Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardDec 13, 201311762869 (P.T.A.B. Dec. 13, 2013) Copy Citation 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. 11/762,869 06/14/2007 Xin Peng Liu CN920060034US1 2574 75949 7590 12/16/2013 IBM CORPORATION C/O: VanCott Bagley, Cornwall & McCarthy 36 South State Street Suite 1900 Salt Lake City, UT 84111 EXAMINER GILLIS, BRIAN J ART UNIT PAPER NUMBER 2446 MAIL DATE DELIVERY MODE 12/16/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte XIN PENG LIU and YU CHEN ZHOU ____________ Appeal 2011-003506 Application 11/762,869 Technology Center 2400 ____________ Before JASON V. MORGAN, BRUCE R. WINSOR, and JON B. TORNQUIST, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and institute a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b) (2011). 1 Appellants identify the real party in interest as International Business Machines Corporation. App. Br. 2. Appeal 2011-003506 Application 11/762,869 2 STATEMENT OF THE CASE Appellants’ disclosure “relates to . . . data processing, and particularly, relates to a method and apparatus for transforming web service policies from logical model to physical model, and . . . generating a physical service and policy model of a service-oriented architecture (SOA) system.” Spec. ¶ [0002]. Claim 1, which is illustrative, reads as follows: 1. A method for transforming web service policies from a logical model to a physical model, wherein the logical model comprises a plurality of logical service components and logical dependency relationships among the plurality of logical service components, at least one of the plurality of logical service components being specified with logical policies, the physical model comprises physical components and physical dependency relationships associated with the plurality of service components and logical dependency relationships among the plurality of service components in the logical model, the method comprising: calculating effective logical policies for each of the plurality of logical service components in said logical model; and mapping each effective logical policy of each logical service component in said logical model to at least one associated physical component in said physical model. A rejection of claim 8 as indefinite under 35 U.S.C. § 112, second paragraph, is withdrawn. Ans. 3. Claims 1-4, 10-13, and 15-18 stand rejected under 35 U.S.C. § 102(e) as anticipated by Hunt (US 7,113,900 B1; Sept. 26, 2006). Ans. 4-11. Claims 5-7, 14, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hunt and Ramanathan (US 6,701,459 B2; Mar. 2, 2004). Ans. 11-14. Appeal 2011-003506 Application 11/762,869 3 Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hunt, Ramanathan, and Kumar (US 2004/0117407 A1; June 17, 2004). Ans. 14-17. Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed Aug. 10, 2010; “Reply Br.” filed Dec. 7, 2010) and the Answer (“Ans.” mailed Oct. 28, 2010) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUES The issues presented by Appellants’ contentions are as follows: Does Hunt disclose “calculating effective logical policies for each of the plurality of logical service components in said logical model; and mapping each effective logical policy of each logical service component in said logical model to at least one associated physical component in said physical model” (herein the “calculating” and “mapping” limitations, respectively), as recited in claim 1? Does Hunt disclose that “calculating the effective logical policies for each of the plurality of logical service components in said logical model further comprises, for each logical service component in said system, taking the AND set of its logical policies and the logical policies of the system as the effective logical policies of the service component,” as recited in claim 2? Appeal 2011-003506 Application 11/762,869 4 Does Ramanathan, when combined with Hunt, teach or suggest “performing policy orchestration in said logical model to ensure policy consistency,” as recited in claim 5? ANALYSIS CLAIM 1 The Calculating Limitation Appellants contend that “[w]hile it is true that Hunt teaches that various modules within a logical model implement policy, Hunt does not teach or suggest a step of actively calculating logical policies for each logical service component in a logical model.” App. Br. 13. In making their arguments, Appellants use the word “actively,” which is not found in the claim recitations, “to describe the inherent requirement in claim 1 that affirmative action be taken to calculate logical policies for each logical service component in a logical model.” App. Br. 14. We are not persuaded of error. Claim 1 does not limit how or when the step described in the calculating limitation is performed. As conceded by Appellants, Hunt’s “various modules . . . implement policy.” App. Br. 13. Hunt discloses that in designing an Internet service the designer specifies various specifications and characteristics of the components of the web service, which the Examiner finds to be encompassed by “policies,” broadly, but reasonably construed. See Ans. 17 (citing Hunt, col. 4, ll. 28-35; col. 6, ll. 5-14; col. 10, ll. 35-61). Claim 1 recites that “at least one of the plurality of logical service components [is] specified with logical