Ex Parte Karabulut

Patent Trial and Appeal Board

Dec 4, 2017

11872358 (P.T.A.B. Dec. 4, 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.
11/872,358 10/15/2007 Yuecel Karabulut 13913-0612001 8691
32864 7590 12/06/2017
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/06/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUECEL KARABULUT
Appeal 2016-000102
Application 11/872,3581
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final
decision to reject claims 1—13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is SAP SE. Appeal Brief filed
March 3, 2015, hereafter “App. Br.,” 4.
Appeal 2016-000102
Application 11/872,358
BACKGROUND
The invention relates to a model-driven secure composition framework for
composite application developers to enable integration of security objectives into
scripting-based composite applications. Specification, hereafter “Spec.,” 1 3. A
common policy is specified and enforced between the composite application and
an external service based on applying the security framework, with access by the
external service to local services and objects regulated based on security
objectives. Id. at Abstract.
Representative claim 1 is reproduced from pages 22—23 of the Claims
Appendix of the Appeal Brief (Claims App.) as follows:
1. A computer-implemented method executed by one or more processors,
the method comprising:
applying, by the one or more processors, a security framework
to a business process, the security framework comprising:
a definition phase identifying security objectives of a composite
application, the composite application executed by an enterprise using
data and functions of one or more external services provided by one or
more service providers external to the enterprise,
a realization phase implementing security patterns that
accomplish the identified security objectives, the security patterns
comprising domain-independent and distinct customizable templates
expressed in a predetermined scripting language and defining a
unified usage of security mechanisms that provides an enterprise level
protection for the composite application, and
a declaration phase implementing the identified security
objectives using security annotations within the composite application
that are based on the security patterns, the security annotations
describing the security objectives in the predetermined scripting
language;
conducting, by the one or more processors, an external policy
negotiation to specify a common policy between the composite
application and an external service of the one or more external
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services based on applying the security framework, the common
policy being based on respective security policies of the composite
application and the external service;
enforcing, by the one or more processors, the common policy
during interactions between the composite application and the external
service; and
regulating, by the one or more processors, access by the external
service to local services and objects based on the security objectives.
The Examiner rejects claims 1—13 under 35 U.S.C § 112, first paragraph2 for
failure to meet the written description requirement and under 35 U.S.C. § 102(b) as
anticipated by Anderson.3 Final Action mailed October 15, 2014, hereafter “Final
Act.,” 2—9; see also Examiner’s Answer mailed July 28, 2015, hereinafter
“Ans.,” 2.
DISCUSSION
§ 112, first paragraph
The Examiner rejects the claims under § 112, first paragraph on two bases:
(1) the Specification disclosure provides an insufficient description of the claimed
genus of software; and (2) the Specification disclosure does not adequately
describe the “security patterns” limitation in the claims. See Final Act. 2—6; Ans.
3-14.
On the first issue, the Examiner finds that “[bjecause there are neither
species nor common features of the genus disclosed, the specification could not
convey to one skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Final Act. 4 (citing Ariad Pharms., Inc. v. Eli
Lilly, 598 F.3d 1336 (Fed. Cir. 2010)). The Examiner also finds that “the
2 The current application was filed on October 15, 2007, prior to the effective date
of the AIA (America Invents Act), and, therefore, the pre-AIA statute is applicable.
3 US Publication 2006/0206440 Al, published September 14, 2006.
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Application 11/872,358
specification does not disclose the algorithm that is used to perform the claimed
functions in sufficient detail, and Appellant has not pointed to a sufficient
algorithm,” where “[s]uch an algorithm may support the genus represented by the
claims, but no such algorithm exists for the claimed functional result.” Ans. 5.
The Examiner further finds that “Appellant’s disclosure does not provide a
representative number of species falling within the scope of the genus or structural
features common to the members of the genus so that one of skill in the art can
‘visualize or recognize’ the members of the genus.” Id. at 8. The Examiner also
finds that there is no demonstration that “Appellant possessed the knowledge to
program the disclosed computer to perform steps” of the claims. Id. at 9—10.
Appellant argues that the Specification discloses the invention in sufficient
detail that one of skill in the art could discern that the inventor had possession of
the claimed invention. App. Br. 12. Appellant refers to the MPEP 2161.01 and In
re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1533—34
(Fed. Cir. 1992), in support of this argument. Id. More specifically, Appellant
alleges that the Specification discloses sufficient support for the features of the
claims and provides cross-references to portions of the Specification. See id. at
13-17.
On the second § 112 issue, the Examiner more specifically finds that the
Specification does not provide sufficient description of the claim limitation “the
security patterns comprising domain-independent and distinct customizable
templates expressed in a predetermined scripting language” to demonstrate
possession due to the generic nature of the recitations. Ans. 13—14. Here, in
