Ex Parte Carey et al

Board of Patent Appeals and Interferences

Jun 24, 2009

10448724 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DEREK H. CAREY, JAMES R. KOZLOSKI,
HOUDA LAMEHAMEDI, CHARLES C. PECK III,
and RAVISHANKAR RAO
____________
Appeal 2008-004714
Application 10/448,7241
Technology Center 2100
____________
Decided: June 24, 2009
____________

Before ALLEN R. MACDONALD, Vice-Chief Administrative Patent Judge,
JOHN C. MARTIN, and JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on May 30, 2003. The real party in interest is International Business
Machines Corporation.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 6 through 34, 36, 37, and 39. Claims 1 through 5, 35,
and 38 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appellants’ Invention
Appellants invented a method and computer program product for
improving the performance of network simulations. (Spec. 6, ll. 4-6.) As
depicted in Figure 2, a specification document (204) is provided that
describes relationships between different network nodes and edges. (Spec.
8, l. 31 through Spec. 9, l. 2.) In accordance with the specification document
(204), a simulation infrastructure (206) accesses corresponding model
factories (210 and 212) to generate instances of network models (214 and
216). (Spec. 10, ll. 1-4.) The instances of network models (214 and 216)
query other model instances with which they are specified to interact to
ensure that incompatible relationships are not established. (Spec. 12, ll. 3-
7.) After ensuring that incompatible relationships are not established, the
instances of network models (214 and 216) are added to the network
abstraction (208) for simulation. (Spec. 10, ll. 5-6.) Therefore, as
simulation progresses, relationships amongst various model elements are
established by connecting different types of edges and nodes, changing
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network topology and elements, and dynamically creating new elements and
connections. (Spec. 4, ll. 4-10.)

Illustrative Claim
Independent claim 6 further illustrates the invention as follows:
6. A method for configuring a network abstraction for simulation,
the method comprising:

accessing a network specification, the network specification describes
relationships between network models in the network abstraction;

instantiating network models in accordance with the network
specification;

establishing relationships between the network models in accordance
with the network specification; and

ensuring that incompatible relationships are not established between
the network models.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatenability:
Mitchell US 5,872,973 Feb. 16, 1999
Monday US 6,434,740 B1 Aug. 13, 2002
Hinson US 6,829,770 B1 Dec. 07, 2004
(filed Feb. 23, 1999)

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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 6 through 9, 11 through 23, 25 through 33, 36, and 39
stand rejected under 35 U.S.C. § 102(b) as anticipated by Mitchell.
2. Claims 10 and 24 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Mitchell and Hinson.
3. Claims 34 and 37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Mitchell and Monday.

Appellants’ Contentions
1. Appellants contend that the Examiner erred in finding that
Mitchell anticipates independent claim 6. In particular, Appellants argue
that Mitchell’s disclosure of an edit function that reads meta-information
regarding objects, in conjunction with instantiating the objects, does not
teach accessing a network specification and instantiating network models in
accordance with the network specification. (App. Br. 5-6.) Further,
Appellants contend that the subject matter of Mitchell is unrelated to the
claimed invention, and that the Examiner has not met the burden of
establishing equivalency to Mitchell’s disclosure. (App. Br. 6-7; Reply Br.
1-3.)
2. Appellants contend that the Examiner erred in finding that
Mitchell anticipates dependent claim 9. In particular, Appellants argue that
Mitchell’s disclosure of a dynamic binding that allows an object’s properties
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to be set and queried does not teach network models that query the network
models they are specified to interact with directly to determine if they
support necessary interfaces. (App. Br. 8.) Further, Appellants contend that
Mitchell teaches away from the claimed invention because a third object
known as a mapper explicitly forbids direct interaction between objects.
(App. Br. 8-9.)
3. Appellants contend that the Examiner erred in finding that
Mitchell anticipates dependent claim 17. In particular, Appellants argue the
Mitchell’s disclosure of passing parameters to the edit function does not
teach using parameterization of relationships between network models
according to the network specification and the configurations of application
programming interfaces (“APIs”). (App. Br. 10.) Further, Appellants
contend that the Examiner has not met the burden of establishing
equivalency to Mitchell’s disclosure. (App. Br. 10.)

