Ex Parte Jensen et alDownload PDFPatent Trial and Appeal BoardJun 15, 201612962331 (P.T.A.B. Jun. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/962,331 12/07/2010 Claus T. Jensen 33558 7590 06/17/2016 INTERNATIONAL BUSINESS MACHINES CORPORATION Richard Lau IPLA W DEPARTMENT I Bldg 008-2 2455 SOUTH ROAD - MS P386 POUGHKEEPSIE, NY 12601 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. CONFIRMATION NO. POU920100184US1 1711 EXAMINER SANTOS-DIAZ, MARIA C ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 06/17/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): poiplaw2@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CLAUS T. JENSEN and ROBERT G. LAIRD Appeal 2014-003778 1 Application 12/962,331 2 Technology Center 3600 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed Sept. 30, 2013), the Reply Brief ("Reply Br.," filed Jan. 22, 2014), the Examiner's Answer ("Ans.," mailed Nov. 22, 2013), the Final Action ("Final Act.," mailed May 22, 2013), and the Specification ("Spec.," filed Dec. 7, 2010). 2 According to the Appellants, the real party in interest is International Business Machines Corporation. Appeal Br. 2. Appeal2014-003778 Application 12/962,331 STATEMENT OF THE CASE The Appellants' invention is directed to using documentation plans for Service Oriented Architecture ("SOA") governance. Spec.i-fi-f l, 2. Claims 1, 1 7, and 19 are the independent claims on appeal. Claim 1 is exemplary of the subject matter on appeal and is reproduced below: 1. A method for maintaining documentation policies in a service oriented architecture (SOA) governance tool, the method compnsmg: implementing a structured documentation plan in a SOA governance tool by using a computer processor, wherein the structured documentation plan includes a set of documentation types and a set of governance policies for at least one documentation type from the set of documentation types. Appeal Br. 14, Claims App. REJECTIONS Claims 1--4, 6-9, and 11-21 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Loewy (US 2004/0193703 Al, pub. Sept. 30, 2004). Claims 5 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Loewy and Brown (US 2010/0138254 Al, pub. June 3, 2010). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 3 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 2 Appeal2014-003778 Application 12/962,331 ANALYSIS Claims 1, 4, 7-9, and 11-21 The Examiner finds that Loewy discloses: a system for enabling conformance and governance for a distributed architecture to configure a policy that includes one or more interface document types, these document types being in conformance to the policy [and that] the set of policies that are applicable to documents of a plurality of types may be assigned to a project (i.e. documentation plan). Final Act. 2-3 (citing Loewy i-fi-16, 7, 15, 47). The Examiner further finds a policy is defined as "an overall plan embracing a goal," (Ans. 3) and, thus, Loewy's disclosure of policies that are application to documents meets the limitation of a documentation plan. Id. The Appellants contend that the Examiner's rejection of independent claims 1, 17, and 19 under 35 U.S.C. § 102(b) is in error because Loewy does not disclose "implementing a structured documentation plan" as required by the claims. See Appeal Br. 5-9; 11; see also Reply Br. 3-5. Specifically, the Appellants argue that neither Loewy' s discussion of policies applicable to documents, Loewy's "documentation of a policy", nor Loewy's assigning of policies to document types is a "documentation plan" as claimed, and that "[ o ]ne of ordinary skill in the art would not consider a documentation plan as equivalent to recording a policy." Appeal Br. 6-8; see also Reply Br. 3. According to the Appellants, a documentation plan "captures and enforces documentation policies and practices in order to standardize and optimize documentation in an effort to the benefit of the SOA Governance and the quality of services[, and] defines a documentation process .... 3 Appeal2014-003778 Application 12/962,331 In contrast, the Examiner finds that documentation of a policy is the process of recording a policy." Appeal Br. 7-8. The Appellants' arguments are not persuasive. The Specification does not specifically define a "documentation plan" as recited by the Appellants (id.), but rather that "[ e ]mbodiments of the present invention model, capture and enforce documentation policies and practices in a documentation plan." Spec. i-f 34. The Specification further describes, in discussing creating a documentation plan, that SOA Governance for documentation can provide policies on the following areas: [ w ]hat to document[,] [ w ]here to document[,] ... [i]n what format to document[,] ... [i]n what granularity to document[,] ... [i]n what structure to document[,] ... [h ]ow to incorporate existing, non-standard documentation[,] ... [ w ]ho is documenting which parts of the documentation[,] ... [h ]ow documentation is governed[,] ... [h ]ow documentation is maintained ... Spec. i-fi-1 106-116 (emphasis added). Claim 1 defines a structured documentation plan as including a set of documentation types and a set of governance policies. Claims App. During examination, "claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, limitations appearing in the specification, but not recited in the claim, will not be read into the claim. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005). Further, the test of whether a reference teaches a claim limitation is not whether the exact language is present. Instead, the relevant inquiry is whether the limitation is disclosed by Loewy's plan when 4 Appeal2014-003778 Application 12/962,331 the claim is given its broadest reasonable interpretation in light of the Specification. Cf In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (interpretation of references is not "an 'ipsissimis verb is' test," citing Akzo N. V. v. US. Int'! Trade Comm 'n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) ("[A] ... reference ... need not duplicate word for word what is in the claims."). The Appellants have thus not persuasively shown that the Examiner's finding that Loewy's plan including document types and governance policies meets the claimed limitations is in error. Furthermore, the Examiner's position that "any plan reads on the claimed documentation plan if it is applied to documents" (Reply Br. 3), is persuasive. The Appellants do not show how the implementation of a plan as recited would be performed any differently from implementation of Loewy's plan. Thus, we are not persuaded of error on the part of the Examiner in the rejection of independent claims 1, 17, and 19 as anticipated by Loewy, and we sustain the rejection. The Appellants provide no separate arguments for claims 4, 7-9, 11-16, 18, 20, and 21. Thus, we also sustain the rejection of those claims. Claim 2 The Appellants contend that the rejection of claim 2 under 35 U.S.C. § 102(b) is in error because Loewy' s "policy maker which can use a policy template generate a policy" does not disclose "a structured documentation plan that includes at least one documentation template," as required by the claim. Appeal Br. 9. We find this unpersuasive because the claim broadly recites that the plan include a documentation template; the claim does not 5 Appeal2014-003778 Application 12/962,331 require that the plan cannot include policy makers using policy templates, or any specific manner in which the plan must include the template. Thus, we are not persuaded of error on the part of the Examiner in the rejection of dependent claim 2. Claim 3 The Examiner finds, because the particular information is non- functional descriptive material that does not alter the step of using the template, the specific type of information does not patentably distinguish the claim over the prior art. See Ans. 4; see also Final Act. 3. The Appellants contend that the rejection of claim 3 is in error because Loewy does not disclose the template specifying particular information. See Appeal Br. 9--10. Specifically, the Appellants argue "the particular documentation information specified in claim 3 is directly connected to the structured document plan implementation and the implementation step of claim 1 is directly affected by the particular documentation information specified in claim 3." Id. at 10. We agree with the Examiner that specific type of information in the template is non-functional descriptive material that may not be relied upon for patentability. We note that non-functional descriptive material cannot render patentable an invention that is otherwise not patentable over the prior art. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms ofpatentability); and (BPAI 2008) (precedential) ("[T]he nature of the information being manipulated does not lend patentability to an otherwise unpatentable computer-implemented product or process."). Although we 6 Appeal2014-003778 Application 12/962,331 will not disregard any claim limitations and will assess the claimed invention as a whole, we will follow the Federal Circuit's guidance as in the Gulack decision and will not give patentable weight to printed matter absent a "new and unobvious functional relationship between the printed matter and the substrate." Id. at 1386; see also King Pharm. Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279-79 (Fed. Cir. 2010) (applying the "printed matter" reasoning to method claims containing an "informing" step that could be either printed or verbal instructions). In this case, the relevant question is whether the claimed particular information has a "new and unobvious functional relationship" with the method. There is no objective evidence of record that there is a functional relationship in the template specifying the recited particular information or instructions, as compared to any other information or no information. The Appellants argue that the information is connected to and directly affects the implementation of the plan (see Appeal Br. 10), but do not recite or show how the implementation of the plan changes or is affected by the particular information in the template. The function of implementing a plan including a template would be performed in the same manner regardless of the specific type of information contained in the template. As such, the specific type of template information constitutes non-functional descriptive that may not be relied upon for patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Concluding otherwise would result not only in Appellants' identified information distinguishing over the prior art, but equally would distinguish every other unique set of information. To give effect to Appellants' argument, we would need to ignore our reviewing court's concerns with 7 Appeal2014-003778 Application 12/962,331 repeated patenting. See King Pharm., 616 F.3d at 1279 ("The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations."). We decline to do so. Thus, we are not persuaded of error on the part of the Examiner in the rejection of dependent claim 3 as anticipated by Loewy, and we sustain the rejection. See Ex parte Mathias, 84 USPQ2d 1276, 1279 (BP AI 2005) (informative), ajfd 191 Fed. App'x 959 (Fed. Cir. 2006) (When a prior art reference describes each and every feature of a claimed [invention], except for the claimed non-functional descriptive material ... , it anticipates the claimed onscreen icon inasmuch as "the [non-functional] descriptive material will not distinguish the invention from the prior art in terms of patentability[. ]"). Claim 6 The Appellants contend the Examiner's rejection of claim 6 is in error because "[ c ]laim 6 requires that the governance policies [are] in the structured documentation plan, not in [Loewy's] 'System Repository,"' and because "there is no discussion of Policies 304 in Loewy being governance policies specifying persons responsible for implementing portions of the documentation plan." Appeal Br. 10, 11. The Appellants' arguments are unpersuasive. Claim 6 does not require that the governance policies must be in the plan, as opposed to a database, but, rather, that the plan includes defining a set of governance policies. Claims App. Further, the Examiner finds Loewy discloses the claim at i-fi-18, 55, 57, 92-95 and Figures 2, 3, 6-8. Final Act. 4. Although Loewy does not specifically use the term "governance," interpretation of 8 Appeal2014-003778 Application 12/962,331 references "is not an 'ipsissimis verbis' test," as noted above. Loewy discloses defining policy elements or conformance rules (Loewy i-fi-18, 92). Loewy further discloses, in discussing Figure 6, an authorization engine that enables management of user authorizations including functionalities and roles (id. i1 83) and assigning policies to a project that has authorization information defined as part of the users, privileges, and authorization (id. i195). Therefore, we find reasonable the Examiner's findings that Loewy discloses governance policies specifying persons responsible for implementing portions of the plan. Thus, we are not persuaded of error on the part of the Examiner in the rejection of claim 6, and we sustain the rejection. Claims 5 and 10 The Appellants contend the Examiner's rejection of claims 5 and 10 is in error because Brown is disqualified under 35 U.S.C. § 103(c) since Brown only qualifies under 35 U.S.C. § 102(e) and, like the present invention, was under an obligation of International Business Machine Corporation at the time of the invention. Appeal Br. 12. However, Brown qualifies as prior art under 35 U.S.C. § 102(a) since it was published on June 3, 2010, six months prior to the Appellants' filing date of December 7, 2010. 35 U.S.C. § 103(c) only disqualifies art owned by the same person or subject to an obligation to the same person if the art qualifies only under subsections ( e ), ( f), or (g) of§ 102. Thus, we are not persuaded of error on the part of the Examiner in the rejection of claims 5 and 10, and we sustain the rejection. 9 Appeal2014-003778 Application 12/962,331 DECISION The rejection of claims 1--4, 6-9, and 11-21under35 U.S.C. § 102 (b) is AFFIRMED. The rejection of claims 5 and 10 under 35 U.S.C. § 103(a) is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation