Ex Parte Bernelas et alDownload PDFPatent Trial and Appeal BoardSep 22, 201613430217 (P.T.A.B. Sep. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/430,217 03/26/2012 75949 7590 IBM CORPORATION C/O: Fabian Vancott 215 South State Street Suite 1200 Salt Lake City, UT 84111 09/26/2016 FIRST NAMED INVENTOR Jean Michel Bernelas 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. RSW920110039US2 1004 EXAMINER JEON, JAE UK ART UNIT PAPER NUMBER 2193 NOTIFICATION DATE DELIVERY MODE 09/26/2016 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 JEAN MICHEL BERNELAS, SYLVAIN DEHORS, CYRIL MATHEY, and STEPHANE MERY Appeal2015-006963 Application 13/430,217 1 Technology Center 2100 Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1 and 6-20. Appellants have previously canceled claims 2-5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is International Business Machines Corp. App. Br. 2. Appeal2015-006963 Application 13/430,217 STATEMENT OF THE CASE2 The Invention Appellants' claimed invention relates to "methods and systems for intuitively designing a domain specific language." Spec. if 2. Exemplary Claim Claim 10, reproduced below, is representative of the subject matter on appeal (emphasis added to contested limitation): 10. A method for domain specific language design, the method comprising: with a physical computing system, receiving from a user, a number of annotations for at least one of a set of statements within a problem domain, said annotations identifying a set of elements within said statement; with said physical computing system, forming a set of grammar rules for said problem domain based on said annotations; \~\rith said physical computing system, parsing said set of statements using said set of grammar rules; with said physical computing system, identifying statements that were not completely parsed by said physical computing system due to parsing errors while using said grammar rules; with said physical computing system, presenting said statements that were not completely parsed due to parsing errors while using said grammar rules to said user for manual annotation, in which said physical computing system indicates portions of said statements that were not parsed; 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Jan. 29, 2015 ); Reply Brief ("Reply Br.," filed July 20, 2015 ); Examiner's Answer ("Ans.," mailed May 22, 2015 ); Final Office Action ("Final Act.," mailed Oct. 2, 2014 ); and the original Specification ("Spec.," filed Mar. 26, 2012 ). 2 Appeal2015-006963 Application 13/430,217 with said computing system, receiving at least one additional annotation from said user in response to presentation of said statements that were not completely parsed to said user; and with said computing system: updating said set of grammar rules according to said at least one additional annotation received from said user; and using said updated set of grammar rules to re-parse said set of statements; in which said annotations comprise an identifier to denote a specific type of element is variable. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Grant us 4,689,737 Aug. 25, 1987 Haigh et al. ("Haigh") US 2003/0004716 Al Jan. 2,2003 Thames et al. ("Thames") US 2003/0145310 Al July 31, 2003 Acero et al. ("Acero") US 2003/0212544 Al Nov. 13, 2003 Sprecher et al. ("Sprecher") US 2009/0254337 Al Oct. 8, 2009 Heath US 2010/0037149 Al Feb. 11, 2010 Cams US 2010/0293451 Al Nov. 18, 2010 Li et al. ("Li") US 2011/0029857 Al Feb. 3, 2011 Berne las et al. ("Bemelas ") US 2013/0031529 Al Jan. 31, 2013 Wright et al. ("Wright") US 8,966,398 B2 Feb.24,2015 Horowitz WO 02/089113 Al Nov. 7, 2002 3 Appeal2015-006963 Application 13/430,217 Rejections on Appeal RI. Claims 1 and 6-12 stand rejected under the judicially-created doctrine of nonstatutory obviousness-type double patenting (OTDP) over claims 10, 15-18, and 29-30 of co-pending Application No. 13/284,715.3 Ans. 4--12. R2. Claim 1 stands rejected under the judicially-created doctrine of nonstatutory obviousness-type double patenting (OTDP) over claim 10 of U.S. Patent No. 13/284,715 in view of Acero. Ans. 12-16. R3. Claim 1 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Acero, Li, and Thames. Ans. 16-21. R4. Claims 6-8 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable the combination of Acero, Li, Thames, and Sprecher. Ans. 21-24. R5. Claims 9 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Acero; Li; Thames; Sprecher; and Horowitz. Ans. 24--27. R6. Claims 12, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Acero, Li, Sprecher, Horowitz, Grant, and Thames. Ans. 27-36. R7. Claims 13, 14, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Acero, Li, Sprecher, Horowitz, Grant, Thames, and Cams. Ans. 36-39. 3 Regarding co-pending Application No. 13/284,715, see PTAB Appeal 2015---0063 81, decided September 20, 2016, Examiner affirmed. See also App. Br. 3 ("There are no appeals or interferences related to the present application of which the Appellant is aware."). 4 Appeal2015-006963 Application I3/430,2 I 7 R8. Claim I5 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Acero, Li, Sprecher, Horowitz, Grant, Thames, and Wright. Ans. 39--40. R9. Claim I6 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Acero, Li, Sprecher, Horowitz, Grant, Thames, Wright, and Heath. Ans. 40--4 I. RIO. Claim 20 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Cams, Acero, Li, Heath, Haigh, and Thames. Ans. 4I-50. CLAIM GROUPING Based on Appellants' arguments (App. Br. I5-22), we decide the appeal of Rejection R6 of claims I2, I 7, and I9 on the basis of representative independent claim I2. See 37 C.F.R. § 41.37(c)(l)(iv). We decide the appeal of Rejection R3 of separately argued independent claim I, infra. We decide the appeal of Rejection RIO of separately argued independent claim 20, infra. We address rejections R4, R5, R7, R8, and R9 of claims 6-11, I3-I6, and I8, not separately argued, infra. ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments which Appellants could have made but chose not to make in the Briefs so that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(vii). 1. OTDP Rejections RI and R2 of Claims I and 6-I2 5 Appeal2015-006963 Application I3/430,2 I 7 Issue 1 (a) Did the Examiner err in provisionally rejecting claims I and 6-I2 under the doctrine of OTDP rejection over claims IO, I5-I8, 29, and 30 of the co-pending '7I5 application? Issue 1 (b) Did the Examiner err in provisionally rejecting claim I under the doctrine of OTDP rejection over claim I 0 of the co-pending '7 I 5 application in view of Acero? Analysis Appellants state "Without addressing the merits of this rejection, Applicant requests that this rejection be held in abeyance until the claims are otherwise in condition for allowance." App. Br. I 4. Appellants do not contest Rejection RI, and we note arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).4 Therefore, we proforma sustain the Examiner's provisional OTDP rejection RI of claims I and 6-I2, and provisional OTDP rejection R2 of claim I. 2. § I03(a) Rejection R3 of Claim I Issue 2 Appellants argue (App. Br. I 6-I 7) the Examiner's rejection of claim I under 35 U.S.C. § I03(a) as being obvious over the combination of Acero, 4 See Hyatt v. Dudas, 55I F.3d I307, I3 I4 (Fed. Cir. 2008) ("When the appellant fails to contest a ground of rejection to the Board, section 1.I92(c)(7) [(now section 41.37(c)(l)(iv))] imposes no burden on the Board to consider the merits of that ground of rejection .... [T]he Board may treat any argument with respect to that ground of rejection as waived."). 6 Appeal2015-006963 Application 13/430,217 Li, and Thames is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a system that includes, inter alia, "an identifier to denote a specific type of element is variable," as recited in claim 1? Analysis Appellants contend: This term "variable" as used by Thames is not the same as an "annotation[] compris[ing] an identifier to denote a specific type of element is variable." (Claim 1) (emphasis added). Instead, the term "variable" as used in Thames is a noun as in "an alphabetic character representing a number." (http://en.wikipedia.org/wiki/Variable (mathematics)). The term "variable" as used in claim 1 is an adjective defined as "apt or liable to vary or change; changeable." (http://dictionary. reference.com/browse/variable? s=t). App. Br. 16. Appellants further contend: It is clear, therefore, that the variability of an element within a statement is not described in Thames. Instead, Thames merely describes a letter used to describe a number. This variable is not capable of being changed; the change of a variable within a function rendering the invention in Thames unsatisfactory for its intended purpose. App. Br. 16-17. Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 7 Appeal2015-006963 Application 13/430,217 The Examiner broadly but reasonably interprets the claim limitation "variable" in light of the specification (Ans. 54, Spec. i-fi-147, 59) as meaning "of variation, varietv or various tvpe." We agree with the Examiner's finding that this recited limitation "type of element is variable" broadly but reasonably reads on Thames's variable EPS. Ans. 55-56, Thames Fig. 49, i1616. \Ve note Appellants have not cited to a definition of "variable" in the Specification that would preclude the Examiner's broader reading. 5 Appellants themselves admit "[a]ny text in any computer code may be variable" and "Thames describes cmnputer code that implements fonctions and variables of a function within the cmnputer code itself." Reply Br. 7. Vve are not persuaded by Appellants' arguments because Appellants do not address, in their Briefs, the Exarniner's specific findings regarding Tharnes's variable EPS. Therefore, based on the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the disclosure of the cited prior art to teach or at least suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting conclusion of obviousness. Accordingly, we sustain the Examiner's obviousness rejection of independent claim 1. 5 Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however~ a patentee must clearly express that intent in the written description."). 8 Appeal2015-006963 Application I3/430,2 I 7 3. § I03(a) Rejections R6 of Claim I2 and RIO of Claim 20 The disputed limitation in claims I2 and 20 is commensurate with the disputed limitation of claim I, discussed above. The Examiner's reasoning regarding claims I2 and 20 is also similar to his reasoning regarding the same limitation of claim I, as is our analysis. Thus, we find the Examiner has rebutted Appellants' arguments in the Answer by a preponderance of the evidence. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claims I2 and 20, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Accordingly, we sustain the Examiner's obviousness Rejections R6 and RIO of independent claims I 2 and 2 0. Dependent claims 17 and 19 (not separately argued; App. Br. 18-19) fall with independent claim I2, from which claims I 7 and I9 each directly depend. Therefore, we also sustain rejection R6 of claims I 7 and I9. See "Claim Grouping" supra. 4. Rejections R4, R5, R7, R8, and R9: Claims 6-I l, I3-I6, and I8 In view of the lack of any substantive or separate arguments directed to obviousness Rejections R4, R5, R7, R8, andR9 of claims 6-11, I3-I6, and I8 under§ I03(a) (App. Br. I8, 20), we sustain the Examiner's rejections of these claims, as they fall with their respective independent claims. Arguments not made are waived. 9 Appeal2015-006963 Application I3/430,2 I 7 REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 5-I3) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a reply brief that were not raised in the appeal brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause (see 37 C.F.R. § 41.4I(b)(2)), which Appellants have not shown. CONCLUSIONS (1) The Examiner did not err with respect to OTDP Rejections RI and R2 of claims I and 6-I2 and we proforma sustain the rejections. (2) The Examiner did not err with respect to obviousness Rejections R3 through RIO of claims I and 6-20 under 35 U.S.C. § I03(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims I and 6-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § I. I36(a)(l )(iv). AFFIRMED IO Copy with citationCopy as parenthetical citation