Ex Parte Rolia et alDownload PDFPatent Trial and Appeal BoardFeb 16, 201612808229 (P.T.A.B. Feb. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/808,229 09/17/2010 Jerome Rolia 56436 7590 02/18/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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. 82237019 1646 EXAMINER JASMIN, LYNDA C ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 02/18/2016 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): hpe.ip.mail@hpe.com mkraft@hpe.com chris.mania@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEROME RO LIA, NIGEL EDWARDS, GUILLAUME ALEXANDRE BELROSE, SVEN GRAUPNER, LAWRENCE WILCOCK, and BRYAN STEPHENSON Appeal2013-009723 Application 12/808,229 Technology Center 3600 Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-9 and 11-19. 3 We have jurisdiction under 35 U.S.C. § 6(b). 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Mar. 28, 2013), Reply Brief ("Reply Br.," filed July 25, 2013), the Examiner's Answer ("Ans.," mailed May 31, 2013), and the Final Rejection ("Final Act.," mailed Dec. 31, 2012). 2 Appellants identify the real party in interest as "The Hewlett-Packard Development Company, LP." App. Br. 3. 3 Claim 10 is canceled. (id.at 14, Claims Appendix). Appeal2013-009723 Application 12/808,229 We AFFIRM. STATEMENT OF THE DECISION INVENTION "This invention relates to methods of automated deployment managed by a service provider, of a computer based business process, and relates to corresponding systems and software." Spec. 1:23-25. Claim 1 is illustrative of the subject matter on appeal: 1. A non-transitory machine-readable medium having instructions stored thereon executable by a processor to: generate a model of a business process including functional steps of an enterprise comprising: [a] a representation of an arrangement of software application components, for implementing the functional steps; and [b] a representation of computing infrastructure, for running the software application components on specified enterprise dedicated hardware, and suitable for automated deployment; [ c] satisfy non-functional requirements by integrating the functional steps, the software application components, and the dedicated hardware in the model; and [d] in response to satisfying the non-functional requirements, deploy the model on the hardware dedicated to the enterprise, with an interface for a service provider to manage the deployed model. App. Br. 13, Claims Appendix (with lettering in brackets added). REJECTIONS I. Claims 1-7, 9, 11-17, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Beringer (US 2005/005567 Al, pub. Mar. 10, 2 Appeal2013-009723 Application 12/808,229 2005) and Moon (US 2007/0100930 Al, pub. May 3, 2007). 4 Final Act. 3-11. II. Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Beringer, Moon, and Hughes (US 2003/0177018 Al, pub. Sept. 18, 2003). Id. at 11-12. DISCUSSION We have reviewed Appellants' arguments in the Briefs against the Examiner's Answer and the Final Rejection, and we are not persuaded of error. We adopt the Examiner's findings and rationale provided in the Answer and Final Rejection as our own, and we note the following for emphasis. Rejection I Claims 1-7, 9, 11-17, and 19 As an initial matter, we note that independent claims 1 and 11 recite substantially similar subject matter. Appellants argue claims 1 and 11 together, and specify that dependent claims 2-7, 9, 11-17, and 19 shall stand or fall with independent claims 1 and 11. App. Br. 10. We select claim 1 as being representative. Appellants contend that the proposed combination of Beringer and Moon is improper because "creating an application using selected patterns implemented in accordance with a particular underlying technology as stated in the Beringer reference, and settings from ownership and accountability settings associated with components of IT infrastructure, as stated in the 4 We note that canceled claim 10 was incorrectly included in the heading of the final rejection. See Final Act. 3. 3 Appeal2013-009723 Application 12/808,229 Moon reference, is not analogous to" limitations [ c] and [ d] of claim 1. Id. at 8-9; see also Reply Br. 5. We are not persuaded of error by the Examiner because Appellants' arguments do not fairly characterize the cited prior art and rejection in relation to the claimed subject matter. Claim 1 is directed to "generat[ing] a model of a business process including functional steps of an enterprise." Under the Definitions section of the Specification, Appellants broadly define the claimed "business process" and "functional steps:" "business process" is intended to encompass any process involving computer implemented steps and optionally other steps such as human input or input from a sensor or monitor for example, for any type of business purpose such as service oriented applications, for sales and distribution, inventory control, control or scheduling of manufacturing processes for example. It can also encompass any other process involving computer implemented steps for non[-]business applications such as educational tools, entertainment applications, scientific