Stanley K. Poon et al.

Patent Trials and Appeals Board

Aug 27, 2019

14170482 - (D) (P.T.A.B. Aug. 27, 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.
14/170,482 01/31/2014 Stanley K. Poon 102450.00099 (102794.1) 5474
108431 7590 08/27/2019
Dell c/o Jackson Walker L.L.P.
100 Congress Avenue
Suite 1100
Austin, TX 78701
EXAMINER
MITCHELL, JASON D
ART UNIT PAPER NUMBER
2199
MAIL DATE DELIVERY MODE
08/27/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STANLEY K. POON, MAISA C. MANOEL, YAO LU, GAVIN
D. SCOTT, ANDREW T. MILLER, MICHAEL D. CONDON, KEVIN S.
BORDEN, PRAHARSH S. SHAH, ROGER W. FAULKNER, and
JAMES WATT
____________

Appeal 2017-006954
Application 14/170,4821
Technology Center 2100
____________

Before JOHN P. PINKERTON, JON M. JURGOVAN, and
NABEEL U. KHAN, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify Dell Products, L.P. as the real party in interest. App.
Br. 4.

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BACKGROUND
THE INVENTION
According to Appellants, the invention relates to “enterprise software
development and management, and more specifically to an agile framework
for vertical application development and delivery.” Spec. ¶ 1.
Exemplary independent claim 1 is reproduced below.
1. A software development platform comprising:
one or more user-selectable modular units containing a
vertical stack of back-end business logic;
one or more user-selectable modular units containing
domain model components;
one or more user-selectable modular units containing front
end presentation components; and
a virtual appliance comprising application-specific logic
that includes one or more of the modular units containing the
vertical stack of back-end business logic, one or more of the user
selectable modular units containing the domain model
components and one or more of the user selectable modular units
containing front end presentation components.
REFERENCES AND REJECTIONS
1. Claims 1–6 and 13–18 stand rejected under 35 U.S.C. § 112(b)
as indefinite. Final Act. 8.
2. Claims 1–182 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 9–10.

2 The Examiner does not reject claims 19 and 20 under 35 U.S.C. § 101.
Should there be further prosecution, the Examiner may want to analyze
claims 19 and 20 on the same basis as claims 1–18 under this rejection.
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3. Claims 1, 3–9, 11–13, and 15–203 stand rejected under 35
U.S.C. § 102(a)(1) as anticipated by Dorn et al. (US 2008/0141213 A1, pub.
June 12, 2008). Final Act. 10–18.
4. Claims 2 and 14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Dorn and Pugh et al. (US 2012/0054625 A1, Mar. 1,
2012). Final Act. 18–20.
5. Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable
over Dorn and Findlay et al. (US 2015/0309770 A1, Oct. 29, 2015). Final
Act. 20–21.
DISCUSSION
REJECTION UNDER 35 U.S.C. § 112
The Examiner points to claim 1’s recitation of “one or more user-
selectable modular units containing a vertical stack of back-end business
logic” and finds that “[i]t is not clear what metes and bounds the applicants
intend the term ‘vertical’ to apply to the ‘stack.’ In other words it is not clear
how a ‘vertical stack’ differs from a ‘stack.’” Final Act. 8. The Examiner
further points to claim 2 and claim 14’s recitation of “logical constructs” and
finds that such recitation is “so broad as to encompass any and all of the
other aspects of the claims (e.g. a piece of software).” Final Act. 8.
Appellants argue that in light of the Specification the term “vertical
stack structure” can be characterized as “a serial structure, or a parallel

