Ex Parte Aggarwal et alDownload PDFPatent Trial and Appeal BoardSep 29, 201412178980 (P.T.A.B. Sep. 29, 2014) Copy Citation 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.” Appeal 2012-000785 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. Appeal 2012-000785 Application 12/178,980 3 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, 2426, 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. Appeal 2012-000785 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). Appeal 2012-000785 Application 12/178,980 5 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 Appeal 2012-000785 Application 12/178,980 6 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.” Appeal 2012-000785 Application 12/178,980 7 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). Appeal 2012-000785 Application 12/178,980 8 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 9 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 llw Copy with citationCopy as parenthetical citation