Ex Parte Chen et al

Patent Trial and Appeal Board

Dec 30, 2016

13524113 (P.T.A.B. Dec. 30, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/524,113 06/15/2012 LiChen RSW920060221US2/IBM061NA 1015
58505 7590 01/04/2017
STEVENS & SHOWALTER, L.L.P.
BOX IBM
7019 CORPORATE WAY
DAYTON, OH 45459-4238
EXAMINER
DENG, ANNA CHEN
ART UNIT PAPER NUMBER
2191
NOTIFICATION DATE DELIVERY MODE
01/04/2017 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):
PTO@sspatlaw.com
ssllp@speakeasy.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI CHEN, JOHN R. HIND, YONGCHENG LI, and
LUN XIAO
Appeal 2014-009314
Application 13/524,113
Technology Center 2100
Before: ELENI MANTIS MERCADER, JEFFREY S. SMITH, and
JESSICA C. KAISER, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-009314
Application 13/524,113
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claimed invention is directed to an interface component allowing
a user to collect services and to place selected services corresponding to a
task to be automated onto a workspace. An analysis component performs an
analysis of available data with regard to the selected services provided on
the workspace and a configuration component automatically configures
inputs of the selected services based upon the analysis of available data
without intervention of the user. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method for automating tasks using
assemblies of services comprising:
providing an interface component that allows a user to collect
services and to place selected services corresponding to a task
to be automated onto a workspace;
wherein said providing an interface component that allows a
user to collect services and to place selected services
corresponding to a task to be automated onto a workspace
comprises:
providing a request component that allows said user to submit a
request for a new, not yet existing, service based upon a
predetermined requirement of said task to be automated, to at
least one of a register or provider of services and to add said
new service to said workspace when a located service
subsequently becomes available corresponding to said request;
providing an analysis component that performs an analysis of
available data with regard to said selected services when
provided on said workspace;
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providing a configuration component to automatically
configure inputs of said selected services based upon said
analysis of available data and without intervention of said user;
providing a dialog component to allow said user to contribute
information to configure one or more of said inputs of said
selected services; and
providing an output component that outputs a script that is
executable to implement said task to be automated.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barsness US 6,965,990 B2 Nov. 15,2005
Omoigui US 2006/0026113 A1 Feb. 2, 2006
Rubio US 2008/0148345 A1 June 19, 2008
Chen US 2008/0244594 A1 Oct. 2, 2008
Massoudi US 7,483,901 B1 Jan. 27, 2009
Cesare Pautasso and Gustavo Alonso, Visual Composition of Web
Services, Institute of Electrical and Electronic Engineers (IEEE), 2003
(“Pautasso”).
Evren Sirin, Bijan Parsia, and James Hendler, Template-based
Composition of Semantic Web Services, 2005 (“Sirin”).
REJECTIONS
The Examiner made the following rejections:
1. Claims 1—8 are provisionally rejected on the ground of nonstatutory
double patenting over claims 9-24 of copending Application No.
11/693,284. This is a provisional double patenting rejection because
the patentably indistinct claims have not in fact been patented.
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2. Claim 1 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the written description
requirement.
3. Claims 1—4 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Pautasso in view of Rubio.
4. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Pautasso in view of Rubio, and further in view of Barsness.
5. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Pautasso in view of Rubio and further in view of Sirin.
6. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Pautasso in view of Rubio and further in view of Massoudi.
7. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Pautasso in view of Rubio and in view of Omoigui.
ISSUES
The pivotal issues are whether the Examiner erred in finding:
1. there is adequate written support for the limitation of “new, not yet
existing,” as recited in claim 1;
2. the combination of Pautasso in view of Rubio teaches or suggests
the limitation of “providing a request component that allows said
user to submit a request for a new, not yet existing, service based
upon a predetermined requirement,” as required by claim 1.
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ANALYSIS
Provisional Rejection on the ground of non-statutory Double
Patenting
Appellants are willing to submit a terminal disclaimer but have not
filed one (Br. 7). Accordingly, we summarily affirm the double patenting
rejection.
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner states the request component 214 implements a request
tool and corresponding interface that allows a user to request services that
could not otherwise be located (Ans. 8). If a service is identified that can
satisfy the requirements of the request, then that service may be made known
to the user (Ans. 8). The Examiner asserts that the newly claimed “not yet
existing” service is not the supported by not yet known by the user or not yet
loaded onto the workspace as defined in paragraph 45 of Appellants’
Specification (Ans. 8).
Appellants argue that the Specification (paras. 29-31) delineates and
expands on the differences between the search component and the request
component (Br. 7). The search component allows a user to search web
service providers for web services they provide (id.). The request
component, however, is used after the user has exhausted searching with the
search component (id.). The request component is used “if the user is
satisfied that there are no available services that can implement the
corresponding aspect of the desired task” (id.). The request component may
then submit a request with a description of the one or more registers so that
“if and when” a service is identified that meets the user’s requirements, that
service can be provided to the user (id. (quoting Spec. 131)).
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We are persuaded by Appellants’ argument that paragraph 31 of the
Specification provides support for providing to a user a new service that was
not available to the user, thereby meaning that the service is new and not yet
existing for the user. However, we note that “new, not yet existing” does not
