Ex Parte Ahmed et al

Patent Trial and Appeal Board

Feb 22, 2013

10668949 (P.T.A.B. Feb. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/668,949 09/23/2003 Osman Ahmed 2003P14526US 3299
7590 02/25/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
PHAM, HUNG Q
ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
02/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte OSMAN AHMED and PORNSAK SONGKAKUL
____________________

Appeal 2010-004577
Application 10/668,949
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, DEBRA K. STEVENS, and
JUSTIN BUSCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004577
Application 10/668,949

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-28. Claims 29-55 were cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
Exemplary Claim
Exemplary claims 1 and 15 under appeal read as follows (emphasis
added):
1. A system for a building system application comprising:
a database;
a data provider interface configured to convert database
instructions conforming to a common database access method to
database queries conforming to a database application
programming interface (API) and to convert database responses to
the common database access method; and
an application infrastructure, the infrastructure comprising:
a system design converter configured to convert application
definition data into computer statements that implement control logic
of application definition data;
a computer tool interface coupled to the system design
converter, the computer tool interface configured to provide the
system design converter with data from the database through the data
provider interface;
an external program module interface coupled to the system
design converter, the external program module interface configured to
provide the system design converter with external program modules;
and the system design converter being further configured to
include the data obtained through the computer tool interface and the
external program modules obtained through the external program
module interface with the computer statements that implement the
control logic of application definition data to generate a building
system application.
Appeal 2010-004577
Application 10/668,949

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15. A method for supporting a building system application
comprising:
storing data in a database;
converting application definition data into computer statements
that implement control logic of the application definition data;
converting database instructions conforming to a common
database access method in the computer statements to database
queries conforming to a database application programming interface
(API) coupled to the database to enable the instructions conforming to
the common database access method to access the database;
converting data responses from the database API to data
responses conforming to the common database access method;
obtaining external programs through an external program
module interface; and
generating building system applications by incorporating data
obtained from the data responses conforming to the common database
access method and the external program modules in the computer
statements that implement the control logic of the application
definition data.

Rejections on Appeal
The Examiner rejected claims 1, 2, 6-16, and 19-28 under 35 U.S.C.
§ 102(b) as being anticipated by Woolard (US 6,178,362 B1; Jan. 23, 2001).
The Examiner rejected claims 3 and 17 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Woolard and Gloudeman (US
6,141,595; Oct. 31, 2000).
The Examiner rejected claims 4, 5, and 18 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Woolard, Gloudeman, and
Rauer (US 6,161,103; Dec. 12, 2000).
The Examiner rejected claim 15 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Appeal 2010-004577
Application 10/668,949

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Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claims
1 and 15 under § 102(b) because Woolard fails to disclose “a data provider
that converts database instructions conforming to a common database access
method to database queries conforming to a database API.” (App. Br. 13).
2. Appellants also contend that the Examiner erred in rejecting
claim 15 under § 112, first paragraph, because “[t]he Examiner appears to
apply an in haec verba requirement for compliance with section 112, first
paragraph, although such a requirement is not appropriate.” (App. Br. 11).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
As to above contention 1, we agree with Appellants for the reasons set
forth by Appellants at pages 12-15 of the Appeal Brief.
As to above contention 2, we adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner.
We note that this ground of rejection is applicable to claims 16-28
which depend from claim 15. We make that new ground of rejection now.
Lastly, we further note that this rejection is readily overcome by
cancelling the unsupported “in the computer statements” clause from
claim 15.
Appeal 2010-004577
Application 10/668,949

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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 2, 6-16, and 19-28 as being anticipated under 35 U.S.C. § 102(b).
(2) Appellants have established that the Examiner erred in rejecting
claims 3-5, 17, and 18 as being unpatentable under 35 U.S.C. § 103(a).
(3) The Examiner has not erred in rejecting claim 15 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
(4) We reject claims 16-28 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
(5) Claims 15-28 are not patentable.

DECISION
The Examiner’s rejections under 35 U.S.C. §§ 102 and 103 of claims
1-28 are reversed.
The Examiner’s rejection under § 112, first paragraph, of claim 15 is
affirmed.
We reject claims 16-28 under § 112, first paragraph.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

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