10648140 (B.P.A.I. Feb. 28, 2012)

Ex Parte Harvey et al

Board of Patent Appeals and InterferencesFeb 28, 2012

10648140 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RICHARD HARVEY and TIMOTHY BENTLEY ____________ Appeal 2010-001360 Application 10/648,140 Technology Center 2100 ____________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and ST. JOHN COURTENAY III, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1-17. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We Affirm. Appeal 2010-001360 Application 10/648,140 2 INVENTION Appellants’ invention relates to “UDDI (Universal Description, Discovery, and Integration)] registry and Web Services in general, and in particular to method(s), apparatus and system(s) used in giving practical effect to such services.” (Spec. 1, ll. 9-11). ILLUSTRATIVE CLAIM 1. A method for use in a Web Services system, comprising: providing a Web Services Directory having object classes and attributes; and defining attributes of a specific type which correspond to a specific object class, each attribute unique to the specific object class to which the attribute belongs; and generating an index based on the specific attribute types. Appellants appeal the following rejection: Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shiman (U. S. Patent Application Publication No. US 2002/0019827 A1) and Gadbois (U.S. Patent Application Publication No. US 2004/0002955 A1). GROUPING OF CLAIMS Based on Appellants’ arguments in the Briefs, we decide the appeal on the basis of representative claims 1, 2, and 6. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-001360 Application 10/648,140 3 ISSUE (1) Are Appellants’ arguments urging patentability predicated on nonfunctional descriptive material regarding the argued limitations of “defining attributes of a specific type which correspond to a specific object class, each attribute unique to the specific object class to which the attribute belongs,” within the meaning of independent claims 1, 7, and the commensurate language of independent claim 13? ANALYSIS Based upon our review of the record, we find Appellants’ arguments urging patentability are predicated on nonfunctional descriptive material. Therefore, we find Appellants’ arguments unconvincing that the Examiner erred by finding that the combination of cited references would have taught or suggested “defining attributes of a specific type which correspond to a specific object class, each attribute unique to the specific object class to which the attribute belongs,” within the meaning of independent claims 1, 7, and the commensurate language of independent claim 13. (App. Br. 15; Reply Br. 3). The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information content of a memory. . . . Nor does he seek to patent the content of information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, Appeal 2010-001360 Application 10/648,140 4 aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). Here, we conclude that claimed “index” is generated in the same manner regardless of the “uniqueness” of the attributes to the specific object class. Moreover, even if we arguendo accord the unique attributes of specific type patentable weight, the generated index is not positively recited in independent claims 1, 7, and 13 as being used to change or otherwise affect the operation of any computer or other machine. Thus, the informational content of the claimed unique attributes and the generated index represents nonfunctional descriptive material that is entitled to no weight in the patentability analysis. For these reasons, we are not persuaded by Appellants’ arguments that the Examiner erred in reaching the ultimate legal conclusion of obviousness. Therefore, we sustain the Examiner’s rejection of claim 1, and claims 3-5, 7, 9-11, 13, and 15-17, which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii). Dependent Claims 2, 6, 8, 12, and 14 Appellants additionally contend that Shiman and Gadbois fail to teach or suggest “the object classes are a subclass of an abstract object class” (claim 2), and “providing specific attributes which relate to one object class for a purpose of enhancing searching” (claim 6). (App. Br. 19-20 and 22). However, for reasons similar to those discussed above regarding independent claims 1, 7, and 13, we do not find Appellants’ arguments persuasive of Examiner error. The argued limitations of “object classes [that] are a subclass of an abstract object class” (claim 2), and “providing specific attributes which relate to one object class for a purpose of enhancing Appeal 2010-001360 Application 10/648,140 5 searching”1 (claim 6), are not positively recited as being used to change or otherwise affect the operation of any computer or other machine. Thus, the informational content of the claimed object class, subclass, abstract object class, and specific attributes represents nonfunctional descriptive material that is entitled to no weight in the patentability analysis. Therefore, we also sustain the Examiner’s obviousness rejection of dependent claims 2, 6, 8, 12, and 14. ISSUE (2) Under §103, did the Examiner err in combining Shiman and Gadbois? ANALYSIS Appellants contend that the proposed combination of Shiman and Gadbois is improper because the Examiner has not established a motivation to combine the references at the time of the invention. (App. Br. 17-18). On this record, we are of the view that Appellants’ purported improvement over the prior art represents no more than the predictable use of prior art elements according to their established functions, and thus would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply arranges 1 "An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.'' Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although ''[s]uch statements often . . . appear in the claim's preamble,'' In re Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. Appeal 2010-001360 Application 10/648,140 6 old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” (citing Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976))). We note that as acknowledged by Appellants, the Examiner provided the advantages of modifying Shiman to include features of Gadbois. (App. Br. 18). On this record, we find the Examiner has provided an articulated reasoning with sufficient rational underpinning to establish why one of ordinary skill in the art would have combined Shiman and Gadbois at the time of Appellants’ invention. 2 DECISION We affirm the Examiner’s § 103 rejection of claims 1-17. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED llw 2 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))