Ex Parte An et al

Patent Trial and Appeal Board

Jan 22, 2019

12690982 (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/690,982 01/21/2010 Ren Jing An
73109 7590 01/24/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO.
CN920080233US 1
8152-0092
CONFIRMATION NO.
8874
EXAMINER
DINH,LYNDA
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
01/24/2019 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REN JING AN, LIU CHAO JUN, MA XI JUN,
HOU XIAO QIANG, YIN RUI, and PING YUAN
Appeal2018-001038
Application 12/690,982 1
Technology Center 2800
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 21--40. We have jurisdiction. 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is IBM Corporation.
Appeal Br. 1.
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Application 12/690,982
STATEMENT OF THE CASE2
Appellants describe the present invention as relating to service
oriented architecture (SOA) and, more particularly, a system for supporting
collaborative working of process-oriented and event-based business process
management (BPM) methods in a service-orientated architecture. Spec. ,r 1.
Claim 21, reproduced below with emphases added to certain key recitations,
is illustrative of the claimed subject matter:
21. A computer-executed method for performing a computer-
implemented operation, comprising:
executing, using a process-oriented runtime engine, at
least one process-oriented execution model;
executing, in parallel with the at least one process-
oriented execution model and using an event-based runtime
engine, at least one event-based execution model; and
facilitating, using a bridge disposed between the at
least one process-oriented execution model and the at least
one event-based execution model, an interaction between
the at least one- [sic] oriented execution model and the at
least one event-based execution model while these models
are concurrently executing, wherein
the computer-implemented operation is modeled by the
combination of the at least one process-oriented execution
model and the at least one event-based execution model.
Appeal Br. 21 (Claims App.).
We note that our prior decision, Appeal 2015-004499, arises from the
same application, but Appellants have amended claims since the time of that
decision.
2 In this Decision, we refer to the Final Office Action dated December 23,
2016 ("Final Act."), the Appeal Brief filed May 22, 2017 ("Appeal Br."), the
Examiner's Answer dated September 12, 2017 ("Ans."), and the Reply Brief
filed November 9, 2017 ("Reply Br.").
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Application 12/690,982
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Dumas et al. US 2007/0135936 Al June 14, 2007
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 21--40 under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (in particular, an
abstract idea) without significantly more. Final Act. 5.
Rejection 2. Claims 21--40 under 35 U.S.C. § 103 as unpatentable
over Applicant Admitted Prior Art as stated in the Specification's
background ("AAPA") in view of Dumas. Id. at 10.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections.")). Where we affirm the
Examiner's rejection, we do so because, after considering the evidence
presented in this Appeal and each of Appellants' arguments, we are not
persuaded that Appellants identify reversible error. Thus, where we affirm
the Examiner's rejections, we do so for the reasons expressed in the Final
Office Action and the Answer and provide additional emphasis.
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Application 12/690,982
Rejection 1. The Examiner rejects claims 21--40 under 35 U.S.C.
§ 101 because the claims are directed to an abstract idea without
significantly more. Final Act. 5. The Examiner determines, for example:
Id.
Claim 21 is a computer-executed method, directed to the
abstract ideas of executing, using a process-oriented runtime
engine, at least one process-oriented executed model, executing,
in parallel with the at least one process-oriented execution
model and using an event-based runtime engine, at least one
event-based execution model, and facilitating, using a bridge
disposed between, the at least one process-oriented execution
model and the at least one event-based execution model while
these models are concurrently executing. There processes are
computational thinking or mental processes which similar to
Bilski and Alice "method of organizing human activity".
To determine whether an invention claims ineligible subject matter
requires the application of the two-step test first introduced in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70
(2012) and further explained in Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
215-1 7 (2014). The first step requires a determination as to whether the
claims at issue are directed to a patent-ineligible concept such as an abstract
idea. See Alice, 573 U.S. at 217-18. The second step requires examination
of "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." Id. at 220-22 (quoting Mayo 566 U.S. at 71-73, 79-
80). In Alice, the Court held that the recited computer functions did not
transform the claimed abstract idea into a patent-eligible invention because
the functions were "well-understood, routine, and conventional activit[ies]."
