Ex Parte Chan et al

Board of Patent Appeals and Interferences

Aug 20, 2010

11333162 (B.P.A.I. Aug. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte VICTOR CHAN, MARK W. HUBBARD, JACOB
VANDERGOOT, and TONY C. WOO
____________________

Appeal 2009-002112
Application 11/333,162
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and DEBRA K.
STEPHENS, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-002112
Application 11/333,162

I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 1-15
under 35 U.S.C. § 134(a) (2002). We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
We affirm.

A. INVENTION
According to Appellants, the invention relates to the field of
commerce computing and more particularly to context driven component
based commerce systems (Spec. 1, ¶ [0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A component based data processing system
comprising:

a plurality of content repositories, each of the content
repositories conforming to a uniform data structure, but having
different values for fields of the data structure;

a business context service;

a runtime environment configured for coupling to the
business context service;

a component based application supported by the runtime
environment, the component based application comprising at
least one component comprising business logic and data access
logic; and,

repository mapping logic coupled to the component
based application and business context service, the repository
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mapping logic comprising program code enabled to map at least
one of the content repositories to the data access logic based
upon a context for a transaction received from the business
context service.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ku US 6,970,883 B2 Nov. 29, 2005

Claims 1-11 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-7 stand rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 1-15 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by the teachings Ku.

II. ISSUES
1) Has the Examiner erred in finding that claims 1-11 are directed to
non-statutory subject matter?
2) Has the Examiner erred in concluding that “at least one component
comprising business logic and data access logic” is indefinite?
3) Has the Examiner erred in finding that Ku teaches “a business
context service” as required by claim 1?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
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Ku
1. Ku discloses a system, method and user interface for searching one or
more COBRA Interface Repositories for objects based on a set of
specified search criteria (col. 5, ll. 14-17).
2. A user interface screen or frame comprises two panels, wherein the
first allows a user to specify a variety of criteria for which to search
one or more Interface Repositories, and the second provides a textual
listing of the found objects (col. 5, ll. 17-23).

VI. ANALYSIS
35 U.S.C. § 101
Though the Examiner finds that “the claimed invention is non-
statutory” (Ans. 3), claim 1 recites “a component based application
supported by the runtime environment.” We find that an application
supported by the runtime environment requires performance on a computer.
Furthermore, claim 1 recites “a plurality of content repositories,” wherein
“the repository mapping logic comprising program code enabled to map at
least one of the content repositories to the data access logic.” Thus, we
conclude that claim 1 is directed to a machine, i.e., a computer and storage
devices such as the content repositories. Accordingly, we agree with
Appellants that the component based data processing system of claim 1
satisfies 35 U.S.C. § 101.
Though the Examiner finds that “[n]one of the defined elements are
tangible by reason that they are software instructions per se” (Ans. 3), as
discussed above, we conclude the claimed program code is sufficiently tied
to a machine such as a computer and hardware content repositories.
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For the foregoing reasons, we cannot sustain the rejection of claim 1
and claims 2-11 standing therewith under 35 U.S.C. § 101.

112, 2nd Paragraph Rejection
The Examiner points out that claim 1 recites that the data access logic
“comprises at least one component comprising business logic and data
access logic” (Ans. 4, emphasis omitted). Accordingly, the Examiner finds
that “[c]laim 1 is … indefinite and confusing since the data access logic is
recited as being both optional and mandatory at the same time” (id.).
We disagree with the Examiner that the data access logic is recited as
optional. In particular, claim 1 requires at least one component, wherein the
component comprises a business logic and data logic. Thus, claim 1
requires that the at least one component comprises the data access logic as
well as business logic. We are persuaded that the Examiner erred in
concluding that claim 1 and claims 2-7 standing therewith are indefinite
under 35 U.S.C. § 112, 2nd paragraph.

