Raju Addala et al.

Patent Trials and Appeals Board

Aug 19, 2019

12718647 - (D) (P.T.A.B. Aug. 19, 2019)

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.
12/718,647 03/05/2010 Raju ADDALA 2011-0178US01 5307
74739 7590 08/19/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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):
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte RAJU ADDALA, ALOK SINGH, SAGAR BOYAPATI, LEAH
REED, NIKHILKUMAR PARIKH, KHANDERAO KAND, and
CLEMENS UTSCHIG
________________

Appeal 2017-011635
Application 12/718,6471
Technology Center 3600
________________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to a computer system for the orchestration of
business processes. Spec. ¶ 1. Claim 1 is illustrative of the invention and is
reproduced below with emphases added, which are discussed infra on page
7:

1 According to Appellants, Oracle International Corporation is the real party
in interest. App. Br. 2.
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1. A computer-readable medium having instructions
stored thereon, when executed by a processor, cause the
processor to process a change request using a compensation
pattern in a distributed order orchestration system, the processing
comprising:
defining a plurality of compensation patterns for a step of
an executable orchestration process, wherein the executable
orchestration process comprises one or more steps that
orchestrate an order received over a network, wherein each
compensation pattern comprises a set of one or more
compensating services which adjust the step of the executable
orchestration process, and wherein the one or more
compensating services are defined and associated with the step
of the executable orchestration process as part of a process
definition of the executable orchestration process that is stored
within a data table of a storage;
executing the step of the executable orchestration process;
receiving a change request, wherein the change request
comprises a new order that references the order and further
comprises one or more modifications to the order;
selecting a compensation pattern to apply from the
plurality of compensation patterns based on runtime data
associated with the one or more modifications to the order of the
change request;
based on the modifications to the order, applying the one
or more compensating services of the selected compensation
pattern to the step of the executable orchestration process to
adjust the step of the executable orchestration process; and
fulfilling an electronic commerce order based on the
adjusted step of the executable orchestration process.

REJECTIONS AT ISSUE2
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to

2 In the event of further prosecution, the Examiner should evaluate claims 1–
5, 19, and 20 in light of In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007)
and Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz.
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patent ineligible subject matter. Final Act. 6–10.
Claims 1–15, 19, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Srinivasan (US 7,096,189 B1;
issued Aug. 22, 2006), Kloppmann (US 2006/0277024 A1; published Dec.
7, 2006), and Lai (US 2005/0044197 A1; published Feb. 24, 2005). Final
Act. 11–20.
Claims 16–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Srinvasan, Kloppmann, and Bobak
(US 2009/0172689 A1; published July 2, 2009). Final Act. 22–26.

I. Claims 1–20 Rejected Under 35 U.S.C. § 101
A. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573

Pat. Office 212 (Feb. 23, 2010). We note that Appellants’ Specification
includes “carrier wave or other transport mechanism” as a computer-
readable medium. Spec. ¶ 140.
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U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
B. The Examiner’s Conclusions and Appellants’ Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Final Act. 7. The Examiner also determines the
present claims do not amount to significantly more than an abstract idea
itself because the abstract idea is implemented on generic components that
are well-understood, routine, and conventional previously known to the
industry. Id. at 8–9.
Appellants argue the present claims do not recite an abstract idea
because they are directed to specific orchestration system that is part of a
distributed computer system, and that is programmed to orchestrate an order
within the distributed computer system and to provide change management
for the orchestration of the order. App. Br. 6–7; Reply Br. 2. Appellants
argue, similar to the claims in Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299, 1308–14 (Fed. Cir. 2016), the present claims are
directed to an improvement in computer-related technology because the
present claims improve the functionality of the claimed orchestration system
programmed to receive a change request and determine the modifications
between an original order and a new order. App. Br. 11–13, 18–20 (citing
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Spec. ¶¶ 63–85, 161, 215, 218, 219); Reply Br. 3–5. Appellants argue the
present claims do not preempt any abstract idea. App. Br. 20–21; Reply Br.
6. Appellants further argue, similar to DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014), the present claims solve an Internet-
centric problem with a claimed solution that is necessarily rooted in
computer technology. App. Br. 18. Appellants argue, similar to BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016), the present claims recite a combination of non-conventional and
non-generic arrangement of known, conventional elements, which results in
an inventive concept. App. Br. 15–17; Reply Br. 7.3 We disagree with
Appellants.
C. Discussion
1. Step 2A, Prong 1
The emphasized portions of claim 14, reproduced above (see supra at
2), recite commercial interactions because they recite orchestration system
that is part of a distributed computer system, and that is programmed to
orchestrate an order within the distributed computer system and to provide

3 Appellants’ arguments pertaining to Smartgene, Inc. v. Advanced
Biological Labs., SA, No. 2013-1186 (Fed. Cir. 2014) (non-precedential),
Cyberfone Systems, LLC v. CNN Interactive Group, Inc. 588 F.2d 998 (Fed.
Cir. 2014) (non-precedential), and Digitech Image Tech., LLC v. Electronics
for Imaging, Inc. 758 F.3d 1344 (Fed. Cir. 2014) (App. Br. 8–11) are moot
because we do not rely on these cases to reach our Decision.
4 Appellants summarize features from: (1) claims 1–15; (2) claims 16–18;
and (3) claims 19 and 20 (App. Br. 16–17), which have slight differences.
However, Appellants argue claims 1–20 together. App. Br. 6–21.
Appellants, therefore, fail to argue claims 1–20 separately with particularity.
Id. We, therefore, group claims 1–20 together and refer to these claims as
the “present claims.”
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change management for the orchestration of the order; Appellants
acknowledge the present claims are directed to that. App. Br. 6–7; Reply Br.
2. According to the Memorandum, commercial interactions fall into the
category of certain methods of organizing human activity. See
Memorandum. Moreover, those certain methods of organizing human
activity are a type of an abstract idea. See id. We, therefore, disagree with
Appellants’ argument that the present claims do not recite an abstract idea.
App. Br. 6–7; Reply Br. 2.
Therefore, we proceed to prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellants’ argument that
the present claims recite improvements to the functioning of a computer or
to any other technology or technical field. App. Br. 11–13, 18–20 (citing
Spec. ¶¶ 63–85, 161, 215, 218, 219); Reply Br. 3–5.
The alleged improvement is in the functionality of the orchestration
system programmed to receive a change request and determine the
modifications between an original order and a new order. Spec. ¶¶ 63–85,
161, 215, 218, 219. However, unlike the claims of Enfish, the present claims
are not directed to “a specific improvement to the way computers operate,
embodied in the self-referential table” or similar improvements. Enfish,
LLC v. Microsoft Corp., 822 F.3d at 1336. And unlike the claims of McRO,
the present claims are not directed to rules for lip sync and facial expression
animation or an improvement in computer technology. McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d at 1308–14.
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Instead, the present claims are directed to an abstract idea as discussed
supra, in § I.C.1. or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
“network,” “storage,” “processor,”5 and “orchestration module”6) recited in
the present claims are merely tools used to implement the abstract idea.
Spec. ¶¶ 100, 139, 144.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis in original). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Furthermore, we disagree with Appellants’ argument that the present
claims are patent eligible because they do not preempt any abstract idea.
App. Br. 20–21; Reply Br. 6. Although preemption may denote patent
ineligibility, its absence does not demonstrate patent eligibility. See
FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d at 1098. For claims
covering a patent-ineligible concept, preemption concerns “are fully
addressed and made moot” by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
We also disagree with Appellants’ argument that the present claims

5 Claims 1, 11, 16, and 19 recite “processor,” whereas claim 6 does not.
6 Claim 11 recites “orchestration module,” whereas claims 1, 6, 16, and 19
do not.
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solve an Internet-centric problem with a claimed solution that is necessarily
rooted in computer technology. App. Br. 18. Instead, the present claims are
directed to an abstract idea using additional generic elements as tools to
implement the abstract idea as discussed supra in §§ I.C.1., I.C.2.
Appellants do not make any other arguments pertaining to step 2A,
prong 2. Because the present claims are directed to an abstract idea, we
proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional. Final Act. 8–9. The Specification supports the Examiners
determination in this regard because it explains that “network,” “storage,”
“processor,” and “orchestration module” are generic components. Spec.
¶¶ 100, 139, 144. Appellants’ Specification indicates these elements were
well-understood, routine, and conventional components because it describes
them at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.
We disagree with Appellants’ argument that, similar to BASCOM, the
present claims recite a combination of non-conventional and non-generic
arrangement of known, conventional elements, which results in an inventive
concept. App. Br. 15–17; Reply Br. 7. Instead, the present claims are
directed to an abstract idea using generic components as discussed supra, in
§§ I.C.1. and I.C.2. or at best, improving an abstract idea—not an inventive
concept.
Appellants do not argue claims 1–20 separately with particularity, but
assert the § 101 rejection of those claims should be withdrawn for at least
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the same reasons as argued. App. Br. 6–21. Based on our review of the
dependent claims, these claims do not recite any additional features that
would transform the abstract idea embodied in 1, 6, 11, 16, and 19 into an
inventive concept. Accordingly, we sustain the Examiner’s rejection of:
(1) independent claims 1, 6, 11, 16, and 19; and (2) dependent claims 2–5,
7–10, 12–15, 17, 18, and 20 under 35 U.S.C. § 101.
II. Claims 1–4, 6–9, 11–14, and 16–20 Rejected Under 35 U.S.C. § 103
A. Appellants’ Arguments Pertaining to Srinavasan and Our Analysis
Appellants argue Srinivasan teaches making changes to an existing
order and comparing or contrasting changes in the change order with the
existing order, but fails to teach
applying the one or more compensating services to the selected
compensation pattern to the step of the executable orchestration
process to adjust the step of the executable orchestration process;
and fulfilling an electronic commerce order based on the adjusted
step of the executable orchestration process
recited in claims 1 and 6 (and similarly recited in claims 11, 16, and 19).
App. Br. 21–23. We disagree with Appellants.
At the outset, one cannot show nonobviousness “by attacking
references individually” where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In this case, the
Examiner relies on Srinivasan to teach a customer making a change to an
existing order and based on changes to the existing order, the change order
results in changes to the existing order during fulfillment of the order, which
teaches the limitation “applying [] to the step of the executable orchestration
process to adjust the step of the executable orchestration process; and
fulfilling an electronic commerce order based on the adjusted step of the
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executable orchestration process” recited in claims 1 and 6 (and similarly
recited in claims 11, 16, and 19). Srinivasan, 3:30–41 (cited at Final Act.
12–13, 18–19, 23).
Furthermore, Kloppmann teaches enclosing a non-transactional Web
service within a compensation scope, which teaches the limitation “wherein
each compensation pattern comprises a set of one or more compensating
services” recited in claims 1, 6, and 11. Kloppmann ¶¶ 34, 41–42 (cited at
Final Act. 13–14).
Accordingly, we are not persuaded of error in the Examiner’s
conclusion that Srinivasan and Kloppmann collectively teach
applying the one or more compensating services to the
selected compensation pattern to the step of the executable
orchestration process to adjust the step of the executable
orchestration process; and fulfilling an electronic
commerce order based on the adjusted step of the
executable orchestration process
recited in claims 1 and 6 (and similarly recited in claims 11, 16, and 19).
B. Appellants’ Arguments Pertaining to Kloppmann and Our Analysis
First, Appellants argue Kloppmann teaches implementing a
compensation handler to compensate original activities of the web service,
fails to teach selecting a compensation handler from multiple compensation
handlers based on runtime data associated with modifications to the original
activities of the web service. App. Br. 23–24. Second, Appellants argue
Kloppmann teaches compensation handlers are carried out in reverse order
of execution, but fails to teach modifying a defined sequence of
compensation handlers, and implementing the compensation handlers in the
modified sequence. Id. at 24. Third, Appellants argue Kloppmann fails to
teach reusing data from an annotated step of an original executable
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orchestration process in executing a step of a new executable orchestration
process where there are no changes to attributes of the order that the step of
the new executable orchestration process acts on. Id. We disagree with
Appellants and address Appellants’ arguments in turn.
Regarding Appellants’ first argument, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
at 1097 (citing In re Keller, 642 F.2d at 425). In this case, the Examiner
relies on Srinivasan to teach or at least suggest making a change to an
existing order that results in changes in results to the existing order, which
teaches the limitation “selecting a [change] to apply from the plurality of
[changes] based on runtime data associated with the one or more
modifications to the order of the change request” recited in claims 1 and 6
(and similarly recited in claim 11). Srinivasan, Abstract (cited at Final Act.
11–13, 17–19, 22–23).
Moreover, Kloppmann teaches enclosing a non-transactional Web
service within a compensation scope, which teaches the limitation “wherein
each compensation pattern comprises a set of one or more compensating
services” recited in claims 1, 6, and 11. Kloppmann ¶¶ 34, 41–42 (cited at
Final Act. 13–14).
Regarding Appellants’ second argument, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., Inc. (citing In
re Keller). In this case, the Examiner relies on Srinivasan to teach a change
order includes a copy of an existing order and changes are applied to the
change order instead of the existing order, which teaches the limitation
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“receiving a change request, wherein the change request comprises a new
order that references the order and further comprises one or more
modifications to the order” recited in claims 1, 6, 16, and 19 (and similarly
recited in claim 11). Srinivasan, 4:3–6 (cited at Final Act. 11–12, 18, 23).
Regarding Appellants’ third argument, Appellants’ argument
pertaining to Kloppmann fails to demonstrate error in the Examiner’s
findings. App. Br. 24. In order to rebut a prima facie case of
unpatentability, Appellants must point out the supposed Examiner errors
distinctly and specifically, and the specific distinctions believed to render the
claims patentable over the applied references. See 37 C.F.R. § 41.37(c)(vii)
(“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”);
cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”). In this case, Appellants merely conclude that Kloppmann fails to
teach “reusing data from an annotated step of an original executable
orchestration process in executing a step of a new executable orchestration
process where there are no changes to attributes of the order that the step of
the new executable orchestration process acts on without pointing” (App. Br.
24) without pointing out the supposed Examiner errors distinctly and
specifically. Moreover, the Examiner finds Srinivasan teaches the limitation
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“reusing data from the annotated step of the original executable
orchestration process in executing a step of the new executable orchestration
process where there are no changes to the one or more attributes of the order
that the step of the new executable orchestration process acts on” recited in
claim 19 (Final Act. 18 (citing Srinivasan, 3:30–41)), which Appellants do
not rebut.
Accordingly, we are not persuaded of error in the Examiner’s findings
as Appellants allege in their three arguments in § II.B.
C. Appellants’ Arguments Pertaining to Lai and Our Analysis
Appellants first argue Lai teaches selecting one application over
another application based on different conditions, but fails to teach selecting
an application based on runtime data associated with a modification to an
order of a change request. App. Br. 24. Second, Appellants argue Lai fails
to teach selecting one application when a change request includes a
modification of a first type and selects another application when a change
request includes a modification of a second type. Id. at 24–25. Third,
Appellants argue Lai fails to teach modifying a defined sequence of
adjustment steps for a new executable orchestration process by modifying an
order of the adjustments steps, and executes the new executable
orchestration process, where the adjustment steps of the new executable
orchestration process are performed according to the modified sequence. Id.
at 25. Fourth, Appellants argue Lai fails to teach reusing data from an
annotated step of an original executable orchestration process in executing a
step of a new executable orchestration process where there are no changes to
attributes of the order that the step of the new executable orchestration
process acts on. Id. We disagree with Appellants.
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Regarding Appellants’ first argument, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., Inc. (citing In
re Keller). Here, the Examiner does not rely on Lai to teach this limitation.
Rather, the Examiner relies on Srinivasan teaching or at least suggesting
making a change to an existing order that results in changes in results to the
existing order, which teaches the limitation “selecting a [change] to apply
from the plurality of [changes] based on runtime data associated with the
one or more modifications to the order of the change request” recited in
claims 1 and 6 (and similarly recited in claim 11). Srinivasan, Abstract
(cited at Final Act. 11–13, 17–19, 22–23). Moreover, Kloppmann teaches
enclosing a non-transactional Web service within a compensation scope,
which teaches the limitation “wherein each compensation pattern comprises
a set of one or more compensating services” recited in claims 1, 6, and 11.
Kloppmann ¶¶ 34, 41–42 (cited at Final Act. 13–14).
As for Appellants’ second argument, selecting one application when a
change request includes a modification of a first type and selects another
application when a change request includes a modification of a second type
is not recited in any claim. “[A]ppellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.” See
In re Self, 671 F.2d at 1348 (CCPA 1982).
Regarding Appellants’ third argument, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., Inc. (citing In
re Keller). In this case, the Examiner does not rely on Lai to teach this
limitation. Instead, the Examiner relies on Srinivasan teaching a change
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order includes a copy of an existing order and changes are applied to the
change order instead of the existing order, which teaches the limitation
“receiving a change request, wherein the change request comprises a new
order that references the order and further comprises one or more
modifications to the order” recited in claims 1, 6, 16, and 19 (and similarly
recited in claim 11). Srinivasan, 4:3–6 (cited at Final Act. 11–12, 18, 23).
As for Appellants’ fourth argument, Appellants’ argument pertaining
to Kloppmann fails to demonstrate error in the Examiner’s findings. App.
Br. 24. In order to rebut a prima facie case of unpatentability, Appellants
must point out the supposed Examiner errors distinctly and specifically, and
the specific distinctions believed to render the claims patentable over the
applied references. See 37 C.F.R. § 41.37(c)(vii); In re Lovin, 652 F.3d at
1357; cf. In re Baxter Travenol Labs., 952 F.2d at 391. Here, Appellants
merely conclude that Kloppmann fails to teach reusing data from an
annotated step of an original executable orchestration process in executing a
step of a new executable orchestration process where there are no changes to
attributes of the order that the step of the new executable orchestration
process acts on without pointing (App. Br. 24) without pointing out the
supposed Examiner errors distinctly and specifically. Moreover, the
Examiner finds Srinivasan teaches the limitation “reusing data from the
annotated step of the original executable orchestration process in executing a
step of the new executable orchestration process where there are no changes
to the one or more attributes of the order that the step of the new executable
orchestration process acts on” recited in claim 19 (Final Act. 18 (citing
Srinivasan, 3:30–41)), which Appellants do not rebut.
Accordingly, we are not persuaded of error in the Examiner’s findings
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as Appellants allege in their four arguments in § II.C.
D. Appellants’ Arguments Pertaining to Bobak and Our Analysis
First, Appellants argue Bobak teaches steps may be performed in a
differing order, or that steps may be added, deleted, or modified, Bobak fails
to teach selecting a compensation pattern to apply from a plurality of
compensation patterns based on runtime data associated with modifications
of a change request, and applies compensating services to the selected
compensation pattern to a step of an executable orchestration process to
adjust the step of the executable orchestration process. App. Br. 25–26.
Second, Appellants argue Bobak teaches steps may be performed in a
differing order, or that steps may be added, deleted, or modified, Bobak fails
to teach modifying a defined sequence of adjustment steps for a new
executable orchestration process by modifying an order of the adjustments
steps, and executes the new executable orchestration process, where the
adjustment steps of the new executable orchestration process are performed
according to the modified sequence. Id. at 26. Third, Appellants argue
Bobak fails to teach reusing information from an existing order to process a
new order when there is no change to the existing information in the existing
order. Id. We disagree with Appellants.
As for Appellants’ first argument, one cannot show nonobviousness
“by attacking references individually” where the rejections are based on
combinations of references. In re Merck & Co., Inc. (citing In re Keller). In
this case, the Examiner does not rely on Bobak to teach this limitation.
Rather, the Examiner relies on Srinivasan teaching or at least suggesting
making a change to an existing order that results in changes in results to the
existing order, which teaches the limitation “selecting a . . . [change] to
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apply from the plurality of . . . [changes] based on runtime data associated
with the one or more modifications to the order of the change request”
recited in claims 1 and 6 (and similarly recited in claim 11). Srinivasan,
Abstract (cited at Final Act. 11–13, 17–19, 22–23). Moreover, Kloppmann
teaches enclosing a non-transactional Web service within a compensation
scope, which teaches the limitation “wherein each compensation pattern
comprises a set of one or more compensating services” recited in claims 1, 6,
and 11. Kloppmann ¶¶ 34, 41–42 (cited at Final Act. 13–14).
Regarding Appellants’ second argument, one cannot show
nonobviousness “by attacking references individually” where the rejections
are based on combinations of references. In re Merck & Co., Inc. (citing In
re Keller). In this case, the Examiner does not rely on Bobak to teach this
limitation. Instead, the Examiner relies on Srinivasan teaching a change
order includes a copy of an existing order and changes are applied to the
change order instead of the existing order, which teaches the limitation
“receiving a change request, wherein the change request comprises a new
order that references the order and further comprises one or more
modifications to the order” recited in claims 1, 6, 16, and 19 (and similarly
recited in claim 11). Srinivasan, 4:3–6 (cited at Final Act. 11–12, 18, 23).
As for Appellants’ third argument, Appellants’ argument pertaining to
Bobak fails to demonstrate error in the Examiner’s findings. App. Br. 26.
In order to rebut a prima facie case of unpatentability, Appellants must point
out the supposed Examiner errors distinctly and specifically, and the specific
distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(vii); In re Lovin, 652 F.3d at 1357 ; cf.
In re Baxter Travenol Labs., 952 F.2d at 391. In this case, Appellants
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merely conclude that Bobak fails to teach reusing existing information from
the existing order to process a new order when there is no change to the
existing information in the existing order (App. Br. 26) without pointing out
the supposed Examiner errors distinctly and specifically. Moreover, the
Examiner finds Srinivasan teaches the limitation “reusing data from the
annotated step of the original executable orchestration process in executing a
step of the new executable orchestration process where there are no changes
to the one or more attributes of the order that the step of the new executable
orchestration process acts on” recited in claim 19 (Final Act. 18 (citing
Srinivasan, 3:30–41)), which Appellants do not rebut.
Accordingly, we are not persuaded of error in the Examiner’s findings
as Appellants allege in their three arguments in § II.D.
III. Claims 5, 10, and 15 Rejected Under 35 U.S.C. § 103
The Examiner finds Kloppmann teaches runtime behavior regarding
compensation scopes, which the Examiner maps to the limitation “based on
the change request, applying the business rule to the runtime data associated
with the one or more modifications to the order of the change request”
recited in claims 5, 10, and 15. Final Act. 17 (citing Kloppmann ¶¶ 33–38,
80); Ans. 15.
Appellants argue Kloppmann’s compensation scope cannot be
equated properly with the limitation “based on the change request, applying
the business rule to the runtime data associated with the one or more
modifications to the order of the change request.” App. Br. 27. We agree
with Appellants.
Consequently, the cited portions of Kloppmann fail to teach a nexus
(i.e., the “based on” claims 5, 10, and 15 limitation) between: (1) a
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condition precedent of the change request; and (2) a subsequent result of
applying the business rule of the runtime data associated with the one or
more modifications to the order of the change request. We, therefore, agree
with Appellants that the cited portions of Kloppmann fail to teach “based on
the change request, applying the business rule to the runtime data associated
with the one or more modifications to the order of the change request.”
(emphasis added) as recited in claims 5, 10, and 15.
Accordingly, we do not sustain the Examiner’s rejection for claims 5,
10, and 15 under 35 U.S.C. § 103.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1–4, 6–9, 11–14,
and 16–20 under 35 U.S.C. § 103.
We reverse the Examiner’s decision rejecting claims 5, 10, and 15
under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
claims 5, 10, and 15, the Examiner’s decision with respect to claims 5, 10,
and 15 is affirmed. See 37 C.F.R. § 41.50(a)(1).
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).
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AFFIRMED