Ex Parte Casati et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10057143 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte FABIO CASATI, 8
MING-CHIEN SHAN, 9
LI-JIE JIN, 10
UMESHWAR DAYAL, and 11
DANIELA GRIGORI 12
___________ 13
14
Appeal 2009-004505 15
Application 10/057,143 16
Technology Center 3600 17
___________ 18
19
Decided: April 26, 2010 20
___________ 21
22
Before HUBERT C. LORIN, ANTON W. FETTING, and 23
JOSEPH A. FISCHETTI, Administrative Patent Judges. 24
FETTING, Administrative Patent Judge. 25
DECISION ON APPEAL26
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STATEMENT OF THE CASE 1
Fabio Casati, Ming-Chien Shan, Li-Jie Jin, Umeshwar Dayal, and 2
Daniela Grigori (Appellants) seek review under 35 U.S.C. § 134 (2002) of a 3
final rejection of claims 15-26, the only claims pending in the application on 4
appeal. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
SUMMARY OF DECISION1 8
We AFFIRM. 9
THE INVENTION 10
The Appellants invented an exception analysis, prediction, and 11
prevention method and system (Specification 2: FIELD OF THE 12
INVENTION). 13
An understanding of the invention can be derived from a reading of 14
exemplary claim 15, which is reproduced below [bracketed matter and some 15
paragraphing added]. 16
15. A method for predicting exceptions in a workflow instance 17
comprising: 18
[1] preparing data from past workflow executions; 19

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 14, 2008) and Reply Brief (“Reply Br.,” filed November 4,
2008), and the Examiner’s Answer (“Ans.,” mailed September 4, 2008).
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[2] generating at least one exception prediction model based on 1
the prepared data; 2
[3] using the exception prediction model 3
to generate at least one prediction of an exception 4
before the exception occurs for a current instance of the 5
workflow instance; and 6
[4] performing an action 7
during execution of the workflow instance 8
to avoid occurrence of the exception in the workflow 9
instance. 10
11
THE REJECTIONS 12
The Examiner relies upon the following prior art: 13
Casati et al., Specification and Implementation of Exceptions in 14
Workflow Management Systems, ACM Transactions on Database 15
Systems, Vol. 24, No. 3, pp. 405-451, September 1999 16
Claims 15-26 stand rejected under 35 U.S.C. § 101 as directed to non-17
statutory subject matter. 18
Claims 21 and 22 stand rejected under 35 U.S.C. § 112, first paragraph, 19
as not enabling a person of ordinary skill in the art to make and use the 20
claimed subject matter from the original disclosure. 21
Claims 15-26 stand rejected under 35 U.S.C. § 102(b) as anticipated by 22
Casati. 23
24
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ARGUMENTS 1
Claims 15-26 rejected under 35 U.S.C. § 101 as directed to non-statutory 2
subject matter. 3
The Examiner found that the claims were neither tied to another 4
statutory class and did not transform underlying subject matter. Ans. 3-5. 5
The Appellants argue that an action is performed during execution to avoid a 6
predicted exception. Reply Br. 2. 7
Claims 21 and 22 rejected under 35 U.S.C. § 112, first paragraph, as not 8
enabling a person of ordinary skill in the art to make and use the claimed 9
subject matter from the original disclosure. 10
The Examiner found that these claims recite selectively removing input 11
data, but the Specification provides no disclosure as to how such selection 12
occurs. Ans. 5. The Appellants argue that the Specification provides 13
examples at 14:22-28. Appeal Br. 10-11. 14
Claims 15-26 rejected under 35 U.S.C. § 102(b) as anticipated by Casati. 15
The Appellants argue that Casati only reacts to exceptions after the 16
exception occurs and so does not predict exceptions before they occur. 17
Appeal Br. 12-13. 18
ISSUES 19
The issue of whether the Examiner erred in rejecting claims 15-26 under 20
35 U.S.C. § 101 as directed to non-statutory subject matter turns on whether 21
the claims pass the machine or transformation test. 22
The issue of whether the Examiner erred in rejecting claims 21 and 22 23
under 35 U.S.C. § 112, first paragraph, as not enabling a person of ordinary 24
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skill in the art to make and use the claimed subject matter from the original 1
disclosure turns on whether the Specification adequately discloses how to 2
select input data for removal. 3
The issue of whether the Examiner erred in rejecting claims 15-26 under 4
35 U.S.C. § 102(b) as anticipated by Casati turns on whether Casati 5
describes predicting an exception before it occurs and performing an action 6
that avoids the exception. 7
FACTS PERTINENT TO THE ISSUES 8
The following enumerated Findings of Fact (FF) are believed to be 9
supported by a preponderance of the evidence. 10
Facts Related to Appellants’ Disclosure 11
01. The Specification defines “workflow” as the automation of a 12
business process, in whole or in part, during which documents, 13
information, or activities are passed from one participant to 14
another, according to a set of predefined rules. Specification 2:16-15
18. 16
02. The Specification defines “exception” as any problem or 17
situation of interest, defined by the designers and administrators, 18
that is to be addressed and possibly avoided. Specification 9:21-19
23. 20
03. The Specification describes using the mining and interpretation 21
phases of its exception analysis 22
to identify the most interesting and effective 23
classification rules. In particular, the mining phase may 24
generate classification rules that classify process 25
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instances based on attributes that are not interesting in the 1
specific case being considered. For example, when an 2
obvious and not interesting correlation is generated, an 3
analyst may want to repeat the mining phase and 4
selectively remove one or more attributes from the ones 5
considered in generating the classification rules, so that 6
the classifier can focus on more meaningful attributes. 7
Specification 14:20-17. 8
04. The Specification further describes that in using the mining and 9
interpretation phases of its exception analysis 10
the classification rules will identify a correlation between 11
the process instance duration and a deadline expiration 12
exception. However, this is an obvious and not very 13
interesting correlation. Consequently, an analyst may 14
repeat the mining phase and remove the process instance 15
duration attribute from the attributes considered in 16
generating the classification rules. In this manner, the 17
classifier can focus on more interesting attributes. 18
Specification 14:20-17. 19
Facts Related to the Prior Art 20
Casati 21
05. Casati is directed to handling exceptions, i.e., asynchronous and 22
anomalous situations that fall outside the normal control flow, in 23
workflow management systems. Casati 405: First ¶. 24
06. Casati describes representing exceptions that alter the normal 25
flow of processes and in particular, expected exceptions which are 26
those anomalous situations that are known in advance to the 27
workflow designer. Casati 406: Second ¶. 28
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07. When an exception is unexpected, an exception handler 1
typically resorts to halting the process and invoking a human 2
intervention. Instead, when exceptions are expected, the exception 3
handler can rely on the semantics of the workflow application in 4
order to handle the exception, typically by means of some form of 5
reactive processing. Casati 406: Second ¶. 6
08. Casati describes expected exceptions as unpredictable, and 7
therefore cannot be conveniently represented in the process in the 8
form of special tasks and connections among tasks. They are not 9
frequent, but once they occur they may require special treatment, 10
which may lead to the execution of a completely different process. 11
They are asynchronous and highly influenced by external factors. 12
Their execution may cause the backtracking of previous steps in 13
the process or even sudden termination. Casati 406: Third ¶. 14
09. Casati describes a comprehensive approach to the management 15
of expected exceptions by integrating the exception handler with 16
the workflow manager. Casati 406: Fourth ¶. 17
10. Casati describes how the exception handling mechanism must 18
be able to capture exceptional events and to react to them. Each 19
reaction must first assess the state of the process and then, in a few 20
cases, adopt the corrective action; in many cases events 21
correspond to false alarms and do not need to be followed by a 22
corrective action. Casati 407: First full ¶. 23
11. Casati describes how active rules are used to control expected 24
events. An event part defines the symptoms of an exception. A 25
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condition, a Boolean predicate that checks that the symptoms 1
really identify an exception to be managed, is used to select the 2
most adequate alternative to deal with the current workflow state. 3
An action describes the updates and procedures that must be 4
invoked to respond to the exception. Casati 407: Second full ¶. 5
12. In Casati, the condition part of a rule verifies that rule triggering 6
really corresponds to an exception that needs to be processed. 7
Conditions and actions normally share variables; when the 8
evaluation of the condition produces bindings for these variables, 9
the condition is satisfied, thus identifying the objects that are 10
affected by an exception. Casati 415: ¶ 3.2.2. 11
13. Each workflow event causes triggers to be inserted into a table. 12
Those events are then analyzed. As conditions are met and actions 13
are called for those conditions and actions are translated into code 14
for a query. Casati 424. 15
