Ex Parte Matichuk

Patent Trial and Appeal BoardDec 11, 2012

10132172 (P.T.A.B. Dec. 11, 2012)

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. 10/132,172 04/26/2002 Bruce Matichuk 062A.0003.U1(US) 1144 29683 7590 12/11/2012 HARRINGTON & SMITH 4 RESEARCH DRIVE, Suite 202 SHELTON, CT 06484-6212 EXAMINER NGUYEN, TAN D ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 12/11/2012 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 BRUCE MATICHUK ____________________ Appeal 2011-005776 Application 10/132,172 Technology Center 3600 ____________________ Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005776 Application 10/132,172 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-6, 8, and 10-21. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM-IN-PART.1 BACKGROUND Appellant’s invention relates to a system and method for automatically creating a process model having a graphical representation (Spec. 1, ll. 12-14). Claim 1, reproduced below, is representative of the subject matter on appeal: 1. A system comprising: a planner configured to generate automatically a plurality of plans, each of the plans comprising at least one initial condition and at least one goal, each of the plans further comprising at least one path describing how to achieve the at least one goal when starting from the at least one initial condition, wherein each of the at least one initial conditions and each of the at least one goals includes a business rule expression, wherein a first one of the plans comprises a first one of the initial conditions, wherein a second one of the plans comprises the first initial condition, wherein the first plan comprises a first one of the goals, wherein the second plan comprises the first goal, wherein the first plan between the first initial condition and the first goal comprises a first one of the 1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,” filed September 7, 2010) and the Examiner’s Answer (“Ans.,” mailed November 24, 2010). Appeal 2011-005776 Application 10/132,172 3 paths, and wherein the second plan comprises a second different one of the paths between the first initial condition and the first goal; a graphics engine configured to receive the plans from the planner; to convert the plans into a process model; and to generate a graphical representation of the process model; and a data storage device configured to store data generated by at least one of the planner and the graphics engine. THE REJECTIONS The following rejections are before us for review: Claims 8, 10-16, 20, and 21 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1-6, 8, and 10-21 stand rejected under 35 U.S.C. § 102(e) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious over Feyereisen (US 6,289,277 B1, iss. Sep. 11, 2001). Claims 2, 3, 5, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Feyereisen in view of Park (US 2003/0167249 A1, pub. Sep. 4, 2003). ANALYSIS Non-Statutory Subject Matter Independent claims 8, 16, and 20 and dependent claims 10-15 and 21 Appellant contends that the Examiner erred in rejecting independent claims 8, 16, and 20 and their respective dependent claims under 35 U.S.C. § 101 because the claims satisfy the machine-or-transformation test. More particularly, Appellant contends that the phrase “drawing the graphical representation of the process model with the graphical editor” in claim 8 ties Appeal 2011-005776 Application 10/132,172 4 the claimed method to a particular machine, and that a machine also is inherent in the recitation in claim 16 of “drawing the graphical representation of the process model on a display” and the recitation in claim 20 of “generating a graphical representation of the process model” (Br. 10- 13). The Examiner maintains that the claim language does not include the required tie, and that the method claims can be carried out manually, e.g., by drawing the graphical representation on a sheet of paper or a board (Ans. 5- 7). We agree with the Examiner. Each of independent claims 8, 16, and 20 recites “obtaining planning data from a planning system,” “using the planning data to create a graphical representation of a process model,” and “drawing [or generating] the graphical representation of the process model.” Claim 8 recites that the graphical representation of the process model is drawn “with the graphical editor.” Claim 16 and dependent claim 21 recite that the graphical representation is drawn “on a display.” However, none of these steps refers to a specific machine by reciting structural limitations to any apparatus. Nor do the claims recite any specific operations that would cause a machine to be the mechanism to perform these steps. The Specification explicitly states that a graphical editor, as recited in claim 8, may be “known, commercially available software” (Spec. 15, ll. 6- 8). And we agree with the Examiner that a display, as recited in claim 16, need not be a machine but can be any device or tool that can be used for displaying an image, e.g., a board, sheet of paper, etc. (Ans. 16). We also agree with the Examiner that a machine is not required to create node data, which is recited in dependent claim 10 (Ans. 16). Appeal 2011-005776 Application 10/132,172 5 Under the broadest reasonable interpretation, independent claims 8, 16, and 20 and dependent claims 10-15 and 21 read on a mental process that can be performed in the human mind, or by a human using a pen and paper. As such, the claims are directed to non-statutory subject matter. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (holding a method for verifying the validity of a credit card transaction over the Internet to be nonstatutory as an abstract idea capable of being performed in the human mind or by a human using a pen and paper); In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes or processes of human thinking standing alone are not patentable even if they have practical application.”). For the foregoing reasons, we will sustain the Examiner’s rejection of claims 8, 10-16, 20, and 21 under 35 U.S.C. § 101. Anticipation/Obviousness Independent claim 1 and dependent claims 2-6 Appellant argues that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103 because Feyereisen fails to disclose or suggest that “each of the at least one initial conditions and each of the at least one goals includes a business rule expression” (Br. 15-22). The Examiner maintains that the rejection is proper and cites Feyereisen at column 2, lines 40-45 as disclosing this feature (Ans. 11 and 17). Feyereisen is directed to a system for producing aircraft flight plans, taking into account weather and other factors that may influence route planning, e.g., traffic congestion, closure of runways, etc., see Feyereisen, col. 1, ll. 57-67, and describes at column 2, lines 40-45, on which the Appeal 2011-005776 Application 10/132,172 6 Examiner relies, that flight plans are optimized to minimize “a cost function that includes fuel, flight length, and/or other factors in the presence of hazards or other constraints.” Although claims should be given their broadest reasonable interpretation during examination, claims must be interpreted as one of ordinary skill in the art would in light of the Specification. See In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach.”); In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (“It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their broadest reasonable interpretation consistent with the specification and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.”). Here, Appellant’s Specification describes that “[w]hen building process models with business rules, the rules are used to specify the action that will be taken in response to every possible event that can occur within a system” (Spec. 10, ll. 3-6). The Specification further explains: Each task within a process may be given inputs in the form of [a] business rule expression. The business rule expression may be a first-order expression, such as a Boolean logic statement where the model state variables are either true or false. The Boolean logic statement may collect or refer to a single state variable or sets of state variables. Alternatively, the business rule expression may be a simpler requirement, such as a listing of variables. Likewise, the goal or result of a task is some type of business rule expression describing required or possible results from the execution of the task. (Spec. 11, l. 23 – 12, l. 5). See also, e.g., Spec. 16, ll. 16-29, and fig. 7. Appeal 2011-005776 Application 10/132,172 7 In our view, one of ordinary skill in the art would understand from the Specification that a business rule is decisional logic (implementing the policies and practices of a business organization) that determines and controls the process path, i.e., the action to be taken, at each step in the process that includes a business rule expression. We agree with Appellant that one of ordinary skill, on reading the Specification, would not consider “plans to minimize a cost function that includes fuel, flight length, and/or other factors in the presence of hazards or other constraints,” as disclosed in Feyereisen to be a business rule expression, as that term is used in the Specification, that relates either to the initial condition in Feyereisen, i.e., the departure location of the aircraft, or the goal, i.e., the destination location (Br. 21). Instead, the cost function, at best, relates to considerations to be taken into account along the flight path, i.e., between the departure location and the arrival location, that may affect the route taken between these two points (Br. 17). The initial condition in Feyereisen is the location of departure, which is a single location. Similarly, the goal in Feyereisen is a single arrival location. Feyereisen does not disclose that the departure location or the arrival location includes a business rule expression. In other words, Feyereisen does not disclose any decisional logic that would affect, i.e., change, either the departure location or the arrival location. Instead, Feyereisen only describes that the route taken between these two points may vary in order to minimize costs based on the presence of hazards or other constraints. In view of the foregoing, we will not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(e), or in the alternative, under Appeal 2011-005776 Application 10/132,172 8 35 U.S.C. § 103(a). We also will not sustain the Examiner’s rejection of dependent claims 2-6. Independent claims 8, 16, 17, 18, 19, and 20 and dependent claims 10-15 and 21 Independent claims 8, 16, 17, 18, 19, and 20 include language substantially identical to claim 1. Therefore, we will not sustain the Examiner’s rejection of claims 8, 16, 17, 18, 19, and 20 under 35 U.S.C. § 102(e), or in the alternative, under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to claim 1. We also will not sustain the Examiner’s rejection of dependent claims 10-15 and 21. Dependent claims 2, 3, 5, 11, and 12 Dependent claims 2, 3, 5, 11, and 12 depend ultimately from one of independent claims 1 and 8. The Examiner has not established on this record that Park cures the deficiencies of Feyereisen as set forth above. Therefore, we will not sustain the Examiner’s rejection of claims 2, 3, 5, 11, and 12 under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to claims 1 and 8. DECISION The Examiner’s rejection of claims 8, 10-16, 20, and 21 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 1-6, 8 and 10-21 under 35 U.S.C. § 102(e), or in the alternative, under 35 U.S.C. § 103(a) is reversed. The Examiner’s rejection of claims 2, 3, 5, 11, and 12 under 35 U.S.C. § 103(a) is reversed. Appeal 2011-005776 Application 10/132,172 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART mls