Ex Parte Liu et al

Patent Trial and Appeal Board

Sep 24, 2018

12277934 (P.T.A.B. Sep. 24, 2018)

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
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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.
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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.
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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
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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.
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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."
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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
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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
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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
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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
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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
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