applications, any type of information processing including batch processing, grid computing, and so on. "Functional steps" can encompass any type of function of the business process, for any purpose, such as interacting with an operator receiving inputs, retrieving stored data, processing data, passing data or commands to other entities, and so on, typically but not necessarily, expressed in human[-]readable form. Spec. 8: 1-8 and 7: 19-22, respectively. All of the disclosures in a reference must be evaluated for what they fairly teach one of ordinary skill in the art. And in determining obviousness, a reference must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. Here, the Examiner finds that Beringer discloses at paragraph 39 "[a] 4 Appeal2013-009723 Application 12/808,229 process modeling tool enabl[ing] the creation of [a] new business worktlow [model]." Final Act. 3; see also Ans. 3. Moon discloses that a service map can be accessed and utilized to discretely apply a process theory to the information technology infrastructure. Abstract. The Examiner further finds that Moon at paragraphs 40 and 50-53 discloses a service map of a plurality of information technology resources and services including representations of IT infrastructure as well as other components. Final Act. 4; see also Ans. 4. Thus, the Examiner relies on the combined teachings of Beringer and Moon to reject limitations [ c] and [ d] of claim 1. See Ans. 4 ("Beringer discloses the integration of functional steps and software applications in a model and Moon discloses integrating IT infrastructure, software, and other components in a model, then the combination fully discloses integrating the functional steps, the software application components, and the dedicated hardware in a model."). Appellants' argument provides only a brief description of Appellants' interpretation of Beringer and Moon separately and a conclusory statement the references are not analogous to the claim limitations. See App. Br. 8-9. However, Appellants fail to address any insufficiency or reversible error with regard to the Examiner's rationale and reasoning for the combination of Beringer and Moon as set forth in the rejection of record. We are also not persuaded by Appellants' assertion that "[a ]dditional configuration may be needed to integrate an IT infrastructure with functional steps and a created application which are not described in the Beringer and Moon references." App. Br. 9. As the Examiner correctly states, Appellants have not pointed to or presented any evidence to support this contention. See Ans. 4. A general assertion of what "may be needed" is just attorney 5 Appeal2013-009723 Application 12/808,229 argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness. See In re Geisler, 116 F.3d 1465 (Fed. Cir. 1997); In re Lindner, 457 F.2d 506, 508 (CCP A 1972) ("mere lawyers' arguments unsupported by factual evidence are insufficient to establish unexpected results")). Furthermore, Appellants argue integrating the three elements to satisfy non-functional requirements requires more than simply combining two models, wherein nonfunctional requirements "can encompass how well the functional steps are achieved, in terms such as performance, security properties, cost, availability and others." (Present disclosure, page 7, lines 8-10). App. Br. 9; see also Reply Br. 5. We are not persuaded of reversible error because Appellants' argument is not commensurate with the limitations of claim 1. The PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in Appellants' Specification. In re Morris, 127 F.3d 1048, 1054-- 55 (Fed. Cir. 1997). Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim. In re Prater, 415 F.2d 1393, 1404--05, (CCPA 1969). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van 6 Appeal2013-009723 Application 12/808,229 Geuns, 988 F.2d 1181 (Fed. Cir. 1993). Claim 1 does not require satisfying non-functional requirements based on how well the functional steps are achieved in terms of performance, security properties, cost, or availability. Rather, to satisfy non-functional requirements, claim 1 requires "integrating the functional steps, the software application components, and the dedicated hardware in the model." Thus, we decline to read the argued limitations into the claims because "limitations not appearing in the claims cannot be relied upon forpatentability." See In re Self, 671F.2d1344, 1348(CCPA1982). Accordingly, we sustain the rejection of independent claims 1 and 11, which are argued together and recite substantially similar subject matter. We also sustain the rejection of dependent claims 2-7, 9, 11-17, and 19, which fall with claims 1 and 11. Rejection II Claims 8 and 18 Appellants rely on the patentability of independent claims 1 and 11 in arguing against the rejection of dependent claims 8 and 18. See App. Br. 10-11; Reply Br. 6. As such, we sustain the rejection of claims 8 and 18 for the reasons set forth above with regards to claims 1 and 11. DECISION The Examiner's decision to reject claims 1-9 and 11-19 is 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation