10180360 (B.P.A.I. Feb. 27, 2009)

Ex Parte Seshadri et al

Board of Patent Appeals and InterferencesFeb 27, 2009

10180360 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PRAVEEN SESHADRI, PHIL GARRETT, ROBERT F. BLANCH, SHYAMALAN PATHER, HOLLY KNIGHT, RICHARD DIEVENDORFF, and VINCENT H. CURLEY ____________ Appeal 2008-2854 Application 10/180,360 Technology Center 2100 ____________ Decided:1 February 27, 2009 ____________ Before ALLEN R. MACDONALD, JAY P. LUCAS, and ST JOHN COURTENAY III, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Data (electronic delivery). Appeal 2008-2854 Application 10/180,360 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-41, which are all of the claims remaining in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Invention Appellants’ invention relates generally to computer systems. More particularly, the present invention relates to implementing subscription applications. Representative Claim 1. A computer implemented notification system comprising the following computer executable components: a component executing on a computer that automatically creates at least one event database table, matching rule logic code, and one notification format of the notification system based on configuration data received as input from an application definition file, the application definition file containing at least event schema, one or more matching rules and one or more notification definitions; a database engine that processes received events and subscription information, the database engine modeling the events and subscriptions as data prior to processing so as to facilitate event and subscription processing; and a notification server that delivers notifications to subscribers in accordance with the processed events and subscription information. 2 Appeal 2008-2854 Application 10/180,360 Prior Art The Examiner relies on the following references: Bisdikian US 5,974,406 Oct. 26, 1999 (filed Aug. 18, 1997) Horvitz US 6,021,403 Feb. 1, 2000 (filed Jul. 19, 1996) Coble US 2002/0035482 Mar. 21, 2002 (filed Aug. 28, 2001) Alexander, III US 2002/0080938 A1 Jun. 27, 2002 (filed May 21, 2001) Yang US 6,466,949 B2 Oct. 15, 2002 (filed Nov. 23, 1998) Kuebert US 2002/0165729 A1 Nov. 7, 2002 (filed Oct. 15, 2001) Leymann US 6,826,560 B1 Nov. 30, 2004 (filed Jun. 30, 2000) Examiner’s Rejections I. Claims 1-5, 7-15, 17-23, 32, 33, and 37-41 stand rejected under 35 U.S.C. § 101. II. Claims 1-8, 10-19, 24-28, 32-39 and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leymann in view of Coble and Yang. III. Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bisdikian in view of Coble and Yang. IV. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Leymann in view of Coble, Yang, and Kuebert. V. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Leymann in view of Coble, Yang, and Alexander. 3 Appeal 2008-2854 Application 10/180,360 VI. Claims 29, 30, 31, and 40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leymann in view of Coble, Yang, and Horvitz. Claim Groupings Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims 1, 9, 20, 21, 29, and 34. See 37 C.F.R. § 41.37(c)(1)(vii). FINDINGS OF FACT In our analysis infra, we rely on the following findings of fact (FF) that are supported by a preponderance of the evidence: Coble 1. Coble discloses an Information Integration Engine Repository (“IIER”). The IIER provides persistent storage for publisher schema definitions. (Para. 0058) 2. Coble teaches subscription metadata mapping. The published information is mapped to an information set useful to the subscriber. (Para. 0043) 3. Coble further teaches that the scope of the subscription is limited by the established contract. (Para 0043) 4. Coble teaches an information schema that describes the information to be published. The information schema is transferred to the Information Integration Engine as the publication metadata. (Para 0042) 4 Appeal 2008-2854 Application 10/180,360 Yang 5. Yang teaches that the state change table is updated as described (1) Set up a configuration file for each application which points to an eventnotify table. (2) Create the eventnotify table on a database server. (Col. 4, ll 51-54). PRINCIPLES OF LAW “[T]he examiner bears the initial burden on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Therefore, we look to Appellants’ Briefs to show error in the proffered prima facie case. Only those arguments actually made by Appellants have been considered in this decision. Arguments which Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Statutory Subject Matter “A transitory, propagating signal is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). “If a claim 5 Appeal 2008-2854 Application 10/180,360 covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” Id. at 1354. Claim Interpretation The claims measure the invention. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution before the USPTO, claims are to be given their broadest reasonable interpretation, and the scope of a claim cannot be narrowed by reading disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). “Giving claims their broadest reasonable construction ‘serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified.’” In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” Zletz, 893 F.2d 519, 322 (Fed. Cir. 1989). “Construing claims broadly during prosecution is not unfair to the applicant . . . because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” American Academy, 367 F.3d at 1364. 6 Appeal 2008-2854 Application 10/180,360 Our reviewing court has repeatedly warned against confining the claims to specific embodiments described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc). “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed Cir. 2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994)). While the patent specification includes an embodiment showing the use of “a C++ class hierarchy derivation of the program logic,” . . . and uses terms characteristic of object-oriented programming in connection with that example, neither the written description nor the claims anywhere state or imply that the invention must use object-oriented programming in general, or C++ in particular. Without more, the use of an example that employs object-oriented programming is not sufficient to require that the claims be limited to embodiments using C++ or a similar programming language. Tivo, Inc. v. EchoStar Communications Corp., 516 F.3d 1290, 1307 (Fed. Cir. 2008). 7 Appeal 2008-2854 Application 10/180,360 Obviousness The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In rejecting claims under 35 U.S.C. § 103, “[w]hat matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 1740. What a reference teaches is a question of fact. In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992). The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). ANALYSIS Section 101 rejection of claims 1-5, 7-15, 17-23, 32, 33, and 37-41 The Examiner determined that claims 1-5, 7-15, 17-23, 32, 33 and 37- 41 recite a system that does not contain components defining the physical structure of the system and are considered software per se. (Ans. 3) Issue: Have Appellants shown that the Examiner erred in rejecting these claims under §101 as being software per se? 8 Appeal 2008-2854 Application 10/180,360 We note that independent claims 1, 21, 32, and 37 recite “a component executing on a computer” in the body of the claim. Thus, these claims require execution on a computer to “create” other limitations recited in the claim. Therefore, we conclude that independent claims 1, 21, 32 and 37, and the claims which depend from them, are not software per se. Based on the record before us, Appellants have shown that the Examiner erred in rejecting claims 1-5, 7-15, 17-23, 32, 33 and 37-41 . Accordingly, we reverse the Examiner’s rejection under 35 U.S.C. § 101 of claims 1-5, 7-15, 17-23, 32, 33 and 37-41. Section 103 rejection of claims 1-8, 10-19, 24-28, 32, 33, 37-39, and 41 Appellants contend that the cited references fail to teach or suggest the limitations of a single application file (hereinafter “ADF”) that includes all three of an event schema, one or more matching rules and one or more notification definitions that can be used to create an event schema, as required in claim 1. (App. Br. 10) The Examiner relied on Coble and Yang to cure the deficiencies of Layman. (Ans. 4-5). The Examiner determined that Coble teaches an ADF (information integration engine repository) an event schema, (extracted meta data), matching rules (publisher constraints) and notification definitions (logic for allowing a publisher to correctly exchange information with a subscriber.) (Ans. 5). 9 Appeal 2008-2854 Application 10/180,360 Issue: Have Appellants’ shown that the Examiner erred in determining that the cited references teach a single application file (hereinafter “ADF”) that includes all three of an event schema, one or more matching rules and one or more notification definitions that can be used to create an event schema? While we do not agree with the Examiner’s interpretation of claim 1 that only one of the three elements has to be included in the ADF, we note that Coble does teach an IIER that includes event schemas (FF 1), as well as separate matching rules (subscription metadata mapping) (FF 2) and separate notification definitions (information schema) which are actually sent to the IIER (FF 4). Thus, collectively we find that Coble teaches and/or suggests all of the elements that define the ADF as claimed in claim 1. Thus, while the cited references do not explicitly teach an ADF that includes each of an event schema, matching rule and notification definitions, we nevertheless find the differences between the cited references and the claimed invention are not such as to render the claimed invention unobvious over the cited references. Appellants further contend that the cited references, most notably Yang, fail to teach the limitation of creating an event table based upon the input of an application definition file. More specifically, Appellants contend that Yang does not indicate that the configuration is created before the event table. (App. Br. 10 and Reply Br, 3-4). We agree with the Examiner’s determination that the teachings of Yang strongly suggest that the confirmation is created before the event table. (FF 5). Thus, we do not find Appellants’ arguments to be persuasive. 10 Appeal 2008-2854 Application 10/180,360 Based on the record before us, we find that Appellants have not shown that the Examiner erred in determining that the cited references teach or suggests a single application file (hereinafter “ADF”) that includes all three of an event schema, one or more matching rules and one or more notification definitions that can be used to create an event schema, as recited in claim 1. Accordingly, we affirm the Examiner’s rejection of claims 1-8, 10-19, 24-28, 32, 33, 37-39, and 41. Claims 34-36 We next consider the Examiner’s rejection of claim 34 as being unpatentable over Leymann, Coble and Yang. Appellants’ arguments regarding the patentability of claims 34-36 are essentially the same as those discussed above for claim 1. (App. Br. 11) As discussed supra, we do not find Appellants’ arguments to be persuasive. (App. Br. 11) Therefore, we are not persuaded of error in the Examiner’s rejection of representative claim 34, and thus sustain the rejection of claims 34-36 under 35 U.S.C. § 103(a) as being unpatentable over Leymann, Coble and Yang. Claims 21-23 We next consider the Examiners’ rejection of claim 21 as being unpatentable over Bisdikian in view of Coble and Yang. Appellants essentially argue that Bisdikian fails to cure the deficiencies of Coble and Yang as discussed above regarding claim 1. (App. Br. 12). Thus, patentability of claim 21 is urged based upon Appellants’ arguments discussed above regarding claim 1, which we do not find to be persuasive. 11 Appeal 2008-2854 Application 10/180,360 Therefore, we are not persuaded of error in the Examiner’s rejection of representative claim 21, and thus sustain the rejection of claims 21-23 under 35 U.S.C. § 103(a) as being unpatentable over Bisdikian in view of Coble and Yang. Claim 9 We next consider the Examiner’s rejection of claim 9 as being unpatentable over Layman in view of Coble, Yang, and Kuebert. Appellants essentially argue that Kuebert fails to cure the deficiencies of Layman, Coble and Yang as discussed above regarding claim 1. (App. Br. 12). Thus, patentability of claim 9 is urged based upon Appellants’ arguments discussed above regarding claim 1, which we do not find to be persuasive. Therefore, we are not persuaded of error in the Examiner’s rejection of claim 9, and thus sustain the rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Layman in view of Coble, Yang and Kuebert. Claim 20 We next consider the Examiner’s rejection of claim 20 as being unpatentable over Layman in view of Coble, Yang, and Alexander III. Again, Appellants essentially argue that Alexander III fails to cure the deficiencies of Layman, Coble and Yang as discussed above regarding claim 1. (App. Br. 13). Thus, patentability of claim 20 is urged based upon Appellants’ arguments discussed above regarding claim 1, which we do not find to be persuasive. 12 Appeal 2008-2854 Application 10/180,360 Therefore, we are not persuaded of error in the Examiner’s rejection of claim 20, and thus sustain the rejection of claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Layman in view of Coble, Yang and Alexander III. Claims 29, 30, 31, and 40 We next consider the Examiner’s rejection of claim 29 as being unpatentable over Layman in view of Coble, Yang and Horvitz. Here again, Appellants essentially argue that Horvitz fails to cure the deficiencies of Layman, Coble and Yang as discussed supra regarding claims 1, 24, and 37. (App. Br. 14). Thus, patentability of claim 29 is urged based upon Appellants’ arguments discussed supra regarding claims 1, 24, and 37, which we do not find to be persuasive. Therefore, we are not persuaded of error in the Examiner’s rejection of representative claim 29, and thus sustain the rejection of claims 29, 30, 31, and 40 under 35 U.S.C. § 103(a) as being unpatentable over Layman in view of Coble, Yang and Horvitz. CONCLUSIONS OF LAW We conclude that Appellants have established that the Examiner erred in rejecting claims under 35 U.S.C. §101. We conclude that Appellants have not established that the Examiner erred in rejecting claims 1-41 under 35 U.S.C. § 103(a) for obviousness. Thus, claims 1-41 are not patentable over the prior art of record. 13 Appeal 2008-2854 Application 10/180,360 DECISION The Examiner’s rejection of claims 1-5, 7-15, 17-23, 32, 33, and 37- 41 under 35 U.S.C. § 101 is reversed. The Examiner’s rejections of claims 1-41 as being unpatentable under 35 U.S.C. § 103(a) are affirmed. Because we have sustained at least one rejection for each claim on appeal, we affirm the Examiner’s decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED pgc AMIN, TUROCY & CALVIN, LLP 127 Public Square 57th Floor, Key Tower CLEVELAND OH 44114 14