Ex Parte Holdsworth et al

Patent Trial and Appeal Board

Jul 14, 2014

12274402 (P.T.A.B. Jul. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/274,402 11/20/2008 Simon Antony Holdsworth GB920070086US1 1168
58139 7590 07/15/2014
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
EXAMINER
OSMAN, RAMY M
ART UNIT PAPER NUMBER
2457
MAIL DATE DELIVERY MODE
07/15/2014 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 SIMON ANTONY HOLDSWORTH and
GREGORY LOUIS TRUTY
________________

Appeal 2012-000654
Application 12/274,402
Technology Center 2400
________________

Before JAMES T. MOORE, ANDREW J. DILLON, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-14. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 1-14 are rejected under 35 U.S.C. § 102(e) as anticipated by
Roestenburg (US 7,249,197 B1; issued July 24, 2007). Ans. 4-5.
We reverse, and enter a new ground of rejection.

Appeal 2012-000654
Application 12/274,402

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STATEMENT OF THE CASE
Appellants’ invention relates to processing messages and locating
elements within a message. Spec. ¶ 1. Claim 1 is illustrative and
reproduced below:
1. A method for a mediation processing node computer processor
to update an electronic message, comprising:
receiving an electronic message for processing by the mediation
processing node computer processor;
deducing from a declared interface of the mediation processing node
computer processor that one or more message values will be updated by the
mediation processing node computer processor as a result of its processing;
obtaining one or more updated values using the interface of the
mediation processing node computer processor; and
applying the updates to the message.

ANALYSIS
The Examiner finds Roestenburg describes all limitations of claim 1.
Ans. 4-5. The Examiner finds Roestenburg’s proxy server identifying
occurrences of attributes relating to currency describes the recited deducing
from a declared interface. Ans. 4-5 (citing col. 10, ll. 44-45).
Appellants, among other arguments, argue “Roestenburg discloses
that proxy server 20 converts an amount of money from one currency to
another currency; however, the Examiner has not pointed to any language in
Roestenburg directed to a declared interface or deducing from a declared
interface that one or more message values will be updated.” App. Br. 5.
Appellants further explain “[a] software module is a portion of a program
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which accomplishes a particular function and contains everything necessary
to accomplish this function. The Examiner has not provided any basis in fact
and/or technical reasoning to support the assertion that a software module
corresponds to a declared interface.” App. Br. 5; see also Reply Br. 2-5, 6-8.
In response, the Examiner explains
Appellants have not provided any facts or technical
explanations as to how a proxy module of Roestenburg, which
is used to obtain user currency preferences, is different from the
claimed “interface” which is used to obtain “updated values”.
The converted currency preferences of Roestenburg [are] seen
to be equivalent to the claimed “updated values”.
Accordingly tasks performed by the proxy server (like the
claimed deducing steps) are seen to be inherently performed by
a proxy software module which is functionally equivalent to the
claimed “interface”. Appellant has failed to dispute this
functional equivalency on any technical grounds.
Ans. 6.
Appellants’ arguments persuade us that the Examiner erred in finding
that Roestenburg describes the recited deducing from a declared interface.
This appeal hinges on one question: what is a “declared interface”?
Appellants’ Specification does not define the term “declared interface” but
does describe “[t]he values to be updated could, for example, be deduced
from the names of the declared interface’s method calls or could be deduced
from additional information exposed by the declared interface.” Spec. ¶ 9.
Appellants’ Specification also describes “[t]he mediation [40, in an
embodiment illustrated in Fig. 2a,] exposes at its declared interface (I/F) 45
a list of ‘set’ and ‘get’ methods.” Spec. ¶ 33. Appellants’ claim 1 recites
“deducing from a declared interface.” The term “declaration” is defined in
the computer context as:
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n. A binding of an identifier to the information that relates to it.
For example, to make a declaration of a constant means to bind
the name of the constant with its value. Declaration usually
occurs in a program’s source code; the actual binding can take
place at compile time or run time. See also bind, constant, data
declaration, data type, identifier, instruction, routine, type
declaration, variable.
MICROSOFT COMPUTER DICTIONARY 149 (5th ed. 2002).
Thus, we conclude a broad but reasonable construction of “declared
interface” requires a binding of one or more names to the interface, and
requires exposing information including the one or more bound names. This
construction is consistent with the claim language, the Specification, and the
plain meaning of “declaration” in the computer context.
Roestenburg (col. 10, ll. 44-47) describes “[t]he proxy server 20 then
identifies occurrences of the attributes relating to currency and retrieves
(step 56) the personal information from the second storage device 22
corresponding to the attribute relating to currency.”
We do not see a compelling explanation in the record of how
Roestenburg deduces from a declared interface as recited in claim 1, which
requires deducing from an interface exposing information including one or
more bound names.
Although Roestenburg’s proxy server does identify attributes in an
intercepted generic web page, there is no explanation of how Roestenburg
deduces from the proxy server (mapped by the Examiner to the recited
declared interface) the names of these attributes. Further, there is no
explanation of how Roestenburg’s proxy server (mapped by the Examiner to
the recited declared interface) includes a binding of one or more names and
exposes information from which deduction may take place. In short, claim 1
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is narrower than identifying attributes in a generic web page — the claim
requires deducing from a declared interface (deducing from an interface
exposing information including one or more bound names), which is not
described by Roestenburg’s proxy server.
We, therefore, do not sustain the Examiner’s rejection of claim 1, or
of claims 2-7, which depend from claim 1.
We also do not sustain the Examiner’s rejection of independent claim
8, which recites “computer-readable program code configured to deduce
from a declared interface of the mediation processing node computer
processor that one or more message values will be updated by the mediation
processing node computer processor as a result of its processing,” or of
claims 9-14, which depend from claim 8.

NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to 37
C.F.R. § 41.50(b). Claims 8-14 are rejected under 35 U.S.C. § 101 as being
directed toward non-statutory subject matter.
Claims 8-14 recite a computer program product disposed on a
computer-readable storage. Appellants’ Specification describes “[t]he
computer-usable or computer-readable medium may be, for example but not
limited to, an electronic, magnetic, optical, electromagnetic, infrared, or
semiconductor system, apparatus, device, or propagation medium.” Spec. ¶
24 (emphasis added). Therefore, we find Appellants’ claimed invention
encompasses transitory propagating signals, which are unpatentable under
35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject matter).
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ORDER
The Examiner’s decision rejecting claims 1-14 is reversed. We enter a
new ground of rejection of claims 8-14.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50 (b) also provides that the Appellants, 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 CFR § 41.50(b)

ELD