Ex Parte Leming et al

Patent Trial and Appeal Board

Jul 22, 2016

13172708 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/172,708 06/29/2011
46320 7590 07/26/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Matthew W. Leming
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.
GB920110048US1 (739) 7799
EXAMINER
DO,STEVENM
ART UNIT PAPER NUMBER
2196
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW W. LEMING,
MARK R. PHILLIPS, and FENGLIAN XU
Appeal2014-009462
Application 13/172,708
Technology Center 2100
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants seek rehearing of the May 19, 2016 Decision on Appeal
(the "Decision"), wherein we affirmed (a) the rejection of claims 9-12 under
35 U.S.C. § 101 and (b) the rejection of claims 1-12 under 35 U.S.C.
§ 103(a) over combinations of Hite, Bendiksen, Harrison, and Goyal.
We have reconsidered the Decision in light of Appellants' Request for
Rehearing (the "Request") but are not persuaded any points were
misapprehended or overlooked. See 37 C.F.R. § 41.52.
Appeal2014-009462
Application 13/172,708
ANALYSIS
The Request asserts only that the Board overlooked Appellants'
argument "that Hite cannot account for the claimed 'service definition
document for each identified application instance using the related message
exchange data to describe computational services provided by the identified
application instance."' (Request 5.) We do not agree.
This issue was presented on pages 9-11 of the Appeal Brief, where
Appellants argued that "the meta-ontology according to Hite is associated
with a plurality ontologies and thus associated with a plurality applications,"
but "[i]n comparison, the claimed service definition document is associated
with one particular application instance and describes the computational
services provided by the particular application instance." (App. Br. 11.)
The Decision addressed this issue as Appellants' Contention 2,
observing that, in Hite, "[ e Jach ontology includes one or more ontology
elements, which represent one or more components of the application
including, e.g., input parameters, output parameters, and/or services (e.g., a
service, a class method, function call, etc.)" and that "Appellants have not
persuaded us that the ontology elements, which represent 'input parameters,
output parameters, and/ or services' do not describe functionality of the
application instance." (Decision 6.) Notably, the "functionality" language
was drawn from Appellants' argument. (See App. Br. 10 ("It is noted that an
ontology, which represents a concept within a domain, is not the same as a
service definition which describes functionality offered by a web service.").)
Even though we already evaluated this issue, we have considered it
again in response to the Request, but reach the same result. Although
Appellants argue that the "claim language ... is very specific in that the
2
Appeal2014-009462
Application 13/172,708
'service definition document for each identified application instance' must
'describe computational services provided by the identified application
instance'" (Request 5), Appellants fail now, as before, to explain why Rite's
ontology elements "which represent one or more components of the
application including, e.g., input parameters, output parameters, and/or
services (e.g., a service, a class method, function call, etc.)" (Hite i-f 10) do
not "describe computational services provided by the identified application
instance."
DECISION
We grant Appellants' request to reconsider our Decision, but deny
Appellants' request that the Decision be modified. Our decision is final for
purposes of judicial review. See 37 C.F.R. § 41.52(a)(l).
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).
DENIED
3