Ex Parte Enenkiel

Patent Trial and Appeal Board

Feb 11, 2016

12984973 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/984,973 01/05/2011
131475 7590 02/11/2016
Dilworth IP - SAP
2 Corporate Drive, Suite 206
Trumbull, CT 06611
FIRST NAMED INVENTOR
Achim Enenkiel
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.
07781.0266-01000 3348
EXAMINER
ORTIZ ROMAN, DENISSE Y
ART UNIT PAPER NUMBER
3627
MAILDATE DELIVERY MODE
02/11/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ACHIM ENENKIEL
Appeal2013-008364
Application 12/984,973
Technology Center 3600
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final rejection of claims 24--43. App. Br. 1. Claims 1-23 have
been cancelled. See Amendment mailed August 2, 2012. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Related Application No. 11/109,725 was the subject of Appeal No. 2011-
012511 decided January 6, 2014. A Notice of Abandonment of this related
application was mailed March 11, 2014.
Appeal2013-008364
Application 12/984,973
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to the field of data processing
and, more particularly, to tax related data processing systems and methods."
Spec. i-f 1. Claims 24, 31, and 38 are independent. Claim 24 is reproduced
below and is illustrative of the claims on appeal:
24. A method for requesting processing of a transaction, the
method comprising:
transmitting, by a requestor, a first request message to a
first web service for processing the transaction;
determining, by the requestor, that the first web service is
unable to process the transaction;
submitting, by the requestor, a UDDI query to a UDDI
registry in response to determining that the first web service is
unable to process the transaction;
receiving, by the requestor, from the UDDI registry a list
of web services capable of processing the transaction in
response to the UDDI registry receiving the UDDI query;
selecting, by the requestor, from among the received list
of web services, a second web service; and
transmitting, by the requestor, to the second \~1eb seP1ice
a second request message for processing the transaction,
wherein the requestor comprises at least one processor.
REFERENCES RELIED ON BY THE EXAMINER
Miller
Gallagher
US 2005/0198206 Al
US 7 ,200,569 B2
THE REJECTIONS ON APPEAL
Sept. 8, 2005
Apr. 3, 2007
Claims 24--28, 30-35, 37--41, and 43 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Miller.
Claims 29, 36, and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Miller and Gallagher.
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Appeal2013-008364
Application 12/984,973
ANALYSIS
The rejection of claims 24-28, 30-35, 37-41, and 43
as anticipated by Miller
Appellant states that "claims 24--28, 30-35, 37--41, and 43 stand or
fall together."2 App. Br. 6. We select independent claim 24 for review with
the remaining claims standing or falling with claim 24. See also 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellant contends that "Miller does not teach or even suggest [the
step of] 'submitting, by the requestor, a UDDI query to a UDDI registry in
response to determining that the first web service is unable to process the
transaction,' as recited in independent claim 24 (emphasis added)." App. Br.
7. The Examiner relies on "at least abstract and figure 6" of Miller for
disclosing this limitation. Final Act. 3.
In reaching this finding in regard to the "submitting" step, we
understand the Examiner to be correlating Miller's "proxy" to the claimed
"requestor'' that submits the UDDI query. 3 See Final Act. 3; see also Ans. 2,
Miller i-f 48 and Abstract. Appellant acknowledges that the Examiner "may
be asserting that the autonomic proxy of Miller corresponds to the claimed
2 Appellant also focuses on claim 24 in the Appeal Brief contending that
independent "claims 31 and 38 are allowable over Miller for reasons similar
to those presented above for claim 24." App. Br. 9. Appellant addresses
dependent claims 25-28, 30, 32-35, 37, 39--41, and 43 by stating that they
"are also allowable over Miller at least by virtue of their respective
dependence from an allowable base claim." App. Br. 9.
3 The last limitation of claim 24 states, "wherein the requestor comprises at
least one processor." We address our understanding of the Examiner's
finding in regard to this limitation because Appellant contends that the
Examiner "does not clarify which portion of Miller purportedly corresponds
to the claimed 'requestor. "' App. Br. 8; see also Reply Br. 2. Appellant
does not contend, however, that Miller's proxy lacks a processor.
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Appeal2013-008364
Application 12/984,973
'requestor"' but contends that this cannot be the case "because the
autonomic proxy does not submit a 'UDDI query to a UDDI registry in
