Ex Parte DVORAK et al

Patent Trials and Appeals Board

Mar 10, 2016

12546735 - (D) (P.T.A.B. Mar. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/546,735 08/25/2009 Martin DVORAK
56436 7590 03/14/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82251494 3936
EXAMINER
KIM,DAVIDH
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
03/14/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN DVORAK, ULRICH FEYER, and
JAN ODSTRCIL
Appeal2014-004334
Application 12/546,735 1
Technology Center 2100
Before JOSEPH L. DIXON, LARRY J. HUME, and
NORMAN H. BEAMER, Administrative Patent Judges.
HUME, 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 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 2.
Appeal2014-004334
Application 12/546,735
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention relates to systems and
methods for resource-based web services. Abstract.
Exemplary Claims
Claims 1, 9, and 18, reproduced below, are representative of the
subject matter on appeal (emphases added):
1. A system, comprising:
exploration logic configured to dynamically determine a
configuration for a resource-based web service;
evaluation logic configured to test the configuration
according to a testing policy, where a result is acquired by
testing the configuration according to the testing policy; and
control logic configured to control a user interface to
report the result.
9. A method, comprising:
determining an expected configuration of a
representational state transfer (REST) web service;
determining an actual configuration of the REST web
service;
comparing the actual configuration with the expected
configuration to produce a result; and
controlling a confirmation process as a function of the
result.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 24, 2013); Reply Brief ("Reply Br.," filed Feb. 24, 2014); Examiner's
Answer ("Ans.," mailed Dec. 23, 2013); Final Office Action ("Final Act.,"
mailed May 24, 2013); and the original Specification ("Spec.," filed
Aug. 25, 2009).
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Application 12/546,735
18. A system, comprising:
means for dynamically discovering a Uniform Resource
Locator space associated with a representational state transfer
web service; and
means for controlling a device as a function of testing the
Uniform Resource Locator space, where testing is automatic
and incremental.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Roche et al. ("Roche") US 8,145,726 Bl Mar. 27, 2012
Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Roche. Ans. 2.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants.
We agree with particular arguments advanced by Appellants with
respect to claims 1-20 for the specific reasons discussed below. We
highlight and address specific findings and arguments regarding claims 1, 9,
and 18 for emphasis as follows.
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Appeal2014-004334
Application 12/546,735
1. Anticipation Rejection of Claims 1-8
Issue 1
Appellants argue (App. Br. 7-9; Reply Br. 1-3) the Examiner's
rejection of claim 1under35 U.S.C. § 102(e) as being anticipated by Roche
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination
discloses a system that includes, inter alia, "exploration logic configured to
dynamically determine a configuration for a resource-based web service," as
recited in claim 1?
Analysis
Appellants contend, inter alia, Roche does not disclose the contested
"exploration logic" limitation of claim 1. App. Br. 7-9. The Examiner cites
narrowly to Roche column 5, lines 1-11 as disclosing this contested
limitation. In the Response to Arguments section of the Answer; the
Examiner merely responds by finding:
The appellant argues that Roche does not teach exploration
logic configured to dynamically determine a configuration for a
resource-based web service" and "evaluation logic configured
to test the configuration according to a testing policy." The
examiner takes the position that the appellant essentially argues
that the "predetermined WR VS request" is not dynamic;
however the examiner disagrees. Roche teaches that the
validation requests are determined dynamically (col 7 lines 21-
25), and thus teaches "dynamically" as claimed. Further,
because "the validation process may adjust or change in
response to the previous or current validation results," (col 7
lines 24--25) the configuration is tested as claimed.
Ans. 8
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Application 12/546,735
On this record, and based upon the Examiner's mapping of the
contested limitations, we find no evidence that either the disclosed
"predetermined WRVS request" or any "validation request" in Roche
discloses the recited "exploration logic configured to dynamically determine
