Ex Parte Frank

Patent Trial and Appeal Board

Feb 4, 2014

11695151 (P.T.A.B. Feb. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOACHIM H. FRANK
____________________

Appeal 2011-012542
Application 11/695,151
Technology Center 3600
____________________

Before ANTON W. FETTING, JOHN W. MORRISON, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012542
Application 11/695,151

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8 and 16-22. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).1

THE CLAIMED INVENTION
Appellant’s claimed invention “relates to the field of conversation
protocol validation in e-business and more particularly to business-to-
business (B2B) conversation protocol validation” (Spec., para. [0001]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer-implemented method for testing protocol
compatibility between roles in a business-to-business (B2B)
conversation, the method comprising:
selecting at least two roles with known interaction
behavior;
receiving local protocols for each of the selected roles;
generating, using the computer, a conversation protocol
from the local protocols; and
detecting, using the computer, dead-end states in the
generated conversation protocol to identify protocol
incompatibility while identifying protocol compatibility in the
absence of dead-end states in the generated conversation
protocol.

1 Our decision will refer to Appellant’s Appeal Brief (“Br.,” filed December
27, 2010) and the Examiner’s Answer (“Ans.,” mailed May 11, 2011).
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Application 11/695,151

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THE REJECTIONS
The following rejections are before us for review:2
Claims 1, 2, 6, 7, 16, 17, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Guinan (US 6,073,113, iss. Jun. 6,
2000) and Stewart (US 2002/0013759 A1, pub. Jan. 31, 2002).
Claims 3-5 and 18-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Guinan, Stewart, and Boigelot (US 5,768,498, iss. Jun. 16,
1998).
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stewart and Guinan.

ANALYSIS
Independent claim 1 and dependent claims 2, 6, and 7
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because Guinan and Stewart,
whether considered individually or in combination, fail to disclose or
suggest “detecting, using the computer, dead-end states in the generated
conversation protocol to identify protocol incompatibility while identifying
protocol compatibility in the absence of dead-end states in the generated
conversation protocol,” as recited in claim 1 (Br. 24-25).
The Examiner asserts that Guinan discloses this limitation at
column 7, lines 5-12 (Ans. 5 and 18). However, the Examiner does not
adequately explain, and we do not see how the cited passage of Guinan

2 The rejection of claims 16-22 under 35 U.S.C. § 101 has been withdrawn
(Ans. 3).
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Application 11/695,151

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discloses or suggests identifying protocol compatibility or incompatibility in
a generated conversation protocol.
Guinan is directed to a system for checking compatibility between
operations, protocols, and instruments involved in electronic commerce
operations (Guinan, col. 1, ll. 16-21). Guinan describes that when a request
for an operation, e.g., a financial transaction, is received, the system checks
compatibility between the operation and available protocols for that
operation to determine a set of compatible protocols. Next, the system
checks compatibility between the set of compatible protocols and available
financial instruments (for performing the operation) to determine a set of
compatible instruments. If the set of compatible instruments includes at
least one instrument, the system selects a compatible instrument and a
corresponding compatible protocol, and uses that instrument and protocol to
perform the operation. (See, e.g., Guinan, Abstr., col. 6, l. 40 – col. 7, l. 15,
and fig. 6). Compatibility testing, as disclosed in Guinan, thus, “entails
determining whether a protocol can use the methods and data of an
instrument, and whether an operation can use the methods and data of a
protocol” (see Guinan, col. 5, ll. 47-50).
In claim 1, a conversation protocol is generated from at least two local
protocols. Thus, the protocol compatibility being tested for in claim 1
reflects a relationship between two or more protocols.
Guinan does not disclose or suggest testing compatibility between two
or more protocols, as called for in claim 1. Instead, the Guinan system
determines whether there is a match between the protocols that can be used
to perform a requested operation and the protocols with which the available
instruments, for performing the requested operation, can work. In other
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words, Guinan determines whether there is at least one instrument, i.e., at
least one “compatible instrument,” that will work with at least one of the
available protocols for performing the operation. Guinan, thus, describes at
column 7, lines 5-12, on which the Examiner relies, that if no compatible
instruments exist, the system indicates an “error condition” and proceeds to
an end state.
The Examiner has provided no reasoning as to why it would have
been obvious to a person skilled in the art to extend the techniques disclosed
by Guinan (i.e., testing for operation-protocol compatibility or instrument-
protocol compatibility) to testing protocol compatibility between two or
more protocols through analysis of a generated conversation protocol, as
called for in claim 1.
Therefore, we will not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a). We also will not sustain the rejection of claims 2,
6, and 7, which depend from claim 1. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent
claims from which they depend are nonobvious.”).
Independent claims 8 and 16 and dependent claims 17, 21, and 22
Independent claims 8 and 16 include language substantially similar to
the language of claim 1. Therefore, we will not sustain the rejection of these
claims under 35 U.S.C. § 103(a) for the same reasons as set forth above with
respect to claim 1. For the same reasons, we also will not sustain the
rejection of claims 17, 21, and 22, which depend from claim 16.
Dependent claims 3-5 and 18-20
Claims 3-5 and 18-20 depend from claims 1 and 16, respectively. The
Examiner has not established on this record that Boigelot cures the
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deficiencies of Guinan and Stewart as set forth above with respect to
claim 1. Therefore, we will not sustain the rejection of dependent claims 3-5
and 18-20 under 35 U.S.C. § 103(a) for the same reasons as set forth above
with respect to the independent claims.
New Ground of Rejection
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Non-Statutory Subject Matter
Each of independent claim 16 and dependent claims 17-22, which
depend therefrom, recites a “computer program product comprising a
computer usable storage medium having stored therein computer usable
program code” which, when executed on a computer, performs a number of
recited steps.
The phrase “computer usable storage medium,” when given its
broadest reasonable interpretation, includes signals. See Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (finding a
machine readable storage medium non-statutory under § 101). We do not
find any limitation on the form of the “computer usable storage medium” in
Appellant’s Specification. Where the broadest reasonable interpretation of a
claim covers signals per se, that claim must be rejected under 35 U.S.C.
§ 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d
1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter).
Therefore, we will enter a new ground of rejection of claims 16-22
under 35 U.S.C. § 101.

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DECISION
The Examiner’s rejections of claims 1-8 and 16-22 under 35 U.S.C.
§ 103(a) are reversed.
A NEW GROUND OF REJECTION has been entered for
claims 16-22 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also
provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the Examiner.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.
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).

REVERSED; 37 C.F.R. § 41.50(b)

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