Ex Parte Bailey et al

Patent Trial and Appeal Board

Apr 1, 2016

13179738 (P.T.A.B. Apr. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/179,738
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
07 /11/2011
04/05/2016
FIRST NAMED INVENTOR
Thomas J. Bailey
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. CONFIRMATION NO.
GB920100027US1 1133
EXAMINER
PATEL, HITESHKUMARR
ART UNIT PAPER NUMBER
2446
NOTIFICATION DATE DELIVERY MODE
04/05/2016 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS J. BAILEY, CHRISTOPHER D. JENKINS,
JONATHAN M. ROBERTS, and KIERAN P. SCOTT
Appeal2014-006810
Application 13/179,738
Technology Center 2400
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
KAMRAN JIV ANI, Administrative Patent Judges.
KUMAR, 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 11-26. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-006810
Application 13/179,738
fNVENTION
The invention is directed to locating service endpoints from a service
registry in a Service Oriented Architecture ("SOA"). (Spec. 1.) Claim 11 is
illustrative and is reproduced below:
11. A computer program product embodied in a
computer readable storage device for operating a service registry
in a service oriented architecture system and managing a service
within the system, the computer program product comprising the
programming instructions for:
receiving a request for a service from a service requester
in the environment;
checking details of the requested service as registered in
the service registry;
characterized by;
in response to the service requested not being registered,
sending the request to one or more service providers to provide
a new service; and
in response to a service provider providing the new
service, updating the service registry with the new service and
responding to the service requester that the service is available.
REFERENCES
Knauerhase US 2004/0236633 Al Nov. 25, 2004
REJECTIONS AT ISSUE 1
Claims 11-26 are rejected under 35 U.S.C. § 102 as unpatentable over
Knauerhase. (Final Act. 9.)
1 The Examiner withdrew the § 101 rejection of claims 11-18 in the
Advisory Action, mailed Dec. 18, 2013. Therefore, this rejection is not
before us on appeal. See 37 C.F.R. § 41.39(a)(l) ("An examiner's answer is
deemed to incorporate all of the grounds of rejection set forth in the Office
action from which the appeal is taken (as modified by any advisory action
and pre-appeal brief conference decision), unless the examiner's answer
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Appeal2014-006810
Application 13/179,738
ISSUES
Did the Examiner err in finding that Knauerhase discloses "in
response to the service requested not being registered, sending the request to
one or more service providers to provide a new service" as recited in
independent claims 11 and 19?
expressly indicates that a ground of rejection has been withdrawn."
(emphasis added)).
However, because a "computer readable storage device" does not
have the same limiting scope as "non-transitory," in the event of further
prosecution, we direct the Examiner's attention to a precedential Board
decision to ensure the "computer readable storage device" of independent
claim 11 is directed to statutory subject matter under 35 U.S.C. § 101.
Under our jurisprttdence, the scope of the recited "computer readable storage
device" appears to encompass transitory media. See Ex parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine-
readable storage medium ineligible under § 101 since it encompasses
transitory media). Here, the recited "computer readable storage device" is
not claimed as non-transitory, and the originally-filed Specification does not
expressly and unambiguously disclaim transitory forms via a definition.
(See, e.g., Spec. 8-10). Therefore, the "computer readable storage device"
of claim 11 is not limited to non-transitory forms and appears ineligible
under§ 101.
In the event of further prosecution, we further direct the Examiner's
attention to consider whether or not the preamble "computer readable
storage device" of claim 11 is a limiting structure for the claimed "computer
program product comprising the programming instructions." If not, the
Examiner should consider whether claim 11 is directed to software per se.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b ), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Appeal2014-006810
Application 13/179,738
ANALYSIS
Independent claim 11 recites "in response to the service requested not
being registered, sending the request to one or more service providers to
provide a new service." Independent claim 19 recites a similar limitation.
Appellants argue Knauerhase does not disclose this limitation. (App.
Br. 7; Reply Br. 3.) Appellants argue Knauerhase does not disclose
"sending the request to one or more service providers to provide a new
service in response to the service requested not being registered." (App. Br.
9.) Specifically, Appellants argue "Knauerhase only discusses confirming
continued availability of a service provider." (Reply Br. 3.)
The Examiner finds Knauerhase's figure 3 and paragraphs 29 and 30
disclose requesting multiple service providers provide a new service and
updating the service registry. (Final Act. 10.) The Examiner further cites
Knauerhase paragraphs 33, and 35-37 and figures 3 and 4. (Ans. 4--5.)
However, nowhere in these sections of Knauerhase do we find any
discussion of a "new service."
Knauerhase's paragraph 37 discloses querying service providers for
status updates and updating the meta-data associated with the provider.
Knauerhase' s paragraph 20 discloses "[ m ]eta-data may include information
about the Service Providers and their capabilities." Knauerhase discloses in
response to the provider being unavailable to delete the provider from the
service registry database. (See Knauerhase i-f 35 and figure 4 step 404.)
None of these teachings may reasonably be considered sending a request to a
service provider to provide a new service.
Accordingly, we agree with Appellants' arguments (see App. Br. 7, 9;
Reply Br. 3), that Knauerhase does not disclose "in response to the service
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Appeal2014-006810
Application 13/179,738
requested not being registered, sending the request to one or more service
providers to provide a new service" as recited in claim 11 and similarly as
recited in claim 19. Dependent claims 12-18, 20-26 each depend from one
of independent claims 11 and 19. Therefore, we cannot sustain the
Examiner's rejection of claims 11-26 as anticipated by Knauerhase. 2
This issue is dispositive. Therefore, we do not reach consideration of
Appellants' remaining arguments.
DECISION
The Examiner's decision to reject claims 11-26 is reversed.
REVERSED
2 In the event of further prosecution we leave it to the Examiner to consider
whether the instant claims are obvious under 35 U.S.C. § 103 or not. For
example, the Examiner may consider US 200710011126 Al Conner et al.
and other relevant prior art.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP § 1213.02.
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