Ex Parte BEHR et al

Patent Trial and Appeal Board

Jan 31, 2017

13242611 (P.T.A.B. Jan. 31, 2017)

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.
13/242,611 09/23/2011 Matthew Brian BEHR 0069-0128 4464
76044 7590 02/02/2017
HARRITY & HARRITY, LLP
11350 RANDOM HILLS RD.
SUITE 600
FAIRFAX, VA 22030
EXAMINER
THANGAVELU, KANDASAMY
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW BRIAN BEHR and PIETER J. MOSTERMAN
Appeal 2015-005855
Application 13/242,6111
Technology Center 2100
Before LARRY J. HUME, JENNIFER L. McKEOWN, and
NORMAN H. BEAMER, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—15 and 17—30. Claim 16 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is The Math Works, Inc. App. Br. 3.
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STATEMENT OF THE CASE
Appellants’ invention is directed to:
A computing device [] configured to receive a design. The
computing device may further receive a requirement object that
represents a requirement for the design. The requirement object
may include a first functionality and a second functionality. The
computing device may interact with the design using the
requirement object. When interacting with the design, the
computing device may invoke the first functionality to determine
whether the design satisfies the requirement and invoke the
second functionality to provide a result of invoking the first
functionality.
Abstract.
Claim 1 is illustrative and is reproduced below:
1. A method comprising:
instantiating a requirement element, for a requirement,
within a requirements framework associated with a computing
environment, the instantiating being performed by a computing
device;
receiving information associated with components, the
receiving being performed by the computing device;
identifying, using the received information and based on
the requirement element, one or more components, of the
components, that satisfy the requirement, the identifying being
performed by the computing device;
creating, based on the identified one or more components,
a design, the creating being performed by the computing device;
interacting with the design using the requirement element,
the interacting comprising invoking a functionality of the
requirement element, the functionality initiating the interacting,
and the interacting being performed by the computing device;
testing, based on interacting with the design, the design,
the testing being performed by the computing device, and the
testing including:
invoking a first functionality associated with the
requirement element to determine that the requirement element
is applicable to the design;
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and invoking, based on determining that the requirement
element is applicable to the design, a second functionality
associated with the requirement element, the first functionality
being different than the second functionality; and
interacting, based on testing the design, with a
representation of the design to provide, for presentation,
information associated with one or more portions of the design
that satisfy the requirement, the interacting with the
representation of the design being performed by the computing
device.
THE REJECTIONS
Claims 1,3,7, 11—13, 15, and 17—22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Goodman et al. (US 2006/0059253 Al; pub.
Mar. 16, 2006). Final Act. 2—31.
Claims 2, 9, 10, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goodman and Sengupta et al. (US 2012/0159119 Al; pub.
June 21, 2012). Final Act. 32—35.
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Goodman, Koza et al. (US 7,117,186 B2; issued Oct. 3, 2006) and Makhlouf
(US 6,789,054 Bl; issued Sept. 7, 2004). Final Act. 35-37.
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Goodman, Sengupta, and Teller et al. (US 2012/0323535 Al; pub.
Dec. 20, 2012). Final Act. 37-38.
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Goodman, Hongchao Ji et al. (A Model Driven Approach for Requirements
Engineering of Industrial Automation Systems, 4th Inf 1 Workshop on
Equation-Based Object-Oriented Modeling Fanguages and Tools 9, 9-18
(2011) (“Hongchao”)) and R. Mukkamala Adavi et al. {HADL: HUMS
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Architectural Description Language, IEEE 1 l.D.3-1—1 l.D.3-10 (2003)
(“Adavi”)). Final Act. 38-40.
Claims 8 and 23—25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Goodman and Makhlouf. Final Act. 40-43.
Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Goodman, Makhlouf, and Wilcock et al. (US 2010/0115490 Al; pub.
May 6, 2010). Final Act. 44-45.
Claims 27—30 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Goodman and Hein (US 2009/0024647 Al; pub. Jan. 22, 2009). Final
Act. 46-53.
ANAFYSIS
The ANTICIPATION REJECTION Based on Goodman
Claims 1, 3, 7, 11—13, 15, and 17—22
As an initial matter, we note that in the event of further prosecution of
this application, we direct the Examiner's attention to the question of
whether the claims are patent-eligible under 35 U.S.C. § 101 in light of the
preliminary examination instructions on patent eligible subject matter. See
2014 Interim Guidance on Patent Subject Matter Eligibility, USPTO
(Dec. 16, 2014). Abstract ideas have been identified by the courts by way of
example, including fundamental economic practices, certain methods of
organizing human activities, an idea “of itself,” and mathematical
relationships/formulas. Alice Corp. Pty. Ltd. v. CLSBankInt'l, 134 S. Ct.
