Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardSep 24, 201812277934 (P.T.A.B. Sep. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/277,934 11/25/2008 75949 7590 IBM CORPORATION C/0: Fabian Vancott 215 South State Street Suite 1200 Salt Lake City, UT 84111 09/26/2018 FIRST NAMED INVENTOR Xin Peng Liu 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. CN920070110US 1/40403-040 6920 EXAMINER CHOI, YUK TING ART UNIT PAPER NUMBER 2153 NOTIFICATION DATE DELIVERY MODE 09/26/2018 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): patents@fabianvancott.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIN PENG LIU, XI NING WANG, LIANG XUE, KE XIN ZHOU, and YU CHEN ZHOU Appeal2017-010966 Application No. 12/277,934 1 Technology Center 2100 Before JOHN A. JEFFERY, MARC S. HOFF, and ERIC B. CHEN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants' invention is a method for enforcing context model based policies with forward chaining and a policy engine, especially in a Service Oriented Architecture system. Spec. 2. The invention includes applying a policy set including a plurality of policies to an instantiated context model, 1 The real party in interest is International Business Machines Corporation. App. Br. 2 Appeal2017-010966 Application No. 12/277,934 which includes a set of referenced instance documents in XML formats. The method further includes determining whether the instantiated context model should be updated, and if so, executing an updating operation. Next, a new instantiated context model is generated according to the updated instance documents and the instantiated context model, and the policy set is applied to the new instantiated context model. Abstract. Claim 1 is exemplary of the claims on appeal: The Examiner relies upon the following prior art in rejecting the claim on appeal: 1. A method for enforcing a number of context model based policies with forward chaining, the method compnsmg: applying a policy set, including a plurality of policies each having a condition part and an action part, to an instantiated context model, in which the instantiated context model is derived by replacing each document in an abstract context model with a corresponding instance document, and in which the instantiated context model comprises a number of referenced instance documents; determining whether the instantiated context model should be updated in response to said determination indicating that the instantiated context model should be updated, executing an updating operation to produce updated instance documents; generating a new instantiated context model according to the updated instance documents; and applying the policy set to the new instantiated context model to facilitate communication among components in a Service Oriented Architecture. 2 Appeal2017-010966 Application No. 12/277,934 The Examiner relies upon the following prior art in rejecting the claims on appeal: Yoshimura Wang Graves Zondervan Vinberg Comstock US 2002/0169753 Al US 2005/0204054 Al US 2005/0234682 Al US 2006/0106879 Al US 2008/0059214 Al US 2008/0120685 Al Nov. 14, 2002 Sept. 15, 2005 Oct. 20, 2005 May 18, 2006 Mar. 6, 2008 May 22, 2008 Ricci et al. ("Ricci") "simpA-WS: A Simple Agent-Oriented Programming Model & Technology for Developing SOA & Web Services," IEEE, 1-16, (June 23, 2007). Claims 1--4, 6-10, and 21 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 5. Claims 1--4, 6, 10, and 21 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Vinberg and Ricci. Final Act. 9. Claims 11-14, 16, and 20 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Vinberg, Ricci, and Yoshimura. Final Act. 17-18. Claim 5 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Vinberg, Ricci, and Zondervan. Final Act. 13-14. Claim 15 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Vinberg, Ricci, Yoshimura, and Zondervan. Final Act. 23. Claims 7 and 9 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Vinberg, Ricci, and Graves. Final Act. 15. Claims 17 and 19 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Vinberg, Ricci, Yoshimura, and Graves. Final Act. 25. Claim 8 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Vinberg, Ricci, and Comstock. Final Act. 17. 3 Appeal2017-010966 Application No. 12/277,934 Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Vinberg, Ricci, Yoshimura, Graves, and Comstock. Final Act. 26. Throughout this Decision, we make reference to the Appeal Brief ("App. Br.," filed April 28, 2017), the Reply Brief ("Reply Br.," filed August 18, 2017), and the Examiner's Answer ("Ans.," mailed June 20, 2017) for their respective details. ISSUES Appellants' contentions present us with the following issues: 1. Do claims 1--4, 6-10, and 21 recite an abstract idea? If so, do the claims further recite an inventive concept sufficient to transform the claimed invention into a patent-eligible application? 2. Does the combination of Vinberg and Ricci disclose or suggest an instantiated context model derived by replacing each document in an abstract context model with a corresponding instance document? PRINCIPLES OF LAW Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Serv. v. Prometheus Lab., Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature, natural 4 Appeal2017-010966 Application No. 12/277,934 phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in that analysis is to determine whether the claims at issue are directed to one of those patent-ineligible concepts, such as an abstract idea. Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If the claims are not directed to a patent-ineligible concept, the inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017). Otherwise, the inquiry proceeds to the second step in which the elements of the claims are considered "individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of whether the claims are directed to a specific improvement in the capabilities of the computing devices, or, instead, "a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). We, therefore, decide under step two whether the claims: (a) set forth an inventive concept that provides a specific means or method that improves the relevant technology, or (b) are directed to a result or effect that itself is the abstract idea, in which the claims merely invoke generic processes and machinery. See Enfzsh, 822 F.3d at 1336. 5 Appeal2017-010966 Application No. 12/277,934 ANALYSIS SECTION 101 REJECTION OF CLAIMS 1--4, 6-10, AND 21 Appellants' invention is directed to improving System Oriented Architecture (SOA) policy enforcement with forward chaining. A policy set including a plurality of policies are applied to an instantiated context model which includes a set of referenced instance documents in XML format. The inventive method determines whether the instantiated context model should be updated; after an update operation, re-generates a new instantiated context model; and applies the policy set to the new instantiated context model. Spec. ,r 15. Appellants argue, inter alia, that the claims are not directed to an abstract idea because the focus of the claims is on a specific improvement in computer capabilities, rather than on a process that qualifies as an abstract idea for which computers are invoked merely as a tool. App. Br. 17-20; see Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Appellants cite paragraphs 13 and 32 of the Specification in support of their assertion of a specific improvement in computer capabilities. App. Br. 18. Paragraph 13 discloses that "the SML based engine is only for one-step validation of system configuration and report. SML utilizes Schematron as policy/rule expressions to validate its instance documents .... The SML specification extends the capability of validation reports to bring in structured output, but this extension only provides a standard output of elements or attributes, without further semantics. In addition, the Schematron based policies/rules applied to the SML model cannot update the SML model by itself. Therefore, those policies/rules cannot form a chain using the forward chaining mechanism." 6 Appeal2017-010966 Application No. 12/277,934 Paragraph 32 discloses that "a plurality of policies is applied to an instantiated context model which comprises a set of referenced instance documents in XML format. . . . In the instantiated model, each document in XML Schema Definition Language in the abstract context model for policy generation is replaced with the corresponding XML instance document conforming to the XML Schema definition. The abstract context model may become the instantiated context model on which the policy may be enforced by the replacement of the instance documents." We agree with Appellants that the focus of the invention is on a specific asserted improvement in computer capabilities, to wit, the enforcement of a System Oriented Architecture (SOA) context model based policies with forward chaining. App. Br. 18; Spec. ,r 1. The test expressed by the Enfzsh court is whether the focus of the claims is an improvement in computers as tools, or on certain independently abstract ideas that use computers as tools. Enfzsh, 822 F.3d at 1353, 1336. We find that the invention under appeal is concerned with an improvement in computers (here, the software system architecture) as tools, rather than the mere use of a computer as a tool. We find that the invention recited in claims 1--4, 6-10, and 21 is not directed to a patent-ineligible abstract idea. We conclude that the Examiner erred in rejecting claims 1--4, 6-10, and 21 under 35 U.S.C. § 101. We do not sustain the rejection. PRIOR ART REJECTION OF CLAIMS 1--4, 6, 10, AND 21 Appellants contend, inter alia, that the Board found in the previous Decision that Vinberg fails to disclose an instantiated context model that is derived by replacing each document in an abstract context model with a 7 Appeal2017-010966 Application No. 12/277,934 corresponding instance document. App. Br. 27-29. Further, Appellants argue that even if Vinberg can be read to replace a single document with a corresponding instance document, Vinberg does not disclose replacing each document in an abstract context model. App. Br. 28-29. Appellants further assert that Ricci also fails to disclose an instantiated context model that is derived by replacing each document in an abstract context model with a corresponding instance document. App. Br. 29-31. We agree with Appellants concerning Vinberg. In our previous Decision, we found that Vinberg failed to disclose that "'each document in an abstract context model' is replaced with 'a corresponding instance document."' Dec. 8. The Examiner finds that Ricci discloses applying a policy set to an instantiated context model by replacing each document in an abstract context model with a corresponding instance document. Final Act. 11. The Examiner cites Ricci's disclosure that agents "encapsulate the responsibility of the execution and control of the business activities that characterize the SOA specific scenario, while artifacts encapsulate the business resources and tools needed by agents to operate in the application domain." Ricci, p. 4. Ricci defines "encapsulation" as "the basic property for achieving service independency from the context: services encapsulate their logic, whose size and scope can vary, and can possibly encompass the logic provided by other services; in other words, one or more services can be composed into a collective service." Id. at 1. The Examiner provides no other support for the finding that "encapsulation" equates to replacing each document in an abstract context 8 Appeal2017-010966 Application No. 12/277,934 model with a corresponding instance document. No such meaning is apparent from the text of Ricci. The Examiner's Answer purports to respond to Appellants concerning this point, but fails to explain why encapsulation means replacement as claimed. Ans. 13-14. The Examiner further finds that "instantiation" in Ricci corresponds to the claimed replacement of each document in an abstract context model with a corresponding instance document. Final Act. 11-12. Ricci discloses that "an instance of thews-service-interface is usually first instantiated referring to a specific WSDL and possibly WS-Policy description, and then used (by one or more agents) to interact with a specific Web Service." Ricci p. 4. The Examiner states that in computer science, instantiation is "the creation of a real instance or particular realization of an abstraction or template. In other words, implementing the abstract interface artifacts of Ricci is taking an input/replacement/substitution of programming codes from a programmer or a URI document ... to create an instantiation or an executable concrete program with the operations/actions specified by the programming codes." Ans. 14. Taking the Examiner's definition of "instantiation" as correct, we nonetheless find that the Examiner has provided no support for the notion that "instantiation" refers to the replacement of documents, i.e., "each document in an abstract context model with a corresponding instance document" as the claims require. We find, therefore, that the combination of Vinberg and Ricci fails to disclose all the limitations of independent claims 1 and 21. We conclude that the Examiner erred in combining Vinberg and Ricci to achieve the 9 Appeal2017-010966 Application No. 12/277,934 invention recited in claims 1--4, 6, 10, and 21. We do not sustain the Examiner's§ 103(a) rejection. CLAIMS Claim 5 depends from claim 1, whose§ 103(a) rejection we do not sustain supra. We have reviewed Zondervan and we find that it does not remedy the deficiencies of Vinberg and Ricci. Therefore, we do not sustain the rejection of claim 5 over Vinberg, Ricci, and Zondervan, for the reasons given with respect to the rejection of claim 1, supra. CLAIMS 7-9 These claims depend from claim 1, whose§ 103(a) rejection we do not sustain supra. We have reviewed Graves and Comstock, and we find that neither reference remedies the deficiencies of Vinberg and Ricci. Therefore, we do not sustain the rejection of claims 7-9, for the reasons given with respect to the rejection of claim 1, supra. CLAIMS 11-14, 16, AND 20 The Examiner refers to the arguments made with respect to claim 1 to support the rejection of these claims. Ans. 17-18. Because we do not sustain the rejection of claim 1 supra, then, we do not sustain the Examiner's § 103(a) rejection of claims 11-14, 16, and 20 over Vinberg, Ricci, and Yoshimura, for the reasons expressed with respect to claim 1, supra. CLAIM 15 Claim 15 depends from claim 11, whose § 103 rejection we do not sustain supra. We have reviewed Zondervan and we find that it does not remedy the deficiencies of Vinberg, Ricci, and Yoshimura. Therefore, we do not sustain the rejection of claim 5 over Vinberg, Ricci, Yoshimura, and 10 Appeal2017-010966 Application No. 12/277,934 Zondervan, for the reasons given with respect to the rejection of claim 11, supra. CLAIMS 17-19 These claims depend from claim 11, whose § 103 rejection we do not sustain supra. We have reviewed Graves and Comstock, and we find that neither reference remedies the deficiencies of Vinberg, Ricci, and Yoshimura. Therefore, we do not sustain the rejection of claims 17-19, for the reasons given with respect to the rejection of claim 11, supra. CONCLUSIONS 1. Claims 1--4, 6-10, and 21 do not recite an abstract idea. 2. The combination of Vinberg and Ricci fails to disclose or suggest an instantiated context model derived by replacing each document in an abstract context model with a corresponding instance document. ORDER The Examiner's rejection of claims 1-21 is reversed. REVERSED 11 Copy with citationCopy as parenthetical citation