Ex Parte Cummins

Patent Trial and Appeal Board

Oct 11, 2012

11553823 (P.T.A.B. Oct. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FRED A. CUMMINS
____________________

Appeal 2010-006030
Application 11/553,823
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1-33. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 Real Party in Interest is Hewlett-Packard Development Company, L.P.
(HPDC). Appeal Brief filed November 18, 2009 (“App. Br.”).
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I. STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s claims are generally directed to a method, system, and
software for integrating business rules into automated system processes. See
generally Abstract, Spec. pg. 3, ll. 2-16.
Claims on Appeal
Claims 1, 12 and 23 are independent. Claim 1 is a process claim,
whereas claim 12 is a corresponding system claim and claim 23 is a
corresponding Beauregard claim.
Claim 1 is representative and is reproduced below with disputed
limitations emphasized:

1. A method for integrating business rules into
automated business processes, comprising:

identifying an entity affected by a data update initiated by
a step of an automated business process, said entity comprising
data that represents a person, place, or thing;

accessing a rule registry comprising a plurality of
business rules, each business rule corresponding to one or
more entities and defining a constraint on a state of each entity
to which the rule corresponds;

determining which business rules in the rule registry to
evaluate by determining from the plurality of business rules one
or more business rules that correspond to the entity affected by
the data update;

for each of the business rules determined to correspond to
the entity affected by the data update:

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evaluating the business rule in context to
determine whether performing the data update would
violate the business rule; and

if it is determined that performing the data update
would violate the business rule, raising an exception in
accordance with the violated business rule.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cook U.S. 6,820,082 B1 Nov. 16, 2004
Grindrod U.S. 6,868,413 B1 Mar. 15, 2005

Examiner’s Rejections
Claims 1-33 stand rejected as unpatentable under 35 U.S.C. §103(a)
as being obvious over Grindrod in view of Cook (App. Br. 11; Ans. 3).

II. ISSUES
The dispositive issue before us is whether the Examiner has erred in
rejecting claims 1-33 under 35 U.S.C. §103(a) because the cited prior art,
including Grindrod and Cook, fails to teach or suggest the argued features.
In particular, the issue turns on whether:
(1) the Examiner’s combination of Grindrod and Cook discloses or
suggests the limitation “each business rule corresponding to one or more
entities and defining a constraint on a state of each entity” and “said entity
comprising data that represents a person, place, or thing” as recited in
representative claim 1 and corresponding system claim 12 and Beauregard
claim 23 (App. Br. 12-13) (emphasis added); and
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(2) the Examiner’s combination of Grindrod and Cook discloses or
suggests the limitation “tracking which business rules are evaluated for the
step in the business process by storing an association of the evaluated
business rules with the step in the business process” as recited in claims 4,
15 and 26 (App. Br. 13-14) (emphasis added).

III. ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief (App.
Br. 12-14) that the Examiner has erred, the Examiner’s rejections (Ans. 3-
34) and the Examiner’s responses to Appellant’s arguments (Ans. 35-37).

Independent Claims 1, 12 and 23
With respect to representative claim 1, Appellant contends that:
Claim 1 requires that the claimed entity comprises data
that “represents a person, place or thing.” Claim 1 further
specifies what is meant by a business rule. Per the claim, a
business rule “define[s] a constraint on a state of each entity to
which the rule corresponds.”

App. Br. 12.
Appellant also contends that:
Grinrod [sic] lacks a teaching of a business rule as
claimed, that is, a business rule that defines a constraint on a
state of an entity, the entity comprising data that represents a
person, place, or thing.

App. Br. 12 (emphasis added).

We do not agree with Appellant. Claim terms must be given their
“broadest reasonable interpretation” consistent with the specification. In re
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Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). As properly noted by the
Examiner and expressly recognized by Appellant regarding Grindrod:
[A] business rule generally refers to a logical statement defined
around events occurring in the database within the customizable
business logic application system. An event refers to the
creation, modification, deletion, or fetch of a ticket or record in
the database. . . .

Business rules are generally designed to fit the needs of
the company in which the customizable business logic
application is utilized. A business rule is an expression of one
or more conditions and one or more actions such that when the
one or more conditions are met, the one or more actions are
triggered.

As an example, a business logic rule may specify that an
e-mail is to be sent to a manager when a help desk ticket is
closed. As another example, a business logic rule may specify
that a next work order is to be opened in sequence after a help
desk ticket closes. Yet another example is a business logic rule
that specifies that a help desk ticket priority is to be upgraded in
priority when the ticket becomes a week old.

Grindrod, col. 6, ll. 37-64 (emphasis added); see also App. Br. 12;
Ans. 36-37.

In addition, Grindrod further describes that the business process “that
may be implemented by a given business rule preferably include create,
update, delete, and fetch.” Col. 7, ll. 24-26.
In view of such a disclosure, we agree with the Examiner’s
interpretation that:
[A] ticket or record in the database equivalent to an entity, a
record in the database could refer to a person, e.g. a customer, a
place, e.g. contact address, or a thing, e.g. a purchase
transaction, the example at column 6 lines 61-64, “a help desk
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ticket is to be upgraded when the ticket becomes a week old” is
a business logic rule equivalent to “define a constraint on a state
of an entity” and “a help desk ticket” is a “thing” equivalent to
“an entity”. . . .