2347, 2355-56 (2014).
Although “computing device” is nominally recited in claim 1, a
question arises as to whether a person would also be capable of performing
the acts of the claimed method as mental steps, or with the aid of pen and
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paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson.'''’). Our reviewing court further
guides that “a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”
CyberSource, 654 F.3d at 1373. We leave further consideration of this
§101 issue to the Examiner. 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.
Turning to the rejections before us, we are not persuaded that the
Examiner erred in rejecting claims 1, 3,7, 11, 13, 15, and 17—22.
Appellants first contend Goodman does not disclose “creating, based
on the identified one or more components, a design” where the one or more
components is identified, using the received information, as satisfying a
requirement. App. Br. 9—13. Appellants follow a particular format for
presenting this argument. Namely, Appellants reference or quote a
particular paragraph of Goodman relied upon by the Examiner and then
present conclusory assertions that the cited paragraph fails to disclose the
recited limitation. See, e.g., App. Br. 9-10. For example, Appellants
generally discuss the disclosure of paragraphs 80 and 81 and then conclude:
While these passages of GOODMAN et al. mention using
applications “designed to handle the business needs of the
organization” and “satisfy the needs of a business enterprise’s
data handling requirements in terms of entities and
relationships,” there is no teaching or suggestion in these
passages of GOODMAN et al. of creating any “design,” much
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less creating a “design” based on “one or more components” that
“satisfy the requirement” and are identified “using the received
information and based on the requirement element.” No design
is created in these passages of GOODMAN et al.
App. Br. 9-10. Notably, Appellants do not present persuasive arguments
identifying error in the Examiner findings nor does Appellants consider the
cited portions of Goodman together. Specifically, while Appellants allege
the cited paragraphs 80 and 81 do not create a design, additionally cited
paragraphs of Goodman expressly refer to development process including a
design process for achieving desired requirements. See, e.g., Goodman
11240, 241,367.
Appellants present similar conclusory arguments with respect to the
remaining cited paragraphs of Goodman. See, e.g., App. 11 (contesting that
paragraph’s 241 mentioning validating a design is not creating a design),
App. Br. 13 (asserting that the mere disclosure a design in paragraph 367 of
Goodman does not teach the recited design claim limitation); see also
Reply Br. 3^4. We find these arguments unpersuasive.
Moreover, Appellants’ arguments with respect to creating a design are
unavailing given the broad scope of design, requirement, and components
disclosed in the Specification. For example, the Specification describes:
A design may include a representation of a system and/or
software. A type of a design may refer to a purpose of a design
and/or to a type of a representation of the design. In one example,
when referring to the purpose of the design, the design may
include one or more of: a conceptual design, a high-level design,
a detailed design, a functional design, an architectural design, a
structural design, or a behavioral design.
In another example, when referring to the type of the
representation of the design, the design may include one or more
of: a graphical model, a textual model, a time-based modeling
diagram, a class diagram, an object diagram, a state transition
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diagram, a unified modeling language (UML) diagram, a system
modeling language (SysML) diagram, an architecture
description language (ADL) diagram, hardware code, software
code, differential equations, difference equations, algebraic
equations, assignments, a dynamically typed language, an array-
based language, an action language, a collection of data, etc. In
yet another example, a type of the design may be associated with
a particular modeling tool or a particular source code language
used to create the design.
Spec. 16—17. Further, the Specification states “[a] component may
represent a portion of the design” and “[a] requirement may represent/
specify, for example, an attribute, a capability, a characteristic, and/or a
quality that a design is required to possess.” Spec. H 21—22; see also Fig 1
(depicting example components of a device as a bus 110, a processor 120, a
memory 130, a storage 140, an input device 150, an output device 160,
and/or a communication interface 170).
These broad descriptions support the Examiner’s findings with respect
to Goodman. In particular, Goodman, as the Examiner finds, at least
discloses, for example, using analysis and design tools to create a design to
achieve certain functional and technical specifications or requirements based
on key components of the system. Final Act. 4—5 (citing Goodman || 228,
241, 367). As such, for the reasons discussed above and identified by the
Examiner, we are not persuaded that the Examiner erred in finding that
Goodman teaches the disputed creating a design limitation.
Appellants also use the same conclusory approach to argue that
Goodman fails to disclose the testing limitation of claim 1. See App. Br. 14—
29. For example, Appellants allege:
While these passages of GOODMAN et al. mentions a
“product test” to test an “application” and a “functionality of the
solution,” the mere disclosure of testing an “application” and a
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“functionality of the solution” does not teach or suggest a “first
functionality” and a different, “second functionality.” Moreover,
there is no teaching or suggestion that any design is tested by
“invoking a first functionality associated with the requirement
element to determine that the requirement element is applicable
to the design” and “invoking, based on determining that the
requirement element is applicable to the design, a second
functionality associated with the requirement element.” This
passage of GOODMAN et al. does not invoke a “first
functionality” to “determine that the requirement element is
applicable to the design” and invoke a “second functionality”
that is “associated with the requirement element.”
App. Br. 26—27; see also, e.g., App. Br. 15—28 (repeating arguments that
paragraphs 92, 95, 228, 241, 258, 259, 261, 264, 265, 266, 270, 271, 379,
not teach or suggest the recited first or second functionality); Reply Br. 5—6.
These conclusory assertions are unavailing.
Specifically, Appellants fail to persuasively address the Examiner’s
findings. For example, the Examiner finds that Goodman discloses
the design deals with how the system will be constructed;
validating (testing) ensures that the design actually meets the
requirements for functionality, performance, reliability and
usability is essential; after detailed design is done, the design data
is stored in the repository; then the data from the repository is
retrieved (identify a position of relevant data in the stored data;
trace to the relevant data) and testing is done to ensure that the
design actually meets the requirements.
Ans. 5—6 (citing, for example, Goodman || 241, 265, 266); Final Act. 7—8.
In other words, Goodman tests whether a component meets the requirements
(such to determine that the requirement is applicable to the design) by
invoking a functionality of the component. See, e.g., Goodman H 241, 265,
266.
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With respect to the recited second functionality, the Examiner finds
that Goodman discloses testing the interaction of related components. Final
Act. 7—8. As such, once the functionality of a component is determined to
meet the design requirement (and thus is determined to be applicable to the
design), interaction with a related component will also be tested, by invoking
a second functionality, data communication. Final Act. 7—8; see also Ans.
5-6.
Appellants similarly do not persuasively respond to these findings.
Rather, as discussed above, Appellants merely assert that
the Examiner has not explained how any of the above passages
of GOODMAN et al. can reasonably be construed to disclose the
requirement element that is associated with a “first functionality
... to determine that the requirement element is applicable to the
design” and a “second functionality” that is different than the
“first functionality.”
Reply Br. 6. As such, we are not persuaded that the Examiner erred in
finding that Goodman discloses the recited testing limitation.
Finally, Appellants allege “that the Examiner is improperly locating
individual words in several disparate paragraphs of GOODMAN et al. and
asserting that these words support a § 102 rejection.” Reply Br. 4—5. This
argument, however, was raised for the first time in the Reply Brief and is,
therefore, waived as untimely. See also Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (informative) (“[The reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”). Moreover, Appellants
does not persuasively explain how the Examiner is relying on disparate
embodiments of Goodman in the rejection.
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Appellants again present conclusory arguments with respect to
dependent claims 12, 21, and 22 without persuasively responding to the
Examiner’s findings. See App. Br. 30-36: Reply Br. 7—17. For example,
with respect to claim 12, Appellants, in discussing paragraph 95 cited by the
Examiner, assert that
While this passage of GOODMAN et al. discloses a
“repository” of “information management tools 56” that “share a
common repository,” there is no teaching or suggestion in this
passage of GOODMAN et al. that these tools are associated, in
any way, with “invoking a first functionality associated with the
requirement element to determine that the requirement element
is applicable to the design.”
Moreover, this passage of GOODMAN et al. is silent
regarding “identifying] a position of relevant data in the stored
data based on at least one of the type of the design or the
representation of the design” and “trac[ing] to the relevant data”
when “invoking the first functionality.” In contrast, this passage
of GOODMAN et al. is merely directed to a “repository” of
“tools” with no disclosure of identifying any “position of
relevant data” and tracing “to the relevant data” when “invoking
the first functionality,” as required by claim 12.
App. Br. 35. See also App. Br. 30-32 (presenting conclusory arguments with
respect to claim 12 and failing to address the Examiner’s reliance on
paragraph 241 of Goodman).
Notably, these blanket assertions fail to consider the Examiner’s
finding that Goodman’s common data repository is used for both design and
testing and the Examiner’s finding that Goodman’s verifies or tests by
invoking the functionality of a component to determine the component
meets the specification or requirement. See, e.g., Ans. 5—7 (citing Goodman
1195, 193, 241, 265, 266); see also Goodman 1193 (noting processes “must
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be documented in a centralized database that allows quick and easy
reference.”). As such, we find Appellants arguments unpersuasive.
