Ex Parte Chang et al

Patent Trial and Appeal Board

Jul 29, 2016

13753351 (P.T.A.B. Jul. 29, 2016)

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
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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.
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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
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