Ex Parte Haller

Patent Trial and Appeal Board

Jan 27, 2015

11636667 (P.T.A.B. Jan. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte JOCHEN HALLER
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Appeal 2012–010373
Application 11/636,667
Technology Center 3600
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Jochen Haller (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1–10, which along with claims 11–20 withdrawn from
consideration, are the only claims pending in the application on appeal. An
oral hearing was held December 16, 2014. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 20, 2012) and Reply Brief (“Reply Br.,” filed July 3, 2012),
and the Examiner’s Answer (“Ans.,” mailed May 9, 2012).
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The Appellant invented a way to create secure process execution
environments (Specification para 1).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A system including instructions recorded on a computer
readable medium and executable by at least one processor, the
system comprising:
[0.1] an application server configured to provide an execution
environment;
and
[0.2] a process execution engine configured to execute a
process model within the execution environment,
[0.3] the process execution engine including
[1] an operational component
configured to perform
an operation of the process model
and
based on a security policy
which describes an allowable number
and order
of security services of a plurality of
security services
executing within the process
execution engine,
and
[2] a security provider
configured to determine,
based on the operation and on the security
policy,
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a parameterization of a selected number and
order of the allowable number and order of
security services,
and
configured to secure the operational component
according to the parameterization.
The Examiner relies upon the following prior art:
Organ US 7,047,463 B1 May 16, 2006
Patrick US 2006/0136555 A1 Jun. 22, 2006
Claims 1–10 stand rejected under 35 U.S.C. § 101 as directed to non–
statutory subject matter.
Claims 1–10 stand rejected under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure.
Claims 1–10 stand rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
Claims 1–10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Patrick and Organ.
ISSUES
The issues of statutory subject matter turn primarily on whether the
claims are directed to more than software per se. The issues of written
description turn primarily on the meaning of the phrase “a number of.” The
issues of indefiniteness turn primarily on whether the output of the second
limitation in claim 1 is the same as the input of the first limitation. A new
issue of indefiniteness is introduced regarding whether the first limitation of
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claim 1 can be grammatically construed. The issues of obviousness turn
primarily on whether the login security process extends beyond login.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Patrick
01. Patrick is directed to middleware for services and, more
particularly, to a switching fabric having message processing
capabilities through which clients and services can communicate.
Patrick para 32.
Organ
02. Organ is directed to automated multisite testing by
reconverging test flow execution sub-paths in a test sequence, and
the assignment of priority values for testing operations in a test
flow. Organ 1:9–14.
ANALYSIS
Claims 1–10 rejected under 35 U.S.C. § 101 as directed to non–statutory
subject matter
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We are persuaded by the Appellant’s argument that the claims are
directed to more than software per se because the claims recite a computer
readable medium.
Claims 1–10 rejected under 35 U.S.C. § 112, first paragraph, as lacking a
supporting written description within the original disclosure
We are persuaded by the Appellant’s argument that the instantiation
described in the Specification provides sufficient support for the recited
parameterization, and that the recited phrase “selected number . . . of
security services” means a selection of several security services, as the
phrase “a number of . . .” is an idiomatic synonym for several.
Claims 1–10 rejected under 35 U.S.C. § 112, second paragraph, as failing
to particularly point out and distinctly claim the invention
We are persuaded by the Appellant’s argument that the output of the
recited security provider is not the input to the recited operational
component, but is instead a parameterization. The arguments for the
rejections based on the phrase “selected number” are persuasive for the same
reasons as in the written description rejection analysis supra.
Claims 1–10 rejected under 35 U.S.C. § 103(a) as unpatentable over Patrick
and Organ
We are persuaded by the Appellant’s argument that Patrick’s user name
and password do not form a security policy that is further used as recited in
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the claims, viz. a parameterization of a selected number and order of the
allowable number and order of security services.
CONCLUSIONS OF LAW
The rejection of claims 1–10 under 35 U.S.C. § 101 as directed to non–
statutory subject matter is improper.
The rejection of claims 1–10 under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure is
improper.
The rejection of claims 1–10 under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention is
improper.
The rejection of claims 1–10 under 35 U.S.C. § 103(a) as unpatentable
over Patrick and Organ is improper.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1–10 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention. The inclusion of the word “and” following the phrase “an
operation of the process model” in limitation [1] of claim 1 renders
limitation [1] grammatically incomprehensible. Appellant admitted in the
oral hearing that the word should be deleted. See Transcript of Oral Hearing
page 4.
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DECISION
The rejection of claims 1–10 is reversed.
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1–10 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention.
This Decision contains a new rejection within the meaning of
37 C.F.R. § 41.50(b) (2011).
Our decision is not a final agency action.
37 C.F.R. § 41.50(b) provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new rejection:
(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. . . .

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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)(1)(iv) (2011).

REVERSED; 41.50(b)

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