Ex Parte Knitter

Board of Patent Appeals and Interferences

Jan 27, 2011

10635815 (B.P.A.I. Jan. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAY D. KNITTER
____________________

Appeal 2009-007457
Application 10/635,815
Technology Center 2400
____________________

Before THOMAS S. HAHN, ELENI MANTIS MERCADER, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007457
Application 10/635,815

2
Appellant invokes our review under 35 U.S.C. § 134(a) from
rejections of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF CASE2
Exemplary Claims3
According to Appellant, the claimed method, computer program
product, and client server call for receiving a method call from a client
computer to invoke an object on a data server. The method call is packaged
in a message sent from the client server to the data server. The object on the
client computer that is invoking the object on the data server is identified
from an execution stack by using an algorithm. Dependent claims further
recite that the message comprises a Simple Object Access Protocol (SOAP).4
Claims 1 and 6 are illustrative:
1. A method of identifying a message source in a network,
comprising:
receiving a method call from a client computer to invoke an object on
a data server;
packaging the method call in a message to be sent from a client server
to the data server via the network;

2 Appellant identified Application Serial No. 10/448,646, which is
incorporated by reference in this application (Spec. ¶ [0001]), as including
appealed claim rejections (Br. 2). A Decision (Appeal No. 2008-4867) for
that appeal was mailed on May 15, 2009, and the application was indicated
to be abandoned on July 21, 2009.
3 Throughout this opinion we refer for their respective details to the
Specification filed Aug. 7, 2003, the Final Action mailed Sep. 26, 2007, the
Appeal Brief filed Apr. 17, 2008, and the Examiner’s Answer mailed May
14, 2008.
4 See generally Spec. ¶¶ [0013]-[0015]; Figs. 1, 2.
Appeal 2009-007457
Application 10/635,815

3
on the client server, identifying, from an execution stack and through
the use of a comparison algorithm, an object on the client computer
that is invoking the object on the data server; and
transmitting the message to the data server.
6. The method of claim 1, wherein the message comprises a simple
object access protocol (SOAP) message.
Rejections
Claims 1-22 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement (Ans. 3-8).
Claims 6-9, 15-18, and 21 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite (Ans. 8-9).
The Examiner or Appellant has cited the following documents:
Mein US 6,457,066 B1 Sep. 24, 2002
Apache Software Foundation, Web Services - Axis,
http://ws.apache.org/axis/ (last visited Jan. 25, 2011).
Corba Fundamentals Glossary, http://www.ooportal.com/corba-
fundamentals/corba-fundamentals-glossary.php (last visited Jan. 25, 2011).
Posting of Jim White to
http://groups.google.com/group/comp.lang.java.programmer/msg/b24afb100
ccdfe8b (Apr. 19, 2000).
Dave Winer, Scripting News, http://scripting.com/2002/09/27.html, (Sep.
27, 2002).
Appellant’s Contentions
Appellant contends, with respect to the lack of enablement rejection
under § 112, first paragraph, that “[p]aragraphs [0015]-[0022] and Figs. 2-5
of the present application disclose a method for carrying out the claimed
invention” (Br. 5).
The Examiner, under § 112, second paragraph, finds that a claimed
SOAP protocol lacks definiteness (see Ans. 8-9). Appellant contends that “a
precise and clear definition of the SOAP protocol can be obtained from
Appeal 2009-007457
Application 10/635,815

4
paragraph [0004] of the specification . . . ” and “[t]he protocol described in
U.S. Patent No. 6,457,066 . . . and the protocol implemented by Apache
Axis were included [in the Specification] as examples of implementations of
SOAP” (Br. 7).
Issues
Appellant’s contentions present us with the following issues:
1. Does Appellant’s Specification enable an ordinarily
skilled person to practice the invention recited in the claims without undue
experimentation?
2. Would an ordinarily skilled artisan understand the scope
of the SOAP protocol as recited in claims 6-9, 15-18, and 21?

