Ex Parte Casati et al

Board of Patent Appeals and Interferences

Jul 30, 2009

10164175 (B.P.A.I. Jul. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FABIO CASATI, MING-CHIEN SHAN, and UMESHWAR DAYAL
____________
Appeal 2009-005786
Application 10/164,175
Technology Center 3600

Decided: 1 July 31, 2009
____________

Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a system and method for automated business decision
making and prediction of the outcome and quality of the business processes
executed by an organization. (Specification 1:¶[0001])
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A method of analyzing data and making predictions, comprising: reading
process execution data from logs for a business process;
collecting the process execution data and storing the process execution data in a
memory defining a warehouse;
analyzing the process execution data; generating prediction models in response to
the analyzing; and
using the prediction models to predict an occurrence of an exception in the
business process.

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THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Hagen, Claus
and Alonso,
Gustavo
(hereinafter
“Hagen”)
"Exception Handling in Workflow
Management Systems" IEEE Transactions
on Software Engineering, Vol. 26, No. 10,
pp. 943-958

October 2000,

The following rejections are before us for review.
The Examiner rejected claims 1-16 under 35 USC § 102 as being anticipated
by Hagen.
The Examiner rejected claims 1-4 and 13-16 under 35 U.S.C. 101.
ISSUES
Have Appellants shown that the Examiner erred in rejecting claims 1-16
under 35 USC § 102 as being anticipated by Hagen on the grounds that a person
with ordinary skill in the art would understand that the predicted process failures
disclosed by Hagen are exceptions as defined by the Specification?
Have Appellants shown that the Examiner erred in rejecting claims 1-4 and
13-16 under 35 U.S.C. 101 on the grounds that a person with ordinary skill in the
art would understand that the claimed storing of process execution data in a

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memory defining a warehouse constitutes patent eligible subject matter under
§ 101 because the claims are tied to a particular machine or apparatus?

PRINCIPLES OF LAW
The test to determine whether a claimed process recites patentable subject
matter under § 101 is whether: (1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing. In re Bilski, 545
F.3d 943, 961-62 (Fed. Cir. 2008) (en banc).
“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. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification lists a data warehouse 412 as constituting part of the
system 400. (Specification 5:¶ [0023]).
2. The data warehouse is further described by the (Specification as
storing “…business process execution data, logged by the different components of
the E-business system 416, and possibly other data such as, for example, user-
defined classification of the processes.” (Specification 5: [0024])
3. The Specification defines exception as:
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[a]s used herein, an exception is defined as a deviation
from the "optimal" (or acceptable) process execution that
prevents the delivery of services with the desired (or
agreed) quality. This is a high-level, user-oriented notion
of the concept, where it is up to the process designers and
administrators to define what they consider to be an
exception, therein characterizing a problem they would
like to address and avoid. (Specification 9:¶ [0048])
4. Hagen discloses
…spheres defined within a process. Moreover, it can also
tell whether a process will end up in an impossible
situation where recovery is not feasible. Thus, a process
as a whole is atomic if:
1. There is a rollback-method defined for the whole
process or
2. Every task is atomic or quasi-atomic and the process is
well-formed.
This simple rule is a direct consequence of the task
properties we have discussed. First, if the process has a
rollback-method, it can be aborted at any time and it will
not leave any side effects behind (more formally, the
process is quasi-atomic). Second, the notion of Well-
formed is used to imply that the process is organized in
such a way that there is always a way either forward
(toward termination) or backward (compensate
everything). Of course, it is still necessary to make sure
that if a task fails in the middle of the execution, its
effects can be undone, hence, the requirement that all
tasks should be either atomic or quasi-atomic. The reason
why processes need to be well- formed is that a task can
be atomic but if it commits, we may not be able to
compensate it. That is, once that task commits we cannot
go back. If the process does not have the right structure
(i.e., it is well-formed), this can quickly lead us into
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trouble if, at a later time, the process cannot progress
forward any longer.
(Hagen, p. 947)