policies” (emphasis added). Appeal 2011-003506 Application 11/762,869 5 Therefore, claim 1 encompasses the case where the only logical policies specified relate to a single component. Accordingly, claim 1 encompasses the case where specifying the policies (or lack of policies) for each component is sufficient to “calculate” the effective policies for each component. Thus, we construe the calculating limitation to encompass Hunt’s disclosure of the designer establishing various specifications and characteristics of the components of the web service. The Mapping Limitation Appellants contend Hunt does not teach or suggest “mapping each effective logical policy of each service component in said logical model to at least one physical component in said physical model.” (Claim 1) (emphasis added). The mapping of each policy to a specific physical component simply is not present, expressly or inherently, in the Hunt reference. App. Br. 14. We are unpersuaded of error. Hunt discloses the following, inter alia: At block 614, the modeling system 512 converts the Internet Service description to a physical blueprint that specifies the computers, the software run by each of the computers, and the interconnections among the computers. This physical blueprint may be used by the operator to install and manage the Internet Service. Hunt, col. 10, ll. 62-67; see also col. 6, ll. 5-14. One skilled in the art would understand Hunt’s “Internet Service description” to be a “logical model,” as recited in claim 1, and Hunt’s “physical blueprint” to be a mapping of the “Internet Service description” to a “physical model” made up of “at least one associated physical component,” as recited in claim 1. One of ordinary skill in the art would further understand from Hunt’s disclosure that the “physical Appeal 2011-003506 Application 11/762,869 6 blueprint” maps the components (e.g., modules, ports, and wires (see Hunt, col. 9, l. 59)), of the “Internet Service description” to the physical components of the physical model. In mapping the components of the “Internet Service description” the policies associated with the components are necessarily mapped to “at least one physical component.” We note that the claim does not recite that each policy is mapped to a specific physical component. Rather it merely requires that each policy be mapped to at least one physical component. Accordingly, claim 1 does not preclude mapping policies to multiple physical components, or even all physical components, of the physical model. Appellants further contend that a module is not analogous to a policy. App. Br. 15. We find this contention unpersuasive, in view our discussion above, as we do not interpret Hunt’s modules to be policies, but rather find that Hunt discloses components of a logical model (including modules, ports, and wires) that may have associated policies (e.g., specifications and characteristics). Summary We are unpersuaded of error in the rejection of claim 1. Accordingly, we sustain the rejection of (1) claim 1; (2) independent claims 10 and 15, which were argued by reiterating the arguments made for claim 1 (App. Br. 16-18); and (3) claims 4 and 18, which depend from claims 1 and 15, respectively, and were not separately argued with particularity. CLAIM 2 Appellants contend Hunt does not disclose calculating the effective policy of a logical component within a logical system by performing a Boolean AND operation on the policies associated with the component and Appeal 2011-003506 Application 11/762,869 7 the policies associated with the system. See generally App. Br. 18-20. We agree. The Examiner correctly finds that “Hunt et al shows the policy is derived by the combined use of components each with a union or set of instructions in an overall system” (Ans. 18 (citing Hunt, col. 4, ll. 36-50; col. 6, ll. 5-14; col. 10, ll. 5-19)). However, the Examiner states that “the term [‘and’ is] given ordinary meaning as a union/together.” Id. We agree with Appellants that Appellants have used the phrase “AND set” in claim 2 to describe a specific Boolean operation to join the policies of the component with those of the system. See Ans. 19 (citing Spec. ¶¶ [0097], [0118], [0143]-[0145]). We agree with Appellants that a union of instructions that would be described by the ordinary meaning of the conjunction “and” is not the same as a joining of policies or instructions into a Boolean “AND set.” See App. Br. 19-20; Reply Br. 8. The Examiner does not explain, nor is it apparent from the cited passages of Hunt, how Hunt teaches creating a Boolean AND set of policies or instructions. Appellants have persuaded us of error in the rejection of claim 2. Accordingly, we are constrained by this record to not sustain the rejection of (4) claim 2; (5) claims 11 and 16, which were argued together with claim 2 (App. Br. 18-20) and incorporate substantially the same limitation as discussed regarding claim 2; and (6) claims 3, 12-14, and 17, which depend, directly or indirectly, from claim 1, 11, or 16, see In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). CLAIM 5 The Examiner finds that Hunt does not teach performing policy orchestration in a logical model (Ans. 12) and finds that Ramanathan Appeal 2011-003506 Application 11/762,869 8 “teaches monitoring the logical topology or model of the policy” (id. (citing Ramanathan, col, 6, ll. 16-40; col. 6, l. 65—col. 7, l. 14; col 10, ll. 50-60)). The Examiner further explains that the cited passages of Ramanathan “teach[] monitoring the policies ensuring consistency where the policies are interconnected or in orchestration with each other.” Ans. 18. Appellants contend “Ramanathan makes no mention of performing any type of policy orchestration or ensuring policy consistency in the portions cited by the [Examiner]. Rather, Ramanathan merely acknowledges that a logical model may implement policy.” App. Br. 20-21. We are persuaded of error. A pertinent dictionary definition is “orchestrate . . . vt . . . 2: to arrange or combine so as to achieve a desired or maximum effect.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 818 (10th ed. 1993). While we agree with the Examiner that Ramanathan teaches “arranging or combining [components] to achieve a desired . . . effect,” we find no teaching in the cited passages of Ramanathan that a desired effect is ensuring policy consistency. Appellants have persuaded us of error in the rejection of claim 5. Accordingly, we are constrained by this record to not sustain the rejection of (7) claim 5; (8) claim 19, which was argued together with claim 5 (App. Br. 20-21) and incorporates substantially the same limitation as discussed regarding claim 5; and (9) claims 6-9 and 20, which depend, directly or indirectly, from claim 5 or 19, see Fine, 837 F.2d at 1076. Appeal 2011-003506 Application 11/762,869 9 NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b) Claims 15-20 are rejected on a new ground of rejection under 35 U.S.C. § 101 as directed to non-statutory subject matter. Our reviewing court has found that transitory, propagating signals are not within any of the four statutory categories. Therefore, a claim directed to a computer usable medium embodied in a signal is not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007); see also Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). “A transitory propagating signal . . . is not a ‘process, machine, manufacture, or composition of matter.’ [These] four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” Nuijten, 500 F.3d at 1357. According to U.S. Patent & Trademark Office (USPTO) guidelines: The broadest reasonable interpretation of a claim drawn to a computer readablle [sic] medium . . . typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media . . . . When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“OG Notice”) (citation omitted); see also Mewherter, 107 USPQ2d at 1862 (“[T]hose of ordinary skill in the art would understand the claim term ‘machine-readable[2] storage medium’ would include signals per se.”). Moreover, “[a] claim that covers both statutory and non-statutory embodiments . . . embraces subject matter 2 We note that “machine-readable” and “computer usable” are equivalent terms. Cf. Mewherter, 107 USPQ2d at 1859 n.2. Appeal 2011-003506 Application 11/762,869 10 that is not eligible for patent protection and therefore is directed to non- statutory subject matter,” MPEP § 2106(I) (8th ed. 2001, rev. 2012) (emphasis added). Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972). Claim 15 recites “[a] computer program product comprising a computer usable medium embodying program instructions . . . .” Claims 16- 20 depend, directly or indirectly, from claim 15 and, therefore, incorporate the recited language of claim 15. Appellants’ Specification discloses that “[i]t will be readily understood that aspects of the present invention . . . may take the form of a computer program product embodied in one or more computer usable medium(s) having computer readable program code embodied thereon.” Spec. ¶ [0019] (as amended Nov. 23, 2009). We conclude that nothing in the Specification or the claims precludes the “computer usable medium” from encompassing a transitory signal. Moreover, the ordinary and customary meaning of “computer useable medium” to a person of ordinary skill in the art was broad enough to encompass both non-transitory and transitory media. See Mewherter, 107 USPQ2d at 1862. Accordingly, giving the phrase its broadest reasonable interpretation in light of the Specification, see In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), we construe the recited “computer usable medium” to encompass a transitory signal and, therefore, to be directed to non-statutory subject matter. We note that Appellants are not precluded from amending claims 15- 20 to overcome this rejection. Guidance is provided in the OG Notice (“A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to Appeal 2011-003506 Application 11/762,869 11 cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”). DECISION The decision of the Examiner to reject claims 1, 4, 10, 15, and 18 is affirmed. The decision of the Examiner to reject claims 2, 3, 5-9, 11-14, 16, 17, 19, and 20 is reversed. We enter a new ground of rejection for claims 15-20 under 35 U.S.C. § 101. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 37 C.F.R. § 41.50(b). 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). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2011-003506 Application 11/762,869 12 AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) msc Copy with citationCopy as parenthetical citation