Ex Parte Aggarwal et al

Patent Trial and Appeal Board

Sep 29, 2014

12178980 (P.T.A.B. Sep. 29, 2014)

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.
12/178,980 07/24/2008 Charu C. Aggarwal YOR920030622US2 7329
48062 7590 09/29/2014
RYAN, MASON & LEWIS, LLP
1175 Post Road East
2nd Floor
Westport, CT 06880
EXAMINER
BENOIT, ESTHER
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
09/29/2014 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 CHARU C. AGGARWAL, MURRAY SCOTT CAMPBELL,
YUAN-CHI CHANG, MATTHEW LEON HILL, CHUNG-SHENG LI,
MILIND R. NAPHADE, SRIRAM K. PADMANABHAN,
JOHN R. SMITH, MIN WANG, KUN-LUNG WU, and
PHILIP SHILUNG YU
____________

Appeal 2012-000785
Application 12/178,9801
Technology Center 2400
____________

Before EDWARD A. BROWN, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–5, 9, 10, 13, 21–23, 27, 28, and 34.
Appeal Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 According to Appellants, the real party in interest is International Business
Machines Corp. Appeal Br. 1.
2 We refer to the “CORRECTED APPEAL BRIEF” filed on May 26, 2011,
as the “Appeal Br.”
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Application 12/178,980

2
Claimed Subject Matter
Claims 1, 21, and 34 are independent. Representative claim 1 reads as
follows:
1. A method for enabling interoperability between a
plurality of participants in a network, the method comprising
the steps of:
determining a value associated with a value metric
defined for at least a portion of the network;
determining two or more alternative information flows
between two or more of the plurality of participants in the
network based at least in part on one or more semantic models
corresponding to the plurality of participants and on the value
associated with the value metric; and
optimizing an overall value of the network by selecting
combinations of said alternative information flows for at least
one portion of the network in order to satisfy consumers of
information, wherein one or more steps are performed by a
processor.

Rejections3
I. Claim 34 stands rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
II. Claims 1–6, 8–10, 12–24, and 26–34 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Bergman (US 2003/0028469 A1,
published Feb. 6, 2003).4

3 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25,2014.
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Application 12/178,980

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III. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bergman and Official Notice.5

ANALYSIS
Rejection I
The Examiner finds that claim 34 is directed to non-statutory subject
matter because it recites “a tangible computer readable recordable medium”
and the Specification does not provide any meaning of this term. Answer 4.
Consequently, the Examiner construes claim 34 as covering “both transitory
and non-transitory media.” Id.
Appellants contend that claim 34 is drawn to a tangible computer
readable recordable medium, and is not drawn to signals per se, and thus is
directed to statutory subject matter. Appeal Br. 6.
Appellants’ Specification states that “[t]he media interface 1440
couples to a computer readable medium 1460, which includes one or more
programs (not shown) which, when implemented, carry out portions or all of
the present invention.” Spec. 18, ll. 23–25 (emphasis added). The
Specification does not explicitly describe that the computer readable
medium has any particular form. Thus, the Specification does not explicitly

4 In the Appeal Brief, Appellants state “claims 6–8, 11, 12, 14–20, 24–26,
and 29–33 are not being appealed.” Appeal Br. 2 (emphasis added). We
note that Appellants also do not present separate argument for these claims.
See generally Appeal Br. Accordingly, we treat claims 6–8, 12, 14–20,
2426, and 29–33 as not being appealed for this rejection.
5 As noted above, Appellants indicate that the rejection of claim 11 is not
being appealed. Id. We note that Appellants also do not present separate
argument for this claim. See generally Appeal Br.
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Application 12/178,980