3 The subheading for this rejection omits claims 19 and 20 in the list of
claims anticipated by Dorn. The Examiner, however, includes an analysis
for both claims 19 and 20 under this subheading. We therefore regard the
omission of claims 19 and 20 in the subheading as harmless error and treat
claims 19 and 20 as rejected under 35 U.S.C. § 102 over Dorn.
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structure, which allows portions of the back-end business logic to be
modified without affecting the rest of the back-end business logic.” Thus,
according to Appellants “a ‘stack of back-end business logic’ would connote
a structure where the back-end business logic can be developed and
modified in segments that are either serial or in parallel, and a ‘vertical stack
of back-end business logic’ connotes a structure where the back-end
business logic can be developed and modified in segments that are at least
serial in some aspect.” App. Br. 9.
We are persuaded by Appellants’ arguments. The Examiner’s
objection to the claim language is that the terms “vertical” and “stack”
appear to be redundant and therefore leads the Examiner to believe that the
metes and bounds of the two terms must be unclear. However, in the
indefiniteness analysis, there is no requirement that a claim contain only
non-redundant terms describing its limitations. See, e.g., Eli Lilly & Co. v.
Teva Parenteral Meds., 845 F.3d 1357, 1371 (Fed. Cir. 2017) (redundancy
of including both “vitamin B12” and “cyanocobalamin,” which were
recognized on the record as referencing the same compound, within a
Markush group of methylmalonic acid lowering agents did not render the
claims indefinite).
As to claim 2, the Examiner’s concern with the term “logical
constructs” is that it is “so broad as to encompass any and all of the other
aspects of the claims (e.g. a piece of software).” However, the “breadth [of
a term] is not to be equated with indefiniteness.” In re Miller, 441 F.2d 689,
693 (CCPA 1971). Thus, even if the term “logical construct” does not
practically limit the claim, the claim itself is not necessarily indefinite on
this basis alone.
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Accordingly, we do not sustain the Examiner’s rejection of claims 1–6
and 13–18 under 35 U.S.C. § 112(b).
REJECTION UNDER 35 U.S.C. § 101
The Examiner finds the claims 1–18 do not fall within one of the
statutory categories of patentable subject matter because they are directed to
a program itself. Final Act. 9–10. Specifically, the Examiner finds the
claims are directed to “software development platforms” and “infrastructure
platforms” which include in their scope software. Ans. 18.
Appellants argue one of ordinary skill would recognize that “software
development platforms” and “infrastructure platforms” include processors
configured to perform the recited functions of the claims and that the claims,
therefore, cover more than the program itself but also the operating platform
on which the program is implemented. App. Br. 9.
We are unpersuaded by Appellants’ argument. MPEP 2106.03 § I
provides the following example of nonstatutory subject matter: “[p]roducts
that do not have a physical or tangible form, such as information (often
referred to as “data per se”) or a computer program per se (often referred to
as “software per se”) when claimed as a product without any structural
recitations.” The claims here recite various “user-selectable modular units”
and “a virtual appliance comprising application-specific logic.” The
Specification describes modular units as “software applications” that can be
deployed dynamically at runtime. Spec. ¶ 55. The terms “vertical stack of
back-end business logic,” “domain model components,” and “front end
presentation components,” all refer to software applications or software
application components that can be deployed into other software
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applications. See Spec. ¶ 56. A “virtual appliance” is also described in the
Specification as software. See Spec. ¶¶ 38–39.
We agree with the Examiner that the claims, as drafted, do not
require processors to implement the software functions recited in the claims.
Thus, even if “software development platforms” and “infrastructure
platforms” could be understood to include processors, the terms on their own
are broad enough to encompass simply the software itself as well as software
implemented on processors.
Accordingly, we sustain the Examiner’s rejection of claims 1–18
under 35 U.S.C. § 101.
REJECTION UNDER 35 U.S.C. §§ 102 AND 103
Appellants make several arguments against the Examiner’s rejection
of claim 1. Specifically, Appellants argue: (1) that Dorn discloses only a
“business logic application” and that “[t]here is clearly no stack structure
whatsoever in the business logic of application B as shown in Fig. 1 of Dorn,
either vertical or parallel” (App. Br. 11–12) (2) that “there is no disclosure
anywhere in Dorn of a domain or domain model components” and that as
described in their Specification a domain model components relate to user
management, resource management or task management and “Dorn fails to
