Ex Parte PadmanabhanDownload PDFPatent Trial and Appeal BoardMay 18, 201612830621 (P.T.A.B. May. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/830,621 07/06/2010 76933 7590 05/20/2016 IBM (END-KLS) c/o Kennedy Lenart Spraggins LLP 8601 Ranch Road 2222 Ste. 1-225 AUSTIN, TX 78730 FIRST NAMED INVENTOR Harirajan Padmanabhan 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. END920100039US 1 1925 EXAMINER NGUYEN, TAND ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 05/20/2016 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): office@klspatents.com kate@klspatents.com hanna@klspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARIRAJAN PADMANABHAN Appeal2013---009240 Application 12/830,621 Technology Center 3600 Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and AMEE A. SHAH, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Harirajan Padmanabhan (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1-24, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellant's Appeal Brief ("Appeal Br.," filed January 9, 2013) and Reply Brief ("Reply Br.," filed July 10, 2013), and the Examiner's Answer ("Ans.," mailed May 10, 2013), and Final Action ("Final Act.," mailed August 3, 2012). Appeal2013-009240 Application 12/830,621 The Appellant invented a way of developing business process models that are aligned with business components and business intent. Specification 1:12-14. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). A method of developing a business process model that is aligned with business components and business intent, the method implemented in a computer that includes a computer processor, the method comprising: [ 1] defining, by one or more modules of automated computing machinery, a plurality of business components, wherein each business component is a logical element of a business enterprise that carries out a particular business function; [2] associating, and by one or more modules of automated computing machinery, one or more activities with a particular business component, wherein each activity is identified by a unique identifier, and wherein each activity is an atomic operation carried out by the particular business component that the activity is associated with; 2 Appeal2013-009240 Application 12/830,621 [3] defining, by one or more modules of automated computing machinery, in dependence upon the associated one or more activities, a business capability that is carried out by one or more business components The Examiner relies upon the following prior art: Rackham US 2005/0203784 Al Nathan US 2009/0293059 Al Sep. 15,2005 Nov. 26, 2009 Claims 1-8 stand rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention. Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Rackham and Nathan. ISSUES The issues of obviousness tum primarily on whether the mental perceptions of what data variables mean are afforded patentable weight, and if so, whether the data interpretations of Rackham are within the scope of the claimed data interpretations. 3 Appeal2013-009240 Application 12/830,621 FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Rackham 01. Rackham is directed to defining and implementing enhancements to the operation of a business. Rackham para. 1. 02. Rackham describes building a map of components of activities. A component is a group of cohesive business activities supported by appropriate processes, applications, infrastructure, and metrics. Applications may be software applications supporting a business activity. Components may work in any combination or sequence with other components to get the job done. Rackham para. 20. 03. Rackham describes that the map of components contains rows that are grouped into three management levels of business activities, namely, planning and analysis, checks and controls, and execution. The rows are standard for all industries, defining three levels of management control. For each grouping of activities in a column, a combination of these three levels is required to ensure the business operates effectively. Rackham para. 21. 04. Rackham describes the columns as activity categories which will be industry specific. Business activities are determined in interviews supported by subject area specialists to identify both 4 Appeal2013-009240 Application 12/830,621 current and future capabilities. Activities may be specified in terms of functionality, user skill and authority, systems, analysis, operational decision making, operational characteristics, and business information usage. Rackham paras. 22-31. 05. Rackham describes defining capabilities for each activity category that summarize how the organization seeks to perform in that aspect of its business. Target competitive levels are then determined for each capability. Rackham para. 34. Selected components should be components that drive the primary strategy of the company such as low cost provider, brand, servicing, and have a large gap between the current and desired capabilities. Rackham para. 3 9. 06. Rackham shows a matrix with business components such as Business Administration across the top and activities performed by a component in rows underneath. Each activity identifier is unique in the display. Rackham Fig. 2. ANALYSIS Claims 1--8 rejected under 35 U.S. C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention We are persuaded by Appellant's arguments. Appeal Br. 6. The Examiner's questions are more reflective of claim breadth than indefiniteness per se. 5 Appeal2013-009240 Application 12/830,621 Claims i-24 rejected under 35 U.S.C. § i03(a) as unpatentable over Rackham and Nathan Claim 1 recites three steps, viz., defining X, associating X with Y, and defining Z, where X is labeled as a plurality of business components, wherein each business component is a logical element of a business enterprise that carries out a particular business function, Y is labeled as one or more activities, wherein each activity is identified by a unique identifier, and wherein each activity is an atomic operation carried out by the particular business component that the activity is associated with, and Z is labeled as a business capability that is carried out by one or more business components in dependence upon the associated one or more activities. Thus, the claim is really defining two data items and associating the first data item with a third data item. Nothing in the claim requires or enforces the labels the claim suggests the data be perceived as. Mental perceptions of what data represents are non-functional and given no weight. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any new and unobvious functional relationship between the printed matter and the substrate.'") (citations omitted). See also In re Lowry, 32 F.3d 1579, 1583 (Fed.Cir.1994) (describing printed matter as "useful and intelligible only to the human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Data labels are just examples of such mental perceptions. That said, the Examiner finds that Rackham nevertheless described data with labels within the scope of those in the claim. 6 Appeal2013-009240 Application 12/830,621 We are not persuaded by Appellant's argument that Rackham describes defining business activities instead of components. Appeal Br. 7-10. As the Examiner finds, Rackham explicitly refers to what it defines as "components." Ans. 15; FF 02 and 06. Appellant put himself in the position of arguing that Rackham says what the claim says but not what the claim means (see Appeal Br. 8-9), a difficult hurdle even in precise arts such as chemistry, but next to impossible in business processing arts where metaphor is rampant. To support his contention, Appellant cites an example in the Specification. Id. at 9. We do not import the Specification into the claims. Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). We are not persuaded by Appellant's argument that Rackham describes selecting components instead of associating activities with components. Appeal Br. 10-13. As the Examiner finds, Rackham explicitly refers to "components" being made up of "activities." Ans. 15-16; FF 02. This limitation does not recite or narrow the manner or implementation of such association, so Rackham is at least degenerately within the scope of the limitation. Appellant again puts himself in the position of arguing that Rackham says what the claim says but not what the claim means, and again 7 Appeal2013-009240 Application 12/830,621 Appellant cites an example in the Specification. Appeal Br. 12. We do not import the Specification into the claims. We are not persuaded by Appellant's argument that Rackham describes building a component map for a client instead of defining a business capability that is carried out by one or more business components in dependence on activities. Appeal Br. 13-14. As the Examiner finds, Rackham explicitly refers to "capabilities" of the "activities." Ans. 17; FF 05. This limitation does not recite or narrow the manner or implementation of such dependence, so Rackham is at least degenerately within the scope of the limitation. Appellant again puts himself in the position of arguing that Rackham says what the claim says but not what the claim means. This is a difficult argument given our mandate to only issue claims that put the public on notice as to claim scope. See 35 U.S.C. § 112, second paragraph. A distinguishing amendment is the appropriate remedy. CONCLUSIONS OF LAW The rejection of claims 1-8 under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention is improper. The rejection of claims 1-24 under 35 U.S.C. § 103(a) as unpatentable over Rackham and Nathan is proper. DECISION The rejection of claims 1-24 is affirmed. 8 Appeal2013-009240 Application 12/830,621 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv) (2011). AFFIRMED 9 Copy with citationCopy as parenthetical citation