Ex Parte Chessell et al

Patent Trial and Appeal Board

Oct 23, 2017

13356571 (P.T.A.B. Oct. 23, 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.
13/356,571 01/23/2012 Amanda E. Chessell GB920110055US1 (749) 3695
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
10/25/2017 EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMANDA E. CHESSELL and KAMORUDEEN L. YUSUF
Appeal 2016-005402
Application 13/356,571
Technology Center 3600
Before JOHN A. EVANS, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 6—15. App. Br. 1. Claims 1—5 are
canceled. App. Br. 10.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 The Appeal Brief identifies International Business Machines Corporation
as the real party in interest. App. Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed June 29, 2015, “App. Br.”), the Reply Brief
(filed May 2, 2016, “Reply Br.”), the Examiner’s Answer (mailed March 2,
2016, “Ans.”), the Final Action (mailed January 6, 2015, “Final Act.”), and
the Specification (filed January 23, 2012, “Spec.”) for their respective
Appeal 2016-005402
Application 13/356,571
STATEMENT OF THE CASE
The claims relate to a system and computer program product for
modeling and validating a user process. See Abstract.
INVENTION
Claims 6 and 11 are independent. An understanding of the invention
can be derived from a reading of exemplary Claim 6, which is reproduced
below with some formatting added:
6. A business process modeling and validation data
processing system comprising:
a computer with at least one processor and memory
coupled to a data store of business process models;
a modeling tool executing in the memory of the
computer; and,
a validation module comprising program code enabled
upon execution in the memory of the computer to link in the
memory of the computer a task of an activity modeled within a
business process model in the data store to a defined role
specifying information accessible to end users associated with
the defined role,
to additionally link in the memory of the computer
the task of the activity to an object model specifying
information required by an end user to complete a
corresponding task,
to generate a mapping from the linkings, and
to validate the business process by determining
from the mapping whether or not an end user associated
with the role can access information necessary to perform
the task.
details.
2
Appeal 2016-005402
Application 13/356,571
References
The Examiner relies upon the prior art as follows:
Matsakis et al. US 2005/0273772 A1 Dec. 8, 2005
Goodman et al. US 2006/0059253 Al Mar. 16, 2006
Final Rejection
1. Claims 11—15 stand rejected under 35U.S.C. § 101 as being directed
to non-statutory subject matter. Final Act. 2—5.
2. Claims 6—9 and 11—14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Goodman. Final Act. 5—9.
3. Claims 10 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Goodman and Matsakis. Final Act. 9—11.
New Ground of Rejection3
Claims 6—15 are newly rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Ans. 11—12.
ANAFYSIS
We have reviewed the rejections of Claims 6—15 in light of
Appellants’ arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellants actually raised in the Brief. Any
other arguments which Appellants could have made but chose not to make in
3 “Appellants recognize the right to re-open prosecution under 37 C.F.R.
41.39, however, Appellants instead opt to maintain the present appeal by
filing the present Reply Brief as set forth in 37 C.F.R. 41.41.” Reply Br. 5
n.l.
3
Appeal 2016-005402
Application 13/356,571
the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We provide the following explanation to highlight and address
specific arguments and findings primarily for emphasis. We consider
Appellants’ arguments seriatim, as they are presented in the Appeal Brief,
pages 4—9.
Claims 11-15: Non-Statutory Subject Matter (I)
Claim 11 recites, inter alia, “[a] computer readable [storage] medium
comprising computer executable instructions.” The Examiner interprets this
limitation as “a computer data signal embedded in a digital data stream
(carrier wave).” Final Act. 2—3. The Examiner finds Appellants’ definition
of “a computer readable storage medium” encompasses “<2 signal.”
Ans. 13—14 (citing Spec., 127).
Appellants contend their Specification differentiates a signal medium
from a storage medium. App. Br. 5 (citing Spec., 127)4. We disagree with
Appellants.
Appellants provide separate examples for a “computer readable
storage medium” and a “computer readable signal medium” in paragraphs
25 and 26 of the Specification, respectively. However, the Specification
merely describes a “computer readable storage medium may be, for
example, but not limited to,” certain media, and “specific examples (a non-
exhaustive list) of the computer readable storage medium would include”
4 The Examiner (Final Act. 3; Ans. 13) and Appellants (App. Br. 5; Reply
Br. 3) refer to Specification paragraph [0027]. However, in our copy of the
Record, the cited text appears in Specification Paragraph 25.
4
Appeal 2016-005402
Application 13/356,571
certain other media. Spec. 133) (emphases added). Additionally, the
Specification mentions program code “may also be stored in a computer
readable medium,” but contrary to Appellants’ assertions, does not limit the
claimed computer readable storage medium to a non-transitory embodiment
of a “computer readable medium.” See Spec. |27. Accordingly, Appellants’
Specification does not limit the claimed “computer readable storage
medium” to a non-transitory embodiment. Similarly, the Board in
Mewherter did “not find any limitation on the form of the ‘machine-readable
storage medium’ in Appellants’ Specification.” Ex parte Mewherter, 107
USPQ2d 1857, 1859 (PTAB 2013) (precedential). Absent such express
limitation on the claimed “computer readable storage medium,” the relevant
body of extrinsic evidence compels a finding that “the ordinary and
customary meaning of ‘computer readable storage medium’ to a person of
ordinary skill in the art [is] broad enough to encompass both non-transitory
and transitory media.” Id. at 1860.
For the reasons discussed supra, we are not persuaded the Examiner
erred in rejecting claim 20 as non-statutory.5
Claims 6-15: Non-Statutory Subject Matter (II)
The Examiner finds the claims are directed to the abstract idea of
organizing and comparing information. Ans. 11. The Examiner finds the
5 A claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation “non-transitory” to the claim. See
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Official. Gaz. Pat. Off. 212 (Feb. 23, 2012).
5
Appeal 2016-005402
Application 13/356,571
claimed “linking,” “mapping,” and “validating” steps are analogous to steps
of using categories to organize, store, and transmit information that have
previously been found to be directed to abstract ideas. Id.
Appellants discuss the jurisprudence of 35 U.S.C. § 101. See Reply
Br. 5—14 (citing CLSBankv. Alice Corp. Pty. Ltd., 134 S. Ct 2347 (2014)
and surveying subsequent Federal Circuit and Board decisions). Appellants
conclude that “an innovative concept reflected in a claim rejected under
35 U.S.C. § 101 must be restricted by the claim language itself in terms
of how the innovative concept is achieved so as to realize patentable
subject matter” Reply Br. 10 (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)) (emphasis added).
The Supreme Court has set forth a two-step process for evaluating
whether claims are valid under § 101. See Alice, 134 S. Ct. at 2355. The
“decisional mechanism” applied by the courts “is to examine earlier cases in
which a similar or parallel descriptive nature can be seen.” Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
Appellants’ survey of the caselaw reveals that “[ajbsent a restriction
in the claim language as to how the innovative concept is achieved,
however, the claim may be rightfully rejected as being directed to non-
statutory subject matter.” Reply Br. 10-11 (citing Internet Patents, 790 F.3d
at 1349).
Appellants recite the claim language, e.g., “the business process is
validated by determining from the mapping whether or not an end user
associated with the role can access information necessary to perform the
task.” Reply Br. 13. Appellants argue “Applicants’claim language
expressly provides how the concept of ‘modeling and validating a user
process’ is achieved.” Id.
6
Appeal 2016-005402
Application 13/356,571
We are not persuaded. We find nothing in the claim recitation that,
facially, explains how the validating step is performed. Nor do Appellants
direct our attention to where the Specification may provide the required
specificity.
Claims 6-9 and 11-14: Anticipation by Goodman
And
Claims 10 and 15: Obviousness over Goodman and Matsakis.
Appellants (App. Br. 8) and the Examiner (Ans. 14) discuss the
rejections of Claims 6—15 under §§102 and 103 as a group in view of the
limitations of Claim 6 and the disclosure of Goodman.
Claim 6 recites, inter alia, “determining from the mapping whether or
not an end user associated with the role can access information necessary to
perform the task.”
Appellants contend Goodman fails to disclose whether an end user
can access the information required for that user’s role. App. Br. 7.
The Examiner finds Goodman discloses a “quality verification
process owner may not be responsible for executing the V-model, but is
responsible for making sure that the V-model is in place and complied with.”
Ans. 14 (citing Goodman, 1185). The Examiner interprets this as
equivalent to linking a task, modeled within a business process model in the
data store, to a defined role specifying information accessible to end users
associated with the defined role. Id. at 15.
We do not find that responsibility “for making sure that the V-model
is in place and complied with,” as disclosed by Goodman, is the equivalent
to “specifying information accessible to end users,” as claimed. Hence, we
7
Appeal 2016-005402
Application 13/356,571
do not sustain the anticipation rejection of claims 6—9 and 11—14 or the
obviousness rejection of claims 10 and 15.
DECISION
The rejections of Claims 11—15 under 35U.S.C. § 101 (computer
readable storage medium) are AFFIRMED.
The rejections of Claims 6—15 under 35 U.S.C. § 101 (abstract idea)
are AFFIRMED.
The rejections of Claims 6—15 under 35 U.S.C. §§ 102 and 103 are
REVERSED.
Because we affirm at least one ground of rejection for each claim on
appeal, we affirm the Examiner’s decision rejecting all of the claims on
appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
8