Ex Parte Michelsen

Patent Trial and Appeal Board

Feb 28, 2017

13206877 (P.T.A.B. Feb. 28, 2017)

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.
13/206,877 08/10/2011 John J. Michelsen ITK0012 4794
107194 7590
Patent Capital Group
Attention: Della L. Gonzales
9222 Church Road, Suite 118
Dallas, TX 75231
EXAMINER
YUN, CARINA
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PAIR_107194@patcapgroup.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. MICHELSEN
Appeal 2016-005852
Application 13/206,877
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
Opinion for the Board filed by administrative Patent Judge BAUMEISTER.
Opinion Dissenting filed by Administrative Patent Judge CURCURI.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005852
Application 13/206,877
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8 and 10-21. App. Br. 2.1 Claim 9 is cancelled.
Id. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellant describes the present invention as follows:
A first software agent is used to intercept first data sent to
a first software component from a second software component,
each of the first and second software components included in a
plurality of software components that are included in the
particular software system. The first agent is used to determine
that a particular value of the intercepted first data is different
from one or more preferred values for the first data. Substitute
data having a preferred value is passed to the first software
component in lieu of the intercepted data.
Abstract.
Independent claim 1, reproduced below, is illustrative of the appealed
claims:
1. A method comprising:
intercepting, using a first agent, first data sent to a first
software component from a second software component in a
transaction, each of the first and second software components
included in a plurality of software components included in a
particular software system, wherein the first data corresponds to
1 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed April 29, 2015 (“Final Act.”); the Appeal
Brief filed October 29, 2015 (“App. Br.”); the Examiner’s Answer mailed
March 16, 2016 (“Ans.”); and the Reply Brief filed May 16, 2016
(“Reply Br.”).
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a response by the second software component to a request by the
first software component in the transaction;2
determining, at the first agent, that a particular value of the
intercepted first data is different from one or more preferred
values for the first data that allow the transaction to be completed
successfully;
responsive to determining that the particular value of the
intercepted first data is different from the one or more preferred
values, determining a risk associated with passing the intercepted
first data with the particular value rather than with one of the
preferred values;
determining substitute first data corresponding to a
particular one of a plurality of monitored previous interactions
between the first and second software components, wherein the
substitute first data includes a preferred value; and
passing the substitute first data to the first software
component instead of the intercepted first data based at least in
part on the risk.
Claims 1—8 and 10-21 stand rejected under 35 U.S.C. § 103(a) as
obvious over Carter (US 7,743,150 Bl; issued June 22, 2010) in view of
Anand (US 2011/0258478 Al; published Oct. 20, 2011) and Parr
(US 3,569,934; issued Mar. 9, 1971).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
FINDINGS AND CONTENTIONS
The Examiner finds that Carter discloses the intercepting limitation of
claim 1, as well as the limitations of “determining substitute first data
2 This limitation will be referenced below as the “intercepting limitation.”
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corresponding to a particular one of a plurality of monitored previous
interactions between the first and second software components,” and
“passing the substitute first data to the first software component instead of
the intercepted first data.” Final Act. 3^4.
The Examiner finds that
Carter does not expressly disclose responsive to determining that
the particular value of the intercepted first data is different from
the one or more preferred values, determining a risk associated
with passing the intercepted first data with the particular value
rather than with one of the preferred values; and the intercepted
first data based at least in part on the risk.
Id. at 4. But the Examiner finds that Anand teaches these limitations {id.),
and the Examiner concludes that it would have been obvious to incorporate
Anand’s teachings “for the purposes of estimating risk to proceed with
execution of a change.” Id.
The Examiner further finds that “Carter and Anand do not expressly
disclose wherein the substitute first data includes a preferred value.” Id.
However, the Examiner finds that Parr teaches substituting invalid data with
valid data—a preferred value. Id. And the Examiner concludes that it
would have been obvious to combine Parr with Carter and Anand “for the
purposes of substituting invalid data.” Id.
Appellant asserts that Anand does not teach determining a risk
associated with passing intercepted data rather than with preferred values in
response to determining that the intercepted data differs from the preferred
values (App. Br. 7) and that Parr fails to cure this deficiency {id. at 9). In
Appellant’s view, Anand instead is directed to “a system for performing
quality control on ‘change actions’ authored by human uses in accordance
with a corresponding ‘change ticket’ outlining issues to be resolved by the
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Application 13/206,877
change action.” App. Br. 8 (citing Anand 1 8). In Appellant’s view,
Anand’s system estimates risks associated with processing a requested
change ticket, and “[i]f the risk is above a given threshold, the system does
not allow the [human System Administrator] to proceed with the execution
of the change until the risk is mitigated or is approved by an IT system
expert.” Id. (citing Anand 1 8).
