Simon Cockayne et al.

Patent Trials and Appeals Board

Sep 24, 2019

13927801 - (D) (P.T.A.B. Sep. 24, 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.
13/927,801 06/26/2013 Simon Cockayne US20130196US1/7100-35900 4280
141563 7590 09/24/2019
MHKKG (CA Technologies)
P.O. BOX 398
AUSTIN, TX 78767-0398
EXAMINER
PHAM, MICHAEL
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON COCKAYNE and RAGHUNATH DAITA
Appeal 2018-007078
Application 13/927,801
Technology Center 2100
Before DEBRA K. STEPHENS, MICHAEL J. STRAUSS, and
HUNG H. BUI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5, 6, 8–13, 15–21, and 24–26.
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “Applicant(s)” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as CA, Inc.
Appeal Br. 1.
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Application 13/927,801

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CLAIMED SUBJECT MATTER
The claims are directed to producing more meaningful web services
descriptions via automated cross-reference of external information sources.
Spec., Title. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for generating narrative interface descriptions, the
method comprising:
parsing, by a processor, a web service description file to
identify an element therein based on a property of the element,
wherein the web service description file is provided by a web
service provider, wherein the web service description file
comprises a machine-readable description of a computing
interface, and wherein the machine-readable description
comprises a plurality of elements including the element and a
string of characters identifying the element that is meaningless in
a human-readable format;
retrieving, by the processor and from a data source, cross-
reference data comprising human-readable narrative information
corresponding to the element[] wherein the human-readable
narrative information provides descriptive information about the
element in the human-readable format;
generating, by the processor, an embellished web service
description file wherein the element is modified to include the
cross-reference data, wherein the generating the embellished
web service description file comprises modifying content of the
element to include the human-readable narrative information
while retaining a structure of the machine-readable description;
identifying, by the processor, a change to the data source
wherein the human-readable narrative information is updated,
resulting in updated human-readable narrative information;
retrieving, by the processor, the updated cross-reference
data [sic., human-readable narrative information2]; and

2 For purposes of understanding the intended scope of claim 1, we include
Appellant’s proposed amendment filed March 2, 2017. The Amendment,
filed after issuance of the Final Action mailed January 4, 2017, was refused
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Application 13/927,801

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re-generating, by the processor, the embellished web
service description file wherein the element is modified to
include the updated human-readable narrative information.
REFERENCES
The prior art relied upon by the Examiner is:
LeBlanc US 6,304,877 B1 Oct. 16, 2001
Rafnsson US 2008/0271047 A1 Oct. 30, 2008

REJECTIONS
Claims 1, 5, 6, and 153 stand rejected under 35 U.S.C. § 112(b) as
being indefinite for failing to particularly point out and distinctly claim the
subject matter, which the inventor or a joint inventor regards as the
invention. Final Act. 2–3.
Claims 1, 3, 5, 6, 8–13, 15–21, and 24–26 stands rejected under 35
U.S.C. § 103 as being unpatentable over Rafnsson and LeBlanc. Final Act.
3–23.

ANALYSIS
35 U.S.C. § 112
The Examiner rejects claims 1, 5, 6, and 15 under 35 U.S.C. § 112(b)
as indefinite for the reasons set forth in the Action. Final Act. 2–3.

entry by the Examiner on the basis it would raise new issues requiring
further consideration or search. See Advisory Action mailed May 4, 2017 p.
1.
3 Although not included among the claims listed as rejected, dependent
claims 3 and 16 also suffer by inheritance from the alleged deficiencies of
base independent claim 1 from which they depend. We leave to the
Examiner any corrective action.
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Appellant filed an Amendment after final action on March 2, 2017 amending
the rejected claims in an attempt to address the rejection. However, the
Amendment was refused entry by the Examiner. Advisory Action mailed
May 4, 2017 p. 1. Rather than providing argument that the rejection are
improper, Appellant requests the rejection be “held in abeyance pending
outcome of this Appeal.” App. Br. 11. In the absence of substantive
argument, we summarily sustain the § 112(b) rejection. See Manual of
Patent Examining Procedure (MPEP) § 1205.02 (“If a ground of rejection
stated by the examiner is not addressed in the appellant's brief, that ground
of rejection will be summarily sustained by the Board.”); see also In re
Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (affirming the Board’s decision
to sustain an uncontested rejection of claims under 35 U.S.C. § 112, second
paragraph and finding the appellant had waived his right to contest the
indefiniteness rejection by not presenting arguments as to error in the
rejection on appeal to the Board).

35 U.S.C. § 103
We have reviewed the Examiner’s rejection under 35 U.S.C. § 103
in light of Appellant’s arguments the Examiner has erred. We agree with
Appellant’s conclusions as to this rejection of the claims.
The Examiner finds Rafnsson’s discover services request for metadata
(i.e., a metadata “type” of discover services request) teaches Appellants’
web service description file. Final Act. 4; Advisory 2. According to the
Examiner, Rafnsson’s discover services request is in a format including a
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DISCO4 format of a discovery system interrogation algorithm that identifies
a discover web server teaches the disputed limitation of an element having a
string of characters that is meaningless in a human-readable format. Id.
Appellant contends:
1. Rafnsson’s request for metadata results in metadata descriptions that
are not part of a web service description file. App. Br. 13. Instead,
“Rafnsson disclose[s] the Web Service Description Language
(WSDL) and DISCO response used in response to the metadata
requests are XML documents, which are in human-readable format.”
Id. “The metadata descriptions are not an element within a web
service description file.” Id.
2. “[T]he ‘DISCO format’ cannot be a web services description file as
alleged in the Office Action as it just contains links.” Id. at 14.
DISCO is an interrogation algorithm used to discover web services
and cannot be reasonably construed as a web service description file.
Id. at 15.
In response, the Examiner determines the claimed element of the web
services description file can be broadly interpreted to encompass any data
returned disagreeing that “the metadata descriptions are not an element
within a web service description file . . . because the metadata descriptions
are derived from the service.” Id. Addressing the DISCO format, the
Examiner explains “the claim indicates that the web service description file
comprises a machine readable description, and this is provided by Disco.
Rafnsson discloses ‘wherein the web service description file’ (figure 3, 310,

4 DISCO is a Microsoft® technology for publishing and discovering Web
Services (Rafnsson ¶ 30).
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325, 330; 0026-0029; service at the application) ‘comprises a machine-
readable description’ (0030, disco).” Id.
In reply, Appellant argues “[a] discovery request for services, a
request for metadata descriptions, and a service request are not synonymous
with a web service description file [as claimed].” Reply Br. 3. Furthermore,
according to Appellant, “[t]he LeBlanc DDL file is a human readable text
file . . . [not] a string of characters identifying the element that is
meaningless in a human-readable format as recited in the independent
claims.” Id. Appellant further argues the rejection is improper because, if
the disputed element of the web services description file is broadly
interpreted as any data returned, then there is a failure to show that “the
recitation of parsing, by a processor, a web service description file is met.”
Id. at 3–4.
Because we are unable to ascertain the Examiner’s basis for broadly
interpreting any returned data as the claimed “element” of the web service
description file, we do not sustain the rejection. Furthermore, the
Examiner’s reasoning for finding that Rafnsson’s discover services and
metadata are components of the claimed web service description file is also
inadequate to sustain the rejection. For example, it is not apparent why, as
alleged by the Examiner, it is sufficient that the metadata description be
derived from the service request. See Ans. 6. The Examiner’s reasoning in
finding that determining a type of request constitutes parsing is also
inadequately explained. See Final Act. 4, 6 (“Rafnsson discloses that
metadata is parsed since it is returned from the service on the app server.”).
Still further, we are unable to ascertain the Examiner’s reasoning for finding
that the discover web service (the “element”) is meaningless in a human-
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readable format. Accordingly, we determine the Examiner has not set forth
with specificity the reasoning.
Because at least one of the arguments advanced by Appellants is
persuasive of there being inadequate reasoning or explanation by the
Examiner to support the rejection, we need not reach the merits of
Appellants’ other arguments. Therefore, based on a preponderance of the
evidence, we do not sustain the rejection of independent claims 1, 11, and 20
or that of dependent claims 3, 5, 6, 8–10, 12, 13, 15–19, 21, or 24–26.

DECISION
We affirm the Examiner’s decision to reject claims 1, 5, 6, and 15
under 35 U.S.C. § 112(b).
We reverse the Examiner’s decision to reject claims 1, 3, 5, 6, 8–13,
15–21, and 24–26 under 35 U.S.C. § 103.

DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 5, 6, and 15 35 U.S.C.
§ 112(b)
1, 5, 6, and 15
1, 3, 5, 6, 8–13,
15–21, and 24–26
35 U.S.C. § 103 1, 3, 5, 6, 8–13,
15–21, and 24–
26
Overall Outcome 1, 5, 6, and 15 3, 8–13, 16–21,
and 24–26
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FINALITY AND RESPONSE
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)(1)(iv).
AFFIRMED-IN-PART