11014442 (B.P.A.I. Jul. 25, 2011)

Ex Parte Idicula et al

Board of Patent Appeals and InterferencesJul 25, 2011

11014442 (B.P.A.I. Jul. 25, 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. 11/014,442 12/15/2004 Sam Idicula 50277-2602 4630 42425 7590 07/25/2011 HICKMAN PALERMO TRUONG & BECKER/ORACLE 2055 GATEWAY PLACE SUITE 550 SAN JOSE, CA 95110-1083 EXAMINER MOBIN, HASANUL ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 07/25/2011 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 SAM IDICULA, THUVAN HOANG, ASHA TARACHANDANI, NIPUN AGARWAL, RAVI MURTHY, and ERIC SEDLAR ____________ Appeal 2009-007395 Application 11/014,442 Technology Center 2100 ____________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and JOHN A. JEFFERY, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE A Patent Examiner rejected claims 1-20. The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2009-007395 Application 11/014,442 2 A. INVENTION The invention at issue on appeal relates to repository management, and in particular, to ways of facilitating integration of user-supplied rules with a repository. (Spec. 1). Techniques are described for integrating business logic through the use of "resource configurations." A resource configuration is a unit of business logic that is supplied, at least in part, by a user to the repository and is associated with a particular resource, such as a directory. Each resource configuration contains one or more configuration items that each defines and/or expresses one or more business rules for managing a resource associated with a resource configuration. A resource configuration enables a user to "declaratively" and/or "programmatically" integrate business rules within a repository. A business rule is declaratively integrated within a repository by supplying business logic that conforms to a format or syntax recognized by the repository for expressing business rules and operations for managing resources in the repository. The business logic may take the form of values assigned or associated with particular attributes recognized by the repository to mean that a resource should be managed in a particular way. The business logic can also take the form of code that conforms to computer language like syntax that specifies instructions for performing operations within a repository. The repository interprets, evaluates, and/or analyzes declaratively provided business logic to carry out the business rule expressed by the business logic. (Spec. 6-7). Appeal 2009-007395 Application 11/014,442 3 B. ILLUSTRATIVE CLAIM Claim 1, which further illustrates the invention, follows. 1. A method for managing a hierarchy of resources in a repository, the method comprising: receiving user input that associates a resource configuration with a directory within the hierarchy of resources stored in the repository, wherein the resource configuration is an XML [i.e., eXtensible Markup Language] document that declaratively defines one or more rules; based on data in the resource configuration, associating the resource configuration with at least one resource within the hierarchy; wherein the resource configuration contains a first configuration item that includes data that expresses the one or more rules in a format that can be interpreted by the repository; wherein the resource configuration identifies a routine to call to determine how to manage a resource within the hierarchy in response to an event concerning the repository; invoking the routine in response to the event; the repository responding to the event based on output returned by invoking the routine; interpreting the first configuration item; and managing the resource based on the interpreting of the first configuration item. C. REFERENCES The Examiner relies on the following references as evidence: Manning US 6,959,416 B2 Oct. 25, 2005 Chakraborty US 7,117,216 B2 Oct. 3, 2006 Appeal 2009-007395 Application 11/014,442 4 Ambler US 6,393,456 B1 May 21, 2002 D. REJECTIONS Claims 1-5, 10-151 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Manning in view of Chakraborty. Claims 6-9 and 16-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Manning in view of Chakraborty further in view of Ambler. PRINCIPLES OF LAW 35 U.S.C. § 103 In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings 1 We note that Appellants have identified claims 11-20 as dependent claims in the original filing fee calculation (not provided a Summary of the Claimed Invention for independent claim 11 in the Appeal Brief ), but claims 11-20 are directed to a different statutory class of the invention and therefore must be independent claims. (App. Br. 8). Appeal 2009-007395 Application 11/014,442 5 directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001). ANALYSIS Appellants argue that the claimed "receiving user input that associates a resource configuration with a directory within the hierarchy of resources stored in the repository, wherein the resource configuration is an XML document that declaratively defines one or more rules" is alleged to be taught by Chakraborty at column 2, lines 1-8, but at best teaches that "something that has been constructed based on a web page such as an XML document, rather than an XML document itself." (App. Br. 5). In response to Appellant’s contention, the Examiner provides a lengthy discussion with numerous "well-known" statements without any express support thereof. (Ans. 14-16). Appellants contend that the Examiner's stated rejection and responsive arguments are contradictory and unreasonable in light of the relied upon teachings of Manning and Chakraborty. (App. Br. 5-7; Reply Br. 3-4). Appellants further contend that the Examiner's generalized and unsupported allegations in the Answer at pages 14-15 fails to teach or suggest "a resource Appeal 2009-007395 Application 11/014,442 6 configuration that defines the rules that can be interpreted by a resource repository as featured in Claim 1." (Reply Br. 3). We agree with Appellants and conclude that the relied upon teachings by the Examiner do not teach or suggest the invention as a whole as recited in independent claim 1. Therefore, we cannot sustain the rejection of independent claim 1 and its respective dependent claims. Since claims 11-20 contain commensurate limitations, we cannot sustain the rejection of claims 11-20. CONCLUSION For the aforementioned reasons, the Examiner has not established a showing of obviousness of method claims 1-10 and medium claims 11-20. VII. ORDER We reverse the obviousness rejections of claims1-20. REVERSED tkl