Ex Parte Jensen et al

Patent Trial and Appeal Board

Jun 15, 2016

12962331 (P.T.A.B. Jun. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/962,331 12/07/2010 Claus T. Jensen
33558 7590 06/17/2016
INTERNATIONAL BUSINESS MACHINES CORPORATION
Richard Lau
IPLA W DEPARTMENT I Bldg 008-2
2455 SOUTH ROAD - MS P386
POUGHKEEPSIE, NY 12601
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
POU920100184US1 1711
EXAMINER
SANTOS-DIAZ, MARIA C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/17/2016 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):
poiplaw2@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUS T. JENSEN and ROBERT G. LAIRD
Appeal 2014-003778 1
Application 12/962,331 2
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Sept. 30, 2013), the Reply Brief ("Reply Br.," filed Jan. 22, 2014), the
Examiner's Answer ("Ans.," mailed Nov. 22, 2013), the Final Action
("Final Act.," mailed May 22, 2013), and the Specification ("Spec.," filed
Dec. 7, 2010).
2 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Br. 2.
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Application 12/962,331
STATEMENT OF THE CASE
The Appellants' invention is directed to using documentation plans
for Service Oriented Architecture ("SOA") governance. Spec.i-fi-f l, 2.
Claims 1, 1 7, and 19 are the independent claims on appeal. Claim 1 is
exemplary of the subject matter on appeal and is reproduced below:
1. A method for maintaining documentation policies in a
service oriented architecture (SOA) governance tool, the method
compnsmg:
implementing a structured documentation plan in a SOA
governance tool by using a computer processor, wherein the
structured documentation plan includes a set of documentation
types and a set of governance policies for at least one
documentation type from the set of documentation types.
Appeal Br. 14, Claims App.
REJECTIONS
Claims 1--4, 6-9, and 11-21 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Loewy (US 2004/0193703 Al, pub. Sept. 30, 2004).
Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Loewy and Brown (US 2010/0138254 Al, pub. June 3,
2010).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
Claims 1, 4, 7-9, and 11-21
The Examiner finds that Loewy discloses:
a system for enabling conformance and governance for a
distributed architecture to configure a policy that includes one
or more interface document types, these document types being
in conformance to the policy [and that] the set of policies that
are applicable to documents of a plurality of types may be
assigned to a project (i.e. documentation plan).
Final Act. 2-3 (citing Loewy i-fi-16, 7, 15, 47). The Examiner further finds a
policy is defined as "an overall plan embracing a goal," (Ans. 3) and, thus,
Loewy's disclosure of policies that are application to documents meets the
limitation of a documentation plan. Id.
The Appellants contend that the Examiner's rejection of independent
claims 1, 17, and 19 under 35 U.S.C. § 102(b) is in error because Loewy
does not disclose "implementing a structured documentation plan" as
required by the claims. See Appeal Br. 5-9; 11; see also Reply Br. 3-5.
Specifically, the Appellants argue that neither Loewy' s discussion of
policies applicable to documents, Loewy's "documentation of a policy", nor
Loewy's assigning of policies to document types is a "documentation plan"
as claimed, and that "[ o ]ne of ordinary skill in the art would not consider a
documentation plan as equivalent to recording a policy." Appeal Br. 6-8;
see also Reply Br. 3. According to the Appellants, a documentation plan
"captures and enforces documentation policies and practices in order to
standardize and optimize documentation in an effort to the benefit of the
SOA Governance and the quality of services[, and] defines a documentation
process ....
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In contrast, the Examiner finds that documentation of a policy is the
process of recording a policy." Appeal Br. 7-8.
The Appellants' arguments are not persuasive. The Specification does
not specifically define a "documentation plan" as recited by the Appellants
(id.), but rather that "[ e ]mbodiments of the present invention model, capture
and enforce documentation policies and practices in a documentation plan."
