Ex Parte Chong et al

Board of Patent Appeals and Interferences

Jul 29, 2010

10054623 (B.P.A.I. Jul. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KELVIN CHONG, SRINIVAS MANDYAM, KRISHNA
VEDATI, VIKRANTH KATPALLY REDDY, WINSTON WANG, and
CYNTHIA KUO
____________

Appeal 2009-005029
Application 10/054,623
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and THU A.
DANG, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

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.
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The Patent Examiner rejected claims 1-4, 6-14, 16-22, 25, and 26.
The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).

INVENTION
The Appellants describe the invention at issue on appeal as "a system
and method that enables the rapid development of scalable, multi-channel
workflow-based applications . . . ." (Spec. 1.) They define the terms
"channel" and "multi-channel application" as follows.
2. A channel refers to the medium, or the "pipe" over
which the interaction takes place. The main channels of access
are: wireline access over the Internet using physical connection
cables or telephone cables; wireless access over cellular and
other over-the-air networks such as satellite links, radio
frequency waves, or infrared connections; and voice access
over analog PSTN [i.e., public switched telephone network]
networks. . . .
. . . .
4. A multi-channel application is an application that can
be accessed via two or more channels . . . .
(Id. at 2.)

ILLUSTRATIVE CLAIM
7. A computer system for visually building multi-channel
applications, comprising:
a graphical user interface (GUI) comprising a user
interface selection device and a display for displaying an
interactive development environment for visually designing
workflow describing a multi-channel application capable of
operating over a plurality of channels,
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said environment being adapted to allow a developer to
independently design said workflow in a plurality of layers,
wherein each layer includes states and transitions common to at
least one channel of said multi-channel application.

REJECTIONS
Claims 1-4, 6-12, 19-22, 25, and 26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over U.S. Patent No. 5,630,069 ("Flores") and U.S.
Patent Application Publication No. 2002/0138617 A1 ("Christfort").
Claims 13-14 and 16-18 stand rejected under § 103(a) as unpatentable
over Flores; Christfort; and U.S. Patent No. 6,393,456 B1 ("Ambler").

ISSUE
The Examiner admits that "Flores does not explicitly teach a multi-
channel application capable of operating over a plurality of channels,
comprising a plurality of layers, . . . wherein each layer includes states or
transitions common to at least one channel of said multi-channel
application . . . ." (Ans. 4.) She makes the following findings.
Christfort teaches a multi-channel application capable of
operating over a plurality of channels, comprising a plurality of
layers, wherein each of said layers corresponds to at least one
channel of said multi-channel application, wherein each layer
includes states or transitions common to at least one channel of
said multi-channel application ("... FIG. 1A also illustrates end
users 130, 132, 134 that are connected to host server 110 by
connections 140, 142, 144 .... There are a number of different
types of end users and connections. For example, end user 130
may be a desktop computer that is connected to host server 110
through a variety of ways, such as via the Internet, a DSL [i.e.,
digital subscriber line] connection, or an ISDN [i.e., integrated
services digital network]. Also, end user 132 may be a PDA
[i.e., personal digital assistant] that is connected to host
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server 110 via a cellular modem connection. Further, end
user 134 may be a mobile phone that is connected to the
Internet and thereby to host server 110 via a WAP-to-HTTP
[i.e., Wireless Application Protocol to Wireless Application
Protocol] gateway ...." e.g. see in par. 66 and 95; The multi-
channel application communicates with various devices using
plurality of channels of communication.) . . . .

(Id. at 4-5.) The Examiner then makes the following conclusion and
findings.
It would have been obvious to one having ordinary skill in the
computer art at the time of the invention was made to modify
the system disclosed by Flores to include a multi-channel
application capable of operating over a plurality of channels,
comprising a plurality of layers, wherein each of said layers
corresponds to at least one channel of said multi-channel
application, wherein each layer includes states or transitions
common to at least one channel of said multi-channel
application; and a third module adapted to allow a developer to
integrate data sources within said multi-channel application
using the teaching of Christfort. The modification would be
obvious because one of ordinary skill in the art would be
motivated to provide improved techniques for designing
applications that more effectively work with all devices
(Christfort, par. 21, lines 1-3).