Examiner’s Findings/Conclusions
1. The Examiner finds that Mitchell anticipates independent claim
6. In particular, the Examiner finds that Mitchell’s disclosure of an edit
function that reads meta-information describing a connection, in conjunction
with instantiating an API call to a function called edit, teaches accessing a
network specification and instantiating network models in accordance with
the network specification. (Ans. 13-14, 16-19.) Further, the Examiner finds
that Appellants have not elaborated on any difference between the claimed
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invention and Mitchell’s model instantiations. (Ans. 15.) The Examiner
argues that Appellants’ disclosure does not exclude accessing a network
specification and instantiating network models via an edit function that reads
meta-information describing a connection and instantiating an API call to a
function called edit. (Ans. 19.)
2. The Examiner finds that Mitchell anticipates dependent claim 9.
In particular, the Examiner finds that Mitchell’s disclosure of a dynamic
binding that queries fields and allows any part of the program to invoke the
member func of class X during program execution teaches requiring network
models that query the network models they are specified to interact with
directly to determine if they support necessary interfaces. (Ans. 21-23.)
Further, the Examiner finds that Appellants’ disclosure does not exclude
network models interacting via an intermediary such as a mapper. (Ans. 21-
22.)
3. The Examiner finds that Mitchell anticipates dependent claim
17. In particular, the Examiner finds that Mitchell’s disclosure of
differentiating specification from instantiation whereby the connection
between two objects is named and passed into edit teaches using
parameterization of relationships between network models according to the
network specification and the configuration of APIs. (Ans. 24-25.)

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II. ISSUES
1. Have Appellants shown that the Examiner erred in finding that
Mitchell anticipates independent claim 6? In particular, the issue turns on
whether Mitchell teaches accessing a network specification and instantiating
network models in accordance with the network specification.
2. Have Appellants shown that the Examiner erred in finding that
Mitchell anticipates dependent claim 9? In particular, the issue turns on
whether Mitchell teaches requiring that network models query the network
models they are specified to interact with directly in order to determine if
they support necessary interfaces.
3. Have Appellants shown that the Examiner erred in finding that
Mitchell anticipates dependent claim 17? In particular, the issue turns on
whether Mitchell teaches providing access to network models using
parameters of relationships between the network models in accordance with
the network specification and the configuration of APIs.

III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Appellants’ Invention
1. A network is a collection of components connected to each
other such that communication between components can be carried out.
(Spec. 1, ll. 8-9.) A network simulator is a computer abstraction of the
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network. (Spec. 1, ll. 19-20.) Generally, simulators abstract networks as a
collection of nodes interconnected to edges. (Spec. 1, ll. 21-23.)
2. Figure 3 depicts a flowchart of operations whereby network
models ensure that incompatible relationships are not established with other
network models. (Spec. 12, ll. 3-5.) During the ensuring operation (308),
the network models query other model instances with which they are
specified to interact to determine if they are compatible. (Spec. 12, ll. 5-8.)

Mitchell
3. Mitchell generally relates to the field of object-oriented
programming, specifically dynamically creating relations between objects in
an object oriented language during program execution. (Col. 1, ll. 15-21.)
A primary objective of Mitchell’s claimed invention is to provide dynamic
links with the capability to connect objects that are not running on the same
workstation. (Col. 6, ll. 61-63.)
4. The system for dynamically linking a first and second object
comprises a means for creating and initializing the connection during
program execution in accordance with a specification. (Col. 37, ll. 20-26,
42-44.) The specification in Mitchell is an interactive environment
described as the “builder.” (Col. 11, ll. 7-9.) The “builder” maps classes to
each other and creates a connection. (Col. 12, ll. 5-8.)
5. A semantic link is created through the instantiation of a mapper.
(Col. 7, ll. 58-59.) Each type of mapper attaches its two patron objects
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together in a unique way. (Col. 7, ll. 62-63.) For example, instantiation can
be achieved through an API call to a function called “edit.” (Col. 11., ll. 9-
10.) During program execution, the “edit” function creates an instance of
the connection between two objects by reading the meta-information
describing the connection and instantiating each semantic link. (Col. 11, ll.
10-12, 19-22.)

IV. PRINCIPLES OF LAW
Claim Construction
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (internal citations omitted). “[T]he ordinary and
customary meaning of a claim term is the meaning that the term would have
to a person of ordinary skill in the art in question at the time of the invention,
i.e., as of the effective filing date of the patent application.” Id. at 1313
(citations omitted).
“[T]he PTO gives claims their ‘broadest reasonable interpretation.’”
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read
into the claims from the specification.” In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
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claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d at 1323.

Anticipation
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992)). “Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc.,
190 F.3d 1342, 1346 (Fed Cir. 1999) (internal citations omitted). “In other
words, if granting patent protection on the disputed claim would allow the
patentee to exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.” Id. (citation omitted).

V. CLAIM GROUPING
Appellants argue that Mitchell does not anticipate independent claim
6. Appellants present separate arguments for dependent claims 9 and 17.
Appellants do not provide separate arguments for dependent claims 10, 24,
34, and 37. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), claims 7, 8, 11
through 16, 20 through 22, 25 through 30, 36, and 39 stand and fall with
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independent claim 6. Claim 23 stands or falls with claim 9. Claims 18, 19,
and 31 through 33 stand or fall with claim 17.