Appellant further contends that Parr is directed to
a solution relating to “accurately assembl[ing]” “seismic digital
recordings” “in multiplexed form.” In an attempt to correct an
invalid data value relating to this specific form of data, Parr
discusses using “the last preceding valid data sample, for the
same signal channel.. ., as a ‘fill’ or substitute” for a detected
erroneous sample.
Reply Br. 3 (citation omitted) (citing Parr, col. 1,11. 9-23; col. 2, 64—
69).
Appellant argues that Anand and Parr are not combinable because it
makes sense within the context of Anand to return risky change tickets to
humans for assessment and potential resubmission. Reply Br. 3. But,
according to Appellant, it does not make sense within the context of Anand
to perform an auto-correction on a risky change ticket because such a change
“would potentially introduce risks larger than those which the system
attempts to mitigate.” Id.
ANALYSIS
The Examiner’s rejection appears to be premised on modifying
Carter’s process so as to incorporate a risk evaluation, as taught by Anand.
But instead of additionally incorporating Anand’s solution when an undue
risk is observed, the Examiner incorporates Parr’s solution. But Parr’s
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solution is unrelated to the risk-assessment problem addressed in Anand.
Parr addresses the different problem of substituting known data in a bulk
data-collection process when received data is known to be incorrect, the
substitution being undertaken so as to provide a useful data collection. Parr,
Abstract; id. col. 1,11. 1—70.
The rejection also lacks sufficient motivation for the stated
combination. See Final Act. 4 (stating that Anand is combined with Carter
“for the purposes of estimating risk to proceed with execution of a change,”
and Parr is combined with the Carter-Anand combination “for the purposes
of substituting invalid data”). This purported reasoning is little more than a
tautology. The Examiner simply does not set forth sufficient reasoning or
motivation for combining these unrelated teachings into a single system in
the manner proposed. It appears that the Examiner has relied upon
impermissible hindsight using Appellant’s claims as a roadmap.
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of independent claim 1, as well as the
other independent claims, claims 17 and 18, which set forth similar
limitations. Accordingly, we will not sustain the Examiner’s rejection of
those claims or of claims 2—8, 10-16, and 19-21, which depend from these
claims.
CONCLUSIONS
The findings and legal conclusions set forth in the rejection do not
establish a prima facie case of obviousness. The separate question—whether
the Examiner’s findings regarding what Carter does and does not teach were
accurate—is not before us, so we do not reach any conclusions on that issue.
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See Frye, 94 USPQ2d at 1075 (explaining that the Board reviews the
appealed rejections for error based upon the issues identified by Appellant,
and in light of the arguments and evidence produced thereon). We find it
noteworthy, though, that all of the Examiner’s findings concerning Carter
are correct.
For example, Carter additionally appears to teach, at least potentially,
the claim 1 language “determining a risk associated with passing the
intercepted first data with the particular value rather than with one of the
preferred values,” as well as “passing the substitute first data to the first
software component instead of the intercepted first data based at least in part
on the risk.”
In reaching this provisional conclusion, we start by interpreting the
claim language itself. See In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974)
(explaining that “[bjefore considering the rejections . . ., we must first
[determine the scope of] the claims”). More specifically, we look to
Appellant’s Specification to determine what claim 1 means by setting forth
the step of determining a risk responsive to determining the intercepted data
differs from preferred values.
Over the course of prosecution, Appellant has amended claim 1
approximately five times, generally citing to the same portions of the
Specification for support of this and other claim language. See Response to
Examiner’s Action 8 n.l (filed July 9, 2013) (failing to cite to any
Specification support for the claim amendment); Request for Continued
Examination 9 n.l (filed Dec. 5, 2013) (citing Spec. H 35, 39, 40);
Response to Examiner’s Action 9 n.l (filed May 5, 2014) (citing Spec.
1134—36, 39, 40); Request for Continued Examination 9 n.l (filed Sept. 26,
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Application 13/206,877
2014) (citing Spec. Tflf 34—36, 39, 40); Response to Examiner’s Action 9 n.l
(filed Mar. 30, 2015) (citing Spec. 34—36, 39, 40).