4
describe that the computer readable medium is limited to a “tangible”
medium or to a “non-transitory” medium. The Specification does not
provide a definition for “computer readable medium,” or any express
disclaimer, that excludes signals.
As such, a reasonable interpretation of the claimed “tangible computer
readable recordable medium” includes signals per se. Therefore, because
claim 34 covers a signal per se, we find no error in the Examiner’s
determination that the claim covers non-statutory subject matter. We sustain
the rejection of claim 34 under 35 U.S.C. § 101, as being directed to non-
statutory subject matter. See Ex parte Mewherter, 107 USPQ2d 1857, 1862
(PTAB 2013) (precedential).6
Rejection II
Claims 1, 21, and 347
Appellants argue claims 1, 21, and 34 together as a group. Appeal Br.
6–9. We select claim 1 to decide the appeal with respect to the group as to
this ground of rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Regarding claim 1, the Examiner finds Bergman discloses that
“consumers can locate alternative data and information sources” (italics
omitted), and determines that this disclosure corresponds to the claimed step

6 Appellants may consider amending claim 34 by inserting “non-transitory,”
which may be sufficient to overcome the presumption that the “tangible
computer readable recordable medium” encompasses a signal. See U.S
Patent & Trademark Office, Evaluating Subject Matter Eligibility Under 35
USC § 101: August 2012 Update (2012) (pp. 11-14).
7 We summarily sustain the rejection of claims 6–8, 12, 14–20, 24–26, and
29–33, which depend from claim 1 or 21, under this ground of rejection. See
In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (held the Board did
not err in sustaining a rejection not contested on appeal).
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Application 12/178,980

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of “determining two or more alternative information flows.” Answer 5
(citing Bergman ¶ 50). The Examiner also finds that Bergman discloses that
“multiple alternative data and information sources are combined to yield
maximum quality matchmaking” (italics omitted), and determines that this
disclosure corresponds to the claimed step of “optimizing an overall value of
the network.” Id. at 6 (citing Bergman ¶ 50). The Examiner also determines
that Figure 2 of Bergman shows “more than one branch link that extend[s]
from a provider to a consumer,” thus indicating that a consumer “may have
more than one provider choice[,] and vice versa.” Id. at 11.
Appellants contend that Bergman does not disclose the steps of
“determining two or more alternative information flows between two or
more of the plurality of participants in the network . . . the value metric” or
“optimizing an overall value of the network by selecting combinations of
said alternative information flows . . . wherein one or more steps are
performed by a processor, as required by claim 1.” Appeal Br. 7.
Appellants’ contentions are not persuasive. Bergman states, “[b]ased
on the knowledge models developed for each application domain and
science discipline, the matchmaking mechanism will be able to fuse and
combine multiple alternative data and information sources so that the
quality of the results can be maximized while the cost for data acquisition is
minimized.” Bergman, ¶ 50 (emphasis added). Figure 2 of Bergman shows
a supply chain of information goods including providers 201 and consumers
204, in which each provider 201 is connected to two consumers 204 via
intermediaries 202, 203. See also Bergman, ¶ 52. Appellants do not
persuasively explain why the portions of Bergman relied on by the Examiner
do not disclose the limitations of the “determining” and “optimizing” steps
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Application 12/178,980

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recited in claim 1. See also Reply Br. 3–6. In addition, Appellants do not
address the Examiners’ findings regarding a “value metric.” Id.; see Answer
11.
As Appellants do not apprise us of error in the Examiners’ findings,
we sustain the rejection of claim 1, and claims 21 and 34, which are not
separately argued.
Claims 2 and 22
Claim 2, which depends from claim 1, recites that “the step of
determining two or more alternative information flows” further comprises
the steps of “performing matchmaking between the plurality of participants
based on the one or more semantic models and the value” and “directing
information flow between the participants matched during the
matchmaking.”
The Examiner finds that Bergman discloses the limitations of claim 2.
Answer 6, 11–12 (citing Bergman, ¶¶ 48, 58).
Appellants’ contentions that Bergman does not disclose the limitations
of claim 2 do not apprise us of any error in the Examiner’s findings, and
thus, are not persuasive. Appeal Br. 9–10; Reply Br. 6–7. We sustain the
rejection of claim 2, and of claim 22, which depends from claim 21 and is
not separately argued.
Claim 3
Claim 3, which depends from claim 2, recites that “the step of
matchmaking” further comprises the steps of “determining by using the one
or more semantic models that the participants can be connected” and
“determining that the value metric is modified by the connection.”
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The Examiner finds that Bergman discloses the limitations of claim 3.
Answer 6, 12 (citing Bergman, ¶¶ 48, 66).
Appellants’ contentions that Bergman does not disclose the limitations
of claim 3 do not apprise us of any error in the Examiner’s findings, and
thus, are not persuasive. Appeal Br. 10–11; Reply Br. 7–9. We sustain the
rejection of claim 3.
Claims 4, 5, and 23
Claims 4 and 23 depend from claims 1 and 21, respectively, and recite
“wherein the one or more semantic models define inputs, outputs, and
functionality for each of the plurality of participants and define at least a
portion of information produced or consumed by the plurality of
participants.”
The Examiner finds that Bergman discloses the limitations of claims 4
and 23. Answer 6, 12–13 (citing Bergman, ¶¶ 54, 58).
Appellants’ contentions that the portions of Bergman relied on by the
Examiner do not disclose, by a preponderance of the evidence, inputs,
outputs, and functionality for each of the plurality of participants, and define
at least a portion of information produced or consumed by the plurality of
participants, as required by claims 4 and 23, are persuasive. Appeal Br. 11;
Reply Br. 9–10. Thus, we do not sustain the rejection of claims 4 and 23, or
the rejection of claim 5, which depends from claim 4.
Claims 9, 10, 27, and 28
Claims 9 and 10 depend from claim 1. Claims 27 and 28 depend from
claim 21 and recite similar limitations as claims 9 and 10, respectively.
The Examiner finds that Bergman discloses the limitations of claims
9, 10, 27, and 28. Answer 7, 13–14 (citing Bergman, ¶¶ 42, 56).
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Application 12/178,980

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However, Appellants’ contentions that the portions of Bergman relied
on by the Examiner do not disclose, by a preponderance of the evidence, all
of the limitations of claims 9, 10, 27, and 28 including “inserting a new
participant into the network based on a semantic model of the new
participant” (claim 9), and “determining that the given participant has been
removed from the network” (claim 10) are persuasive. Appeal Br. 14; Reply
Br. 13. Thus, we do not sustain the rejection of claims 9, 10, 27, and 28.
Claim 13
Claim 13, which depends ultimately from claim 1, recites “the step of
performing an analysis of statistical behavior of the given participant with
respect to participants within a predetermined distance in the network from
the given participant.”
The Examiner finds that Bergman discloses the limitations of claim
13. Answer 7–8, 14 (citing Bergman, ¶¶ 63, 76, 86).
Appellants’ contentions that the portions of Bergman relied on by the
Examiner do not disclose, by a preponderance of the evidence, “performing
an analysis of statistical behavior of the given participant with respect to
participants within a predetermined distance in the network from the given
participant,” as recited in claim 13, are persuasive. Appeal Br. 16; Reply Br.
15–16. Thus, we do not sustain the rejection of claim 13.
Rejection III
As Appellants do not appeal the rejection of claim 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Bergman and Official Notice, we
summarily sustain the rejection. See In re Berger, 279 F.3d at 985.

Appeal 2012-000785
Application 12/178,980

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DECISION
We affirm the rejection of claim 34 under 35 U.S.C. § 101.
We affirm the rejection of claims 1–3, 6–8, 12, 14–22, 24–26, and
29–33, and reverse the rejection of claims 4, 5, 9, 10, 13, 23, 27, and 28,
under 35 U.S.C. § 102(b) as being anticipated by Bergman.
We affirm the rejection of claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Bergman and Official Notice.
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.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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