Ex Parte Derebail et al

Patent Trial and Appeal Board

Jul 23, 2018

13847012 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/847,012 03/19/2013 Annap Derebail
52021 7590 07/25/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920130019US1_8150-0347 1305
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNAP DEREBAIL, AMARESH RAJASEKHARAN,
and MAN MOHAN SINGH
Appeal2017-001849 1
Application 13/847,012
Technology Center 3600
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 2
The Appellants3 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 9-20, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 We note related appeal 2017-001922, application 14/230,564.
2 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed June 21, 2016), Reply Brief ("Reply Br.," filed Nov. 14,
2016), and Specification ("Spec.," filed Mar. 19, 2013), and to the
Examiner's Answer ("Ans.," mailed Sept. 12, 2016), and Final Office
Action ("Final Act.," mailed Mar. 21, 2016).
3 According to the Appellants, the real party in interest is "IBM
Corporation." Appeal Br. 1.
Appeal2017-001849
Application 13/847,012
STATEMENT OF THE CASE
The Appellants' invention "relates to cross-domain integration within
a product lifecycle management (PLM) process." Spec. ,r 20.
Claims 9 and 1 7 are the independent claims on appeal. Claim 9
(Appeal Br. 28 (Claims App.)) is exemplary of the subject matter on appeal
and is reproduced below.
9. A system comprising:
a processor programmed to initiate executable operations
compnsmg:
providing a plurality of finite state machines,
wherein each finite state machine is associated with one
business object of an integration flow between a first
enterprise information system and a second enterprise
information system, and wherein each finite state machine
defines a plurality of lifecycle states of the associated
business object;
associating a business rule with each lifecycle state
of each finite state machine, wherein for each finite state
machine, the associated business rules are independent of
the finite state machine, and wherein for a selected
lifecycle state of each finite state machine, the associated
business rule defines a condition causing a transition from
the selected lifecycle state to a next lifecycle state of the
finite state machine; and
establishing a network of the plurality of finite state
machines by providing communication links among
individual ones of the plurality of finite state machines
according to the business rules, wherein the
communication links define the integration flow.
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REJECTIONS
I. Claims 9-20 stand rejected under the doctrine of provisional
nonstatutory double patenting over claims 1-8 of co-pending application
14/230,564. Final Act. 6.
II. Claims 9-20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Id. at 7.
III. Claims 9-20 stand rejected under AIA 35 U.S.C. § I02(a)(l) as
being anticipated by Nguyen (US 2005/0043982 Al, pub. Feb. 24, 2005).
Id. at 9.
ANALYSIS
Rejection I- Provisional Nonstatutory Double Patenting
The Examiner rejects claims 9-20 on the ground of nonstatutory
double patenting as being unpatentable over claims 1-8 of copending
application 14/230,564, related appeal 2017-001922, because the two sets of
claims "differ only in the statutory category in which the same process is
implemented as one application claims a system and computer program
product and the other claims a method. However, the steps of the process
are the same in both applications." Final Act. 6. We note that apparatus
claims 9-20 perform the functions as claimed in method claims 1-8 of
copending application 14/230,564, with the exception that, in method claims
1-8, the step of providing a plurality of machines is not performed by a
processor.
The Appellants do not argue against this rejection but state that "[t]his
rejection is not the subject of the present appeal. Appellants will make a
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determination as to the filing of a Terminal Disclaimer upon indication of
allowable subject matter." Appeal Br. 4, n.1.
Because the Appellants provide no arguments against the double
patenting rejection, we summarily affirm.
Rejection II-Patent-Ineligible Subject Matter-§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. (emphasis
added) ( citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S.
at 78-79).
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Turning to the first step of the Mayol Alice framework, we consider the
claims "in their entirety to ascertain whether their character as a whole is
directed to excluded subject matter." Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The question is
whether the claims as a whole "focus on a specific means or method that
improves the relevant technology" or are "directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
Here, the Examiner determines that the claims are directed to
"providing logic associated with business objects in a flow, associating
business rules with lifecycle states, and communicating links between logic
flows, which is a practice similar to those found by the courts to be
abstract." Final Act. 7. The Appellants do not state to what they consider
the claims directed, but contend the Examiner's determination is in error
because "the Examiner appears to be analyzing elements of the claimed
invention separately ... instead of analyzing the claimed invention, as a
whole" (Appeal Br. 11 ), and "the Examiner's reliance upon Cybersource is
misplaced" (id. at 12 ( citing CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1371 (Fed. Cir. 2011)).
The Title of the Specification provides for "CROSS DOMAIN
INTEGRATION IN PRODUCT LIFECYCLE MANAGEMENT." The
Background section of the Specification discusses that enterprise
information systems ("EIS") typically handle each phase of the lifecycle of a
product in the process of product lifecycle management. Spec. ,r 1. To
effectuate the process of product lifecycle management, two or more EISs
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must communicate with one another. Id. Such communication "across EIS
domains generally requires a significant amount of data processing." Id. ,r 2.
And, customizations of the EISs within each organization result in ever-
changing EISs. Id. ,r 3. "Adapting a monolithic system tasked with
establishing cross domain communication between two EISs under these
circumstances can be a time consuming and complex task ... [and] typically
requires redesign by skilled software developers that possess a high degree
of familiarity with the system being modified." Id. The invention
implements a network of finite state machines to "facilitate cross-domain
integration." Id. ,r 20. "Rather than utilize a monolithic system in which
processing logic is comingled with control logic, each finite state machine of
the network of finite state machines is correlated with a particular business
object." Id. By using business rules that exist external to, and independent
of, the finite state machines, "cross-domain integration becomes a flexible
process that is adaptable to changing environments through modification of
the business rules. Moreover, the adaptability of the system is realized
through user administration of the business rules." Id. ,r 21.
Claim 9 provides for a system comprising a processor programmed to
initiate operations comprising: "providing a plurality of finite state
machines," "associating a business rule with each lifecycle state of each
finite state machine," the rule defining a condition causing a transition from
one stage to another, and "establishing a network of the plurality of finite
state machines by providing communication links" according to the business
rules. Appeal Br. 28 (Claims App.). The processor claimed is central
processing unit/processor 205, part of system 200 that also includes memory
elements and a system bus/circuitry, i.e., a generic processor. Spec. ,r 28;
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see also Appeal Br. 2. The finite state machines are "implemented in the
form of executable program code, [ and are] executed by system 200." Spec.
,r 32; Appeal Br. 2. The operation of establishing a network is performed by
providing communication links according to business rules by using any of a
variety of known communication protocols. See Spec. ,r,r 33, 44, 55; Appeal
Br. 3.
In light of Specification's description of the problem and solution, the
purported advance over the prior art by the claimed invention is a way to
establish a network of a plurality of systems by providing communication
links between implemented code data of each system based on rules defining
the data flow. In that context, the claims are directed to integrating data
flow by using rules to establish communication links between systems.
Thus, we find error in the Examiner's determination that, under the first step
in the Alice/Mayo framework, the claims are directed to "providing logic
associated with business objects in a flow, associating business rules with
lifecycle states, and communicating links between logic flows."
The claims here do not simply collect, organize, and analyze data as in
CyberSource, 654 F.3d at 1370 (see Final Act. 7), where the claims were
directed to verifying Internet credit card transactions by collecting,
organizing, and comparing data pertinent to business risks. Nor do the
claims simply organize, store, and transmit information as in Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. App'x 988,992
(Fed. Cir. 2014). See Ans. 3. Rather, the claims here are more similar to
those of McRO, 837 F.3d at 1314, in that it is the incorporation of the rules,
not the use of a general purpose computer, that improves the technological
process of integrating data flow between systems. Here, the claims "go[]
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beyond merely 'organizing [existing] information into a new form' or
carrying out a fundamental economic practice." Id. at 1315 ( quoting
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014)). The claims at issue here require specific features of the
rules that limit the claims to a specific process for integrating data flow
between systems by establishing communication links using particular
information and, thus, techniques. See id. at 1316. When looked at as a
whole, the claims are directed to a technological improvement over existing
ways of data flow between enterprise information systems.
Because we determine that the claims are not directed to patent
ineligible subject matter, we do not reach the second step of the Alice/Mayo
framework.
Based on the foregoing, we do not sustain the Examiner's rejection
under 35 U.S.C. § 101 of claims 9--20.
Rejection III-Anticipation-§ 102(a)(l)
We agree with the Appellants' contention that the Examiner does not
adequately show that Nguyen discloses establishing a network of a plurality
of finite state machines by providing communication links according to the
business rules, the links defining the integration flow, as recited in
independent claims 9 and 17. See Appeal Br. 26; Reply Br. 10-12.
The Examiner finds that Nguyen discloses the limitations of
independent claims 9 and 17 at paragraphs 21 and 22. Final Act. 9--10.
These paragraphs ofNguyen disclose a "Contextual Workflow Modeling
(CWM) [that] is centered on a modified finite state machine running strictly
in the context of a data environment." Nguyen ,r 21. The isolation of the
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state machine by the data environment ensures that changes in the running
status of the state machine are effected only through changes in the data
environment. Id. The CWM is primarily concerned with how the outcome
of an action impacts the data environment (id.), and "is a rule-based system
where all workflow events, ranging from task initiation to state activation to
participant assignments, are governed by user-defined business rules" (id.
,r 22). The rules "form the bridge connecting the data environment to the
state machine." Id. The information regarding who has the privilege and
responsibility to modify the data environment in conjunction with the
current workflow data contents are used to dynamically generate a task list,
ensuring an up-to-date task list without manual intervention. Id.
The Examiner finds that Nguyen's workflow events meet the claimed
integration flow and Nguyen's data environment and state machine meet the
claimed two enterprise systems. Ans. 6. However, the Examiner does not
adequately explain, such that one of ordinary skill in the art would
understand, how Nguyen discloses establishing a network of its modified
state machine and data environment by providing communications links that
are based on the rules and that define the workflow events. Although
Nguyen discloses the rules forming a "bridge" connecting a data
environment with the state machine, the Examiner does not adequately
explain how this discloses providing communication links between a
plurality of state machines ( each associated with an enterprise system),
based on the rules, with the links defining the workflow events. Even if,
arguably, Nguyen discloses providing a communication link in the form of a
bridge between the machine and the data environment, Nguyen is clear that
its data environment is not a state machine of a separate system from
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Nguyen's modified state machine, but rather, is a separate structure that
isolates the state machine within the same system. See Nguyen ,r 21; see
also Appeal Br. 22. Further, even if the bridge is based on rules drawn from
the data environment, we do not see, and the Examiner does not adequately
explain, how Nguyen discloses that the bridge defines the workflow events.
At best, the bridge allows for information to be shared that is then used to
generate a task list. See Nguyen ,r 22. As such, we do not see how Nguyen
discloses establishing a network of state machines by providing links that are
among the machines, are according to rules, and that define the integration
flow.
Based on the foregoing, we do not sustain the Examiner's rejection
under 35 U.S.C. § 102(a)(l) of independent claims 9 and 17, and dependent
claims 10-16 and 18-20.
DECISION
The Examiner's provisional rejection of claims 9-20 on the ground of
non-statutory double-patenting is AFFIRMED.
The Examiner's rejection of claims 9-20 under 35 U.S.C. § 101 is
REVERSED.
The Examiner's rejection of claims 9-20 under 35 U.S.C. § 102(a)(l)
is REVERSED.
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).
AFFIRMED
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