(Id. at 5-6.) The Appellants argue that "the Examiner has impermissibly
used hindsight in an attempt to reconstruct [the] claim[s] . . . using isolated
teachings of Flores and Christfort. (App. Br. 11.) They further argue "that
the cited references fail to teach or suggest, for example, that the workflow
comprises 'a plurality of layers, . . . wherein each layer includes states and
transitions common to at least one channel of said multi-channel
application[]' . . . ." (Id. at 14.)

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Therefore, the issue before us is whether the Examiner erred in
combining teachings from Flores and Christfort and in finding that such a
combination would have suggested a multi-channel application capable of
operating over a plurality of channels, comprising a plurality of layers,
wherein each layer includes states or transitions common to at least one
channel of said multi-channel application.

FINDINGS OF FACT
Flores explains that "[a]n important part of a workflow analyst's work
is the development of business process maps, with which the analyst and
his/her client can readily see and interpret the structure of a business process,
and identify quickly areas for clarification or improvement." (Col. 1, ll. 59-
63.) Consequently, the reference discloses "a set of graphical tools that can
be used by a developer or business analyst to map out business processes."
(Abs., ll. 7-9.)
"A method and apparatus for providing a network based operating
system for mobile clients is disclosed" (Abs., ll. 1-2) by Christfort.
"Services may be developed that can be used to support different client
devices with different capabilities. The services provide output with
multiple variations based on different devices, and an intermediary selects
the variation best suited for the requesting device." (Id. at ll. 2-7.)

ANALYSIS
"Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int'l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
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Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, (Fed. Cir. 1983)).
"[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (citing In re Lee, 277 F.3d 1338, 1343-
46 (Fed. Cir. 2002); In re Rouffet, 149 F.3d 1350, 1355-59 (Fed. Cir. 1998)).
"To facilitate review, this analysis should be made explicit." KSR Int'l v.
Teleflex Inc., 550 U.S. 398, 401 (2007).
Here, Christfort provides a network based operating system that
features services that can be used to support different mobile clients. The
Examiner emphasizes that the same reference teaches that "it is desirable to
provide improved techniques for designing applications that more
effectively work with all devices." (¶ 0021.)
While we agree that such techniques are desirable for a network based
operating system that features services that can be used to support different
mobile clients, Flores is not concerned with a network based operating
system or services that can be used to support different mobile clients.
Instead, Flores merely maps out business processes. Consequently, the
Examiner has not persuaded us that applications that work with all mobile
client devices would have benefited Flores' mapping tools and, thus, would
have motivated one of ordinary skill in the art to combine teachings from
Flores and Christfort.
"'A prima facie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject
matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783
(Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA
1976)). Here, assuming arguendo that there was a reason to combine
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teachings from the two references, the teaching of Christfort that the
Examiner proposes to combine follows in pertinent part.
FIG. 1A also illustrates end users 130, 132, 134 that are
connected to host server 110 by connections 140, 142, 144. . . .
There are a number of different types of end users and
connections. For example, end user 130 may be a desktop
computer that is connected to host server 110 through a variety
of ways, such as via the Internet, a DSL connection, or an
ISDN.
(¶ 0066.) We are unpersuaded that this part of the latter reference discloses
the claimed "layers," "not to mention . . . that 'each layer includes states and
transitions common to at least one channel of said multi-channel
application[]' . . . ." (Appeal Br. 13.)
The Examiner does not allege, let alone show, that the addition of
Ambler cures the aforementioned deficiencies of Flores and Christfort.
Based on the aforementioned facts and analysis, we conclude that the
Examiner erred in combining teachings from Flores and Christfort and in
finding that such a combination would have suggested a multi-channel
application capable of operating over a plurality of channels, comprising a
plurality of layers, wherein each layer includes states or transitions common
to at least one channel of said multi-channel application.

DECISION
We reverse the rejections of claims 1-4, 6-14, 16-22, 25, and 26.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(v).

REVERSED
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Erc

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