Spec. i-f 34. The Specification further describes, in discussing creating a
documentation plan, that
SOA Governance for documentation can provide policies on
the following areas: [ w ]hat to document[,] [ w ]here to
document[,] ... [i]n what format to document[,] ... [i]n what
granularity to document[,] ... [i]n what structure to
document[,] ... [h ]ow to incorporate existing, non-standard
documentation[,] ... [ w ]ho is documenting which parts of the
documentation[,] ... [h ]ow documentation is governed[,] ...
[h ]ow documentation is maintained ...
Spec. i-fi-1 106-116 (emphasis added). Claim 1 defines a structured
documentation plan as including a set of documentation types and a set of
governance policies. Claims App.
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, limitations
appearing in the specification, but not recited in the claim, will not be read
into the claim. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225,
1231 (Fed. Cir. 2005). Further, the test of whether a reference teaches a
claim limitation is not whether the exact language is present. Instead, the
relevant inquiry is whether the limitation is disclosed by Loewy's plan when
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Application 12/962,331
the claim is given its broadest reasonable interpretation in light of the
Specification. Cf In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990)
(interpretation of references is not "an 'ipsissimis verb is' test," citing Akzo
N. V. v. US. Int'! Trade Comm 'n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir.
1986)); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360,
1369 (Fed. Cir. 1991) ("[A] ... reference ... need not duplicate word for
word what is in the claims."). The Appellants have thus not persuasively
shown that the Examiner's finding that Loewy's plan including document
types and governance policies meets the claimed limitations is in error.
Furthermore, the Examiner's position that "any plan reads on the
claimed documentation plan if it is applied to documents" (Reply Br. 3), is
persuasive. The Appellants do not show how the implementation of a plan
as recited would be performed any differently from implementation of
Loewy's plan.
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of independent claims 1, 17, and 19 as anticipated by Loewy, and
we sustain the rejection. The Appellants provide no separate arguments for
claims 4, 7-9, 11-16, 18, 20, and 21. Thus, we also sustain the rejection of
those claims.
Claim 2
The Appellants contend that the rejection of claim 2 under 35 U.S.C.
§ 102(b) is in error because Loewy' s "policy maker which can use a policy
template generate a policy" does not disclose "a structured documentation
plan that includes at least one documentation template," as required by the
claim. Appeal Br. 9. We find this unpersuasive because the claim broadly
recites that the plan include a documentation template; the claim does not
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require that the plan cannot include policy makers using policy templates, or
any specific manner in which the plan must include the template.
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of dependent claim 2.
Claim 3
The Examiner finds, because the particular information is non-
functional descriptive material that does not alter the step of using the
template, the specific type of information does not patentably distinguish the
claim over the prior art. See Ans. 4; see also Final Act. 3.
The Appellants contend that the rejection of claim 3 is in error
because Loewy does not disclose the template specifying particular
information. See Appeal Br. 9--10. Specifically, the Appellants argue "the
particular documentation information specified in claim 3 is directly
connected to the structured document plan implementation and the
implementation step of claim 1 is directly affected by the particular
documentation information specified in claim 3." Id. at 10.
We agree with the Examiner that specific type of information in the
template is non-functional descriptive material that may not be relied upon
for patentability. We note that non-functional descriptive material cannot
render patentable an invention that is otherwise not patentable over the prior
art. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms ofpatentability); and (BPAI 2008) (precedential) ("[T]he nature of the
information being manipulated does not lend patentability to an otherwise
unpatentable computer-implemented product or process."). Although we
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Application 12/962,331
will not disregard any claim limitations and will assess the claimed invention
as a whole, we will follow the Federal Circuit's guidance as in the Gulack
decision and will not give patentable weight to printed matter absent a "new
and unobvious functional relationship between the printed matter and the
substrate." Id. at 1386; see also King Pharm. Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279-79 (Fed. Cir. 2010) (applying the "printed matter"
reasoning to method claims containing an "informing" step that could be
either printed or verbal instructions).
