Ex Parte Leming et al

Patent Trial and Appeal Board

May 17, 2016

13172708 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/172,708 06/29/2011
46320 7590 05/19/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Matthew W. Leming
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.
GB920110048US1 (739) 7799
EXAMINER
DO,STEVENM
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
05/19/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW W. LEMING,
MARK R. PHILLIPS, and FENGLIAN XU
Appeal2014-009462
Application 13/172,708
Technology Center 2100
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009462
Application 13/172,708
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to "[a] method, system, and computer
program product fo[r] automatically generating service definitions for
application clients of a message broker." (Abstract.)
Claim 1, reproduced below, is illustrative:
1. A method for automatically generating service definitions for
application clients of a message broker comprising:
retrieving a trace of interactions between different application
instances and corresponding message queues in a message
brokering system;
analyzing messages in the trace to identify the application
instances and related message exchange data; and,
generating a service definition document for each identified
application instance using the related message exchange data to
describe computational services provided by the identified
application instance.
1 Appellants identify International Business Machines Corporation as the
real party in interest. (See App. Br. 2.)
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Application 13/172,708
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Harrison et al. US 2002/0083210 Al
Goyal et al. US 2003/0189603 Al
Hite et al. US 2006/0053144 Al
Bendiksen et al. US 2006/0085798 Al
THE REJECTIONS
June 27, 2002
Oct. 9, 2003
Mar. 9, 2006
Apr. 20, 2006
A. Claims 9-12 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. (See Final Act. 2-3.)
B. Claims 1, 4, 5, 8, 9, and 12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hite and Bendiksen. (See Final Act. 3-6.)
C. Claims 2, 6, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hite, Bendiksen, and Harrison. (See Final Act. 6-7.)
D. Claims 3, 7, and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hite, Bendiksen, Harrison, and Goyal. (See Final Act. 7-
9.)
APPELLANTS' CONTENTIONS
Appellants argue that the rejections were improper for the following
reasons:
1. With respect to the Section 101 rejection, "independent claim
15 [sic, 9] recites[] 'a computer readable storage medium having computer
readable program code embodied therewith', not just a 'computer readable
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Application 13/172,708
medium'" and "[t]urther, the specification distinguishes a 'storage medium'
from a mere 'signal medium'." (App. Br. 8.)
2. Rite's "ontologies" are "not the same as a service definition
which describes functionality offered by a web service" and "Hite does not
teach generating a service definition using related message exchange data
obtained from a trace of interactions between different application instances
and corresponding message queues in a message brokering system." (App.
Br. 10.)
3. "[I]n Hite the interactions are between the applications, not
between different application instances and corresponding message queues
in a message brokering system." (App. Br. 12.)
ANALYSIS
Section 101
With respect to the rejections under Section 101, we observe that
another panel, in Ex parte Liu, et al., recently considered claims of the same
real party in interest in which the relevant claim language and disclosure was
the same as in the instant application, finding the claims non-statutory. See
March 2, 2016 Decision in Appeal No. 2014-002408 (Serial No.
12/961,046), pp. 3-5.2
2 Appellants' claim 9 and claim 9 in Liu both read as follows: "A computer
program product for ... , the computer program product comprising: a
computer readable storage medium having computer readable program code
embodied therewith, the computer readable program code comprising .... "
Paragraphs 27-30 of Appellants' specification and paragraphs 21-24 of
Liu 's specification are identical.
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Application 13/172,708
We concur in the analysis of the Liu panel, as the Specification merely
provides (in i-f 28) that a "computer readable storage medium may be, for
example, but not limited to," certain media, and that "specific examples (a
non-exhaustive list) of the computer readable storage medium would
include" certain other media, compelling the conclusion that, even
considering the examples in the Specification, the claimed "computer
readable storage medium" encompasses non-statutory transitory signal
media. We, therefore, sustain the Section 101 rejections in this appeal. See
In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007) (explaining that
"physical but transitory forms of signal transmission such as ... electrical
signals through a wire, and light pulses through a fiber-optic cable" are non-
statutory); Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013)
(precedential) ("[W]e conclude that those of ordinary skill in the art would
understand the claim term 'machine-readable storage medium' would
include signals per se.").
Obviousness
"generating a service definition document for each
identified application instance using the related message
exchange data to describe computational services provided
by the identified application instance"
Appellants argue that Hite' s ontologies are not the claimed "service
definition documents" because "an ontology, which represents a concept
within a domain, is not the same as a service definition which describes
functionality offered by a web service." (App. Br. 10.) We see no such
distinction. Hite explains that "[t]he collection of ontology elements 402
associated with the service(s) provided by an application instance 202 forms
an ontology 122," which "is associated with an application type identifying
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Application 13/172,708
the domain 110 in which the application is contained (such as SAP, Siebel,
or Oracle) and an application instance name." (Hite i-f 59.) The reference
explains that "[e]ach ontology includes one or more ontology elements,
which represent one or more components of the application including, e.g.,
input parameters, output parameters, and/or services (e.g., a service, a class
method, function call, etc.)." (Id. i-f 10.) Appellants have not persuaded us
that the ontology elements, which represent "input parameters, output
parameters, and/or services" do not describe functionality of the application
instance.
Appellants also argue that "Hite does not teach generating a service
definition using related message exchange data obtained from a trace of
interactions between different application instances and corresponding
message queues in a message brokering system." (App. Br. 10.) This
argument is also unpersuasive. The Examiner relies on Hite for teaching
creation of the service definitions from application interactions, but turns to
Bendiksen for message queues in a message brokering system. (See Final
Act. 4--5 ("Bendiksen teaches retrieving a trace of interactions between
different application instances and corresponding message queues in a
message brokering system").) Appellants are improperly arguing the
references individually, where the rejection is based on a combination. See
In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants finally argue that "in Hite the interactions are between the
applications, not between different application instances and corresponding
message queues in a message brokering system." (App. Br. 12.) We find
the Examiners' response, that "only active applications have interaction and
any active application is an instance of that application," convincing and
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further note that, as referenced above, Hite expressly discloses that its
ontologies are associated with application instances. (See Hite i-f 60 ("The
collection of ontology elements 402 associated with the service( s) provided
by an application instance 202 forms an ontology 122.").)
For these reasons, we sustain the rejections of claims 1, 4, 5, 8, 9, and
12 under 35 U.S.C. § 103(a). For the same reasons, we sustain the Section
103 rejections of claims 2, 3, 6, 7, 10, and 11, which are not argued
separately.
DECISION
The rejections of claims 1-12 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)(l )(iv).
AFFIRMED
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