Ex Parte Lo

Board of Patent Appeals and Interferences

Aug 4, 2011

11070591 (B.P.A.I. Aug. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LEWIS LO
____________________

Appeal 2009-010542
Application 11/070,591
Technology Center 2100
____________________

Before THU A. DANG, CAROLYN D. THOMAS,
and JAMES R. HUGHES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a second rejection of
claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

A. INVENTION
Appellant’s invention relates to a user role mapping method and
apparatus for migrating user roles from one user registry in one environment
to another; wherein, a migration engine retrieves a role mapping file and
evaluates which new role will be assigned to a user based upon a set of
defined rules, each having a set of conditions (Fig. 5; Abstract; Spec. 12:24-
13:25).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method performed in a data processing system for
mapping user roles for a user registry migration, the method
comprising:

detecting a role mapping file comprising a set of rules,
wherein each rule defines a set of conditions for assigning a
new role;

conjoining the set of conditions to form a set of migration
rules for the new role;

retrieving a current role of at least one user from a list of
users in a user registry;

applying at least one migration rule from the set of
migration rules to the current role of the at least one user;
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determining if the current role of the at least one user
satisfies the at least one migration rule;

assigning the new role to the at least one user if the
current role of the at least one user satisfies the at least one
migration rule; and

updating the user registry with the new role for the at
least one user.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Herrera US 2003/0229605 A1 Dec. 11, 2003
Dingle US 2006/0015527 A1 Jan. 19, 2006
(filed on Jun. 15, 2004)

Claims 21-28 stand rejected under 35 U.S.C. § 101 as being directed
towards non-statutory subject matter.
Claims 1, 2, 4, 12-14, 20-22, and 28 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Dingle.
Claims 3, 5-11, 15-19, and 23-27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dingle and Herrera.1

II. ISSUES
The issues are whether the Examiner has erred in determining that:

1 The Examiner has withdrawn the rejection under 35 U.S.C. § 102(b) (Ans.
34).
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1. Claims 21-28 which recite “[a] computer readable medium
encoded with a computer program” is directed towards non-statutory subject
matter, when the computer readable medium could merely comprise a
transitory, propagating signal;
2. Dingle teaches “detecting a role mapping file comprising a set of
rules, wherein each rule defines a set of conditions for assigning a new role,”
“conjoining the set of conditions to form a set of migration rules for the new
role,” “applying at least one migration rule from the set of migration rules to
the current role of the at least one user,” “determining if the current role of
the at least one user satisfies the at least one migration rule,” and “assigning
the new role to the at least one user if the current role of the at least one user
satisfies the at least one migration rule” (claim 1, emphasis added); and
3. The combined teaching of Dingle and Herrera teach or would have
suggested “wherein the conjoining step includes joining two or more
conditions in the set with an AND operator to form a migration rule” (claim
9, emphasis added) and “determining that the at least one migration rule is
satisfied” (claim 10, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. Computer readable media may include recordable-type media,
such as a floppy disk, a hard disk drive, a RAM, CD-ROMs, DVD-ROMs,
and transmission-type media, such as digital and analog communications
links, wired or wireless communications links using various transmission
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forms, such as radio frequency and light wave transmissions (Spec. 19:20-
26).
Dingle
2. Dingle is directed to an apparatus and method of migrating
Light-weight Directory Access Protocol (LDAP) objects, attributes, and data
between a source and target environment; wherein, the LDAP enables
applications such as portals, e-mail, messaging, identity and web access
management to store system and environment specific configuration
information in directory objects and related attributes (¶¶ [0003] and
[0012]).
3. An Environment Configurator 100 defines, catalogues, and
maintains attributes of each environment; wherein, the Configurator 100
maintains environment profiles, directory server profiles, object definitions
and user profiles which define the users who are authorized to access the
system for each environment (Figs. 1 and 2; ¶ [0016]).
4. An Object Transformer 120 uses environment profile data
supplied by the Environment Configurator 100 and objects supplied by an
Object Selector 110 to create new or cloned objects and attributes based on
object lineage relationships as provided by an Object Biographer 140 (Fig.1;
¶ [0032]). Particularly, Object Transformer 120 uses information stored in
Environment Configurator 100 to update environment, global, and runtime
specific information for creation of new offspring objects based on
application specific relationships and lineage relationships (i.e. father,
mother, son, daughter, and sibling) (Figs. 1and 2; ¶¶ [0005]; [0018]; and
[0032]).
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5. The Transform Object module disclosed in Fig. 7 changes the
content of the new object based on package rules; wherein, the components
of the embodiments disclosed in Figs.1 and 7 are the same and are illustrated
in Figs. 2-6 (Figs. 1-7; ¶ [0030]).
Herrera
6. Herrera is directed to a system and method for building a
rulebase or a set of rules that embody the logic in an expert system, such as a
system used in the legal or medical fields to analyze and solve problems
based upon symptomatic data input (Fig. 12; Abstract; ¶¶ [0003]-[0005]). A
user may invoke the rulebase builder to create a rulebase that embodies
logical conditions; wherein, rulebase components are merged together to
create a consolidated rulebase (id.).
7. The rulebase includes classes 408 and associations 412,
wherein a class could define a Person object that includes fields for the name
of a person, the age of the person, and the name (if any) of the person’s
spouse and an association would define relationships between fields (Fig. 4;
¶ [0075]). For example, where a Person owns a duck, an ownership
association defines one role for a field, “Owns,” of the Person class and
another role for a field, “IsOwnedBy,” of the Duck class (¶ [0077]).

