Ex Parte Casati et al

Board of Patent Appeals and Interferences

Apr 28, 2009

10066098 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FABIO CASATI and MING-CHIEN SHAN
____________________

Appeal 2008-3361
Application 10/066,0981
Technology Center 2100
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Decided:2 April 28, 2009
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Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
CAROLYN D. THOMAS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on January 31, 2002. The real party in interest is Hewlett Packard
Co.

2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 26. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
Appellants’ Invention
Appellants invented a method and system for dynamically selecting a
conversation logic for a workflow definition at run-time based on a
discovered service. (Spec. 5: 4-11.) As depicted in Figure 2, the workflow
definition (204) may invoke one or more services from a service module
(208) having a plurality of services, each service supporting a conversation
protocol. (Id. at 8: 16-20.) Upon the workflow definition (204) invoking a
service (208), the service module (208) forwards the identifier (218) for the
invoked service to a dynamic conversation selection mechanism (DCLSM
210), which includes a conversation logic repository (CLR 211) having a
plurality of conversation logics. The DCLSM (210) then selects from its
CLR (211) a conversation logic tailored for or compatible with the
conversation protocol of the invoked service. (Id. at 9: 1-14.) However, if
the DCLSM (210) finds in the repository no conversation logic associated
with the identified conversation protocol, an administrator develops a
corresponding conversational logic, and dynamically plugs it into an
associated node of the workflow definition (204). (Id. at 9: 15-26, and id. at
18: 4-15.)

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Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A method for selecting a conversation logic at
run-time for a workflow definition that includes at least one
node with no hard-coded conversation logic, the method
comprising the steps of:
a) maintaining a conversation logic repository
that includes at least one conversation logic that is external
to the workflow definition;
b) when executing the node with no hard-coded
conversation logic, dynamically discovering a service
associated with the node with no hard-coded conversation
logic;
c) determining a corresponding conversation
logic in the conversation logic repository based on the
discovered service; and
d) dynamically plugging in the determined
conversation logic into the node at run time.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Acharya US 2003/0140119 A1 Jul. 24, 2003
(filed Jan. 18, 2002)
Coupal US 6,931,574 B1 Aug. 16, 2005
(filed Oct. 24, 2001)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1 through 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Acharya and Coupal.
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Appellants’ Contentions
Appellants argue that the combination of Acharya and Coupal does
not teach determining a corresponding conversation logic in a conversation
logic repository based on a discovered service, and dynamically plugging the
determined conversation logic into a node of a workflow definition at
runtime, as recited in independent claim 1. (App. Br. 5-8, Reply Br. 2-3.) In
particular, Appellants argue that Acharya’s disclosure pertains to a service
discovery proxy that, upon receiving a service query, determines a suitable
communication protocol to use to communicate with local devices in order
discover the services provided by such devices. (Id.) According to
Appellants, Acharya’s disclosure teaches determining the communication
protocol before/ in order to discover the services of local devices, whereas
the claimed limitation requires determining the conversation logic after/
based on discovered services. (Id.) Further, Appellants argue that Acharya’s
disclosure of merely discovering available services at local devices does not
teach the recitation of dynamically plugging the determined conversation
logic into a node at run-time. (App. Br. 7-8, Reply Br. 4-5.) Appellants also
argue that Coupal does not remedy the deficiencies of Acharya, and that the
cited references are not related to each other. Therefore, Appellants submit
that the references are not properly combinable. (App. Br. 9.)

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Examiner’s Findings/Conclusions
The Examiner finds that Acharya’s disclosure of a communication
protocol for a service teaches the claimed conversation logic. (Ans. 12.)
The Examiner further finds that Acharya’s disclosure of evaluating the
responses obtained from multicasting service discovery packets over a
plurality of network media using a plurality of communication protocols to
select therefrom an appropriate protocol teaches determining a
corresponding conversation logic based on a discovered device. (Id.)
Additionally, the Examiner finds that Acharya’s disclosure of dynamically
modifying a service discovery response to enable a user to utilize the service
when it is to be executed teaches dynamically plugging the determined
conversation logic into a node at run-time. (Id. at 13.) Additionally, the
Examiner finds that both Acharya and Coupal are directed to determining
appropriate protocol. Therefore, the Examiner concludes that Acharya and
Coupal are properly combined to render independent claim 1 unpatentable.
(Id. at 13-14.)

II. ISSUE
Have Appellants shown that the Examiner erred in concluding that the
combination of Acharya and Coupal renders independent claim 1
unpatentable? In particular, the issue turns on whether the proffered
combination teaches determining a corresponding conversation logic in a

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conversation logic repository based on a discovered service, and
dynamically plugging the determined conversation logic into a node of a
workflow definition at runtime.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Acharya
1a. As depicted in Figure 1, Acharya discloses a system that
enables a remote requester (105) to communicate with a service discovery
proxy (102) to resolve a request among currently available service providers
(106, 107) within a local domain (100). (P. 1, para. 0017.)
1b. Upon receiving an inquiry from a requester (105), the service
discovery proxy (102) queries a central registry (103) with which it
registered service and location information to locate service providers
capable of providing a response to the inquiry. (P. 2, para. 0028.)
1c. The service discovery proxy (102) then determines the
appropriate communication protocol to be used. This involves multicasting
service discovery packets over various network media using various
communication protocols, and evaluating the responses to the multicast to
thereby determine the most appropriate protocol. (P. 3, para. 0037.)

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1d. Upon receiving a response to an inquiry from the provider, the
service discovery proxy customizes it in accordance with the criteria
provided by the requester before forwarding it to the latter party. (P. 2, para.
0032; p. 3, para. 0038.)

Coupal
2a. As shown in Figure 1, Coupal discloses a protocol analyzer (12)
for analyzing and interpreting captured data packets traversing a
communications network (30). (Col. 8, ll. 14-21.)
2b. The protocol analyzer (12) includes a protocol database storage
location (34) that defines the format of the transferred packets. (Col. 9, ll. 2-
8.)

IV. PRINCIPLES OF LAW
Obviousness
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be
patented and the prior art are such that the subject matter
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as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 404 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. The operative question in this "functional approach" is thus
"whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 401, 415, 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 414).
The Federal Circuit relied in part on the fact that Leapfrog had presented no

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evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417-
18).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See
Kahn, 441 F.3d at 987-988; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such
references it is proper to take into account “not only the specific teachings of
the references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968) (citation omitted).

V. ANALYSIS
Independent claim 1 recites in relevant parts determining a
corresponding conversation logic in a conversation logic repository based on
a discovered service, and dynamically plugging the determined conversation
logic into a node of a workflow definition at runtime.

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We first consider the scope and meaning of the expression
“conversation logic” which must be given its broadest reasonable
interpretation consistent with Appellants’ disclosure, as explained in In re
Morris :
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted
as broadly as their terms reasonably allow.”). Appellants’ Specification
states the following:
The term “conversation logic” as used herein refers to the
specification of the operations to be invoked on a service, as
well as, when and under which conditions the operations are to
be invoked. The term “conversation” as used herein refers to a
set of interactions (e.g. a sequence of operation invocations)
between the workflow and the service. Conversations take
place according to the specified conversation logic and within
the rules defined by the conversation protocol.
(Spec. 8: 21-26.)
Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d 1303, 1321(Fed. Cir. 2005).

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Upon reviewing Appellants’ Specification, we find that a conversation
logic is defined as specified operations that are to be invoked on a service, as
well as the conditions under which such operations are to be invoked. We
will, therefore, construe the cited expression consistent with the definition
provided in Appellants’ Specification.
As set forth in the Findings of Facts section, Acharya discloses a
service discovery proxy that selects the most suitable communications
protocol from among a plurality of protocols to forward an inquiry to an
identified service provider. (FF. 1a-1c.) We find that Acharya’s disclosure
of the communications protocol does not teach a conversation logic as
construed above. A communications protocol generally refers to a set of
rules or standards designed to enable computers to connect with one another
in order to exchange information with as little error as possible.3 While the
conversation logic can be construed as a set of rules, the general standards
encompassed by the communications protocol are not particularly concerned
with invoking services, let alone specifying when and under what conditions
such services should be invoked. Further, we agree with Appellants that
Acharya’s disclosure of selecting the most suitable communications protocol
is not based on a discovered service. Rather, it is based on the responses to
the multicast of discovery packets using the various protocols. While
Acharya teaches using a service inquiry to determine the protocol, we find
that such inquiry is not a discovered service. It is merely a request supplied
by a user to locate a service provider. We thus agree with Appellants that

3 Microsoft Press Computer Dictionary, 83 (2d ed. 1993).
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Acharya does not teach or suggest determining a conversation logic in a
conversation logic repository based on a discovered service. Additionally,
we also agree with Appellants that Coupal does not cure these noted
deficiencies of Acharya.
Because the proffered combination fails to teach at least one limitation
required by claim 1, we need not reach Appellants’ arguments regarding
other claimed limitations. It follows that Appellants have shown that the
Examiner erred in concluding that the combination of Acharya and Coupal
renders independent claim 1 unpatentable.
Since claims 2 through 26 also recite the limitations discussed above,
we find that Appellants have shown error in the Examiner’s rejection of
these claims for the same reasons set forth above.
VI. CONCLUSION OF LAW
Appellants have shown that the Examiner erred in rejecting claims 1
through 26 as set forth above.

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VII. DECISION
We reverse the Examiner’s decision to reject claims 1 through 26.

REVERSED

Ec/pgc

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