support of its argument, Appellant refers to the portions of the Specification that
refer to security patterns that are used as templates, which are instantiated for
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Appeal 2016-000102
Application 11/872,358
specific processes using a code. Reply Brief, filed September 24, 2015, hereafter
“Reply Br.,” 4 (citing Spec. Tflf 79-80, Table 1).
After considering each of Appellant’s contentions and the evidence
presented in this Appeal, we are persuaded that Appellant identifies reversible
error, and we therefore reverse the § 112, first paragraph rejection. We add the
following for emphasis.
Claims that introduce elements or limitations which are not supported by the
as-filed disclosure violate the written description requirement. See, e.g., Ariad
Pharm., Inc., 598 F.3d at 1353—1354. The fundamental factual inquiry is whether
the specification describes “an invention understandable to that skilled artisan” and
shows “that the inventor actually invented the invention claimed.” Id. at 1351.
The “genus” issue that serves as the rationale of the first rejection is not
dispositive in the present case. In Hayes and Fonar, when disclosure of software is
required, it is generally sufficient if the functions of the software are disclosed
because creation of the specific source code is within the skill of the art. Fonar
Corp. v. General Electric Co., 107 F.3d 1543, 1549—50 (Fed. Cir. 1997); Hayes,
982 F.2d at 1534 (“One skilled in the art would know how to program a
microprocessor to perform the necessary steps described in the specification.
Thus, an inventor is not required to describe every detail of his invention.”). The
software functions that perform the steps of the claims, including some specific
language for applications, are apparent from the Specification at issue here. In
particular, as to the second § 112 issue raised by the Examiner, we determine that
the disclosure relating to “security patterns” is sufficient. See Spec. ]Hf 79-80,
Table 1.
Moreover, some the issues that the Examiner raises are related to
enablement, that is, whether the Specification is sufficiently complete to enable
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Application 11/872,358
one of ordinary skill in the art to make and use the claimed invention without
undue experimentation. Here, however, the Examiner has not provided any
analysis of the enablement factors set forth in In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988).
Therefore, we cannot sustain the rejection of claims 1—13 under § 112, first
paragraph.
§102
Appellant argues the anticipation issues on similar limitations in independent
claims 1,12, and 13, with dependent claims 2—11 standing or falling with claim 1.
Appeal Br. 17—20. We will address the claims in a similar manner.
The Examiner finds that Anderson discloses all the elements of the claims.
Final Act. 6—9. Appellant argues that Anderson fails to disclose the claim
limitations of the “a definition phase” limitation. Appeal Br. 18. More
specifically, Appellant asserts that Anderson is silent to the “security objectives”
and “security annotations” recited in the independent claims, claims 1,12, and 13.
Id. at 18—19. The Examiner responds that “Anderson teaches policies (or security
objectives) implemented as templates in a scripting language. The templates have
to be input or annotated with real data (i.e., annotations).” Final Act. 11.
Appellant also alleges that the “policies” of Anderson are not equivalent to
the “security objectives” of the claims because “the policies of Anderson describe
the combinations of predicates, or constraints, on vocabulary items that are
acceptable for a given policy, which is different than security objectives.” App.
Br. 18. Appellant also asserts that Anderson fails to disclose the “realization phase
implementing security patterns” limitation because it only “defme[s] operations
within a policy set, which are different than security patterns comprising domain-
independent and distinct customizable templates expressed in a predetermined
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Application 11/872,358
scripting language.” Id. at 19. The Examiner responds that “Anderson discloses
the use of standard or domain-independent customizable templates (e.g., constraint
functions) expressed in a scripting language (e.g., XACML) that define a unified
usage of security mechanisms that provides an enterprise level protection for the
composite application.” Final Act. 11. Finally, Appellant contends that Anderson
fails to disclose the “declaration phase” as claimed because Anderson expresses its
standard policy statements as “combinations of predicates, or constraints, on
vocabulary items, which is different than implementing the identified security
objectives using security annotations.” Appeal Br. 19.
We do not find persuasive the Appellant’s arguments that Anderson fails to
disclose some of the limitations of representative claim 1. There is no ipsissimis
verbis test for determining whether a reference discloses a claim element, i.e.,
identity of terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir.
1990). Here, Appellant’s argument that Anderson does not disclose “security
objectives” is misplaced because the Examiner relies upon Anderson’s disclosure
of “policies” that can include security-related issues. See Anderson || 57—60, 68—
69. As disclosed, the “policy” is implemented by “policy statements” that can
include policy constraints expressed by a variety of parameters that are not specific
to a domain and are in scripting language, such as XACMF. Id. Tflf 60, 167—175.
Anderson also discloses that the policy statements are described (annotated) to be
reflective of policy and can be arranged in “policy sets.” Id. 68—69.
We, therefore, sustain the anticipation rejection of claims 1—13.
SUMMARY
The rejection of claims 1—13 under 35 U.S.C. § 112, first paragraph is
reversed.
The rejection of claims 1—13 under 35 U.S.C. § 102(b) is affirmed.
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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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