Ans. 36 (emphasis added).

We also find the Examiner’s interpretation reasonable, particularly in
view of Appellant’s own Specification, as reproduced below.
An entity may include a cluster of data that represents the state
of a person, place, or thing, including a conceptual thing, in the
business. As non-limiting examples, an entity may include a
cluster of data that represents the state of a customer, a part, an
order, a specification, an account, a journal entry, or a driver’s
license. An attribute may include a characteristic of an entity,
such as its name, color, weight, quantity, or status. An attribute
may be an elementary data value, but an attribute may be a data
structure when the characteristic is more complex. Such
attributes may be managed substantially the same as attributes
where a complex attribute is stored once and referenced by the
relevant entities. In certain embodiments, entities may also
have relationships with other entities. For example, an order
may be related to the customer from whom the order is
accepted. Entities (e.g., intersection or associative entities) may
also represent the occurrence of a relationship where the
relationship has additional attributes, such as where orders are
associated with parts being ordered, and each association of
“order” to “part” may have a quantity and potentially a price or
weight. In certain embodiments, a relationship may be
considered a special form of an attribute.

Spec. pg. 12, l. 30 to pg. 13, l. 14 (emphasis added).

Appellant further argues that “Grindrod’s business rules do not
correspond to the actual data in the database, but rather to the act of
updating, creating, fetching, or deleting the records.” Rep. Br. 1-2.
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However, we find that Appellant’s arguments are not commensurate
with the scope of representative claim 1 and its companion system claim 12
and Beauregard claim 23. It is axiomatic that, in proceedings before the
PTO, claims in an application are to be given their broadest reasonable
interpretation consistent with the specification, and that claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir.
1983). Moreover, limitations are not to be read into the claims from the
specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing
In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
In our opinion, Appellant’s arguments improperly attempt to narrow
the scope of the claim by implicitly adding disclosed limitations which have
no basis in the claim. See In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir.
1997). Nowhere in Appellant’s independent claims 1, 12 and 23, is there
any recitation that the business rule must correspond to the actual data in the
database; rather, the business rule of Appellant’s independent claims 1, 12
and 23 simply defines a constraint on a state of an entity, and that entity
comprises data that represents a person, place, or thing.
In view of these reasons, we will sustain the Examiner’s rejection of
independent claims 1, 12 and 23.

Dependent Claims 4, 15 and 26
Appellant further contends that neither Grindrod nor Cook discloses
or suggests the limitation “tracking which business rules are evaluated for
the step in the business process by storing an association of the evaluated
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business rules with the step in the business process” as recited in claims 4,
15 and 26. App. Br. 13-14; Rep. Br. 1-2.
We disagree. As properly noted by the Examiner, the business rule of
Grindrod can be created or modified, and the new or modified business rule
can be saved and committed to the database. See col. 10, ll. 34-41 of
Grindrod.
In view of this disclosure, we agree with the Examiner’s finding that
“the new or modified business rule [that] can be saved and committed to the
database” encompasses the “storing an association of the evaluated business
rules with the step in the business process” as recited in claims 4, 15 and 26.
Ans. 36-37. Such an association or connection is made by Grindrod, when
the rule conditions, actions data, and schedule of the business rule are
validated prior to committing a business rule to the database. See col. 10, ll.
37-41 of Grindrod.
For these reasons, we will sustain the Examiner’s obviousness
rejection of claims 4, 15 and 26.

Dependent Claims 2-3, 5-11, 13-14, 16-22, 24-25, and 27-33
Appellant presents no arguments regarding patentability of these
claims separately from independent claims 1, 12 and 23. As such, claims 2-
3, 5-11, 13-14, 16-22, 24-25, and 27-33 stand and fall together with
independent claims 1, 12 and 23. See 37 C.F.R. § 41.37(c)(1)(vii) (stating
that “the failure of Appellant to separately argue claims which Appellant has
grouped together shall constitute a waiver of any argument that the Board
must consider the patentability of any grouped claim separately.”).

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IV. CONCLUSION2
On the record before us, we conclude that Appellant has not
demonstrated that the Examiner’s obviousness rejection of claims 1-33
contains error.

V. DECISION
As such, we affirm the Examiner’s decision to reject claims 1-33
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)(1)(iv).

AFFIRMED

msc

2 In the event of further prosecution, independent claims 1, 12 and 23 should
be evaluated for compliance with 35 U.S.C. § 101 in view of recent Supreme
Court decision in Bilski v. Kappos, 130 S.Ct. 3218, 3221 (2010), MPEP
revised §2106.01 (August 2012), and post-Bilski application under §101,
including CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011) (holding that a method for verifying the validity of a credit
card transaction over the Internet to be nonstatutory as an abstract idea
capable of being performed in the human mind or by a human using a pen
and paper) and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed.
Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible.” (citation omitted)).