Ex Parte Bhamidipaty et al

Patent Trial and Appeal Board

Mar 25, 2016

12868221 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/868,221 08/25/2010
89885 7590 03/25/2016
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Anuradha Bhamidipaty
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.
IN920100072US 1
(790.073)
CONFIRMATION NO.
5475
EXAMINER
VIZV ARY, GERALD C
ART UNIT PAPER NUMBER
3624
MAILDATE DELIVERY MODE
03/25/2016 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
Ex parte ANURADHA BHAMIDIPATY,
BHUV AN SHARMA, and
VIRENDRA K. V ARSHNEY A
Appeal2013-008533
Application 12/868,221 1
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anuradha Bhamidipaty et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 3.
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Application 12/868,221
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method for selecting a service
design solution for one or more business processes comprising:
accessing via a processor a library of shared services for
a shared environment of services;
mapping via a processor one or more business processes
to one or more services of the library of shared services;
identifying via a processor a set of service selection
design solutions for the one or more business processes using a
combinatorial selection technique;
determining via a processor a selection indicating one of
the set of service selection design solutions; and
implementing one or more changes to the shared
environment of services responsive to said selection.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Pettinelli
El ad
US 2005/0246165 Al
US 2008/0281915 Al
The following rejections are before us for review:
Nov. 3, 2005
Nov. 13, 2008
1. Claims 9-16 are rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claims 1-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Elad and Pettinelli.
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ISSUES
Did the Examiner err in rejecting claims 9--16 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Elad and Pettinelli?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 9-16 under 35 US.C. §1 OJ as being directed to non-
statutory subject matter.
The Appellants do not appear to have given this rejection (see Answer
4--5) any response. Accordingly, \Ve summarily affirm it.
The rejection of claims 1-20 under 35 US.C. §103(a) as being unpatentable
over Elad and Pettinelli.
The Appellants argue that:
1. "Elad fails to teach ' ... identifying a set of service selection design
solutions for the one or more business processes using a combinatorial
selection technique ... ', Claim 1. " (Br. 13);
2. "Elad does not teach or suggest 'modifying an aspect of the shared
environment of services responsive to said selection', claim 1. " (Br.
14);
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Application 12/868,221
3. "Elad is not concerned with ' ... selecting a service design solution for
one or more business processes ... ' Claim 1. (Br. 14 ); and,
4. "that Elad and Pettinelli are non-analogous art" (Br. 15).
Regarding 1., the Appellants criticize the Examiner for
simply cit[ing] to Elad at Claim 4 for this teaching, but at best
provides only a very generalized explanation as to how Claim 4
of Elad could or should be read on Applicants' above quoted
claim limitation. Applicants respectfully submit that Elad
contains no such teaching, and furthermore that the Examiner's
failure to provide a viable reasoned explanation is improper.
Br. 13-14. We do not see it that way.
The Examiner made a finding of fact that claim 4 of Elad discloses
"identifying [ ] a set of service selection design solutions for the one or more
business processes using a combinatorial selection technique ... " (Claim 1 ).
The scope and content inquiry under Graham is implicated here. The
question is whether a preponderance of the evidence supports the
Examiner's characterization of the scope and content of Elad with respect to
the claim language at issue. The Appellants provide no insight into that
question. "[S]ubmit[ing] that Elad contains no such teaching" (Br. 14) is not
a substantive response showing error in the rejection. See 37 C.F.R.
§ 41.37(c)(iv)("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.")
Nevertheless, we agree with the Examiner's characterization. The
Examiner states:
"The method of claim 1 further comprising the steps of: a)
treating a first partial signature subset of terms or concept IDs as
a first combination or permutation, and giving them a weight
based on the combinatorial likelihood of such a combination or
permutation" (Elad US 2008/0281915 A 1 claim 4) [ ] clearly
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Application 12/868,221
designat[ es] the common statistical calculation of combinations
and permutations.
Final Act. 3. This is supported by what Elad's claim 4 recites, which is
reproduced below.
4. The method of claim 1 further comprising the steps of:
a) treating a first partial signature subset of terms or
concept IDs as a first combination or permutation, and giving
them a weight based on the combinatorial likelihood of such a
combination or permutation;
b) optionally extracting at least one implied second
partial signature subset terms or concept IDs from the first
partial signature subset, and treating the second partial signature
subset of terms or concept IDs as a second combination or
permutation, and giving them a weight based on the
combinatorial likelihood of such a combination or permutation;
c) optionally applying b) to also obtain all singleton
terms or concept IDs implied by first partial signature subset of
terms or concept IDs; and
d) optionally using a weighting scheme that combines the
individual singleton, combination, and permutation weights of
the first partial signature subset and the second partial signature
subset.
The claim language at issue - "identifying a set of service selection design
solutions for the one or more business processes using a combinatorial
selection technique" (claim 1) - is reasonably broadly construed to
encompass using a combinatorial selection technique to identify a set of
certain information. The intended use is a business process but, as such, this
is not patentably consequential. Giving a weight to terms/concepts based on
the combinatorial likelihood of a combination, as Elad discloses, necessarily
uses a combinatorial selection technique to identify a set of certain
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information. Accordingly, we are unpersuaded by this argument as to error
in the rejection.
Regarding 2, the Appellants limit the argument to criticizing the
Examiner for "provid[ing] no detailed, reasoned explanation as to how or
why Elad at [0129] or [184] should be interpreted as providing such a
teaching ['modifying an aspect of the shared environment of services
responsive to said selection', claim 1.]" Br. 14. Actually, the Examiner did.
See Answer 4. Accordingly, we are unpersuaded by this argument as to
error in the rejection.
Regarding 3, the Appellants limit the argument to criticizing the
Examiner for "recit[ing] isolated passages from Elad (seep. 4, second
paragraph of outstanding Office Action) that do not clearly relate to the
recited claim language in question." Br. 14. And yet we plainly see
disclosed "system development" and recognition of "explicit design goal and
requests." Why this disclosure would not lead one to "select[ ] a service
design solution for one or more business processes" (claim 1) is not
explained. Accordingly, we are unpersuaded by this argument as to error in
the rejection.
The Appellants also argue "that Pettinelli does not teach what the
Examiner alleges, as this reference is clearly directed towards 'analyzing a
discourse', Pettinelli at Abstract, which is irrelevant to Applicants' claims."
Br. 14. We are unclear as to what the Examiner alleged that the Appellants
find Pettinelli does not "teach." Accordingly, we are unpersuaded by this
argument as to error in the rejection.
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Finally, as to 4, the Appellants simply quote from decisions to posit
"that a reference must be analogous art to qualify as a reference used in an
obviousness determination under 35 U.S.C. § 103." Br. 15. That is not in
dispute. What the Appellants do not explain is why Elan and Pettinelli are
non-analogous. According to the Appellants, "each is from a different field
of endeavor and each reference address different problems" (Br. 15) but
what the different fields/problems are and why they should be deemed non-
analogous are not explained. Accordingly, we are unpersuaded by this
argument as to error in the rejection.
Claims 7 and 15 are separately addressed. See Br. 15-16. Other than
relying on the arguments challenging the rejection of claim 1, which we
addressed above, Appellants add no more than to recite the claim language
considered to be at issue and pointing out that the references do not disclose
it. We are unpersuaded by this argument as to error in the rejection. See 37
C.F.R. § 41.37(c)(iv).
For the foregoing reasons, the rejection is sustained.
CONCLUSIONS
The rejection of claims 9-16 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is sustained.
The rejection of claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Elad and Pettinelli is sustained.
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DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
AFFIRMED
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