a configuration for a resource-based web service," as recited in claim 1.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the disclosure of
the cited prior art to disclose the disputed "exploration logic" limitation of
claim 1. Accordingly, we cannot sustain the anticipation rejection of
independent claim 1 or dependent claims 2-8, which depend therefrom and
stand with claim 1.
2. Anticipation Rejection of Claims 9-17
Issue 2
Appellants argue (App. Br. 10-11; Reply Br. 3--4) the Examiner's
rejection of claim 9 under 35 U.S.C. § 102( e) as being anticipated by Roche
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a method
that includes, inter alia, the step of "controlling a confirmation process as a
function of the result," as recited in claim 9?
Analysis
Appellants contend, "the portion of Roche cited by the Examiner
merely states that 'the Web resource validation service may optionally return
the full text of the response from the Web entity under test.' . . . The portion
of Roche cited by the Examiner does not disclose comparing an actual
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Appeal2014-004334
Application 12/546,735
configuration with an expected configuration, nor does it disclose taking any
action based on any such comparison." App. Br. 11 (citing Roche col. 5,
11. 29--31). Appellants further contend, "[r]etuming ... the full text of a
response received by the intermediate Web resource validation service from
the Web entity under test clearly does not constitute disclosure of controlling
a confirmation process as a function of a comparison between an expected
and a determined configuration of the Web entity under test." App. Br. 11.
finds:
In the Response to Arguments section of the Answer, the Examiner
Roche teaches that the results of the Web entity under test are
formatted WRVS response schema (col 5 lines 28-29). Roche
also teaches that "the response may include data requested for
the tests along with the test (validation) results" (col 13 lines
55-57). The examiner takes the position that notification of test
results reads on "controlling a confirmation process" as
claimed. [3J
A-~ ll 11\
J-\.11~. J--1 v.
We have reviewed the cited portion of Roche, 4 and disagree with the
Examiner's finding that Roche discloses the contested "controlling" step of
claim 9. The Examiner has not explained with the requisite degree of
specificity why Roche's disclosed "WRVS response" in column 13 is
3 Contrary to the Examiner's formulation, and as a matter of generally
accepted patent practice, we note prior art references are offered as
"disclosing" or "teaching" claim limitations, and claim limitations are said to
"read on" prior art references.
4 "In one embodiment, the WR VS response may include the data requested
for the tests along with the test (validation) results." Roche col. 13,
11. 55-57.
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Application 12/546,735
equivalent to the claimed "controlling a confirmation process as a function
of the result."
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the disclosure of
the cited prior art to disclose the disputed "controlling" limitation of claim 9.
Accordingly, we cannot sustain the anticipation rejection of independent
claim 9 or dependent claims 10-17, which depend therefrom and stand with
claim 9.
3. Anticipation Rejection of Claims 18-20
Issue 3
Appellants argue (App. Br. 11-12; Reply Br. 4) the Examiner's
rejection of claim 18 under 35 U.S.C. § 102(e) as being anticipated by
Roche is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
"means for controlling a device," and "means for dynamically discovering"
limitations, as recited in independent claim 18?
Analysis
Appellants contend, "[f]or at least the same reasons given above in
regard to claims 1 and 9, the Applicants submit that Roche does not
anticipate clam 18." App. Br. 12. We have reviewed the portions of Roche
cited by the Examiner (Ans. 6) as disclosing these limitations (Roche col. 7,
11. 20-25 and col. 8, 11. 50-56; and col. 5, 11. 12-29 and col. 8, 11. 12-16), and
find Roche to be deficient in anticipating claim 18 for similar reasons as
given above.
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Application 12/546,735
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the disclosure of
the cited prior art to disclose the disputed "means" limitations of claim 18.
Accordingly, we cannot sustain the anticipation rejection of independent
claim 18 or dependent claims 19 and 20, which depend therefrom and stand
with claim 18.
CONCLUSION
The Examiner erred with respect to the anticipation rejection of
claims 1-20 under 35 U.S.C. § 102(e) over the cited prior art of record, and
we do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
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