In this case, the relevant question is whether the claimed particular
information has a "new and unobvious functional relationship" with the
method. There is no objective evidence of record that there is a functional
relationship in the template specifying the recited particular information or
instructions, as compared to any other information or no information. The
Appellants argue that the information is connected to and directly affects the
implementation of the plan (see Appeal Br. 10), but do not recite or show
how the implementation of the plan changes or is affected by the particular
information in the template. The function of implementing a plan including
a template would be performed in the same manner regardless of the specific
type of information contained in the template. As such, the specific type of
template information constitutes non-functional descriptive that may not be
relied upon for patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004).
Concluding otherwise would result not only in Appellants' identified
information distinguishing over the prior art, but equally would distinguish
every other unique set of information. To give effect to Appellants'
argument, we would need to ignore our reviewing court's concerns with
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repeated patenting. See King Pharm., 616 F.3d at 1279 ("The rationale
behind this line of cases is preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
limitations."). We decline to do so.
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of dependent claim 3 as anticipated by Loewy, and we sustain the
rejection. See Ex parte Mathias, 84 USPQ2d 1276, 1279 (BP AI 2005)
(informative), ajfd 191 Fed. App'x 959 (Fed. Cir. 2006) (When a prior art
reference describes each and every feature of a claimed [invention], except
for the claimed non-functional descriptive material ... , it anticipates the
claimed onscreen icon inasmuch as "the [non-functional] descriptive
material will not distinguish the invention from the prior art in terms of
patentability[. ]").
Claim 6
The Appellants contend the Examiner's rejection of claim 6 is in error
because "[ c ]laim 6 requires that the governance policies [are] in the
structured documentation plan, not in [Loewy's] 'System Repository,"' and
because "there is no discussion of Policies 304 in Loewy being governance
policies specifying persons responsible for implementing portions of the
documentation plan." Appeal Br. 10, 11.
The Appellants' arguments are unpersuasive. Claim 6 does not
require that the governance policies must be in the plan, as opposed to a
database, but, rather, that the plan includes defining a set of governance
policies. Claims App. Further, the Examiner finds Loewy discloses the
claim at i-fi-18, 55, 57, 92-95 and Figures 2, 3, 6-8. Final Act. 4. Although
Loewy does not specifically use the term "governance," interpretation of
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references "is not an 'ipsissimis verbis' test," as noted above. Loewy
discloses defining policy elements or conformance rules (Loewy i-fi-18, 92).
Loewy further discloses, in discussing Figure 6, an authorization engine that
enables management of user authorizations including functionalities and
roles (id. i1 83) and assigning policies to a project that has authorization
information defined as part of the users, privileges, and authorization (id.
i195). Therefore, we find reasonable the Examiner's findings that Loewy
discloses governance policies specifying persons responsible for
implementing portions of the plan.
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of claim 6, and we sustain the rejection.
Claims 5 and 10
The Appellants contend the Examiner's rejection of claims 5 and 10 is
in error because Brown is disqualified under 35 U.S.C. § 103(c) since Brown
only qualifies under 35 U.S.C. § 102(e) and, like the present invention, was
under an obligation of International Business Machine Corporation at the
time of the invention. Appeal Br. 12.
However, Brown qualifies as prior art under 35 U.S.C. § 102(a) since
it was published on June 3, 2010, six months prior to the Appellants' filing
date of December 7, 2010. 35 U.S.C. § 103(c) only disqualifies art owned
by the same person or subject to an obligation to the same person if the art
qualifies only under subsections ( e ), ( f), or (g) of§ 102.
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of claims 5 and 10, and we sustain the rejection.
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DECISION
The rejection of claims 1--4, 6-9, and 11-21under35 U.S.C.
§ 102 (b) is AFFIRMED.
The rejection of claims 5 and 10 under 35 U.S.C. § 103(a) 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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