Ex Parte Dweck et al

Patent Trial and Appeal Board

Mar 31, 2016

11075206 (P.T.A.B. Mar. 31, 2016)

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