Ex Parte Lane et al

Patent Trial and Appeal Board

Dec 13, 2016

11944946 (P.T.A.B. Dec. 13, 2016)

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.
11/944,946 11/26/2007 EOINLANE CAM920070123US1_8134-0157 6494
73109 7590 12/15/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, EL 33498
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
12/15/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EOIN LANE, GRANT J. LARSEN, and
WILLIE R. PATTEN
Appeal 2014-004304
Application 11/944,946
Technology Center 3600
Before CHARLES N. GREENHUT, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2014-004304
Application 11/944,946
CLAIMED SUBJECT MATTER
The claims are directed to a solution that automatically recommends
design assets when making architectural design decisions for information
services. Claim 1, reproduced below, with emphasis added, is illustrative of
the claimed subject matter:
1. A system that provides automated guidance for architectural
decisions for information services in a service-oriented
architecture (SOA) comprising:
at least one computer program product, comprising at least
one computer-readable, tangible storage device having a non-
transitory computer readable program code stored therein, said
computer-readable program code containing instructions that are
carried out by at least one processor of at least one computer
system to implement a set of functions for which the computer-
readable program code is configured to handle, said at least one
computer program product comprising a requirements manager
and an asset advisory tool;
the requirements manager configured to catalog a
plurality of nonfunctional requirements for a plurality of
information services implemented in a service-oriented
architecture (SOA) environment;
a reusable asset repository, which is a non-transitory
storage medium, configured to store a plurality of design assets,
wherein each design asset is stored according to a unique data
model, wherein said unique data model identifies each asset with
a non-functional requirement; and
the asset advisory tool configured to determine a list of
recommended design assets for a user-selected non-functional
requirement, wherein the user-selected non-functional
requirement is contained within the requirements manager, and
wherein each design asset in the list of recommended design
assets is available in the reusable asset repository and documents
a user-selection of at least one design asset from the list of
recommended design assets, wherein the user-selection of the at
least one design asset signifies a satisfaction of the user-selected
non-functional requirement in a design of an architecture for an
information service.
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Application 11/944,946
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mamou US 2005/0262191 A1 Nov. 24,2005
Batabyal US 2008/0052314 A1 Feb. 28, 2008
REJECTIONS
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mamou and Batabyal.
OPINION
In regards to the limitation emphasized in italics in claim 1 above, a
version of which is found in each of the independent claims before us, the
Examiner identifies a number of elements of Mamou, without further
explanation, any of which the Examiner appears to be interpreting as the
recited “requirements manager:”
tools 1302 generally comprise, for example, divers [sic] types of
database management systems and other applications programs
that access shared data stored in the RIM 1304; translation engine
1308, in turn, will aggregate the atomic data items that it receives
from the RIM 1304 into one or more data items as required by
the tool's characteristic model and format; management
framework 6456 client; mapping and execution requirements;
the target database definition module 11500 may receive
recommendations from profiling and auditing modules.
Final Act. 12.
Appellants address each element, in turn, correctly explaining that
none of these elements bears any apparent relationship to managing
requirements, in particular involving cataloging (claim 1), adding (claim 11)
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Appeal 2014-004304
Application 11/944,946
or accepting (claim 18) “non-functional requirements” as required by the
claims. App. Br. 12—13. As for the “non-functional requirements,” the
Examiner appears to rely on Mamou’s use of metadata. Metadata can be
used to store various types of information, but it is not apparent why the
Examiner considers metadata itself, which is a particular type of data, to be a
“non-functional requirement” of a system or how that data, or any of the
other information or functionality listed by the Examiner (“information
pertaining to the context of relating information; mapping and execution
requirements; functionality in a changing business environment; integration
functions”), interacts with any of the elements of Mamou identified by the
Examiner regarding the recited “requirements manager.” App. Br. 13—14.
The Examiner responds to Appellants’ arguments by repeating the
contested portion of the rejection. The Examiner does not provide any
further explanation concerning the points raised by Appellants, which are
clearly more than “a general allegation that the claims define a patentable
invention” as characterized by the Examiner. Ans. 15—16.
The only further remarks by the Examiner are:
Additionally, the Examiner submits that the broadly recited
labeling of “requirements manager” and “non-functional
requirements” have no specific definition recited within the
claim. Further, the fact that “non-functional requirements” are
disclosed as admitted prior art in the specification in the instant
application by the Appellants are considered to be old and well
known features in a service oriented architecture environment.
Ans. 15 (emphasis omitted). As to the first point, breadth alone does not
demonstrate unpatentability under § 103(a). Even in the absence of any
express definition in the claims or elsewhere in the Specification, we
understand a requirements manager to at least refer to something involved in
the management of requirements. The Examiner has not identified with
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Appeal 2014-004304
Application 11/944,946
sufficient specificity any such structure or step in the Mamou. We also
understand non-functional requirements to carry its ordinary meaning in the
art,1 and the Examiner has not identified anything in Mamou that can
reasonably be characterized as such.
As to the Examiner’s second point, the fact that “non-functional
requirements,” per se, may be known does not demonstrate obviousness of
the claimed subject matter as a whole, or even that of the recited
requirements manager used to manipulate those requirements. Further, this
allegation is not relevant to the rejection from which this appeal was taken,
wherein the Examiner relied on Mamou as supplying a disclosure satisfying
this disputed limitation.
A rejection must be set forth in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132, such as by
identifying where or how each limitation of the rejected claims is met by the
prior art references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see
also 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.”); Gechterv. Davidson 116 F.3d 1454, 1460 (Fed. Cir.
1997) (PTO must create a record that includes “specific fact findings for
each contested limitation and satisfactory explanations for such findings.”).
It is neither our place, nor Appellants’ burden, to speculate as to the basis for
rejecting claims. In re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011) (It is
1 See, e.g., https://en.wikipedia.org/wiki/Non-functional_requirement
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Application 11/944,946
the PTO’s obligation to provide timely notice to the applicant of all matters
of fact and law asserted.)
DECISION
The Examiner’s rejection is reversed.
REVERSED
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