Passages of the Specification associated with the Appellant-cited
paragraphs indicate that determining the risk responsive to determining a
difference in the data means that Appellant’s system is pre-programmed
(e.g., either with hardware or software) to look for certain types of data
discrepancies. See, e.g., Spec. 133 (explaining that the system can be
programmed with specialized exception handling and risk analysis features
based on business goals, risk calculus, and other models).
The Specification sets forth an example of a credit check request
process wherein responsive to determining that a credit check service is
unable to respond timely to the request (i.e., upon receiving no-response
data, which data differs from a more preferred value of an actual credit
score), the system determines a risk associated with receiving the no­
response data by using the pre-programmed risk analysis feature. Id. 134.
The system then mitigates the risk of an undesirable result by using logic or
substituting data that allows the transaction to proceed:
To mitigate against undesirable results from a set of sub­
component or components of a system, or a composite
application making use of a component, it can be desirable to
alter the logic of the system, or one or more components of the
system, using instrumentation agents. Such agents can provide
logic for intervening within a system transaction when certain
conditions are met. Such conditions can be built upon exception
rules or models, as well as risk calculi. . . . [A]n agent can be
equipped with risk analysis or business exception logic that can
be used to calculate the risk of proceeding in a given set of
circumstances, allowing the agent to intervene and prevent the
sale from being cancelled in instances where the risk of non-
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Application 13/206,877
payment (for example) is deemed acceptable given the risk of
losing the business of a particular customer.
Id. 135.
This claimed functionality, as interpreted consistently with
Appellant’s Specification, appears to read on the functionality disclosed by
Carter. For example, Carter discloses “an exception manager (“EMGR”)
807 for detecting and correcting problems, such as those that affect web
service messages facilitating business processes or transactions, by
intercepting and correcting errors in messages before those messages are
sent from agent 804 to their destinations.” Carter, col. 12,11. 37—42. See
also id. col. 13,11. 31—37:
agent 804 can augment or supplant the information of deficient
messages with rehabilitative information that corrects the error
or ameliorates the anomalous conditions. Upon detecting a
noncompliant message, EMGR 807 can seek out rehabilitative
information with which to modify the message and place it in
compliance with the transaction processing rules.
Carter provides an example wherein a credit card number is missing
from a required field of a SubmitOrder message. Id. col. 13,11. 50-51. In
response to determining that the first data (the data indicating that the credit
card number is missing) is different from a preferred value (a valid credit
card number), Carter’s EMGR 807 uses the CustomerNumber data “to
acquire the credit card number from a previous order that can be stored as a
transaction archive of memory 814.” Id. col. 13,11. 51—54.
Based upon this interpretation of claim 1 and this passage of Carter,
we question whether Carter does not, in fact, anticipate or at least render
obvious claim 1, as well as other pending claims. However, the Final
Rejection does not indicate that the Examiner relied upon such a claim
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interpretation or the cited passages of Carter. Furthermore, the Patent Trial
and Appeal Board is a review body, rather than a venue of initial
examination. Rather, than examine the claims de novo, then, we leave it to
the Examiner to determine the appropriateness of any further rejections
based upon these noted factors.
DECISION
The Examiner’s decision rejecting claims 1—8 and 10—21 is reversed.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. MICHELSEN
Appeal 2016-005852
Application 13/206,877
Technology Center 2100
Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge, dissenting.
The Examiner finds Carter, Anand, and Parr teach all limitations of
claim 1. Final Act. 3^4; see also Ans. 12—14. The Examiner finds Carter
teaches all limitations of claim 1, except for the recited (claim 1) “responsive
to determining that the particular value of the intercepted first data is
different from the one or more preferred values, determining a risk
associated with passing the intercepted first data with the particular value
rather than with one of the preferred values”; “wherein the substitute first
data includes a preferred value”; and “the intercepted first data based at least
in part on the risk.” Final Act. 3^4.
The Examiner finds Anand teaches the recited (claim 1) “responsive
to determining that the particular value of the intercepted first data is
different from the one or more preferred values, determining a risk
associated with passing the intercepted first data with the particular value
Appeal 2016-005852
Application 13/206,877
rather than with one of the preferred values”; and “the intercepted first data
based at least in part on the risk.” Final Act. 4 (citing Anand Tflf 19, 26, 28,
29). The Examiner reasons “it would have been obvious to one of ordinary
skill in the art to modify the teachings of Carter by adapting the teachings of
Anand for the purposes of estimating risk to proceed with execution of a
change.” Final Act. 4 (citing Anand 1 8).