require the service to be newly created, but rather not existing when the user
requested it. This is consistent with paragraph 45 which states that “[i]f a
service is identified that can satisfy the requirements of the request, then that
service may be made known to the user.” One such scenario may occur
when the particular service is existing but not available to the user at the
time of the request because the particular server is not operational; when
operational, that server can then provide the service to the user. This does
not mean that the service did not exist at all, but rather it did not exist at the
time of search and then became available to the user once the server became
operational. Thus, while we agree with Appellants that “new, not yet
existing” service does not constitute new matter, such language does not
preclude services that are not available to the user (and thus not yet existing)
and thus are new to the user when later made known to the user. As
discussed below in the context of the § 103 rejection, this is also broad
enough to include services that are new and not yet existing because they are
not yet existing on the user’s workspace.
Accordingly, we reverse the Examiner’s rejection of claim 1 under 35
U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 103(a) over Rubio and Pautasso
Appellants argue that Rubio in combination with Pautasso does not
teach or suggest submitting a request for a new, not yet existing, service
based upon a predetermined requirement of said task to be automated (Br.
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9). Appellants assert that the request taught by Rubio relates to a relatively
standard technique of a client sending a request to an existing web service so
that the web service can execute its programmed instructions on behalf of
the client {id. at 10). The request component, of claim 1, is involved when a
user cannot find an existing service to fill a need and sends a list of
requirements of a task being automated to a service registrar so that the
registrar can identify a matching service when one subsequently becomes
available {id.). Thus, in claim 1, according to Appellants, the request
component involves a request for a new service (not yet existing) as opposed
to a request to utilize an existing service {id.).
We do not agree with Appellants’ argument. The Examiner finds, and
we agree, that Pautasso teaches providing an interface component that
allows a user to collect services and to place selected services corresponding
to a task to be automated onto a workspace {see Pautasso Section 4; Ans.
26). The user can search the library, select a set of services and drag them
into a process (i.e., workspace) (Ans. 26—27). We further agree with the
Examiner’s finding that Rubio teaches providing a request component that
allows the user to submit a request for a new, not yet existing, service based
upon a predetermined requirement of the task to be automated, to at least
one of a register or provider of services {see Rubio 1 6; Ans. 27). The single
point authentication component is configured to receive a request from a
client for accessing one of the plurality of Web services and to determine
and enforce security policies acceptable for accessing the requested Web
Service (Ans. 27). We agree with the Examiner that Rubio teaches a request
component allowing a user to request a service that is not yet available
because it is new to the user (Ans. 27). We agree with the Examiner’s
finding under the broadest reasonable interpretation that if the service is
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available or exists for the user, then there is no need to request that service
(Final Act. 8—9; Ans. 27 (citing Rubio 132)). Thus, the interface component
and workspace of Pautasso incorporated with the request component of
Rubio allows a user to submit a request for a new, not yet existing to the user
service (Ans. 27). In other words the claimed “not yet existing” was broadly
but reasonably interpreted by the Examiner to encompass a requested service
that is not yet available to the user’s workspace.
Appellants also argue “Rubio does not teach or suggest that its request
is based on the task to be automated, as required by claim 1.” Br. 11. Claim
1 recites “providing a request component that allows said user to submit a
request for a new, not yet existing, service based upon a predetermined
requirement of said task to be automated.’ '' (emphasis added). The broadest
reasonable meaning of disputed terms is “their ordinary usage as they would
be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.” In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997)
(emphasis added).
Appellants’ Specification does not use the term “predetermined
requirement,” but in discussing a user’s request for a service, the
Specification refers to the “user’s searching criteria” as those “that
correspond^ to a particular aspect of the task to be automated.” Spec. 131;
see also Br. 5—6 (citing Spec. 131 in the summary of the claimed subject
matter for this limitation). Appellants’ Specification paragraph 31, however,
does not provide any limiting definition for the meaning of the terms
“predetermined requirement” (see Spec. 131).
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In arguing this limitation, Appellants have not persuasively addressed
that Rubio’s request for a service would be based on user searching criteria
which would correspond to predetermined requirements of the task to be
automated (i.e., the criteria in the user’s request would be based on the
requirements of the task that prompted the user search). Accordingly, we
are not persuaded the Examiner erred in finding the combination of Rubio
and Pautasso teaches the recited “predetermined requirement.”
Accordingly, we affirm the Examiner’s rejection of claim 1 and for
the same reasons the Examiner’s decision to reject claims 2—8, which are not
separately argued (Br. 12—13).
CONCLUSION
1. The Examiner erred in finding there is not adequate written support
for the limitation of “new, not yet existing,” as recited in claim 1;
2. The Examiner did not err in finding the combination of Pautasso in
view of Rubio teaches or suggests the limitation of “providing a
request component that allows said user to submit a request for a
new, not yet existing, service based upon a predetermined
requirement,” as recited in claim 1.
DECISION
For the above reasons, the Examiner’s decision to reject claims 1—8 is
affirmed under 35 U.S.C. § 103(a).
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).
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AFFIRMED
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