5. The Examiner found that Hagen on page 944 explains that “…the paper
discusses ‘failures’ that are normally considered ‘exceptions’, backing examiner's
stance that failures and exceptions are viewed as the same.” (Answer 8)
6. Hagen discloses dynamic modification of the process structure so as to be
able to circumvent failures. “In this paper, we are interested in those failures that
are normally considered exceptions in traditional programming languages….”
(Hagan, p. 944, col. 2)
7. Hagan discloses the ability to account for or predict the side effects
associated with failure in processes in that
[p]rocesses interact with external applications and have
side effects. Dealing with failures during process
execution implies being able to account for those side
effects. More concretely, aborting a process in the case of
a failure leaves it in an undefined state with only parts of
its goals met and external resources (such as accessed
databases) possibly inconsistent and with large amounts
of work already performed. This is particularly
undesirable for processes which are very long, consist of
expensive tasks, or access multiple external data
repositories. To allow the continuation of a process in
spite of a failure, it is necessary to have an extended
process specification which includes failure handling
directives.
(Hagen, p. 944, col. 2)
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8. Hagen ties the success of well formed spheres to predicting or telling
whether a process will end up in an impossible situation where recovery is not
feasible. (Hagen, p. 947, col. 1).
9. The dictionary definition of failure is, inter alia: a state of inability to
perform a normal function (http://www.merriam-webster.com/dictionary/failure)
ANALYSIS
We affirm the rejection of claims 1-16 under 35 U.S.C. § 102 (b), and
reverse the rejection of claims 1-4 and 13-16 under 35 U.S.C. 101.

35 U.S.C. § 101 Rejection
We will not sustain the rejection of claims 1-4 and 13-16 under 35 U.S.C. §
101 because one of ordinary skill in the art would understand that the claimed
storing of process execution data in a memory defining a warehouse constitutes
patent eligible subject matter under § 101 because the memory/warehouse element
ties the claims to a particular machine or apparatus. The Specification
unequivocally describes the data warehouse as part of the overall system apparatus,
and subsequent descriptions describe the memory/warehouse device in terms of
machine executable functions, e.g., business process execution data, logged by the
different components of the E-business system 416, and possibly other data such
as, for example, user-defined classification of the processes. (FF 1, 2)
35 U.S.C. § 102 (b) Rejection
Initially, we note that the Appellants argue claims 1-7, 9-13, 15, 16 together
as a group. Correspondingly, we select representative claim 1 to decide the appeal
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of these claims, remaining claims 2-7, 9-13, 15, 16 standing or falling with claim 1.
See, 37 C.F.R. § 41.37(c) (1) (vii) (2004).
Claim 1 recites using the prediction models to predict an occurrence of an
exception in the business process. The Specification defines exception as: a
deviation from the "optimal" (or acceptable) process execution that prevents the
delivery of services with the desired (or agreed) quality.” (FF3). The Specification
goes on to further expand the definition to note that an exception is a “…user-
oriented notion of the concept, where it is up to the process designers and
administrators to define what they consider to be an exception, therein
characterizing a problem they would like to address and avoid.” (FF3).
The Examiner found that Hager discloses “…that the designer can define
how severe failures can be,… [and] explains that the paper discusses ‘failures’ that
are normally considered ‘exceptions’". (FF5) Appellants however argue that while
“Section 8 of Hagen does use the word ‘exceptions’ usage of this word must be
taken in context of the teachings in Hagen. Specifically, Hagen discusses
exceptions with regard to the spheres, not predicting exceptions in a business
process as recited in the claims.” (Appeal Br. 12)
We are not persuaded by Appellants’ argument for two reasons. First, we
find the Examiner’s interpretation of the term “exceptions” as used by Hagen is
reasonably congruent with the definition provided by the Specification. That is,
the Examiner interpreted the failures in Hagen as exceptions (FF 5). According to
Appellants’ Specification, failure qualifies as an exception because it is a deviation
from an optimal or acceptable process execution that prevents the delivery of
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services with the desired (or agreed) quality because failure is a state of inability to
perform the normal agreed to function (FF9). Furthermore, Hagan discloses the
ability to account for or predict the side effects associated with failure in processes
(FF7). Thus, Hagen explicitly teaches at least predicting the consequential side
effects or exceptions proximately caused by a failure in a business process, which
we interpret this as meeting the required claim language of to predict an occurrence
of an exception in the business process.
Second, Appellants’ argument that Hagen discusses exceptions as they relate
to spheres, and not predicting exceptions in a business process as recited in the
claims, seems to treat the spheres as non-related to the failure predicting scheme in
Hagen, which is not the case. Rather, Hagan ties the success of well formed
spheres to predicting or telling whether a process will end up in an impossible
situation where recovery is not feasible (FF 4, 8), and thus discloses the two items
interdependently.
Claims 8 and 14
Appellants argue that claims 8 and 14 distinguish over Hagen because “[a] failure
and an exception are two different concepts.” (Appeal Br. 12) We disagree with
Appellants because as found above, Appellants’ definition of exception as set forth
by the Specification is congruent with failure.
CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred in
rejecting claims 1-16 under 35 U.S.C. § 102 as being anticipated by Hagen.

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We conclude the Appellants have shown that the Examiner erred in rejecting
claims 1-4 and 13-16 under 35 U.S.C. 35 U.S.C. § 101.

DECISION
The decision of the Examiner to reject claims 1-16 is AFFIRMED.
AFFIRMED

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