The Examiner finds Parr teaches the recited (claim 1) “wherein the
substitute first data includes a preferred value.” Final Act. 4 (citing Parr
col. 2,11. 42-46). The Examiner reasons “it would have been obvious to one
of ordinary skill in the art to modify the teachings of Carter and Anand by
adapting the teachings of Parr for the purposes of substituting invalid data.”
Final Act. 4 (citing Parr col. 2,11. 62—72).
In Appellant’s Appeal Brief, Appellant contests the Examiner’s
findings based on Anand, but does not contest the Examiner’s findings based
on Carter, Parr, or the Examiner’s reasons for combining the references. See
App. Br. 7—9. With respect to Anand, Appellant presents the following
principal argument in the Appeal Brief:
In general, Anand describes a system for performing
quality control on “change actions” authored by human users in
accordance with a corresponding “change ticket” outlining issues
to be resolved by the change action. See, e.g., id. at |0008.
“Risk,” in this context, refers to the risk of human error occurring
based on irregularities in a change ticket for execution by a
human. See id. at |0008. Change tickets are neither modified by
the Anand system nor “passed to a software component” based
on risk. Further, Anand is silent regarding values of the change
ticket being preferred or not preferred in the context of
“allow[ing] a transaction [between software components in a
particular system] to be completed successfully”. At most, the
risk discussed in Anand refers to the risk of a human error (e.g.,
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authoring a change action) being passed to another human user
(e.g., who is to execute the change ticket with the erroneous
change action). Accordingly, “risk” in Anand has nothing to do
with risk associated with passing, to a software component, the
intercepted particular data with the particular value rather than
with one of the preferred values. As a result, Anand fails to
remedy the admitted deficiencies of Carter.
App. Br. 8-9.
I do not see any error in the contested findings of the Examiner.
Anand discloses:
A system and method of employing a facade to intercept
change action commands to be carried out on a target IT endpoint
resource. The intercepted commands are compared to
information on a corresponding change ticket and any
differences, along with the information such as target history, are
used to compute a risk assessment of the risk in allowing the
intercepted change action commands to be executed. Where the
risk exceeds a predetermined threshold, the intercepted change
action commands may be modified or eventually aborted.
Anand Abstract.
Thus, Anand discloses intercepting change action commands, and
when as assessed risk of allowing the commands to be executed exceeds a
predetermined threshold, modifying the commands. See Anand Abstract;
see also Anand 19, 26, 28, 29.
Thus, Anand teaches the recited (claim 1) “responsive to determining
that the particular value of the intercepted first data” (in Anand, the
intercepted change action commands) “is different from the one or more
preferred values” (in Anand, preferred values are change action commands
that correspond to the change ticket), “determining a risk associated with
passing the intercepted first data with the particular value rather than with
one of the preferred values” (in Anand, the assessed risk of allowing the
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intercepted change action commands to be executed); and “[passing the
substitute first data to the first software component instead of] the
intercepted first data based at least in part on the risk” (in Anand, when the
commands are modified and the modified commands are passed, the
intercepted change action commands are not passed; this occurs based on the
assessed risk). See Final Act. 4; Ans. 13; see also Anand Abstract, 1119,
26,28, 29.
Regarding Appellant’s principal argument, Appellant’s argument
narrowly focuses on Anand’s change tickets. As explained above, Anand’s
commands are passed and may be modified.
In the Reply Brief, Appellant presents the following principal
arguments:
i. Anand has nothing to do with preferred values. See Reply Br. 2.
ii. Anand is not combinable with Parr. See Reply Br. 3^4.
Regarding argument (i), I still do not see any error in the contested
findings of the Examiner for reasons explained above when addressing the
Appeal Brief.
Regarding argument (ii), this new argument is deemed waived.
Appellant has not explained why, nor is it apparent that, this argument was
necessitated by a new point in the Examiner’s Answer or any other
circumstance constituting “good cause” for its belated presentation. See Ex
parte Borden, 93 USPQ2d 1473, 1473—74 (BPAI 2010) (“informative”)
(absent a showing of good cause, the Board is not required to address
argument in Reply Brief that could have been presented in the principal
Appeal Brief); see also 37 C.F.R. § 41.41(b)(2) (“Any argument raised in
the reply brief which was not raised in the appeal brief, or is not responsive
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to an argument raised in the examiner's answer, including any designated
new ground of rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”).
Therefore, I would affirm the Examiner’s decision rejecting claims 1—
8 and 10-21.
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