Ex Parte Coldicott et al

Patent Trial and Appeal Board

Feb 15, 2017

12605635 (P.T.A.B. Feb. 15, 2017)

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.
12/605,635 10/26/2009 Peter A. Coldicott AUS920080668US1 1200
7590
Brown & Michaels (END)
c/o Brown & Michaels, PC
118 North Tioga Street
Suite 400
Ithaca, NY 14850
EXAMINER
SUGENT, JAMES F
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
02/17/2017 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):
docket@bpmlegal.com
lwood@bpmlegal.com
twood@bpmlegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER A. COLDICOTT and EOIN LANE
Appeal 2015-002708
Application 12/605,635
Technology Center 2100
Before: CHARLES N. GREENHUT, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-002708
Application 12/605,635
CLAIMED SUBJECT MATTER
The claims are directed to a system for standard-based mapping of
industry vertical model to legacy environments. Claim 1, reproduced below,
with emphasis added, is illustrative of the claimed subject matter:
1. A method for recommending points of integration between
an enterprise industry model and a legacy model, the method
comprising:
receiving a user entered first search term for the
enterprise industry model;
electronically searching a first domain of instance data of
the enterprise industry model for first nodes matching the first
search term;
generating and displaying a first graphical map that shows
one or more first nodes that match the first search term and edges
which interconnect the one or more first nodes with other nodes
in accordance with relationships defined in the first domain;
receiving a user entered second search term for the legacy
model;
electronically searching a second domain of instance data
of the legacy model for second nodes matching the second search
term;
generating and displaying a second graphical map that
shows one or more of the second nodes that match the second
search term and edges which interconnect the one or more second
nodes with other nodes in accordance with relationships defined
in the second domain;
calculating a probability score representing a probability
that a first one of the matching second nodes is capable of
implementing the function of a first one of the matching first
nodes; and
graphically indicating a connection between and the
probability score for the first one of the matching first nodes and
the first one of the matching second nodes.
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Appeal 2015-002708
Application 12/605,635
REJECTION
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over van den Heuvel (“Configuring Business Objects From
Legacy Systems”) and Ryan (“Matching Conceptual Graphs as an Aid to
Requirements Re-use”).
OPINION
A version of the claim language italicized above is present in each
independent claim 1,8, and 14. The Final Action states:
receiving a user entered first search term for the enterprise
industry model (Heuvel: pgs. 43-45, § 2.1: Heuvel discloses
creating a business object interface comprising “a set of
selected attribute and method signatures” wherein the
“selecting” teaches towards entering a search term for the
desired attributes);
electronically searching a first domain of instance data of
the enterprise industry model for first nodes matching the first
search term (Heuvel: pgs. 43-47, §§ 2.1-2.3, Figs. 1 and 2:
Heuvel discloses forward engineering to create the enterprise
model as well as performing reverse engineering to create a
legacy model such that the engineering necessitates
searching for the desired attributes)___
Final Act. 4.
On this point, Appellants correctly argue:
The fact that Heuvel teaches “toward” a user entered search term
(but doesn’t explicitly, inherently, or implicitly teach this
claimed limitation) is insufficient for satisfying the Office’s
burden. Attributes are selected for many manual processes.
These attributes need not be user entered. Additionally, the
attributes are not necessarily search terms.
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Appeal 2015-002708
Application 12/605,635
App. Br. 18.1
The Examiner does not further address this point in the Examiner’s
Answer. We agree that selecting particular attributes in van den Heuvel
does not necessarily equate to searching for them in van den Heuvel’s
business model, the “industry model” according to the claim language. The
Examiner does not directly map the steps in the claims to specific acts in van
den Heuvel. There is nothing apparent in the extensive cited sections of van
den Heuvel that could reasonably equate to the required first searching step.
Where van den Heuvel does discuss searching or querying, it is
performed in phase linking the business and legacy models, and only upon
the legacy model, van den Heuvel pp. 48-49, 52—53. The present
application may have similar goals, results, and even methodologies as van
den Heuvel. However, “there is no legally recognizable ‘essential’, ‘gist’ or
‘heart’ of the invention.” W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1548 (Fed. Cir. 1983). All words in a claim must be considered
in judging the obviousness of the claimed subject matter. See In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970). The Examiner has failed to establish
that van den Heuvel discloses “electronically searching a first domain of
instance data of the enterprise industry model for first nodes matching the
first search term.” As the Examiner does not explicitly account for this
distinction with any additional facts or reasoning, we are constrained to
reverse the Examiner’s rejection.
DECISION
The Examiner’s rejection is reversed.
1 The Appeal Brief lacks page numbers.
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Appeal 2015-002708
Application 12/605,635
REVERSED
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