International Business Machines Corporation

Patent Trials and Appeals Board

Jun 21, 2021

2020004036 (P.T.A.B. Jun. 21, 2021)

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.
16/505,609 07/08/2019 Annap Derebail CAM920130019US03_8150-988 3234
112978 7590 06/21/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/21/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANNAP DEREBAIL, AMARESH RAJASEKHARAN,
and MAN MOHAN SINGH
____________

Appeal 2020-0040361
Application 16/505,609
Technology Center 3600
____________

Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Pursuant to 37 C.F.R. § 41.52, the Appellant2 filed a Request for
Rehearing (“Request” or “Req.”) on May 4, 2021. The Request seeks

1 We note related concurrent Request for Rehearing for appeal 2020-
004034, application 16/505,635. We also note prior appeals 2017-001849,
application 13/847,012, and 2017-001922, application 14/230,564, for which
Decisions were mailed July 25, 2018 and Decisions on Rehearing were
mailed Nov. 9, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42.
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reconsideration of our Decision on Appeal, mailed March 5, 2021
(“Decision” or “Dec.”) affirming the Examiner’s rejections of claims 21–40
under 35 U.S.C. § 103 and the ground of provisional non-statutory double
patenting. We have jurisdiction over the Request under 35 U.S.C. § 6(b).
APPLICABLE REQUEST FOR REHEARING RULES
The Appellant “may file a single request for rehearing within two
months of the date of the original decision of the Board.” 37 C.F.R.
§ 41.52(a)(1). “The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked by the Board.
Arguments not raised, and Evidence not previously relied upon . . . are not
permitted in the request for rehearing except as permitted by paragraphs
(a)(2) through (a)(4).” Id.
ANALYSIS
The Appellant “respectfully submit[s] that the Board has
misapprehended or overlooked Appellants’ arguments that paragraph [0007]
explicitly teaches that ‘RosettaNet defined the business processes,’ which is
contrary to the claim language.” Req. 6. Specifically, the Appellant asserts
that “[o]n page 11 of the Appeal Brief,[ ] Appellants cited paragraph [0007]
of Ouchi and argued that ‘[s]ince the alleged state machine of Ouchi defines
the alleged business rule, the business rule is not independent of the finite
state machine’ (emphasis in original)” (id. at 2 (also citing Appeal Br. 11))
and “[u]pon reviewing the Board’s decision, Appellants cannot find where
the Board even acknowledged or addressed this specific teaching from
Ouchi” (id. at 6–7). We disagree that we misapprehended or overlooked any
of the Appellant’s arguments presented in the Appeal and Reply Briefs.
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In the Decision, we specifically addressed the Appellant’s arguments
presented on pages 10 through 12 of the Appeal Brief. See Decision 5–9. In
particular, we discussed Ouchi’s paragraph 7 in finding that it discussed the
existing public consortium RosettaNet, recognized that business processes
were finite state machines, recognized businesses processes were closed
loop, recognized that partners coined the term PIP (Partner Interface
Process) that defined specific states and contents that changed the states, and
discussed that although RosettaNet defined the processes between partners
and most of the exception situations, it did not define how to detect and
process these exceptions. See id. at 5–6. We also discussed that Ouchi
aimed to improve the prior art by allowing each partner to have independent
business processes and for people to set rules and values. See id. at 6. We
specifically addressed the Appellant’s arguments that Ouchi does not teach
the business rules being independent of the finite state machine, noting the
Specification’s lack of explicit definition for the term “independent,” finding
that there is some dependency between the finite state machine and the rules,
and finding that Ouchi’s teaching of rules, as set by people and not the
server or state machine, stored in a database, and evaluated by a separate
server, meets the claimed limitation of “associating a business rule,
independent of the finite state machine, with each of the plurality of lifecycle
states, the business rule defining a condition causing a transition from the
lifecycle state associated with the business rule to a next lifecycle state of the
finite state machine.” See id. at 8–9.
The Appellant argues that “the Board has not accurately characterized
the teachings of Ouchi” and “both paragraphs [0041] and [0060] explicitly
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teach that the RosettaNet system 70 (i.e., the alleged finite state machine) is
used ‘to set rules.’” Req. 4. We disagree.
Regarding the Appellant’s contention that “the Examiner is mapping
the ‘business processes’ of Ouchi to the claimed ‘business rule’ and mapping
RosettaNet of Ouchi to the claimed ‘finite state machine’” (Req. 2 (citing
Final Office Act. 3–4), we disagree. We note that the statement to which the
Appellant refers was not made in the body of the rejection, but in a response
to the Appellant’s argument. See Final Act. 3–4. In the rejection itself, the
Examiner quotes Ouchi’s paragraphs 6 and 7 that state RosettaNet is a
public consortium and recognized that business processes were finite state
machines (id. at 9, 11) and cites to Ouchi’s paragraph 60 that states that
people are permitted to set rules (id. at 10). See also Ans. 5 (describing
RosettaNet as a communication system and finite state behavior of the
Partner Interface Process). Thus, the record conveys that the Examiner maps
the business process to the claimed finite state machine and the rules set by
people to the business rules.
The RosettaNet system, as described in Ouchi, is “a new public
consortium to define and implement a new standard for business-to-business
information transfer to solve the issues of the electronics technology
industry using the Internet and Web.” Ouchi ¶ 6; see also Decision 5.
“RosettaNet defined the business processes between trading partners and
created the transactions to support these processes[, and] . . . recognized that
most business processes were not just transactions but were in fact finite
state machines where the transactions between partners move each partner
through state transitions.” Ouchi ¶ 6; Decision 5. Even if, assuming
arguendo, RosettaNet defined the processes, i.e., the finite state machines,
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Ouchi is clear that the people using RosettaNet, but not the RoesttaNet
system itself, define the rules defining a condition causing a transition. As
the Appellant quotes (Request 4), Ouchi discloses that “[t]he filter function
76 of the RosettaNet system 70 permits the people 3 to set rules and values
that compare the state and content of each PIP instance transaction and filter
the transactions into three classes” (Ouch ¶ 41 (emphasis added)) and
“permits the people 3 to set rules and values that compare the state and
content of each PIP instance transaction and filter the transactions into
classes” (id. ¶ 60 (emphasis added)). “The filter function starts with the
assumption that all transactions are to be processed manually. . . . The
partner gains experience and automates the processes and transactions that
make business sense at the pace driven by business requirements.” Id. ¶ 45.
In other words, RosettaNet starts with no set or stored rules. When a
transaction is received by the RosettaNet Business-to-Business Server, it is
passed to the Application Server that accesses the rules, set by the people,
from the Database Server and compares the field in the transaction and
applies the rules. Id. ¶ 60.
We note that independent claims 21 and 31 do not state what entity
associates the business rule, but merely requires that a processor is
configured to and a computer is caused to associate the rule, “independent of
the finite state machine,” with a lifecycle state. Appeal Br. 19, 21 (Claims
App.). As we determined in the Decision,
it is not clear how ‘not dependent upon’ the finite state machine
the rules must be to be independent. The claim requires that the
rules relate to causing transitions from a state associated with the
business rule and a state of the finite state machine and that the
finite state machine evaluates the rules. Thus, there must be
some dependency between the finite state machine and the rules.
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Decision 8. We then noted the Specification discussing that the rules are
modified to change the behavior of the finite state machine without
modifying the finite state machine itself. Id. We maintain that Ouchi does
not disclose, nor does the Appellant provide evidence to the contrary, that
any of RosettaNet’s Servers may set, add, change, or delete the rules; rather
Ouchi only discloses that people may do so. As stated in the Decision,
RosettaNet does not define the business rules that cause a transition, but
allows for the people to define them and then applies them in the business
process, i.e., the finite state machine. See Decision 8.
Thus, we have considered the arguments raised by the Appellant in
the Request, but the Appellant has not persuaded us that the Board has
misapprehended or overlooked the Appellant’s arguments. Although we
have considered the Decision in light of the Request for Rehearing, we
decline to modify the Decision in any respect.

CONCLUSION
The Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the Appellant’s Request, but is denied
in all other respects.
Outcome of Decision on Rehearing:
Claim(s)
Rejected
35 U.S.C. § Basis Denied Granted
21–24,
26–34,
36–40
103 Ouchi, Nguyen 21–24,
26–34,
36–40

25, 35 103 Ouchi, Nguyen,
Cheng
25, 35

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Application 16/505,609

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Claim(s)
Rejected
35 U.S.C. § Basis Denied Granted
21–40 Nonstatutory Double
Patenting
21–40
Overall
Outcome
21–40

Final Outcome of Appeal after Rehearing:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–24,
26–34,
36–40
103 Ouchi, Nguyen 21–24,
26–34,
36–40

25, 35 103 Ouchi, Nguyen,
Cheng
25, 35

21–40 Nonstatutory Double
Patenting
21–40
Overall
Outcome
21–40

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).

DENIED