Id. at 225 ( citation omitted).
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Here, the second step of the Alice/Mayo test is dispositive. Appellants
assert that the recited "bridge" (recited by each independent claim on appeal)
is a machine. Appeal Br. 7. Appellants further argue that "the claimed
'bridge' and its use as part of the claimed invention, as a whole, is not a
conventional component." Id. at 17. The Examiner finds that the recited
bridge is "routine and conventional" (see Ans. 3), but the Examiner does not
provide evidentiary support for this assertion.
On the record before us, the Examiner has not provided sufficient
evidence to establish that the bridge recited by each independent claim is
well-understood, routine, and conventional. Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018) ("[w]hether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination."); see also Robert W. Bahr, Changes in Examination
Procedures Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.), USPTO 1-5 (2018),
https ://www. uspto. gov/ sites/ default/files/ documents/memo-berkheimer-
20180419 .PDF. Although the Examiner finds that Dumas teaches a bridge
(see, e.g., Final Act. 11-12), this evidence standing alone is insufficient to
establish that the recited bridge is well-understood, routine, and conventional
in the field. See Berkheimer, 881 F.3d at 1369 ("The mere fact that
something is disclosed in a piece of prior art, for example, does not mean it
was well-understood, routine, and conventional.").
We, therefore, are constrained to reverse the Examiner's rejection. We
emphasize that the reversal is procedural in nature; our decision flows from
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our reviewing court's Berkheimer decision and the related office
memorandum which arose after all briefing was completed in this appeal.
Rejection 2. The Examiner rejects claims 21--40 under 35 U.S.C.
§ 103 as unpatentable over the AAP A in view of Dumas. Final Act. 10.
Appellants separately argue claims 21 and 26. Consistent with the
provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), claims 33 and 40 stand or
fall with claim 26, and all remaining claims stand or fall with claim 21.
Appeal Br. 18.
The Examiner finds, for example, that the AAP A discloses a computer
hardware system configured to perform executing, using a process-oriented
runtime engine, a process-oriented execution model. Final Act. 10. The
Examiner finds that the AAP A does not, for example, disclose facilitating a
bridge between one process-oriented execution model and one event-based
execution model while the models are concurrently executing. Id. at 11. In
particular, the Examiner identifies execution environment 116 ("EE 116") as
depicted in Figure 1 of Dumas as being the recited bridge. Id. at 11-12. The
Examiner determines:
It would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify the teaching of
AAP A to include a combination of an oriented process model
and event-based model with interface of the middleware as the
bridge as taught by Dumas as such that would support the
collaborative working of process-oriented and event-based
business process management, thereby further improving the
working efficiency for both system and users.
Id. at 12.
Appellants argue that Dumas does not teach "a bridge disposed
between the at least one process-oriented execution model and the at least
one event-based execution model." Appeal Br. 19. Appellants also argue
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that Dumas does not teach a bridge facilitating "interaction between the
at least one-oriented [ sic, one process-oriented] execution model and the at
least one event-based execution model while these models are concurrently
executing." Id. at 19--24.
As a threshold matter, the Examiner finds that Dumas's EEl 16 is a
"bridge" as that term is used in claim 21. Final Act. 11-12. We accept this
finding as fact because Appellants do not meaningfully dispute this point.
Ex parte Frye, 94 USPQ2d at 1075. Instead, the thrust of Appellants'
argument assumes that execution environment is in fact a bridge. Appeal
Br. 22.
We are, thus, left with this question: does Dumas teach that its EE 116
facilitates "interaction between the at least one [process ]-oriented execution
model and the at least one event-based execution model while these models
are concurrently executing"? Based upon the preponderance of the evidence
before us, we find that the answer is yes.
Figure 1 of Dumas depicts EE 116 and demonstrates that EE 116 acts
as middleware residing at the center of system 100 and coordinates between
the user application and various backend applications. Dumas, Fig. 1,
,r,r 36-39. The Examiner finds that Dumas, including Figure 4, teach that
the EE 116 middleware coordinates and facilitates interactions between
models. Ans. 13-14. Dumas Figure 4 is reproduced below.