IV. ANALYSIS
35 U.S.C. § 101
Claims 21-28
Appellant contends that the “claimed computer readable medium
encoded with a computer program is a computer element which defines
structural and functional inter-relationships between the computer program
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and the rest of the computer which permits the computer program’s
functionality to be realized, and is thus statutory” (App. Br. 10). The
Examiner, however, finds that, since the Specification discloses that the
computer readable medium “includes light wave/radio frequency,” “the
claim is drawn to a form of energy” which “is not one of the four categories
of invention and therefore this claim(s) is/are not statutory” (Ans. 3-4).
Contrary to Appellant’s argument that the “computer readable
medium” of claim 21 is “a computer element which defines structural and
functional inter-relationships between the computer program and the rest of
the computer” (App. Br. 10), claim 21 does not define “computer readable
medium.” Therefore, we look to Appellant’s Specification and find that the
disclosed meaning of computer readable media includes wireless
communications links using various transmission forms, such as radio
frequency and light wave transmissions (FF 1). That is, Appellant’s
Specification defines that computer readable media comprise a propagating
signal (FF1).
Our reviewing court has held that “[a] transitory, propagating signal
[however] . . . 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.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007). Specifically, signals are “unpatentable … as failing a tangibility
requirement to be ‘manufactures’” because they are not “tangible medi[a].”
Id. at 1366 (emphasis added). Since the broadest reasonable interpretation
of claim 21 covers a signal per se, we see no error in the rejection of the
claim under 35 U.S.C. § 101 as covering non-statutory subject matter.
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Nuijten, 500 F.3d at 1356-1357 (transitory embodiments are not directed to
statutory subject matter) and Interim Examination Instructions for
Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009;
p. 2, 1351 Off. Gaz. Pat. Off. 212 (2010).
Accordingly, we sustain the Examiner’s rejection of independent
claim 21 and claims 22-28 depending from claim 21 under 35 U.S.C. § 101
as being directed to nonstatutory subject matter.
35 U.S.C. § 102(e)
Claims 1-2, 4, 12-14, 20-22, and 28
Appellant does not provide separate arguments with respect to
independent claims 1, 13, and 21(App. Br. 10-14). Appellant also does not
provide separate arguments with respect to claims 2, 4, 12, 14, 20, 22, and
28 (id.). Accordingly, we select claim 1 as being representative of the
claims.
Appellant contends that “while Dingle may be directed to a rules-
based ability to migrate LDAP objects from one environment to another,
how this migration is done is different from the methodology provided by
the features of Claim 1” (App. Br. 10-11). Appellant asserts that “the cited
reference does not describe any new formation or creation of special
migration rules, for a new user role, from a set of existing rules (‘set of
rules’)”; rather, “it describes using preexisting rules for LDAP object
migration” (App. Br. 11). Appellant argues that Dingle “does not teach or
otherwise describe such a conjoining step that forms a set of migration rules
for a new role” since “the Examiner cites Dingle’s Figure 7 as teaching all
elements of this conjoining step” and “Figure 7 is an alternative embodiment
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to that described in Figures 1-6” that “depicts the use of preexisting
‘package rules’” (id.).
Appellant contends further that Dingle does not “teach use of one
such formed ‘set of migration rules’” (App. Br. 12). Accordingly, Appellant
finally asserts that Dingle does not teach “the ‘applying’ step,” “the claimed
step of ‘determining if the current role of the at least one user satisfies the at
least one migration rule’” (App. Br. 13), and “the claimed step of ‘assigning
the new role to the at least one user if the current role of the at least one user
satisfies the at least one migration rule’” (App. Br. 14).
The Examiner, however, finds that Dingle teaches “the retrieval of [a]
user’s role in LDAP (user registry)” (Ans. 32). The Examiner finds further
that Dingle’s disclosure “indicate[s] creation of a new object and the bundle
or parcel (conjoining) process of classification rule of object attributes (ex:
global, environment, runtime object which is the transformation conditions)
to create a parcel rule to be used during the migration process (migration
rule)” (Ans. 33).
Dingle is directed to an apparatus and method of migrating Light-
weight Directory Access Protocol (LDAP) objects, attributes, and data
between a source and target environment (FF 2); wherein, an Environment
Configurator defines, catalogues, and maintains environment profiles,
directory server profiles, object definitions and user profiles which define
the users who are authorized to use or access the system for each
environment and for objects the system acts on (FF 3). An Object
Transformer uses package rules, the environment profile data supplied by
the Environment Configurator, and objects supplied by an Object Selector to
create new or cloned objects and attributes based on object lineage
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relationships as provided by an Object Biographer (FF 4 and 5). We find the
package rules to be the migration rules that are used to transform the objects
from one environment to another.
We, however, find that, although Dingle discloses users and user
profiles, Dingle does not disclose that the user profiles are subjected to the
rules for transformation and migration; only that the objects and attributes
are transformed and migrated. That is, we find Dingle does not disclose
applying a rule to the current role of at least one user for the purpose of
migrating the current role of the user to a new role, as specifically required
by claim 1.
Accordingly, we find further that Dingle does not disclose the steps
corresponding to determining if the current user role satisfies the migration
rule and, if so, assigning a new role to the user; wherein, a user registry is
updated with the new user role.
Therefore, we find that Appellant has shown that the Examiner erred
in rejecting independent claims 1, 13, and 21 and claims 2, 4, 12, 14, 20, 22,
and 28 depending from claims 1, 13, and 21 under 35 U.S.C. § 102(e) over
Dingle.
35 U.S.C. § 103(a)
Claims 3, 5-8, 15, 16, 23, and 24
Appellant does not provide separate arguments with respect to claims
3, 5-8, 15, 16, 23, and 24 (App. Br. 14). Accordingly, we select independent
claim 3 as being representative of the claims.
Appellant contends that “Herrera does not overcome the teaching
deficiencies identified above with respect to (i) conjoining a set of
conditions - defined by each rule in a set of rules included in a role mapping
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file - to form a set of migration rules for the new role, or (ii) any use of such
(missing) ‘set of migration rules’ that are formed from a ‘set of conditions’
(such as per the ‘applying,’ ‘determining,’ and ‘assigning’” [steps in] claim
1)” (App. Br. 14).
The Examiner, however, references the arguments made with respect
to claim 1, “wherein Dingle reference alone clearly overcomes all the argued
limitations with respect to claim 1” (Ans. 33).
As discussed above with respect to claim 1, we find deficiencies in the
Examiner’s findings that Dingle discloses such features.
Herrera is directed to a system and method for building a rulebase or a
set of rules that embody the logic in an expert system (FF 6), wherein the
rulebase includes associations that may define two separate and distinct roles
for two different fields of the association (FF7). Herrera is silent as to
migration of user roles, in general, and as to applying at least one migration
rule to the user profile for the purpose of migration, in particular. We,
therefore, find that Herrera does not cure the deficiencies of Dingle.
Thus, we conclude that the Examiner did err in rejecting claims 3, 5-8,
15, 16, 23, and 24 under 35 U.S.C. § 103(a) over Dingle in view of Herrera.
Claims 9-11, 17-19, and 25-27
As discussed supra, we find Herrera does not cure the deficiencies of
Dingle. As such, we will also reverse the rejection of claims 9-11, 17-19,
and 25-27 under 35 U.S.C. § 103(a) over Dingle in view of Herrera.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 21-28 under 35 U.S.C. § 101 is
affirmed. The Examiner’s rejection of claims 1-2, 4, 12-14, 20-22, and 28
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under 35 U.S.C. § 102(e) is reversed. The Examiner’s rejection of claims 3,
5-11, 15-19, and 23-27 under 35 U.S.C. § 103(a) is reversed.
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).

AFFIRMED-IN-PART

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