Ex Parte HarrisDownload PDFPatent Trial and Appeal BoardMar 14, 201310531246 (P.T.A.B. Mar. 14, 2013) 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. 10/531,246 04/14/2005 Robert Harris GB920020050US1 6488 46320 7590 03/15/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 EXAMINER ARAQUE JR, GERARDO ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 03/15/2013 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 ROBERT HARRIS ____________________ Appeal 2010-009673 Application 10/531,246 Technology Center 3600 ____________________ Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009673 Application 10/531,246 2 STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 13, and 20-37. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We affirm-in-part. BACKGROUND Appellant’s invention is directed to a method and system for ranking services in a web services architecture (Spec. 1:3-4). Claim 1 is illustrative: 1. A method for ranking services in a web services computer hardware architecture having a hierarchy of services with a root originating service requestor, a service of a first level in the hierarchy calling a service of a lower level, the method comprising: indicating a preference regarding at least one service and a ranking machine having a choice algorithm based on the preference; invoking services of at least one level of hierarchy; finding a set of possible lower-level services, by a service, using a directory at each level of the hierarchy; applying the choice algorithm to the set of possible lower-level services. Appellant appeals the following rejections: Claims 1, 13, 21-27, and 31 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appeal 2010-009673 Application 10/531,246 3 Claim 1, 13, and 21-37 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1, 131, and 21-31 are rejected under 35 U.S.C. § 101 as claiming ineligible subject matter. Claims 1, 13, and 20-372 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mendelevitch (US 2003/0130993 A1, pub. Jul. 10, 2003). FACTUAL FINDINGS We find the following facts by a preponderance of the evidence. 1. Mendelevitch discloses a method “for classifying documents to one or more topics.” Para. [0013]. 2. Mendelevitch discloses “classifying documents to one or more topics.” Para. [0013]. 3. Mendelevitch discloses its classification algorithm acts “to associate each document with none, one or a plurality of the topics ...” and also “associating the document with a first list ....” Para. [0013]. 4. Claim 13 of Mendelevitch discloses “topics are arranged in a user- configurable hierarchy structure, including parent, child and sibling topic nodes.” 1 Claims 32-37 that depend from claim 13 were not rejected under 35 U.S.C. § 101, but the reason is not disclosed. Ans. 9-10. 2 We take as inadvertent error the statement of rejection that omits claims 21-37 because these claims are specifically addressed in the analysis at pages 10-16 of the Answer. Appeal 2010-009673 Application 10/531,246 4 ANALYSIS Written Description Rejection We are persuaded of error by Appellant’s argument that support for amended claim language of “computer hardware” and “database”3 is found in the discussion of network and web services architecture, and a directory for finding services, in the Specification. App. Br. 5-7, Rep. Br. 2-5. We agree that one of ordinary skill in the art would recognize the Appellant had possession of an invention involving computer hardware and a database at the time of filing, because computer hardware is necessary to implement the web services described in the Specification, and a database is a broad term that encompasses that of the claimed “directory.” The function of the description requirement is to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him. In re Edwards, 568 F.2d 1349, 1351 (CCPA 1978). The invention claimed does not have to be described in ipsis verbis in order to satisfy the description requirement of § 112. In re Lukach, 442 F.2d 967, 968 (CCPA 1971). Therefore, we reverse the rejection under 35 U.S.C. § 112, first paragraph, of claims 1 and 13, as well as claims 21-27 that depend from claim 1. We are also persuaded of error by Appellant’s argument that support for amended claim 31 is found in the substantially identical language of original claim 12. App. Br. 7. Original claim 12 is part of the original disclosure, and thus provides support for the current claim 31. Therefore, we reverse the rejection under 35 U.S.C. § 112, first paragraph, of claim 31. 3 These limitations were added May 12, 2009 to claims 1 and 13 after the non-final action of February 12, 2009. Appeal 2010-009673 Application 10/531,246 5 Indefiniteness Rejection We are persuaded of error by Appellant’s argument that there is no omitted step of ranking services, because the ranking is recited in claims 1 and 13 as “applying[/applies] the choice algorithm.” App. Br. 8. We agree that applying the choice algorithm is merely a different way of reciting a step of ranking. For this reason, we reverse the rejection under 35 U.S.C. § 112, second paragraph, of claims 1 and 13, as well as claims 21-28 that depend from claim 1 and claims 32-37 that depend from claim 13. We are persuaded of error by Appellant’s argument that the selection referred to in claim 29 was made by “applying the choice algorithm” in claim 1. Rep. Br. 5. One of ordinary skill would recognize that “applying a choice algorithm” is making a selection. We therefore agree that claim 29 is not indefinite, and we reverse the rejection under 35 U.S.C. § 112, second paragraph, of claim 29. We are persuaded of error by Appellant’s argument that “the preferred service” of claim 30 relies for antecedent basis in the portion of claim 1 that recites “indicating a preference regarding at least one service.” App. Br. 9. We agree that one of ordinary skill would recognize these two sections of claim language are referring to the same concept, so we reverse the rejection under 35 U.S.C. § 112, second paragraph, of claim 30. We are not persuaded of error by Appellant’s argument that the “stored preference” of claim 31 was stored “prior to the step [recited in claim 31].” App. Br. 9-10. There is no step to store a preference in claim 1 or 31, so it is not clear whether the preference of claim 1 is stored, or whether any other preference that was stored would meet this claim requirement. Claim 31 appears to refer to a specific stored preference, but Appeal 2010-009673 Application 10/531,246 6 since it is not possible to determine what particular preference was stored, the ordinary artisan would not be able to determine the bounds of the claim without the appropriate precedent language. For this reason, we affirm the rejection the rejection under 35 U.S.C. § 112, second paragraph, of claim 31. Eligible Subject Matter We are persuaded of error by Appellant’s argument that method claims 1 and 21-31 recite eligible subject matter, because “putting into operation a software system necessarily requires the use of a machine.” App. Br. 10-13, Rep. Br. 9. We construe the “services” of claim 1 to refer to “web services” in the preamble, which are a particular assortment of software services performed in a network of computer systems in a web architecture implementation. The Supreme Court has held that the “machine-or-transformation may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form… [but,] it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test.” Bilski v. Kappos, 130 S. Ct. 3218, 3227, 3231 (2010). Maintaining only that the test is an “important clue” or “an investigative tool,” the Court instead reasoned that claims that explained the basic concept of an activity (hedging) would allow the Appellant to pre-empt the use of this approach in all fields, and would effectively grant a monopoly over an abstract idea. Id. Claim 1 requires “invoking” these services, which therefore necessarily requires a computer specially programmed to perform those services. Since the claim is tied to a particular machine, it does not involve purely mental ideas, nor does it pre-empt the approach in all fields. For this Appeal 2010-009673 Application 10/531,246 7 reason we find claims 1 and 21-31 recite patent-eligible subject matter, and we reverse their rejection under 35 U.S.C. § 101. We summarily affirm the rejection of claim 13 under 35 U.S.C. § 101 as reciting ineligible subject matter, because the Appellant did not respond to the Examiner’s rejection. Ans. 9-10. In addition, we find a description of an architecture represents abstract mental ideas, which do not describe eligible subject matter. Also, even if the claim recites software components, such as “a ranking machine,” the claim would recite only software per se. Obviousness of claims 1 and 20-31 We are persuaded of error by Appellant’s argument that Mendelevitch does not disclose the claimed “invoking services” of claims 1 and 20, because Mendelevitch “is directed to categorizing incoming documents into topics.” App. Br. 15, Rep. Br. 17. The Examiner admits Mendelevitch does not disclose “invoking services” (Ans. 12), but then reasons an abstraction involving “substitution of the documents, as taught by Mendelevitch, with the specific type of documents (data) describing services.” Ans. 14. The Examiner is apparently concluding that since services can be described, they are analogous to documents. However, “invoking services” in method claim 1, and medium claim 20 that causes a computer to act, is not data. Instead, “invoking services” is a required method step that the Examiner has not established is disclosed in, or obvious in light of, Mendelevitch. The Examiner argues “invoking documents” is the same as “invoking services.” Ans. 26-27. We find it unreasonable to substitute the claimed “services” with Mendelevitch’s documents (FF 1), because a document is merely printed matter, but a service is a required function to be performed. The Examiner has not set forth a prima facie case of obviousness, because the Appeal 2010-009673 Application 10/531,246 8 claimed invention of claims 1 and 20 also requires “invoking services” that is not appropriately addressed. For these reasons, we reverse the rejection under 35 U.S.C. § 103(a) of claims 1 and 20, as well as dependent claims 21-31. Obviousness of claims 13 and 32-37 Claim 13 recites an architecture which comprises a “requestor,” a “database” and “directory [that] provides a set of possible services,” and “[a] ranking machine [that] applies [a] choice algorithm to provide a sequence of preferred services.” The claim recites a ranking machine to apply a choice algorithm to information in the database to “provide a sequence of … services.” We are persuaded of error by the Appellant’s argument that Mendelevitch does not disclose a directory for finding services at each level in the hierarchy. App. Br. 16-17. This appears in claim 13 as “a directory for finding services in the hierarchy” and “the directory provid[ing] a set of possible services” to the ranking machine. The Examiner cites to paragraph [0013] and claim 13 of Mendelevitch as disclosing these (Ans. 11), stating “Mendelevitch discloses that the information is organized into a multi-level hierarchy directory and that the information can be found using this directory” (Ans. 25). Paragraph [0013] of Mendelevitch discloses that documents are “classified to” or “associated with” topics and also associated with a list. FF 2, 3. Mendelevitch’s claim 13 recites that topics are “arranged in a user- configurable hierarchy.” FF 4. The Examiner thus appears to associate the claimed “services” with the “topics” of Mendelevitch. Therefore, if Mendelevitch meets the claim language, it would disclose that “at each level Appeal 2010-009673 Application 10/531,246 9 of the [topic] hierarchy,” the “database,” which “stor[es] a hierarchy of [topics],” is used by the directory to “provide[] a set of possible [topics]” so that the ranking machine may “provide a sequence of [topics].” However, Mendelevitch does not provide a “sequence” of topics, instead Mendelevitch only associates documents with topics and lists (FF 2, 3). Therefore, we find the Examiner has failed to set forth a prima facie case of obviousness as to claim 13. For this reason, we reverse the rejection under 35 U.S.C. § 103(a) of claim 13 and dependent claims 32-37. DECISION We reverse the rejection under 35 U.S.C. § 112, first paragraph, of claims 1, 13, 21-27, and 31. We reverse the rejection under 35 U.S.C. § 112, second paragraph, of claims 1, 13, 21-30, and 32-37. We affirm the rejection under 35 U.S.C. § 112, second paragraph, of claim 31. We reverse the rejection under 35 U.S.C. § 101 of claims 1 and 21-31. We affirm the rejection under 35 U.S.C. § 101 of claim 13. We reverse the rejections under 35 U.S.C. § 103(a) of claims 1, 13, and 20-37. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART hh Copy with citationCopy as parenthetical citation