response to determining that the first web service is unable to process
the transaction,"' as claimed. App. Br. 8; see also Reply Br. 2-3 (both
referencing "Miller, Abstract"). Granted, Miller's Abstract may be silent
regarding the sending of a query to a UDDI registry by a proxy when the
first web service is not available, but the Examiner referenced more than just
Miller's Abstract to support the finding because the Examiner referenced "at
least abstract and figure 6" as disclosing this limitation. Final Act. 3.
Miller's Figure 6 is discussed in paragraph 48 of Miller. Paragraph 48 of
Miller states that if the
proxy determines that the selected Web service is no longer
available, the autonomic proxy may discover the policy of each
Web service candidate in the group of Web service candidates
(step 608), and select another Web service from the pool or
appropriate candidates based on the policy (step 610).
Miller if 48 (emphasis added).
Hence, paragraph 48 of Miller teaches that if an earlier selected
service is not available, the "proxy may discover the policy" of other
candidates, and select one of those candidates "based on the policy."
See also Ans. 2-3. Paragraph 36 of Miller states that "[c]urrent
methods of discovering policy include locating the information in a
public or private UDDI registry." Paragraph 6 of Miller discusses
UDDI registries stating that "[a] UDDI registry contains information
about Web services" and that "[a] client wishing to locate a Web
service to meet particular needs can query the UDDI registry to locate
entries for Web services that meet those needs." In summary,
although Miller's Abstract, by itself, may fail to fully disclose the
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Appeal2013-008364
Application 12/984,973
limitation in question, 4 Appellant does not persuade us that Miller's
Abstract, considered together with Miller's paragraphs 48, 36, 6, and
Figure 6, fail to teach this limitation. 5 See Final Act. 3.
When Appellant addresses Miller's paragraph 48, Appellant
states that this paragraph teaches a proxy that "may ... select another
Web service from the pool of appropriate candidates .... " App. Br.
8; see also Reply Br. 3. However, Appellant does not replicate the
portion of this paragraph that teaches that the proxy may discover the
policy of each Web service candidate. See App. Br. 8; see also Reply
Br. 3. Appellant's omission regarding this teaching in Miller of
subsequent discovery by the proxy of the policy of each candidate, as
well as Appellant not disputing that it is known to discover such
policy via a "public or private UDDI registry" (see supra), is not
persuasive that the Examiner's findings are in error. 6 Accordingly,
4 Miller's Abstract teaches a proxy that "queries the UDDI registry based on
the client request."
5 The Examiner finds that "selecting from a pool of appropriate
candidates involves sending a query." Ans. 3. Appellant does not explain
how this finding is incorrect in view of the noted teachings of Miller. See
Miller i-fi-16, 36, 48, and Abstract.
6 Appellant further characterizes Miller's paragraph 48 as teaching that "the
autonomic proxy selects another Web service from a pool of appropriate
candidates that it has previously stored. See, e.g., Miller, i1 [0048]." App.
Br. 9. To be clear, Miller's paragraph 48 states that the proxy "may discover
the policy" of each candidate service while Miller's paragraphs 6 and 36
explain that such policy determination can be accomplished via a UDDI
registry. Miller's Abstract clearly states that the "proxy queries the UDDI
registry." In view of these teachings, Appellant's contention that "the cited
portion of Miller [i.e., paragraph 48] still does not teach or suggest
submitting 'a UDDI query to a UDDI registry,"' is not persuasive. See
Reply Br. 3.
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Appeal2013-008364
Application 12/984,973
based on the record presented, we sustain the Examiner's rejection of
claims 24--28, 30-35, 37--41, and 43.
The rejection of claims 29, 36, and 42
as unpatentable over Miller and Gallagher
Appellant does not dispute the Examiner's findings regarding the
teachings of Gallagher but instead, Appellant repeats the assertion that
Miller fails to disclose the "submitting" limitation discussed supra. App. Br.
10-11. Appellant contends that "Gallagher fails to remedy the deficiencies
of Miller" and that "claims 29, 36, and 42 are allowable by virtue of their
dependency." App. Br. 11.
Appellant's contention is not persuasive for the reasons discussed
above. We sustain the Examiner's rejection of claims 29, 36, and 42 as
being obvious over Miller and Gallagher.
DECISION
The Examiner's rejections of claims 24--43 are 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)(l)(iv).
AFFIRMED
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