Likewise unavailing is Appellants arguments with respect to claims
21 and 22. See App. Br. 32—35; Reply Br. 12—17. As the Examiner finds,
for example, Goodman validates that the design meets functionality
requirements and performs test runs where the actual test results are
compared with expected results. Final Act. 10, 30-31. See also, e.g.,
Goodman 1263 (noting that well defined standards and procedures for
testing “ensures that the outputs from each test activity are documented at
the right level of detail and fed back to the design and construction teams”).
As such, we are not persuaded that the Examiner erred in finding that
Goodman discloses the verifying and reporting functionality limitations of
claims 21 and 22.
Accordingly, we sustain the rejection of claims 1, 12, 21, and 22, as
well as claims 3,7, 11, 13, 15, and 17—20 not argued separately (see App.
Br. 30; Reply Br. 6), as anticipated by Goodman.
The Obviousness Rejection Based on Goodman and Makhlouf
Claims 23 and 24
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 23 and 24 as unpatentable over Goodman and
Makhlouf under § 103.
Appellants first repeat arguments presented with respect to claim 12.
See App. Br. 39-42. As discussed above, we find these arguments
unpersuasive. Also, similarly to arguments discussed above, Appellants
make blanket assertions that the cited combination fails to satisfy the recited
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claim limitations of claims 23 and 24. In particular, after referencing what is
disclosed in the cited portions of Makhlouf, Appellants assert:
While these passages of MAKHLOUF disclose “rules and
tools used to construct M models” and “bind component objects
of a real system into an integrated architecture,” there is no
teaching or suggestion in these passages of MAKHLOUF of
determining that any data satisfies the “rules,” much less
determining “whether the relevant data [a position of which is
specified by the requirement element] satisfies the rule,” as
required by claim 23.
App. Br. 42; see also Reply Br. 20—22.
We disagree. First, we note that the Specification broadly describes
that a verification rule may merely define characteristics (e.g., of an element,
a data set, connected elements, a configuration, etc.) necessary to satisfy the
requirement. Spec. 1 67. Makhlouf teaches using expert rules to ensure a
system of particular functional and performance requirements. See, e.g.,
Makhlouf col. 4,11. 33—36, 51—52, col. 5,11. 18—26; Ans. 11—12; Final Act.
42; see also Goodman 1241; Final Act. 41. As such, we are not persuaded
that the combination of Goodman and Makhlouf, which together teach using
a rule and verifying a design, including certain data, based on satisfying the
rule or requirement.
Accordingly, we sustain the Examiner’s rejection of claims 23 and 24
as unpatentable over Goodman and Makhlouf.
Obviousness Rejection Based on Goodman, Makhlouf, and Wilcock
Claim 26
Appellants present similar arguments for claim 26 as presented for
claims 23 and 24. See App. Br. 43—45. For the reasons discussed above, we
find these arguments unpersuasive. Accordingly, we sustain the Examiner’s
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rejection of claim 26 as unpatentable over Goodman, Makhlouf and
Wilcock.
The Obviousness Rejection Based on Goodman and Hein
Claims 27—30
Based on the record before us, we are not persuaded the Examiner
erred in rejecting claims 23 and 24 as unpatentable over Goodman and
Makhlouf.
Appellants argue Goodman fails to teach or suggest the limitations
with respect to a modified design. See App. Br. 46; Reply Br. 25—26. The
Examiner, however, relies on Hein as teaching a modified design and the
combination of Goodman and Hein to teach the recited limitations. See,
e.g., Ans. 14—16; Final Act. 46-52. Appellants’ arguments, thus, are
unpersuasive as they challenge the references individually. One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Accordingly, we sustain the Examiner’s rejection of claims 27—30 as
unpatentable over Goodman and Hein.
The Remaining Obviousness Rejections
Claims 2, 4—6, 8, 9, 10, 14, and 25
Appellants do not present separate arguments for the patentability of
claims 2, 4—6, 8, 9, 10, 14, and 25. Namely, Appellants assert that the
additionally cited prior art does not cure the deficiencies of Goodman. See,
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e.g., Reply Br. 18—20. Accordingly, as we sustain the rejection of
independent claims 1,11, and 15, we likewise sustain the Examiner’s
rejection of claims 2, 4—6, 8, 9, 10, 14, and 25 as unpatentable over the cited
combinations of prior art.
DECISION
We affirm the Examiner’s decision rejecting claims 1—15 and 17—30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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