Ex Parte Hyland et al

Board of Patent Appeals and Interferences

May 4, 2011

10720404 (B.P.A.I. May. 4, 2011)

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.
10/720,404 11/24/2003 Christopher Hyland LOT920030068US1 (022) 4110
46321 7590 05/05/2011
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
05/05/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER HYLAND and FERNANDO SALAZAR
____________

Appeal 2009-005589
Application 10/720,404
Technology Center 2100
____________

Before JOSEPH L. DIXON, LANCE LEONARD BARRY, THU A. DANG,
Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2009-005589
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STATEMENT OF THE CASE
The Patent Examiner rejected claims 8-21. The Appellants appealed
therefrom, and we affirmed. See Decision on Appeal (Jan. 20, 2011). The
Appellants now request rehearing, specifically "request[ing] the Honorable
Board designate the[ir] [affirmance] as a NEW grounds of rejection" (Req.
Reh'g 2) and "solicit[ing] the Honorable Board to reverse the Examiner's
rejections under 35 U.S.C. § 103." (Id. at 4.)

ILLUSTRATIVE CLAIM
8. A method for generating a user customized report
comprising the steps of:
retrieving a specified template for producing a desired
report;
determining from said specified template a set of
parameters required to produce said desired report;
for each parameter in said set, selecting a screen for
providing a user interface through which a value can be
established for said parameter, and embedding business rule
enforcement logic in said selected screen, the business rule
enforcement logic enforcing business rules for accessing data in
a database; and,
saving each of said selected screens in a report definition
configured to produce a report while executing said embedded
business rule enforcement logic to enforce the business rules in
respect to values established for corresponding ones of the
parameters in the set.

EXAMINER'S REJECTION
Claims 8-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent Application Publication No. 2002/0165936
Al ("Alston") and U.S. Patent Application Publication No. 2002/0049749
Al ("Helgeson").
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CLAIM GROUPING
Based on the Appellants' arguments, we decided the appeal of claims
8-21 on the basis of claim 8 alone. See 37 C.F.R. § 41.37(c)(1)(vii).
Likewise, we will decide the request for rehearing on the basis of claim 8
alone.

DESIGNATING OUR AFFIRMANCE AS A NEW REJECTION
The issue before us is whether the Appellants have shown that the
Board's affirmance of the Examiner's rejection of representative claim 8
amounted to a new rejection.
The Appellants make the following argument.
[T]he Honorable Board appears to have established a NEW
grounds of rejection under 37 C.F.R. 41.50(b) from one under
35 U.S.C. § 103(a) based upon Alston and Helgeson, to one
under 35 U.S.C. § 103(a) based upon Alston, Helgeson and
Official Notice of the knowledge of a person of ordinary skill in
the art.
(Req. Reh'g 2.)
"Appeal to the Board is from a decision of the Examiner, not from the
reasons upon which such decision is based." Ex Parte Sami Chemicals and
Extracts, LTD., No. 2007-3482, at 10 (BPAI Feb. 2, 2009). "[T]he ultimate
criterion of whether a rejection is considered 'new' in a decision by the board
is whether appellants have had fair opportunity to react to the thrust of the
rejection." In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976).
Here, we affirmed the decision of the Examiner to reject
representative claim 8 as being unpatentable over Alston and Helgeson. In
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doing so, we interpreted business logic as decision making applied in a
business environment. If the Appellants intend a narrower meaning of logic,
e.g. hardware circuitry, they should amend the claims to recite that meaning.
We found that those of ordinary skill in the art would have known that
the implementation of a business rule would require an exercise of such
business logicDecision on Appeal, at 7. "'Every patent application and
reference relies to some extent upon knowledge of persons skilled in the art
to complement that disclosed . . . ."' In re Bode, 550 F.2d 656, 660 (CCPA
1977) (quoting In re Wiggins, 488 F.2d 538,543 (CCPA 1973)). Those
persons "must be presumed to know something" about the art "apart from
what the references disclose." In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). We could have characterized this finding as the common sense
proposition that a rule is based on logic, i.e., decision making. The fact that
the Appellants named their rule as a "business" rule and their logic as
"business enforcement" logic does not change this proposition of common
sense.
The basic thrust of the Examiner's rejection and the Board's
affirmance was the same, and the Appellants have had a fair opportunity to
react to the thrust. Therefore, we conclude that the Appellants have failed to
show that the Board's affirmance of the Examiner's rejection of
representative claim 8 amounted to a new rejection.

Appeal 2009-005589
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REVERSING THE REJECTION
The issue before us is whether the Examiner erred in finding that
Helgeson would have suggested a business rule, as required by
representative claim 8.
"It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim, and that
anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed.
Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist &
Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Of course, anticipation
"is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d 831, 832-33, 15
USPQ2d 1566, 1567 (Fed. Cir. 1990) (citing Akzo N. V. v. United States Int'l
Trade Comm'n, 808 F.2d 1471, 1479 & n.11, 1 USPQ2d 1241,1245 & n.11
(Fed. Cir. 1986)). "An anticipatory reference ... need not duplicate word
for word what is in the claims." Standard Havens Prods. v. Gencor Indus.,
953 F.2d 1360, 1369 (Fed. Cir. 1991).
Here, the Examiner makes the following findings.
Helgeson teaches that Model pages are responsible for
producing an XML representation of the content of the page.
This content typically comes from executing complex business
logic (e.g., running database queries, exercising business APIs,
etc.).
Clearly, executing complex business logic, for example
running database queries, meet the claim limitation that
business rule enforcement logic enforces business rules for
accessing data in a database.

(Ans. 8.)
The same reference supports these findings by disclosing that
"[m]odel pages are responsible for producing an XML [i.e., eXtensible
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Markup Language] representation of the content of the page. This content
typically comes from executing complex business logic (e.g., running
database queries, exercising business APIs [i.e., application program
interfaces], etc.)" (Helgeson, ¶ 0772.)
We agree with the Examiner that the running of database queries is
done in accordance with rules for processing database queries. To the extent
the database is used for business, the associated rules constitute business
rules.
The Appellants argue "that the 'Command' pattern [of Helgeson] is not
a 'business rule', but a 'design pattern' well documented in the seminal text
by the 'Gang of Four' and is described in Wikipedia . . . ." (Req. Reh'g 3.)
"Argument in the brief does not take the place of evidence in the record."
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
Here, we are uncertain about the identity of "the seminal text by the
'Gang of Four'"(id.), and the Appellants do not seem to have provided a copy
thereof. The Appellants also failed to provide a copy of the Wikipedia they
cite to and their citation lacks a date to ensure that it reflects knowledge as of
the time of their invention.
Assuming arguendo that Helgeson's Command pattern is not a
business rule, that does not change the aforementioned finding that the
running of database queries used for business is done in accordance with
business rules for processing database queries. Therefore, we conclude that
the Examiner did not err in finding that Helgeson would have suggested a
business rule, as required by representative claim 8.

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DECISION
We have granted the Appellants' request for rehearing to the extent
that we have reconsidered our original affirmance of the Examiner's
rejection in view of the Appellants' arguments. We decline, however, to
designate our affirmance as a new rejection or to reverse the rejection.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

DENIED

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