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FIG. 4
Dumas Figure 4 depicts an activity diagram that "may be operated upon by
the system 100 of FIG 1." Id. ,r 66.
The Examiner finds that Dumas Figure 4 depicts parallel processes as
represented by the parallelism bars (the vertical dark bars in Figure 4)
including, for example, parallelism bar 440. Ans. 12-13; Dumas ,r,r 68---69.
Dumas teaches that the parallelism bars represent parallel processes (i.e.,
processes that happen simultaneously). Dumas ,r,r 68-72. The
preponderance of the evidence supports the Examiner's finding that
facilitation of the parallel processes is coordinated by EEl 16. Id. ,r,r 66
( explaining that activity diagram 400 is operated upon by the system 100 of
Figure 1 ), 67 ( explaining that system coordinates tasks such as checking a
presentation time, train availability, and downloading notes).
Contrary to Appellants' argument in the Reply Brief (Reply Br. 7-8),
the preponderance of the evidence supports that some of the activities of
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Dumas Figure 4 are process-oriented models while others are event-based.
Appellants' Specification indicates that actions such as "Validate order"
520, "Confirm order" 525, and "Approve?" 530 may be "process models."
Spec., Fig. 5, ,r 45. We find that "Download notes" 408 in Dumas Figure 4
is similarly a process model. Dumas, Fig. 4, ,r 68. The "Download notes"
process, according to Figure 4, is not dependent on an event condition.
Appellants' Specification also explains that, for example, that
"Validate order" 520 may be transformed into an event-based model where
validating the order depends on "Complex event conditions" (i.e., manager
approval of the order). Spec., Fig. 6, ,r 47. Similarly, we find that, for
example, Dumas's "Postpone Meeting" 426 model is event-based because it
depends on the "[not ontime & train] condition." Dumas, Fig. 4, ,r 70.
Dumas Figure 4' s parallelism bars indicates that the process based model
"Download notes" executes in parallel with the event-based model
"Postpone Meeting." See, e.g., id. ,r 68. As explained above, EEl 16
facilitates interaction between these process-oriented and event-based
models, and, because the models execute in parallel, it does so while the
models are concurrently executing.
For the reasons explained above, Appellants' argument does not
identify reversible error and we, therefore, sustain the Examiner's rejection
of claims 21-25, 27-32, and 34--39.
Claim 26 recites:
26. The method of claim 25, wherein
the bridge transforms events sent between the at least one
process-oriented execution model and the at least one event-
based execution model to match the respective forms of the at
least one process-oriented execution model and the at least one
event-based execution model.
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Appeal Br. 29 (Claims App.).
The Examiner finds that Dumas teaches that the bridge transforms
events sent between process-oriented execution models and event-based
execution models to match respective forms. Final Act. 16 ( citing Dumas).
Appellants argue that the Examiner's citations including the Examiner's
reference to Figure 6 do not relate to the process model 104. Appeal Br. 25.
Appellants further argue that Dumas does not support sending events
between two different types of models. Reply Br. 8-9. In the Answer, the
Examiner further explains that the routers 126 connected to EEl 16 (as
explained above, a "bridge" in the parlance of Appellants' claims)
coordinate models and coordinates process instance IDs. Appeal Br. 16.
The preponderance of the evidence supports the Examiner's position.
Dumas indicates that its routers 126 are part of execution environment 116.
Dumas, Fig. 1. Thus, in the parlance of Appellants' claims, routers 126 are
part of the bridge. The routers ( and, therefore, the execution environment
116 /bridge), in tum, make sure that "object templates" appropriately match
across models. Dumas ,r 97. These Dumas models are, as explained above,
both process-oriented execution models and event-based execution models.
See Dumas, Fig. 4 ( depicting both kinds of models as explained above).
Because Appellants' argument does not identify reversible error, we
sustain the rejection of claims 26, 33, and 40.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 21--40 under 35 U.S.C. § 103. We procedurally reverse the
Examiner's rejection of claims 21--40 under 35 U.S.C. § 101.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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