Steven Powell et al.

Patent Trials and Appeals Board

Jun 18, 2021

2020002500 (P.T.A.B. Jun. 18, 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.
12/432,329 04/29/2009 Steven Powell GB920080256US1
8152-0164
6888
112978 7590 06/18/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
NGUYEN, MINH CHAU
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
06/18/2021 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 STEVEN POWELL and JOSE EMIR GARZA

Appeal 2020-002500
Application 12/432,329
Technology Center 2400

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR, AND
CATHERINE SHIANG, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 24–38. Appeal Br. 2. Claims 1–23 have
been canceled. Id.3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We refer to the Specification, filed Nov. 29, 2009 (“Spec.”); Final Office
Action, mailed May 3, 2019 (“Final Act.”); Appeal Brief, filed Oct. 4, 2019
(“Appeal Br.”); Examiner’s Answer, mailed Jan. 9, 2020 (“Ans.”), and
Reply Brief, filed Feb. 10, 2020 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as The
IBM Corp. Appeal Br. 1.
3 This appeal relates to Appeal 2013-007732 (mailed September 16, 2015) in
which we affirmed the examiner’s rejections of claims 1–23. Dec. 6.
Appeal 2020-002500
Application 12/432,329
2
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for generating and processing transaction messages
between computing devices, wherein each message includes compensation
information indicating a transaction to be executed in order to undo a
previously executed transaction. Spec. ¶ 2. Figure 4, reproduced below, is
useful for understanding the claimed subject matter:

Figure 4 illustrates a flow diagram for sharing and executing generated
transaction messages (508, A–C) between computing devices (402, 404,
406, 408) such that fourth transaction (512A) to be executed, on second
computing device (404), to undo previously-executed second transaction
(510A) on second computing device (404), and fifth transaction (512B) to be
executed, on first computing device (402), to undo previously-executed first
transaction (508A) on first computing device (402). Id. ¶¶ 32–36.
Appeal 2020-002500
Application 12/432,329
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Independent claim 24 is illustrative of the claimed subject matter:
24. A computer-implemented method, comprising:
receiving, by a third computing device and from a second
computing device, a third transaction message indicating:
a third transaction to be performed on the third
computing device and compensation information for the third
transaction; and
sending, by the third computing device to the second
computing device and upon the third transaction failing at the
third computing device, a fourth transaction message, wherein
the third transaction has failed at the third computing device,
the compensation information identifies:
a fourth transaction to be executed, on the second
computing device, to undo a previously-executed second
transaction on the second computing device, and
a fifth transaction to be executed, on a first computing
device, to undo a previously-executed first transaction on the
first computing device, and the fourth transaction message
includes the compensation information.

Appeal Br. 31 (emphasis added).

III. REFERENCE
The Examiner relies upon the following reference as evidence.4
Name Reference Date
Chen US 2010/0069053 A1 Mar. 18, 2010

4 All reference citations are to the first named inventor only.
Appeal 2020-002500
Application 12/432,329
4
IV. REJECTION5
The Examiner rejects claims 24–38 under 35 U.S.C. § 102 as
anticipated by Chen. Final Act. 7–18.
V. ANALYSIS
Appellant argues, inter alia, that the Examiner erred in finding Chen
discloses “the compensation information identifies: a fourth transaction to
be executed, on the second computing device, to undo a previously-executed
second transaction on the second computing device, and a fifth transaction
to be executed, on a first computing device, to undo a previously-executed
first transaction on the first computing device” as recited in independent
claim 24. Appeal Br. 13–14. In particular, Appellant argues that Chen’s
“transaction context” does not identically disclose the claimed
“compensation information”. Id. at 14. According to Appellant, Chen’s
“transaction context” instead describes information about transactions
executing on mobile devices (e.g. identifying messages being executed and
associated statuses on mobile devices), as opposed to the mobile devices
executing two transactions to roll back two previously-executed ones. Id. at
14–15 (citing Chen ¶¶ 25, 34–43).
Appellant’s arguments are persuasive of reversible Examiner error.
At the outset, we note the disputed claim limitations require executing
two different transactions on two mobile devices so as to undo two
previously executed transactions thereon. Chen relates to a system for
managing the lifecycle of applications on mobile devices by sending to the

5 The Examiner withdraws the patent eligibility rejection previously entered
against claims 24–38. Ans. 3.
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Application 12/432,329
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mobile devices transaction context messages for evaluating ending scenarios
based on transaction statuses of the mobile devices. Chen Abstr. In
particular, the “transaction context” defines each transaction to be executed
on the mobile devices within a predetermined time. Id. ¶ 34. Upon detecting
that one of the transactions has not been fully executed within the
predetermined time or one was unsuccessfully executed on a mobile, all the
transactions on the mobile devices are rolled back. Id. ¶¶ 34, 47, 65.
We do not agree with the Examiner that Chen’s disclosure of an ending
scenario for committing or rolling back “transaction context” on the server
describes the compensation information. Ans. 4–5 (citing Chen ¶¶ 34, 46–
48, 65). This conclusion is rather speculative, and wholly unsupported on the
record before us. We decline to engage in such speculation. “A rejection . . .
must rest on a factual basis . . . .” In re Warner, 379 F.2d 1011, 1017
(CCPA 1967). “The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not . . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.” Id. Although the “transaction context” does report on two or more
executed transactions, the disclosed roll-back is not condition subsequent for
the execution. Instead, it is a decision made by the server to undo
previously-executed transactions on all mobile devices when at least one of
the transactions was not successfully executed on a mobile device within the
predetermined time. As persuasively argued by Appellant, the disclosed
transaction context only reports on the execution statuses of transactions on
the mobile devices to permit the server to execute or roll-back all
transactions, as opposed to rolling back a transaction subsequent to
executing a transaction on a mobile device, as required by the disputed
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Application 12/432,329
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limitations. Appeal Br. 18. Because the record is devoid of any evidence to
support that the disclosed “transaction context” describes “compensation
information”, we agree with Appellant that Chen’s “transaction context”
does not describe the “compensation information” of claim 24.
Because Appellant shows at least one reversible error in the
Examiner’s anticipation rejection of independent claim 24, we do not reach
Appellant’s remaining arguments. Accordingly, we do not sustain the
Examiner’s anticipation rejection of independent claim 24. Likewise, we do
not sustain the rejections of dependent claims 25–38, which also recite the
disputed limitations.
VI. CONCLUSION
For the above reasons, we reverse the Examiner’s rejection of claims
24–38.
VII. DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
24–38 102 Chen 24–38

REVERSED