 6, 15, and 22 under 35 U.S.C. §103(a) as unpatentable over
Casati and Stewart; and
claim 9 under 35 U.S.C. §103(a) as unpatentable over Casati and
Ramanathan.
We enter a new ground of rejection on claims 17-23 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.

DECISION
The decision of the Examiner to reject claims 1-23 is affirmed. We
enter a new ground of rejection on claims 17-23 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
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37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

AFFIRMED; 37 C.F.R. § 41.50(b)

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