Ex Parte STAKHANOVA et al

Patent Trial and Appeal BoardApr 20, 2016

12553040 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/553,040 0910212009 Natalia STAKHANOVA 50170 7590 04/20/2016 IBM CORP, (WIP) c/o WALDER INTELLECTUAL PROPERTY LAW, P.C. 17304 PRESTON ROAD SUITE 200 DALLAS, TX 75252 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. AUS920125305US 1 5791 EXAMINER HO,DAOQ ART UNIT PAPER NUMBER 2497 MAILDATE DELIVERY MODE 04/20/2016 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 ExparteNATALIA STAKHANOVA, ALI-AKBAR GHORBANI, and WILLIAM BIRD Appeal2014-003266 Application 12/553,040 Technology Center 2400 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-8 and 10---16. Claim 9 is cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm-in-part. Invention The disclosed and claimed invention relates to systems and methods "for matching a system event to a rule." (Abstract). Appeal2014-003266 Application 12/553,040 Illustrative Claim 1. A system for matching a system event to a rule, the system compnsmg: [a] a computer-readable data structure comprising a plurality of system event rules organized as a graph having a plurality of nodes, at least one node corresponding to a field in a rule and having a weight value; [b] a processor configured to analyze the computer- readable data structure to determine whether an event comprising at least one field matches a description set of at least one rule from the plurality of system event rules by: [ c] for a node in the graph, comparing the field corresponding to the node to each field in the event; [ d] in the event of a match between the compared fields, adding the field to a list of matches; and [ e] sorting the list of matching fields according to the weight associated with each matching field. (Bracketed labels added). Rejection Claims 1-8 and 10-16 stand rejected under 35 U.S.C. Â§103(a) as being obvious over the combined teachings and suggestions of Hoefelmeyer (US 7,150,044 B2; iss. Dec. 12, 2006), and Angelino (US 2004/0193943 Al; publ. Sept. 30, 2004). ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We focus our analysis on the 2 Appeal2014-003266 Application 12/553,040 contested matching limitations: "A system for matching a system event to a rule, the system comprising: [a] computer-readable data structure comprising a plurality of system event rules organized as a graph having a plurality of nodes, at least one node corresponding to a field in a rule and having a weight value;" [b] a processor configured to analyze the computer- readable data structure to determine whether an event comprising at least one field matches a description set of at least one rule from the plurality of system event rules by: [ c] for a node in the graph, comparing the field corresponding to the node to each field in the event; [and] [d] "in the event of a match between the compared fields, fields, adding the field to a list of matches; .... " (Claim 1, emphasis added). Appellants contest, inter alia, the recited matching limitations in the Appeal Brief (7-21 ), and Reply Brief ( 4--9). For essentially the same reasons articulated by Appellants (id.), as discussed below, we concur with Appellants' contentions the Examiner erred in finding the combination of Hoefelmeyer and Angelino would have taught or suggested the contested matching limitations. The Examiner finds (Final Act. 3) "Hoefelmeyer does not explicitly disclose[]for a node in the graph, comparing the field corresponding to the node to each field in the event; however, [the Examiner finds] in a related and analogous art, Angelino disclose[s] this feature." The Examiner additionally finds "Hoefelmeyer does not fully disclose the field in a rule .... " (Ans. 12). Regarding limitation [a], Appellants further contend: "Hoefelmeyer does not teach 'a graph having a plurality of nodes, at least one node corresponding to a field in a rule and having a weight value,' as claims 1 3 Appeal2014-003266 Application 12/553,040 and 6 recite. Angelino does not cure what Hoefohneyer fails to teach or suggest." (App. Br. 21). Appellants urge: "[Hoefehneyer's] 'leaf of the decision tree is a rule - not a field having a weight, and Hoefehneyer does not describe that the decision tree includes a 'node corresponding to a field in a rule and having a weight value,' as claims 1 and 6 recite." (App. Br. 20). Specifically, regarding the preamble and limitation [a] of claim 1, the Examiner proffers the Hoefelmeyer reference (citing to Abstract, 5 :2-14, 7:43-54, Fig. 9). (Final Act. 3, Ans. 14). We do not find a teaching or suggestion of "matching a system event to a rule ... at least one node corresponding to a field in a rule and having a weight value" in the cited sections of Hoefelmeyer. In reviewing the record, we find it unclear how the Examiner is specifically mapping at least the following claim terms to the corresponding features in Hoefelmeyer: "matching a system event to a rule" (preamble), "node," and "afield in a rule and having a weight value." (Claim 1, emphasis added). Appellants additionally contest limitation [ d] "in the event of a match between the compared fields, adding the field to a list of matches." (Emphasis added). Regarding limitation [ d], the Examiner cites to Angelino (i-fi-f 170, 175, and 179-80). (Final Act. 3, Ans. 15). However, we do not find a teaching or suggestion of any matching between compared fields in the cited portions of the Angelino reference. We find it unclear how the Examiner has mapped the claimed "comparing" and "matching" "fields" of the event and rules to corresponding features in Angelino. "A rejection based on section 103 clearly must rest on a factual basis ... . "In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent Office 4 Appeal2014-003266 Application 12/553,040 has the initial duty of supplying the factual basis for its rejection. It may not ... resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis." Id. This reasoning is applicable here. For us to sustain the Examiner's rejection on this record, we would need to resort to impermissible speculation, or unfounded assumptions or rationales to cure the deficiencies in the factual bases of the rejection before us. Id. We decline to make speculative assumptions regarding the Examiner's intended mapping regarding the contested matching features of the Appellants' claims. Accordingly, we reverse the Examiner's Â§ 103 rejection of system independent claim 1, and the rejection of independent method claim 6, which recites the aforementioned contested limitations in commensurate form. 1 1 In the event of further prosecution, we leave it to the Examiner to consider whether at least independent claims l and 6 should be rejected, under 35 U.S.C. Â§ 101, to the extent these claims can be performed as mental steps by a human, albeit with the aid of pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson"). Regarding the method claims on appeal, "a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible underÂ§ 101." CyberSource, 654 F.3d at 1373. "[T]he mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention." See Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2358 (2014). Although the Board is authorized to reject claims under 37 C.F.R. Â§41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) Â§1213.02. 5 Appeal2014-003266 Application 12/553,040 For the same reasons, we reverse the Examiner's rejection of each associated dependent claim (claims 2-5, 7, 8, and 10-14). Rejection of Independent Claims 15 and 16 2 Regarding independent claims 15 and 16, Appellants contend the references "do not teach 'generating a match set' as claims 15 and 16 recite." (App. Br. 22). We find this assertion unpersuasive, because Appellants refer to their Specification (App. Br. 22), and merely recite the claim language, without providing sufficient substantive argument and/or evidence to persuade us the Examiner erred: e.g., "Hoefelmeyer and Angelino do not modify the testing of each and every rule aspect of the conventional IDS, and do not teach 'generating a match set' as claims 15 and 16 recite." (id.). Therefore, based on the insufficiency of Appellants' arguments regarding claims 15 and 16, and a preponderance of the evidence, we sustain the Examiner's rejection of these claims underÂ§ 103. 3 2 Under our jurisprudence, the scope of the recited "non-volatile machine- readable medium" of independent claim 16 appears to encompass transitory media. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine-readable storage medium ineligible under Â§ 101 since it encompasses transitory media). In the event of further prosecution, we leave it to the Examiner to consider a rejection under 35 U.S.C. Â§101 for claim 16. Although the Board is authorized to reject claims under 37 C.F.R. Â§41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP Â§1213.02. 3 Cf In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). 6 Appeal2014-003266 Application 12/553,040 DECISION We reverse the Examiner's rejection of claims 1-8 and 10-14 under Â§ 103(a). We affirm the Examiner's rejection of claims 15 and 16 under Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED-IN-PART 7