ANALYSIS 16
Claims 15-26 rejected under 35 U.S.C. § 101 as directed to non-statutory 17
subject matter. 18
The claims are nominally directed to processes. The test for 19
determining whether a claimed process is a statutory process under 20
§101 is the Bilski machine-or-transformation test, that is: 21
[T]he proper inquiry under § 101 is not whether the process 22
claim recites sufficient “physical steps,” but rather whether the 23
claim meets the machine-or-transformation test.FN25 As a 24
result, even a claim that recites “physical steps” but neither 25
recites a particular machine or apparatus, nor transforms any 26
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article into a different state or thing, is not drawn to patent-1
eligible subject matter. Conversely, a claim that purportedly 2
lacks any “physical steps” but is still tied to a machine or 3
achieves an eligible transformation passes muster under § 101 4
In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc). 5
The claimed processes satisfy the machine prong of the Bilski machine-6
or-transformation test. The claims perform an action during execution of a 7
workflow instance to avoid occurrence of the exception in the workflow 8
instance. A workflow is defined in the Specification as the automation of a 9
business process. FF 01. Therefore the claims recite performing an action 10
within an automated process that avoids the occurrence of an exception in 11
that automated process. Such an action alters the control and process flow 12
of the process executed within the machine and therefore recites an 13
algorithm that specifically alters even a general purpose computer into a 14
specific machine. 15
The claimed processes therefore pass the Bilski machine-or-16
transformation test. The Examiner did not make any further findings that 17
would render the claims not patent eligible. 18
19
Claims 21 and 22 rejected under 35 U.S.C. § 112, first paragraph, as not 20
enabling a person of ordinary skill in the art to make and use the claimed 21
subject matter from the original disclosure. 22
The question before us here is whether one of ordinary skill would know 23
how to make the selection in claims 21 and 22 reciting selectively removing 24
input data to refine the classification rules. The Specification describes 25
doing so to remove attributes from those considered so as to focus on more 26
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meaningful attributes. FF 03. The Specification goes on to describe 1
selecting those attributes that simply correlate obvious and not very 2
interesting pair of parameters. FF 04. The selection in claims 21 and 22 3
only require one of ordinary skill to identify input data that are not 4
particularly interesting to that person’s analysis. This is easily within the 5
level of ordinary skill in workflow analysis. Accordingly, the Specification 6
provides a sufficiently enabling disclosure for these claims. 7
8
Claims 15-26 rejected under 35 U.S.C. § 102(b) as anticipated by Casati. 9
"A claim is anticipated only if each and every element as set forth in the 10
claim is found, either expressly or inherently described, in a single prior art 11
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 12
631 (Fed. Cir. 1987). "When a claim covers several structures or 13
compositions, either generically or as alternatives, the claim is deemed 14
anticipated if any of the structures or compositions within the scope of the 15
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 16
Cir. 2001). "The identical invention must be shown in as complete detail as 17
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 18
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 19
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 20
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 21
The Appellants argue claims 15 - 22 as a group and so we select claim 22
15 as representative. In matching Casati to claim 15, we first examine the 23
scope of claim 15. This claim creates a model for predicting what might 24
occur based upon past workflow actions and uses that model to predict an 25
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exception before the exception occurs and performs an action to avoid 1
occurrence of the exception in the current workflow instance. We now turn 2
to finding how Casati implements such analysis. 3
Casati is in fact directed to handling exceptions. Such exceptions alter 4
the normal flow of processes. FF 05. Some of these exceptions are 5
expected in that they are known in advance to the workflow designer. FF 6
06. When exceptions are expected, an exception handler can rely on the 7
semantics of the workflow application to handle the exception, by reactive 8
processing. In the absence of such reactive processing, an exception handler 9
typically resorts to halting the process and invoking a human intervention. 10
FF 07-08. 11
Casati provides a comprehensive approach to managing expected 12
exceptions by integrating the exception handler with the workflow manager. 13
FF 09. Casati's solution captures exceptional events and reacts to them. 14
Each reaction first assesses the process state and if necessary adopts 15
corrective action. FF 10. 16
As Casati monitors workflow progress, active rules are used to control 17
expected events. An event part identifies the symptoms; a Boolean 18
condition checks that the symptoms identify an exception to be managed. 19
The condition is then used to select the most adequate alternative to deal 20
with the current work flow state. FF 11-12. 21
To find how Casati anticipates claim 15, we must first construe the term 22
"exception" to see how Casati reacts to an exception. The Specification 23
defines an exception as any problem or situation of interest. FF 02. The 24
Examiner found that Casati's exception class reacted to condition storing 25
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workflow execution such that an exception could be avoided. Ans. 7. See 1
exception Casati describes that meets the Examiner's criteria is that of 2
halting the process and invoking a human intervention. FF 06. Such an 3
event meets the definition of being a problem or a situation of interest. 4
Thus, Casati prepares data from past workflow executions by entering 5
events into its system, and generates an exception prediction model by 6
monitoring its triggers looking for such exceptions. Casati uses this 7
exception prediction model by applying its rules to invoke an exception 8
handler, thereby predicting an exception that would terminate the process 9
absent the exception handler processing. The exception handler, in turn 10
adopts corrective action, to avoid occurrence of the exception that would 11
terminate processing. 12
The Appellants' argument that Casati only reacts to exceptions after an 13
exception occurs is not commensurate with the scope of the claim. The 14
Appellants apparently equate the event that triggers the exception handler 15
with the claimed exception. The claim does not limit the nature of the 16
exception, and the disclosed definition is very broad. Thus, as the Examiner 17
found, the prospective event of process termination is also an exception 18
within the scope of claim 15. Accordingly, given the breadth of the term 19
exception, we conclude that Casati anticipates claim 15. 20
The Appellants’ argument that Casati describes such events as 21
unpredictable is essentially a component of the above argument, suggesting 22
that unpredictability supports the idea that the reaction is post event. But 23
again, once such an event requiring an event handler occurs, it is quite 24
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predictable that absent remedial event handler action, a future exception of 1
termination will occur. 2
The Appellants repeat the arguments in support of claim 15 for the 3
claims 23-25 (Br. 15-16) and we find those arguments unpersuasive for the 4
same reasons. 5
Claim 26 further recites refining the prediction. The Appellants argue 6
that Casati’s rule adjustment is different. Appeal Br. 16. The Appellants do 7
not show the nature of the difference other than remarking that Casati’s 8
workflow events are managed by a time manager. We do not see the 9
pertinence of this argument. Claim 26 does not narrow the manner in which 10
refinement occurs, or even the nature of the refinement itself. The fact that 11
Casati uses rule conditions to verify the significance of the prediction 12
inherent in the event trigger of an expected event (FF 11) certainly refines 13
the reliability of the prediction. 14
15
CONCLUSIONS OF LAW 16
The Examiner erred in rejecting claims 15-26 under 35 U.S.C. § 101 as 17
directed to non-statutory subject matter. 18
The Examiner erred in rejecting claims 21 and 22 under 35 U.S.C. § 112, 19
first paragraph, as not enabling a person of ordinary skill in the art to make 20
and use the claimed subject matter from the original disclosure. 21
The Examiner did not err in rejecting claims 15-26 under 35 U.S.C. 22
§ 102(b) as anticipated by Casati. 23
24
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DECISION 1
To summarize, our decision is as follows. 2
• The rejection of claims 15-26 under 35 U.S.C. § 101 as directed to 3
non-statutory subject matter is not sustained. 4
• The rejection of claims 21 and 22 under 35 U.S.C. § 112, first 5
paragraph, as not enabling a person of ordinary skill in the art to make 6
and use the claimed subject matter from the original disclosure is not 7
sustained. 8
• The rejection of claims 15-26 under 35 U.S.C. § 102(b) as anticipated 9
by Casati is sustained. 10
No time period for taking any subsequent action in connection with this 11
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 12
13
AFFIRMED 14
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