disclose any of these domain model components” (App. Br. 12–13) and (3)
that “no ‘virtual appliance comprising application-specific logic’ is
disclosed” in Dorn and that Dorn’s disclosure of .NET technology without
additional evidence of what .NET technology entails is insufficient to under
an anticipation rejection (App. Br. 13–14).
We are unpersuaded by the first two of the aforementioned arguments
for the reasons stated by the Examiner (see Ans. 21–24) but we are
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persuaded by Appellants’ third argument. The Appellants argue there is no
specific evidence of what .NET technology entails and that without such
evidence and without an inherency analysis the rejection is improper under
anticipation. App. Br. 14.
In response, the Examiner states:
[t]hose of ordinary skill would have understood that “.NET”
refers to a product or family of products provided by Microsoft
which provides, among other things, a virtual execution
environment (i.e. the Common Language Runtime (CLR)).
Accordingly, Dorn’s one or more modular units containing the
vertical stack of back end business logic, domain model
components and front end presentation components
implemented in the “.NET” environment constitute the claimed
“virtual appliance”.
Ans. 24–25.
The Examiner also relies on a secondary reference (US 2003/0014733
to “Ringseth”) to find that .NET provides similar functionality as the
claimed virtual appliance. Ans. 25–26. For example, Appellants’
Specification describes the disclosed “virtual appliance” as “a virtual
machine image running on a virtual platform that eliminates the installation,
configuration and maintenance costs associated with running complex stacks
of software . . . .” Spec. ¶ 39. Citing Ringseth, the Examiner finds .NET
provides:
(1) the ability to make the entire range of computing devices
work together and to have user information automatically
updated and synchronized on all of them, (2) increased
interactive capability for Web sites, enabled by greater use of
XML (Extensible Markup Language) rather than HTML, (3)
online services that feature customized access and delivery of
products and services to the user from a central starting point
for the management of various applications, such as e-mail, for
example, or software, such as Office .Net, (4) centralized data
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storage, which will increase efficiency and ease of access to
information, as well as synchronization of information among
users and devices, (5) the ability to integrate various
communications media, such as e-mail, faxes, and telephones,
(6) for developers, the ability to create reusable modules, thereby
increasing productivity and reducing the number of
programming errors and (7) many other cross-platform
integration features as well.
Ans. 25–26 (citing Ringseth ¶ 50). The Examiner then analogizes
Ringseth’s aforemtioned description of .NET to Appellants’ Specification’s
description of a “virtual appliance.” Specifically, the Examiner finds
“‘online services that feature customized access and delivery of products and
services to the user from a central starting point’ reduces, if not ‘eliminates’,
‘the installation, configuration and maintenance costs’ of running the
software.” Ans. 26.
We find the Examiner erred in relying so extensively on a secondary
reference in an anticipation rejection. Moreover, even with the disclosure of
the secondary reference, we find the Examiner insufficiently explains how
Ringseth’s “online services” reduces or eliminates the installation
configuration and maintenance costs of running software, and thus how
.NET discloses a virtual appliance. Indeed the very paragraph of Ringseth
cited by the Examiner lists “e-mail” and “Office” as the online services that
.NET provides and the Examiner has not explained how email and
Microsoft’s Office software would reduce or eliminate installation,
configuration, or maintenance costs of running software.
Accordingly, on the record before us, we do not sustain the
Examiner’s rejection, under 35 U.S.C. § 102, of independent claim 1 and of
independent claims 7 and 13, which the Examiner rejects on the same basis
as claim 1. See Final Act. 13–16. For the same reasons we also do not
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sustain the Examiner’s rejection of claims 3–6, 8, 9, 11, 12, and 15–20
which depend from either claims 1, 7, and 13 and which were also rejected
as anticipated by Dorn. We also do not sustain the Examiner’s rejection of
claims 2, 10, and 14 under 35 U.S.C. § 103 because the secondary references
relied upon do not cure the deficiencies of Dorn with respect to independent
claims 1, 7, and 13.

DECISION
The Examiner’s rejection of claims 1–6 and 13–18 under 35 U.S.C.
§ 112 is reversed.
The Examiner’s rejection of claim 1–18 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1, 3–9, 11–13, and 15–20 under
35 U.S.C. § 102 is reversed.
The Examiner’s rejections of claims 2, 10 and 14 under 35 U.S.C.
§ 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART