Ex Parte KULKARNI et al

Patent Trial and Appeal Board

Mar 16, 2016

12761998 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121761,998 04/16/2010
63675 7590 03/18/2016
PATTERSON & SHERIDAN, LLP/IBM SVL
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
FIRST NAMED INVENTOR
ASHISH A. KULKARNI
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.
IN920090143US 1 2429
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/18/2016 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):
P AIR_eofficeaction@pattersonsheridan.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHISH A. KULKARNI and VENKA TESH PATIL
Appeal2013-009978 1
Application 12/761,9982
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 1-7, 9-15, 17-23, and 25-27. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Feb. 25, 2013), the Examiner's Answer ("Ans.," mailed May 9, 2013), the
Final Action ("Final Act.," mailed Sept. 25, 2012), and the Specification
("Spec.," filed Apr. 16, 2010).
2 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Br. 3.
Appeal2013-009978
Application 12/761,998
STATEMENT OF THE CASE
The Appellants' invention "relate[s] generally to complex event
processing and more particularly to abstracting and realizing complex event
scenarios using dynamic rule creation." Spec. i-f 1.
Claims 1, 9, and 1 7 are the independent claims on appeal.
Independent claim 1 (Appeal Br. 29), reproduced below, is illustrative of the
subject matter on appeal:
1. A computer-implemented method of abstracting and
instantiating business scenarios defining derived events, the
method comprising:
receiving a selection of a business scenario template
having at least one configurable parameter which, when
configured, allows a corresponding business scenario to be
generated from the business scenario template, the business
scenario defining what constitutes an occurrence of an event
derived from a plurality of lower level events;
receiving input configuring the at least one configurable
parameter of the selected business scenario template;
generating the business scenario based on the received
input and the selected business scenario template and by
operation of one or more computer processors; and
upon detecting the occurrence of the derived event
defined by the business scenario, executing an action
responsive to the occurrence of the derived event.
REJECTIONS
Claims 1, 2, 4, 9, 10, 12, 17, 18, 20, 25, and 26 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bates (US 2008/0209078 Al,
pub. Aug. 28, 2008) in view of Alshab (US 2007/0168990 Al, pub. July 19,
2007). Ans. 6; Final Act. 6.
2
Appeal2013-009978
Application 12/761,998
Claims 3, 5-7, 11, 13-15, 19, 21-23, and 27 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bates, Alshab, and Chen
(US 7,457,728 B2, iss. Nov. 25, 2008). Ans. 15; Final Act. 15.
FINDINGS OF FACT
We determine that the findings of fact in the Analysis section below
are supported at least by a preponderance of the evidence. 3
ANALYSIS
Each of independent claims 1, 9, and 17 recites the limitation of
"receiving a selection of a business scenario template having at least one
configurable parameter which, when configured, allows a corresponding
business scenario to be generated from the business scenario template, the
business scenario defining what constitutes an occurrence of an event
derived from a plurality of lower-level events." Claims App.
The Examiner relies on Bates for disclosing the limitation. Final Act.
8. The Examiner finds that "a display is a generation of information
describing a scenario." Ans. 30-31. The Examiner further finds that, based
on the broadest, reasonable interpretation of "generating the business
scenario template," and of "scenario" as "a synopsis, outline, or overview of
an event or series of events," the limitation is met by "Bates' dashboard
generated from a generation module [that] utilizes data to present an
overview describing a business process, or a scenario." Id. at 31.
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).
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Appeal2013-009978
Application 12/761,998
We are persuaded by the Appellants' arguments that Bates does not
disclose the limitation of receiving a selection of a business scenario
template because Bates does not teach allowing generation of an event-based
process from the dashboard template, but rather only displays an existing
event-based process. See Appeal Br. 14. The ordinary and customary
meaning of "generate" is to bring or create something into existence by a
process. See Merriam-Webster Online Dictionary, http://www.merriam-
webster.com/ dictionary/ generate (retrieved Mar. 7, 2016). The
Specification defines a "business scenario template" as "an abstract,
parameterized business scenario" (Spec. i-f 28) and discusses "in generating a
business scenario instance 154, the application 150 may process all the
parameters of the business scenario template 152" (id. at i-f 30). Although
the Examiner finds that "a display is a generation of information describing
a scenario" (Ans. 30-31 ), it is not apparent to one of ordinary skill in the art
that a business scenario is created into existence by a process from Bates'
template, since the scenario already exists and has been identified. See
Bates i-fi-1 9, 71. Rather, Bates discloses generating a template from an
identified scenario. See id. Thus, we agree that Bates does not disclose the
limitation of receiving a selection of a template having a configurable
parameter, "which when configured, allows a corresponding business
scenario to be generated from the business scenario template," as claimed.
For the above reason, we do not sustain the Examiner's rejection of
independent claims 1, 9, and 17 under 35 U.S.C. § 103(a). We also do not
sustain the rejections of claims 2-7, 10-15, 18-23, and 25-27, each of
which ultimately depends from one of independent claims 1, 9, and 17. Cf
In re Fritch, 972 F.2d. 1260, 1266 (Fed. Cir. 1992) ("dependent claims are
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Appeal2013-009978
Application 12/761,998
nonobvious if the independent claims from which they depend are
nonobvious").
CONCLUSION
The Examiner's rejections of claims 1-7, 9-15, 17-23, and 25-27
under 35 U.S.C. § 103(a) are REVERSED.
REVERSED
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