Ex Parte Bennett et al

Board of Patent Appeals and Interferences

Jul 16, 2012

10906524 (B.P.A.I. Jul. 16, 2012)

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.
10/906,524 02/23/2005 Jonathan D. Bennett CA920040046US1 (010) 3524
46320 7590 07/16/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
BROPHY, MATTHEW J
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
07/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONATHAN D. BENNETT,
MALIK S. HEMANI, and
WILLIAM G. O’FARRELL
____________

Appeal 2009-011971
Application 10/906,5241
Technology Center 2100
____________

Before ST JOHN COURTENAY, III, CAROLYN D. THOMAS, and,
JAMES R. HUGHES, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines.
Appeal 2009-011971
Application 10/906,524

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-21, which are all the claims pending. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The present invention relates generally to test environments for
business execution language (BPEL) programs. See Spec., 1: [Para 1].
1. A business process execution language (BPEL) program
simulator comprising:
a document object modeler configured to arrange
activities defined by a BPEL document into a document object
model (DOM) tree, said DOM tree comprising activity nodes
and links between said activity nodes; and,
simulation logic configured to process said activity nodes
to emulate for each at least one BPEL activity.

Appellants appeal the following rejections:

1. Claims 1-6 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter;
2. Claims 1, 3, 4, 7, 8, 13, 14, 15, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Phillips (US Patent Pub. No:
2006/0095274 A1, May 4, 2006) and Reichenthal (US Patent Pub. No.
2003/0028863 A1, Feb. 6, 2003);
3. Claims 2, 5, 12, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Phillips, Reichenthal, and Jolley (US Patent Pub.
No. 2006/0069920 A1, Mar. 30, 2006); and
4. Claims 6, 9-11, 16-18, and 21 are rejected under 35 U.S.C.
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Application 10/906,524

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§ 103(a) as being unpatentable over Phillips, Reichenthal, and IBM
Technical Disclosure Bulletin, "Improved Dead-Path-Elimination for
Business Processes", (December 24, 2003) (IBM TDB).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Rejection under 35 U.S.C. §101
Claims 1-6

Issue 1: Did the Examiner err in concluding that the claims cover
non-statutory subject matter?

Appellants contend that “[p]aragraphs [0052] and [0053] of
Appellants’ specification are quite direct in indicting that the BPEL
simulator is embedded in a computer program product.” (App. Br. 6.)
The Examiner found that “[r]egarding Claims 1-6 the ‘program
simulator’ of these claims is interpreted to be achieved by computer software
per se.” (Ans. 3.) We agree with the Examiner.

For instance, Appellants’ Specification states that “[t]he present
invention can be realized in hardware, software, or a combination of
hardware and software.” (Spec., 10: [Para 51].) In other words, Appellants’
claims cover both statutory and non-statutory embodiments, as software per
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Application 10/906,524

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se is non-statutory. Specifically, a claim that recites no more than software,
logic, or a data structure (i.e., an abstraction) does not fall within any
statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994).
Significantly, “[a]bstract software code is an idea without physical
embodiment.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
“If a claim 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.” In re Nuijten, 500 F.3d 1346,
1354 (Fed. Cir. 2007).
While we agree that the claimed simulator can be embedded in a
computer program product (see Spec., 10: [Para 52]), claim 1 is written far
more broadly as claim 1 fails to recite embedding the simulator in a
computer program product. “In the patentability context, claims are to be
given their broadest reasonable interpretations. . . . [L]imitations are not to
be read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citations omitted). Here, we shall not read into
the claims a computer program product.
Therefore, we find no error in the Examiner’s §101 rejection of
representative claim 1, essentially for the reasons indicated by the Examiner.

Rejection under 35 U.S.C. §103(a) over Phillips and Reichenthal
Claims 1, 3, 4, 7, 8, 13, 14, 15, and 20

Issue 2: Did the Examiner err in finding that the combined teachings
of Phillips and Reichenthal teaches and/or suggests emulating selected
BPEL activities for activity nodes defined in said DOM tree, as claimed in
claim 7?
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Appellants contend that the “Examiner fails to establish that the
combination of Reichenthal and Phillips teach the emulation of selected
BPEL activities for activity nodes that have been defined in the DOM tree.”
(App. Br. 9.) Appellants further contend that the “Examiner only asserts that
Reichenthal teaches the simulation of nodes (and not activity nodes) . . . and
Phillips only teaches the generation of a DOM tree for a BPEL document.
Missing from Examiner’s analysis is an accounting for the emulation of
SELECTED BPEL activities that correspond to activity nodes defined in a
DOM tree.” (Reply Br. 5-6.)
The Examiner found that “while the secondary reference Reichenthal
may not teach that the nodes are ‘activity nodes’ this is anticipated by the
Phillips reference. Phillips teaches that the BPEL document has activities,
which are parsed into DOM nodes representing those activities for execution
via ‘executable EOMs.’” (Ans. 16.)
While we agree with the Examiner that Phillips discloses BPEL
activities and producing a document object model (DOM) from a BPEL
document (see Phillips, 10: ¶ [0107]), and producing Cprocess executable
object models (EOMs) (see Phillips, 10: ¶ [0108]), the Examiner has failed
to establish how Phillips’ generation of a Cprocess EOM is related to
emulating selected BPEL activities for activities nodes. Rather, “[t]he
Cprocess is a single, unique instance of an executable process that can be
executed within/on the execution engine/virtual processor” (see Phillips, 10:
¶ [0108]). Although Reichenthal discloses general simulation techniques
(see Reichenthal, 2: ¶ [0022]), as conceded by the Examiner, Reichenthal
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fails to specifically disclose simulating by emulating selected BPEL
activities for activities nodes (see Ans. 16).
We are particularly troubled by the chain of causation that is split
between the two references in the Examiner’s proffered combination of
Phillips and Reichenthal, as neither proffered reference teaches nor suggests
simulating by emulating activity nodes. We are therefore constrained by the
record before us to find that the Examiner erred in rejecting independent
claim 7 and claims 1-6 and 8-21 for similar reasons. Since this issue is
dispositive regarding our reversal of independent claims 1, 7, and 14, we
need not address Appellants’ separate arguments regarding these claims
(App. Br. 9-12).
In view of the above discussion, since Appellants have demonstrated
that the Examiner erred in finding the argued limitations in the disclosures of
the cited art, the Examiner’s 35 U.S.C. § 103(a) rejections of claims 1-21 are
reversed.
DECISION
We affirm the Examiner’s § 101 rejection of claims 1-6.
We reverse the Examiner’s § 103 rejections of claims 1-21.
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-IN-PART

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