Ex Parte Irassar et al

Patent Trials and Appeals Board

Feb 6, 2017

11946530 - (D) (P.T.A.B. Feb. 6, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/946,530 11/28/2007 Pablo D. Irassar C A920070084U S1 (065) 9344
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
THANGAVELU, KANDASAMY
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
02/08/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PABLO D. IRASSAR and SIMON K. JOHNSTON
Appeal 2016-001213
Application 11/946,530
Technology Center 2100
Before JOHN A. JEFFERY, MARC S. HOFF, and JEREMY J. CURCURI,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
This application returns to us after we affirmed the Examiner’s
decision to reject then-pending claims 1—19. Ex parte Irassar, No. 2011-
011597 (PTAB Mar. 3, 2014) (“Bd. Dec.”). Prosecution reopened after that
decision, and Appellants now appeal under 35 U.S.C. § 134(a) from the
Examiner’s subsequent decision to reject claims 1—19. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants’ invention renders a process model by parsing semantic
elements in a semantic process model and configures, for each semantic
element, an instance of a unitary operational element in a visual model with
different inbound and outbound connections according to an identified type
Appeal 2016-001213
Application 11/946,530
of semantic element. See generally Abstract. Claim 1 is illustrative with our
emphasis:
1. A method for rendering a process model through a
configuration of a unitary operational element in a process
modeling data processing system, the method comprising:
parsing semantic elements in a semantic process model;
identifying
different types for the semantic elements and
different connections amongst the semantic elements in
the semantic process model;
initializing a visual model to include instances of a unitary
operational element;
for each of the semantic elements,
determining whether the semantic element includes a node type
that corresponds to an action or does not correspond to an action in
the process model
configuring an instance of the unitary operational element in
the visual model with one inbound connection for a semantic node
including a node type determined to correspond to an action in the
process model, or with two or more outbound connections for a
semantic node including a node type determined to correspond to a
node type that is not an action in the process model and
connecting paths between respective outbound and inbound
connections of different instances of the unitary operational element
based upon the different connections amongst the semantic elements;
and,
displaying the visual model in the process modeling data
processing system.
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Appeal 2016-001213
Application 11/946,530
THE REJECTIONS
The Examiner rejected claims 1—19 under 35 U.S.C. § 112(a) or pre-
AIA 35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. Final Act. 3—9.1
The Examiner rejected claims 1—19 under 35 U.S.C. § 102(e) as
anticipated by Weber2 (US 2009/0113394 Al; published Apr. 30, 2009; filed
Oct. 31,2007). Final Act. 11-21.
THE WRITTEN DESCRIPTION REJECTION
The Examiner finds that Appellants’ Specification does not support
configuring an instance of a unitary operational element with one inbound
connection for a node type corresponding to an action in a process model, or
two or more outbound connections for node types that are not actions. Final
Act. 3—5; Ans. 5—10.
Appellants argue that paragraphs 16, 19, and 21 of the Specification
supports claim 1 ’s configuring limitation, particularly in light of the
Specification distinguishing task-based or “action” nodes from other non­
action nodes and their respective connections. App. Br. 10-16; Reply Br. 5—
9.
1 Throughout this opinion, we refer to (1) the Final Rejection mailed
September 3, 2014 (“Final Act.”); (2) the Appeal Brief filed June 1, 2015
(“App. Br.”); (3) the Examiner’s Answer mailed August 28, 2015 (“Ans.”);
and (4) the Reply Brief filed October 28, 2015 (“Reply Br.”).
2 Although the Examiner refers to this reference as “Webb” in the rejection
(Final Act. 11), we nonetheless refer to this reference by its correct name
“Weber.”
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Appeal 2016-001213
Application 11/946,530
ISSUE
Under § 112, first paragraph, has the Examiner erred by finding that
the original disclosure does not convey with reasonable clarity that
ordinarily skilled artisans possessed the recited configuring limitation when
the application was filed?
ANALYSIS
We begin by noting that claim 1 that was at issue in the earlier appeal
lacked the “determining” step recited in current claim 1. The earlier version
of claim 1 also recited, in pertinent part, configuring an instance of a unitary
operational element with zero or more inbound and outbound connections
according to an identified type. After prosecution reopened following our
decision, the determining step was added to claim 1, and the above-noted
emphasized language was changed to require configuring a unitary
operational element instance with (1) one inbound connection for a node
type corresponding to an action in a process model, or (2) two or more
outbound connections for node types that are not actions. It is this particular
connection-based configuration—and whether the original disclosure
supports possession of that configuration—that forms the basis for this
dispute.
Appellants’ Specification describes configurations of different
instances of a unitary operational element 160 used in a process modeling
data processing system. Spec. Tflf 18—20. As shown in Appellant’s Figure 2,
instances of a unitary operational element 210, 220, 230, and 240 can be
configured with different connections both inbound and outbound. Spec.
119. Moreover, the nature and number of connections can define whether
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Appeal 2016-001213
Application 11/946,530
an instance represents (1) a task or “action” node 210; (2) a decision node
220, 240; (3) a join node 230; (3) a merge node; or (4) a fork node. Id.
Several of these nodes and their respective connections are shown in the
partial detail view of Figure 2 reproduced below.
•'s -i ft
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......
f Branch
^3—IT>
Partial detail view of Appellants’ Figure 2 showing nodes and their
respective connections
Notably, an underlying data structure 250 for an instance of the
unitary operational element 210, 220, 230, 240 not only describes the type of
node, but also indicates the number of inbound and outbound connections,
namely whether there are zero or more of both types of connections,
respectively. Spec. 119.
The clear import of this discussion is that, regardless of whether a
node is an “action” node or not, a node can have zero or more inbound and
outbound connections, respectively. To be sure, the nature and number of
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Appeal 2016-001213
Application 11/946,530
connections can define whether a node is an action node, for a single
outbound connection indicates an action or task node, and decision nodes
have multiple outbound connections as shown in Figure 2. Spec, H 16, 19-
20. Indeed, Appellants’ claims 5 and 6 reflect this outbound-connection-
based distinction.
But that does not mean that an action node cannot also have one
inbound connection as claimed, for although action node 210 lacks an
inbound connection in Figure 2, Appellants’ paragraph 19 nonetheless states
that action node 210 can have zero or more inbound connections. Therefore,
configuring an action node with one inbound connection is reasonably
contemplated by the original disclosure not only in light of this emphasized
“zero or more” language, but also due to the outbound connections’ role in
distinguishing action nodes from other nodes as noted previously. See Spec.
1116, 19-20.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 8 and 13 which recite
commensurate limitations; and (3) the dependent claims for similar reasons.
THE ANTICIPATION REJECTION
The Examiner finds that Weber, among other things, determines
whether a semantic element includes a node type that (1) corresponds to an
action (task), or (2) does not correspond to an action, namely with respect to
decision, merge, fork, or join nodes. Final Act. 11—16; Ans. 10-13. The
Examiner also finds that Weber configures both types of nodes in the
manner claimed. Id.
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Appeal 2016-001213
Application 11/946,530
Appellants argue, among other things, that not only is the Examiner’s
reliance on Weber’s Figures 3, 8, and 9 misplaced regarding the recited
configuring step, but these figures fail to disclose determining that any node
does or does not corresponds to an action as claimed. App. Br. 10-16;
Reply Br. 5—9.
ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Weber (1) determines whether a semantic element includes a node type
that does or does not correspond to an action in a process model, and (2)
configures an instance of a unitary operational element in a visual model in
the recited manner?
ANALYSIS
We begin by noting that, similar to the earlier appeal, the Examiner
relies on, among other things, Weber’s Figure 3 for disclosing the recited
determining and configuring steps. Final Act. 14—15; Ans. 12—13. As we
noted in our earlier decision, Weber’s Figure 3 depicts part of a process
model 300 with paths 302—308 and nodes 310—312 within workflow
patterns. Weber 10087. As shown in that figure, split structure 316 splits
path 1 into paths 2 and 3, where path 2 contains Tasks A and B associated
with nodes 310 and 312 respectively, and path 3 contains Task C associated
with node 314. Id. Merge structure 318 merges paths 2 and 3 into path 4 as
shown in Weber’s Figure 3 below. Id.
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Appeal 2016-001213
Application 11/946,530
300 310
304 312
.........^..... ..
308
314
Weber’s Figure 3 showing merging paths 2 and 3 into path 4
Based on this functionality, we see no error in the Examiner’s finding
that Weber determines whether the semantic element includes a node type
that corresponds to an action, namely a task, as shown by nodes 310, 312,
and 314 representing Tasks A, B, and C, respectively. See Ans. 12; Final
Act. 14—15. Nor do we see error in the Examiner’s finding that Weber
determines whether the semantic element includes a node type that does not
correspond to this task-based action, including those node types involving a
“fork” which reasonably correspond to split structure 316 in Figure 3. See
id. That Weber distinguishes these different types of nodes, namely those
that are task-based versus those that are not, involves an associated
determination and, therefore, fully meets the determining step.
We also see no error in the Examiner’s finding that Weber configures
an instance of the unitary operational element with one inbound connection
for a node type determined to be an action, namely nodes 310—314 in Figure
3. See Final Act. 15; Ans. 12—13. Accord Bd. Dec. 5 (noting that Weber’s
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Application 11/946,530
nodes 310—314 are each configured with one inbound and outbound
connection, namely one input and one output).3
Nor do we see error in the Examiner’s finding that Weber configures
an instance of the unitary operational element with two or more outbound
connections for a node type determined to not correspond to an action,
including those node types involving a “fork” which reasonably correspond
to split structure 316 in Figure 3 that has two outbound connections directed
to nodes 310 and 314. Weber’s Figures 7 to 10 are similar in this regard, at
least with respect to arranging nodes corresponding to an action (i.e., an
activity) downstream from a split structure that does not correspond to that
activity-based action. As with Figure 3, nothing in claim 1 precludes this
functionality and, as such, Appellants’ arguments (App. Br. 10—16; Reply
Br. 5—9) are not commensurate with the scope of the claim.
3 Despite Appellants’ arguments to the contrary (App. Br. 12), the Examiner
considered the limitations deemed to be new matter, including the particulars
of the recited configuring step, in determining patentability over prior art
under MPEP 2163(111). Among other things, the Examiner maps both the
determining and configuring steps to particular passages and figures from
Weber on pages 12 and 13 of the Answer in connection with the anticipation
rejection. To the extent that the Examiner construes the recited “one
inbound connection” as “one outbound connection” in light of the perceived
new matter and the action node 210 in Appellants’ Figure 2 which has no
inbound connection and one outbound connection (see Final Act. 9, 22; Ans.
13), we treat any error associated with such a construction harmless on this
record given the support in the original disclosure for the “one inbound
connection” limitation as noted in this opinion in connection with the written
description rejection. Moreover, on page 5 of our earlier decision, we found
that Weber’s action nodes have one inbound and one outbound connection
which fully meets the recited “one inbound connection” limitation as noted
in this opinion.
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Application 11/946,530
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2—19 not argued separately with particularity.
CONCLUSION
The Examiner erred in rejecting claims 1—19 under § 112, but did not
err in rejecting those claims under § 102.
DECISION
The Examiner’s decision rejecting claims 1—19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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