Ex Parte Chang et alDownload PDFPatent Trial and Appeal BoardJul 29, 201613753351 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 131753,351 01129/2013 Hung-Yang Chang 59144 7590 08/01/2016 CAHN & SAMUELS, LLP 1100 17th STREET, NW SUITE401 WASHINGTON, DC 20036 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. YOR920070555US2 3675 EXAMINER KONERU, SUJAY ART UNIT PAPER NUMBER 3624 MAILDATE DELIVERY MODE 08/01/2016 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 HUNG-YANG CHANG, SANTHOSH BADU KUMARAN, SREERAM RAMAKRISHNAN, and DEBANJAN SAHA Appeal2014-005447 Application 13/753,351 Technology Center 3600 Before BIBHU R. MOHANTY, JAMES A. WORTH, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the decision rejecting claims 2-11, 13, 14, 16, 19, and 21-26 under 35 U.S.C. § 103(a) as unpatentable over Hodges,2 Norgaard,3 and Jain. 4 Final Action 6 (mailed July 25, 2013). We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Appellants identify the real party in interest as International Business Machines Corporation. Appeal Br. 3 (filed Dec. 19, 2013). 2 Hodges et al., US 2004/0093381 Al, published May 13, 2004. 3 Norgaard et al., US 2003/0084016 Al, published May 1, 2003. 4 Jain et al., US 2008/0126156 Al, published May 29, 2008. Appeal2014-005447 Application 13/753,351 INVENTION Appellants' "invention relates to a method and system for generating new abstractions for existing process models and modifying existing process models to generate new process models by mining run-time service delivery processes." Spec. i-f 2. Claims 2, 6, and 23 are independent. Claim 23, reproduced below, is illustrative of the subject matter on appeal: 23. A method, comprising: receiving a service request; searching a models catalog for models required to perform the requested service; creating a service plan using composite services and atomic services, the service plan being created when the models required to perform the requested service are not found in the models catalog; determining by a processor whether altering at least one of the models in the models catalog by using different sets of attributes will result in orphaning a child service plan associated with the at least one of the models, said orphaning causes the child service plan to be unauthorized, unaffiliated, and unsupported; modifying at least one of the models in the models catalog by the processor by adding attributes, definitions and indices to the at least one of the models in the models catalog when using the different sets of attributes will not result in orphaning the child service plan, the attributes including configurations, tools, platforms, skill level requirement, and database types; and storing the attributes, definitions and indices in a catalog. Appeal Br. 17-18, Claims App. ANALYSIS In rejecting independent claim 23 as obvious over Hodges, Norgaard, and Jain, the Examiner determines that Hodges does not disclose "modifying 2 Appeal2014-005447 Application 13/753,351 at least one of the models in the models catalog with a processor by adding attributes, definitions and indices to the at least one of the models in the models catalog," and instead relies on Norgaard for curing this deficiency. Final Action 7 (emphasis omitted). In responding to Appellants' challenge to this finding, the Examiner asserts: First, a workflow can be considered a model as model is a broad term that can means a type of representation. A workflow is a representation of data. Para [0077] of Norgaard shows the adding of steps to the workflows. The steps have rules, such as "complex rules using the list of active purposes together with a database of sub-solutions, logic rules and inference rules." (see Norgaard, para [0077]). Rules can be considered analogous to attributes and definition. The steps themselves or the predecessors or the parameters for the assessments, as discussed in para [0077] of Norgaard, can be considered analogous to indices. The claims do not provide much context for what attributes, definitions and indices are and therefore can and should be interpreted broadly. The different data shown in Norgaard added to the workflow certainly can be considered equivalent to such broad descriptions of data added to a model. Answer 3--4 (mailed Jan. 29, 2014). We disagree with the Examiner's position with respect to this contested claim language. Norgaard is directed to generating a workflow on a computer, including a logical sequence of interdependent steps via an assessment system. Norgaard, Abstract. The assessment system starts with an interview to obtain information, either by direct dialogue with the user or by engaging in information gathering, and stops when adequate information is obtained. Norgaard ,-r 77. The conclusions from the assessment are then mapped to the list of active purposes, and various rules (e.g., Boolean) are used to determine which steps to add to the workflow. Id. Nothing in paragraph 77 discloses or suggests that the rules are added to the workflow. 3 Appeal2014-005447 Application 13/753,351 In other words, the rules are utilized in conjunction with the list of active purposes (2a) to add steps with assigned purposes to the workflow (2b) and exclude others. The disputed claim language requires "adding attributes, definitions and indices to the at least one of the models." Thus, even assuming that Norgaard's "[r]ules can be considered analogous to attributes and definition[ s ]" as proffered by the Examiner supra, those rules are not added to the workflow, as required by claim 23. Therefore, we agree with Appellants that the relied upon paragraph in Norgaard fails to disclose this contested limitation, and, therefore, a prima facie case of obviousness has not been established here. Accordingly, we do not sustain the rejection of independent claim 23. We also do not sustain the rejection of independent claims 2 and 6, which recite substantially similar claim language and are rejected based on the same findings as in claim 23 as to Norgaard. See Final Action 7, 11. For the same reasons, we also do not sustain the rejection of dependent claims 3-5, 7-11, 13, 14, 16, 19, 21, 22, and 24--26. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). DECISION The rejection of claims 2-11, 13, 14, 16, 19, and 21-26 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation