Ex Parte Dweck et alDownload PDFPatent Trial and Appeal BoardMar 31, 201611075206 (P.T.A.B. Mar. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 111075,206 132787 7590 Docket Clerk-GOLD P.O. Drawer 800889 Dallas, TX 75380 FILING DATE FIRST NAMED INVENTOR 03/08/2005 Jay S. Dweck 04/04/2016 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. GOLDll-00035 2422 EXAMINER LIAO, JASON G ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): john.maxin@gs.com patents@munckwilson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAYS. DWECK and ALEXANDER D. HASSAN Appeal2014-008047 Application 11/075,206 Technology Center 2100 Before ST. JOHN COURTENAY III, MONICA S. ULLAGADDI, and MATTHEW J. McNEILL, Administrative Patent Judges. ULLAGADDI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 2, 4--8, 10, 11, 15, 37-39, 42--44, 46, and 47. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Claim 46, reproduced below, is illustrative of the claimed subject matter: 46. A method of processing a business transaction, compnsmg: 1 Claims 1, 3, 9, 12-14, 16-36, 40, 41, and 45 are cancelled. App. Br. 11-15 (Claims App'x). Appeal2014-008047 Application 11/075,206 creating a plurality of managed business objects wherein each of the managed business objects is associated with a plurality of pre-defined states, wherein each of the managed business objects is associated with a separate unique identifier and wherein each of the plurality of pre-defined states is associated with at least one pre-defined rule for moving the managed business object from a first of the plurality of pre- defined states to a second of the plurality of pre-defined states, wherein the second of the plurality of pre-defined states is different than the first of the plurality of pre-defined states, and wherein the at least one pre-defined rule comprises a pre- condition and a post-condition, wherein the pre-condition comprises an event that triggers application of the at least one rule and the post-condition comprises the second pre-defined state to which the managed business object is moved; receiving, via a graphical user interface, an indication of the pre-condition and the post-condition to be associated with each of the at least one pre-defined one rule; receiving, by a control engine, a first event notification; issuing a first action request from the control engine directly to a first component application when the first event notification triggers application of the at least one pre-defined rule based on the pre-condition and the managed business object being in the first of the plurality of pre-defined states; receiving a first action response at the control engine from the first component application in response to completion of the first action request; either transitioning, by the control engine, the managed business object to the second of the plurality of pre-defined states or maintaining, by the control engine, the managed business object in the first of the plurality of pre-defined states in accordance with the at least one predefined rule when the second of the pre-defined states in response to the first action response; receiving a second event notification; 2 Appeal2014-008047 Application 11/075,206 issuing a second action request directly to a second component application, separate and independent of the first component application, based at least in part on the second event notification; exchanging information directly from the first component application to the second component application; and generating, by the second component application, a second action response based on the information exchanged from the first component application. REFERENCES AND REJECTIONS2 The prior art relied upon by the Examiner in rejecting the claims on appeal is: Zothner Teegan et al. Burke et al. Angeline et al. US 6,745,382 Bl US 6,748,555 Bl US 6,789,252 Bl US 6,883, 172B1 June 1, 2004 June 8, 2004 Sept. 7, 2004 Apr. 19, 2005 2 In the event of fi.1rther prosecution, \Y..fe leave it to the Examiner to consider whether all claims on appeal should be rejected under 35 U.S.C. § 101. Abstract ideas have been identified by the courts by way of example, as including fundamental economic practices, certain methods of organizing human activities, an idea of itself, and mathematical relationships and/or formulas. Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2355-56 (2014). To the extent Appellants' claim 47 may require conventional computer hardware (e.g., a processor and memory) to perform the recited functions, "if a patent's recitation of a computer amounts to a mere instruction to 'implemen[ t ]' an abstract idea 'on ... a computer,' ... that addition cannot impart patent eligibility." Alice, 134 S. Ct. at 2358 (quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1301 (2012). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) §1213.02. 3 Appeal2014-008047 Application 11/075,206 Claims 2, 4--8, 10, 11, 15, 37-39, 46, and 47 (incorrectly set forth as 1, 2, 4--8, 10-12, 15, 37-39, and 45) stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burke, Angeline, Zothner, and Teegan. Final Act. 5-21. Claims 42--44 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burke, Angeline, Zothner, and Teegan, and further in view of Official Notice. Final Act. 21-22. ANALYSIS The Examiner concludes claim 46 is rendered obvious by the combination of Burke, Angeline, Zothner, and Teegan. The Examiner cites Burke as teaching the disputed portion of the "creating" limitation emphasized in claim 46 above and cites Teegan as teaching the claimed separate "unique identifier." Final Act. 7-11. The Examiner finds Burke discloses the "transitioning" limitation as an inherent feature of any finite state model, and even any non-quantum system, because "everything must either stay the same, or change." Id. at 2-3; see also id. at 8. We agree with and adopt as our own the Examiner's findings and conclusion, which we highlight below. First, Appellants argue that the ontologies and taxonomies taught by Burke do not have pre-defined states and thus, are not the same as the claimed "managed business objects ... associated with a plurality of pre- defined states," as recited in claim 46. App. Br. 6 citing Burke, col. 6, 11. 56-62, col. 27, 11. 16-20. The Examiner maps the states of contract formation, as taught by Burke, to the claimed "pre-defined states" and points to supporting citations in, for example, columns 37 and 44--46 of Burke. 4 Appeal2014-008047 Application 11/075,206 Ans. 7-8. Appellants do not address these findings, nor address the entirety of the cited teachings of Burke and thus, do not persuasively rebut the Examiner's findings. Second, Appellants contend "the Examiner should have taken Official Notice and provided specific factual findings predicated on sound technical and scientific reasoning" with respect to the finding of inherency. App. Br. 6 (emphasis omitted). When a rejection relies on an inherent disclosure of a reference, the burden of proof shifts to Applicants to disprove the inherency of those features. Ans. 6 citing In re Best, 562 F.2d 1252 (CCPA 1977). We agree with the Examiner that Appellants did not meet the burden of proof and do not present sufficient evidence to rebut the Examiner's articulated position of inherency. Id. at 6-7. Third, Appellants argue Burke "is not applicable to the present technology" because Burke's contract negotiation model "is incapable of maintaining a state as the response must move in response to a proposal." App. Br. 7. Appellants contend [t]he states proposed by Burke include accept, reject, or counter to a proposal from an existing party. The state of the activity must change and cannot be maintained as simple contract law provides that the state must change to one of the above indicated states. Id. Assuming, arguendo, Burke could be properly characterized as being directed to a field of technology different from that of the claimed invention as Appellants contend, Appellants' argument that Burke is incapable of maintaining a state is unpersuasive because claim 46 recites the "transitioning" and "maintaining" elements in the alternative. See claim 46 ("[E]ither transitioning ... to the second of the plurality of pre-defined states 5 Appeal2014-008047 Application 11/075,206 or maintaining ... in the first of the plurality of pre-defined states" emphasis added). We agree with the Examiner that performing one of these elements satisfies the entire claim limitation. See Ans. 12-13. Thus, the finding that Burke teaches "transitioning" is sufficient to meet the entire "transition" limitation emphasized in claim 46 above. Fourth, Appellants argue Teegan's "'software objects' are fundamentally different than the Applicant's managed business objects" and, for this reason, Teegan does not teach the claimed "unique identifier for a managed business object." App. Br. 8. Appellants further argue: [t]herefore, even though Teegan discloses a 'class' with a unique identifier, Teegan does not teach that the individual objects will have a unique identifier. At best, all of the objects of Teegan 's class would have the same 'unique' identifier associated with that class. Therefore, any individual object would not be associated with a unique identifier as recited in claim 46 because the identifier would not be unique to the object and all objects of the class would be associated with the same identifier. Id. However, Appellants present neither an alternative definition supported in the Specification for the claimed "managed business object" nor sufficient evidence to persuade us the Examiner's interpretation of this term to encompass Teegan's teaching of a software object is overbroad, unreasonable, or inconsistent with the Specification. See Ans. 16-17 citing Spec. 4 ("the phrase 'managed business object' may refer to any information that represents a business or commercial item") and Burke, co 1. 1 (" [ o ]bj ect- oriented software technologies enable the construction and operations of new types of rules-based business objects, applications and processes"). Appellants concede Teegan "discloses a 'class' with a unique identifier," and "all of the objects of Teegan' s class would have the same 6 Appeal2014-008047 Application 11/075,206 'unique' identifier associated with that class." App. Br. 8. However, Appellants argue "Teegan does not teach that the individual objects will have a unique identifier." Id. We agree with the Examiner that Appellants' argument is not commensurate in scope with the language of claim 46, which recites "each of the managed business objects is associated with a separate unique identifier." Ans. 17-19; In re Self, 671 F.2d 1344 (CCPA 1982). Claim 46 does not specify from which element the identifier is "separate" and "unique." Thus, the "separate unique identifier" recited in claim 46 does not exclude from its scope an identifier that is unique only among different classes, i.e., an identifier that differs among objects created from different classes but is the same among objects created from a common class. Accordingly, we agree Appellants' argument is not persuasive to show nonobviousness. Id. Fifth, Appellants argue "it would not be obvious to one skilled in the art to combine Teegan with Burke" because "'software objects' and 'business objects' are not the same type of objects and are fundamentally different." App. Br. 8. As discussed above, the Examiner finds the claimed "managed business objects" are taught or suggested by Teegan's software objects. Ans. 16-17. The Examiner further finds Burke teaches software objects defined as business objects and Teegan teaches software objects. Id. Thus, we agree "Burke and Teegan are part of the same field of endeavor, and qualify as analogous art" and are not persuaded by Appellants' argument. Id. For the foregoing reasons, we are not persuaded the Examiner erred in finding the combination of Burke, Angeline, Zothner, and Teegan teaches or suggests the limitations recited in claim 46, the commensurate limitations of 7 Appeal2014-008047 Application 11/075,206 claim 47, and the limitations of claims 2, 4--8, 10, 11, 15, 37-39, and 42--44, which depend therefrom and are not separately argued. Therefore, we sustain the 35 U.S.C. § 103(a) rejections of claims 2, 4--8, 10, 11, 15, 37-39, 42--44, 46, and 47.3 DECISION The Examiner's decision to reject claims 2, 4--8, 10, 11, 15, 37-39, 42--44, 46, and 47 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 3 Claims 42--44 are rejected over Burke, Angeline, Zothner, and Teegan in view of Official Notice. As these claims are not argued separately, we reach the same conclusion with respect to claims 42--44 as reached with respect to claim 46, from which they depend, for substantially similar reasons. 8 Copy with citationCopy as parenthetical citation