35 U.S.C. § 102(e)
As to independent claim 1, Appellants contend that “Ku does not
teach business context engine” (App. Br. 7, emphasis omitted). In
particular, Appellants contend that “[n]owhere in Ku is a ‘business context
service’ disclosed” (id.) and “the Examiner has not provided adequate
identification of a teaching in Ku that equates to the business context engine
or a mapping based upon a context provided by the business context engine”
(App. Br. 8). According to Appellants, “the term ‘business context engine’
has a defined meaning which must be given effect as a software engine
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providing context for a transaction” wherein “context is defined by example
to ‘include aspects of an activity such as the parties to the activity, the
resources supporting the completion of the activity, and the medium of the
activity’” (id.).
However, the Examiner finds that the claims do not “recite a ‘business
context engine’” and thus “[A]ppellant[s’] arguments [concerning ‘business
context engine’] are moot” (Ans. 10). In particular, the Examiner explains
that “the term ‘business context engine’ deployed in the specification
does not exist in claim 1” thereby “there is no basis for considering such
definition when evaluating claim 1” (id.).
In view of the above, the Examiner finds that “‘business context
service’ … is anticipated in Ku by a search facility providing the service of
search results” (Ans. 11). According to the Examiner, “[t]he person of
ordinary skill would readily recognize a system that provides search results
as a business service” wherein “[t]he contexts are the search terms which are
input to that service and used to determine the search results” (id.).
Appellants’ contention that “[n]owhere in Ku is a ‘business context
service’ disclosed” (App. Br. 7) is not commensurate in scope with the
language of claim 1. That is, we agree with the Examiner that the claims do
not “recite a ‘business context engine’” (Ans. 10).
Thus, we address on appeal whether Ku teaches “a business context
service” as specifically recited in claim 1. We start by giving the claims
their broadest reasonable interpretation. See In re Bigio, 381 F.3d 1320,
1324 (Fed. Cir. 2004). Moreover, though we give the claims an
interpretation based upon the definition provided in the claims consistent
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Application 11/333,162

with the Specification, we will not read limitations from the Specification
into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Claim 1 does not place any limitation on what “business context
service” means, includes, or represents, other than reciting that at least one
of the content repositories is mapped to the data access logic “based upon a
context for a transaction received from the business context service.” In
fact, claim 1 does not even define context. We therefore interpret “context”
as meaning an “aspect of an activity” consistent with the definition in the
Specification provided by Appellants (App. Br. 8). Accordingly, we
interpret “business context service” as any service wherein a content
repository is mapped to a data access logic based upon an aspect of an
activity provided by the service.
Ku discloses a system for searching Interface Repositories for objects
based on a set of specified search criteria (FF 1), wherein the user specifies a
variety of criteria for which to search the Interface Repositories (FF 2). We
agree with the Examiner’s broad but reasonable reading of the claimed
“business context service” (claim 1) on Ku’s search facility for searching
Repositories (See Ans. 11). That is, we agree with the Examiner that, “[t]he
person of ordinary skill would readily recognize a system that provides
search results as a business service” wherein “[t]he contexts are the search
terms which are input to that service and used to determine the search
results” (id.). In particular, we find that the search criteria used to search the
Repositories to be aspects of a search activity provided by the search facility,
wherein the Repositories are accessed based on the aspects/criteria provided.
Thus, we find that Ku discloses a business context service, wherein content
repositories are mapped to the data access logic (the content repositories are
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accessed) based upon a context (search criteria) for a transaction received
from the search service.
Thus, we find that the Examiner did not err in rejecting representative
claim 1 and claims 2-15 falling therewith under 35 U.S.C. § 102(e). See 37
C.F.R. § 41.37(c)(1)(vii).

V. CONCLUSION
We conclude that the Appellants have shown that the Examiner erred
in determining the system and method recited in claims 1-11 is not patent-
eligible subject matter under 35 U.S.C. § 101 and that claims 1-7 are
indefinite under 35 U.S.C. § 112, second paragraph.
We also conclude that the Appellants have not shown that the
Examiner erred in finding that claims 1-15 are anticipated by Ku.

VI. DECISION
Although we did not sustain the Examiner's rejection with respect to
claims 1-11 under 35 U.S.C. § 101 and claims 1-7 under 35 U.S.C. § 112,
second paragraph, we sustained the Examiner’s rejection with respect to
claims 1-15 under 35 U.S.C. § 102(e). Because we have sustained at least
one rejection for each claim on appeal, the Examiner’s decision rejecting
claims 1-15 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).
AFFIRMED

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peb

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