PRINCIPLES OF LAW
Lack of Enablement
When making an enablement rejection, the Examiner must present a
reasonable explanation why “the scope of protection provided by that claim
is not adequately enabled by the description of the invention provided in the
specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement.” In re Wright, 999 F.2d 1557, 1562 (Fed. Cir. 1993).
Enablement is not precluded by the necessity for some
experimentation such as routine screening. However,
experimentation needed to practice the invention must not be
undue experimentation. . . .
. . . . The test is not merely quantitative, since a
considerable amount of experimentation is permissible, if it is
merely routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed.
Appeal 2009-007457
Application 10/635,815

5
In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988) (footnotes omitted).
There are eight factors that have been identified as needing to be considered
in determining whether a disclosure would require undue experimentation.
See id. at 737.5
Lack of Definiteness
The test for definiteness is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986).
What is claimed is determined during patent examination to be the
broadest reasonable interpretation of the pending claims that is consistent
with the specification. So interpreting the claims requires using the
meanings for every claimed term that should be apparent from the prior art
or the specification and drawings as filed. Thus, an applicant is required to
make clear and precise the terms that are used to define the invention
whereby the metes and bounds of the claimed invention can be ascertained.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

5 The court listed: “(1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims.”
Appeal 2009-007457
Application 10/635,815

6
ANALYSIS
Lack of Enablement
We agree with the Examiner’s conclusion that the Specification does
not enable the person having ordinary skill in the art to practice the claimed
invention without undue experimentation.
To establish a lack of enablement, the Examiner must present a
reasonable explanation why “the scope of protection provided by [the] claim
is not adequately enabled by the description of the invention provided in the
specification.” Wright, 999 F.2d at 1562.
As a preface for the provided explanation, the Examiner properly
identified that:
The factors to be considered when determining whether there is
sufficient evidence to support a determination that a disclosure
does not satisfy the enablement requirement and whether any
necessary experimentation is “undue” include, but are not
limited to: (a) the breadth of the claims; (b) the nature of the
invention; (c) the state of the prior art; (d) the level of one of
ordinary skill; (e) the level of predictability in the art; (f) the
amount of direction provided by the inventor; (g) the existence
of working examples; and (h) the quantity of experimentation
needed to make or use the invention based on the content of the
disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400,
1404 (Fed. Cir. 1988).
(Final Action 4-5). The Examiner then proceeded to address each of these
factors (see Final Action 5-8). The Examiner found the level of
predictability in the art suggests that undue experimentation is not required
(Final Action 9). In contrast, however, the Examiner found that the breadth
of the claims, state of the prior art, and amount of direction provided by the
inventor are all factors suggesting that undue experimentation is required
(id.). As to the other four factors, the Examiner found the evidence of record
Appeal 2009-007457
Application 10/635,815

7
insufficient to establish whether or not undue experimentation is required
(id.). Based on this analysis, the Examiner concluded that “the totality of the
evidence suggests that it would require undue experimentation to make and
use the claimed invention” (id. (emphasis omitted)).
Initially, Appellant responds by generally referencing paragraphs
[0015]-[0022] and Figures 2-5 of the application to contend that the
application “disclose[s] a method for carrying out the claimed invention”
(Br. 5). Appellant acknowledges that “the Examiner sets forth several
factors” (id.), but Appellant did not address with identified particularity the
Examiner’s analyses (see Br. 5-7).
Appellant’s arguments appear to arise from the Examiner’s analysis
directed to the state of the prior art (Final Action 5); though, Appellant does
not explicitly state this relationship (Br. 5-7). In particular, Appellant
disagrees with the Examiner’s finding that the Specification inadequately
describes “use of a comparison algorithm on a client server to identify an
object on the client computer that is invoking the object on [a] data server”
(Br. 5 (brackets in original)). What Appellant argues is that paragraph
[0019] describes how a comparison algorithm on a client server is used to
identify an object on the client computer that is invoking the object on a data
server by disclosing that “‘[t]he identifier (fully qualified class name) of the
source of the SOAP call is stored in a SOAP header which is part of the
message transmitted from the client computer 11 to the data server 140 (via
client server 120)’” (Br. 6 (brackets in original)).
In responding to Appellant, the Examiner finds:
First . . . paragraph [[0019]] omits where this header is
inserted, and appears to be merely a summation of what is
occurring on the client server. In other words, this paragraph
Appeal 2009-007457
Application 10/635,815

8
describes that the client server determines the class name (by
means unknown) and forwards it to the data server to be
reviewed by an administrator. This interpretation is consistent
with the rest of the specification, most notably paragraph
[0015]. In contrast, Appellant’s argument that this paragraph
describes the client computer sending a portion of its execution
stack is not consistent with the rest of the specification.
Second . . . information in the header, regardless of
which device sends it, only describes a class, not an object as
required by the claims. There is absolutely no mention in the
specification of using an algorithm to identify an object from a
class name.
Third, if this header already contains the class name, it is
unclear why the client server would need a “comparison
algorithm” to identify it. There is absolutely no mention in the
specification of using a comparison algorithm to analyze a
message header.
(Ans. 10). We agree with these Examiner findings. In light of these
findings and the absence of any challenge from Appellant, we find
Appellant’s arguments unavailing and we agree with the Examiner’s
rejection under 35 U.S.C. § 112, first paragraph, of claims 1-22.
Lack of Definiteness
We agree with the Examiner’s rejection under 35 U.S.C. § 112,
second paragraph, of claims 6-9, 15-18, and 21 as being indefinite for failing
to particularly point out and distinctly claim the subject matter, i.e.,
“SOAP,” that Appellant regards as the invention.
To establish a lack of definiteness, the Examiner must present a
reasonable explanation why those skilled in the art would not understand
what is claimed when the claim is read in light of the Specification.
Orthokinetics, 806 F.2d at 1576.
Appeal 2009-007457
Application 10/635,815

9
The Examiner explains that the rejected claims recite a SOAP, and
also that the Specification incorporates by reference Mein and Apache Axis
(¶¶ [0003]-[0004]) where SOAP is alternatively described (Final Action 10).
Specifically, the Examiner finds:
The protocol described in [Mein] is for accessing Microsoft
COM Automation objects using MIME-encoded messages (see
col. 3, lines 1-64), while the protocol that is implemented by
Apache Axis is for accessing W3C SOAP web services using
XML messages (see “Introduction” on the Axis home page).
The protocols are similar in that they are layered on top of
HTTP and are used to access remote objects, but are otherwise
entirely different.
(Id.).
Appellant does not contest that different SOAP protocols are
described, but variously responds that:
[A] precise and clear definition of the SOAP protocol can be
obtained from paragraph [0004] of the specification which
describes briefly how the SOAP protocol operates.
. . . .
The protocol described in [Mein] and the protocol
implemented by Apache Axis were included as examples of
implementations of SOAP. In other words, these
implementations are only subsets of a larger SOAP class that is
compatible with the applicant’s invention. . . . [C]laims 6-9, 15-
18, and 21 do not refer only to [Mein’s] SOAP implementation
or to the Apache Axis SOAP implementation, but the claims
refer to any implementation that a person having ordinary skill
in the art would recognize as a SOAP implementation.
(Br. 7-8).
The Examiner responds that “Appellant appears to be seeking
protection on any protocol which happens to be named ‘SOAP’ or ‘Simple
Object Access Protocol’” (Ans. 12). In particular, “the Examiner . . .
Appeal 2009-007457
Application 10/635,815

10
submits that no reasonably precise definition of SOAP exists which
encompasses both the protocol described in [Mein] and the protocol
implemented by Apache Axis. The protocols are vaguely related in that they
are used to access remote objects, but are wholly and fundamentally
different in operation” (id.). We agree with these Examiner findings. The
Examiner, we accordingly find, has presented a reasonable explanation why
those skilled in the art would not understand what is claimed when the claim
is read in light of the Specification. In light of these findings and the
absence of any challenge from Appellant, we agree with the Examiner’s
rejection under 35 U.S.C. § 112, second paragraph.

CONCLUSIONS
1. The Examiner has not erred in finding Appellant’s Specification lacks
adequate enablement for an ordinarily skilled artisan to practice the
invention recited in the claims without undue experimentation.
2. The 35 U.S.C. § 112, first paragraph, rejection of claims 1-22 is
sustained.
3. The Examiner has not erred in finding the scope of the SOAP protocol
as recited in the claims lacks definiteness.
4. The 35 U.S.C. § 112, second paragraph, rejection of claims 6-9, 15-
18, and 21 is sustained.

ORDER
The Examiner’s rejections of claims 1-22 are 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)(1)(iv) (2010).
Appeal 2009-007457
Application 10/635,815

11

AFFIRMED

babc

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
3404 E. Harmony Road
Mail Stop 35
FORT COLLINS CO 80528