VI. ANALYSIS
Claim 6
Independent claim 6 recites in relevant parts: (1) accessing a network
specification, the network specification describes relationships between
network models in the network abstraction; and (2) instantiating network
models in accordance with the network specification.
As set forth in the Findings of Fact section, Appellants’ Specification
defines a network as a collection of components interconnected such that
communication between components can be carried out. (FF 1.) Mitchell
discloses dynamically creating relationships between objects in an object
oriented language during program execution, whereby dynamic links are
created that connect objects running on different workstations. (FF 3.) We
find that Mitchell’s object-oriented programming that connects objects on
different workstations teaches a collection of components connected for
communication purposes. Thus, Mitchell discloses a network of objects in
an object-oriented environment. Therefore, we are not persuaded by
Appellants’ argument that the subject matter of Mitchell is unrelated to the
present application. (App. Br. 6; Reply Br. 1-3.)
Further, we find that Mitchell discloses dynamically linking a first
object and second object by creating and initializing the connection between
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the objects in accordance with a specification. (FF 4.) Mitchell discloses
the specification in terms of a “builder” that chooses the linking of objects
and creates the connection therebetween. (Id.) We find that Mitchell
teaches a specification that describes linking objects via corresponding
connections. In particular, we find that, by describing linking of objects via
corresponding connections in an object-oriented network, Mitchell’s
specification teaches accessing a network specification that describes
relationships between network models in a network abstraction, as recited in
independent claim 6.
Additionally, we find that Mitchell discloses creating a semantic link
through the instantiation of a mapper. (FF 5.) For instance, Mitchell
discloses an example of a mapper whereby instantiation can be achieved
through an API call to a function called “edit.” (Id.) The “edit” function
creates an instance of the connection between two objects by reading the
meta-information describing the connection and instantiating each link. (Id.)
We find that Mitchell teaches a mapper that creates an instance of a
connection between two objects by reading information describing the
connection and instantiating each link. As set forth above, we find that
Mitchell teaches a specification that describes linking objects via
corresponding connections. In summary, we find that Mitchell’s
specification that describes linking objects via corresponding connections, in
conjunction with a mapper that creates an instance of a connection between
two objects by reading information describing the connection and
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instantiating each link, teaches instantiating network models in accordance
with the network specification, as recited in independent claim 6. It follows
that Appellants have not shown that the Examiner erred in finding that
Mitchell anticipates independent claim 6.

Claims 17-19 and 31-33
As noted by Appellants, claim 17 depends from claim 10, and claim
10 was rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Mitchell and Hinson. (App. Br. 10.) However, dependent
claim 17 stands rejected under 35 U.S.C. § 102(b). As admitted by the
Examiner, claim 17 should have been rejected under 35 U.S.C. § 103(a) and
not under 35 U.S.C. § 102(b). (Ans. 24.)
It follows that Appellants have shown that the Examiner erred in
finding that Mitchell anticipates dependent claim 17. Similarly the rejection
of claims 18, 19, and 31 through 33 is also improper. Therefore, we will pro
forma reverse the anticipation rejection of claims 17 through 19 and 31
through 33 as being facially erroneous.

Claims 10, 24, 34, and 37
Appellants failed to separately argue the rejection of dependent claims
10, 24, 34, and 37. Appellants have therefore waived any such arguments on
appeal. In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004).

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Claims 9 and 23
New Ground of Rejection
Using our authority under 37 C.F.R. § 41.50(b), we reject claims 9
and 23 under 35 U.S.C. § 112, second paragraph.
Dependent claim 9 recites in relevant part, “wherein ensuring that
incompatible relationships are not established between the network models
further comprises requiring that network models query the network models
they are specified to interact with directly to determine if they support
necessary interfaces.”
Appellants’ Specification discloses that network models ensure that
incompatible relationships are not established by querying other model
instances with which they are specified to interact to determine if they are
compatible. (FF 2.) However, we fail to find any reference in Appellants’
original disclosure suggesting that network models are required to query the
network models they are specified to interact with directly to determine if
they support necessary interfaces. Further, it is unclear whether the claim
language refers to “network models that directly query the network models
they are specified to interact with” or whether “network models query other
network models they are specified to interact with directly.” We find that
the two interpretations have two different claim scopes, which are not
clarified despite our review of Appellants’ Specification. Therefore, it is our
view that claim 9 is indefinite because it fails to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
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Dependent claim 23 is rejected for incorporating the same deficiency
as dependent claim 9.

35 U.S.C. § 102
As a consequence of the new ground of rejection above, we pro forma
reverse the outstanding prior art rejection of claims 9 and 23 as being
anticipated by Mitchell. The subject matter encompassed by the claims on
appeal must be reasonably understood without resort to speculation.
Presently, speculation and conjecture must be utilized by us and by the
artisan inasmuch as the claims on appeal do not adequately reflect what the
disclosed invention is. In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A
prior art rejection cannot be sustained if the hypothetical person of ordinary
skill in the art would have to make speculative assumptions concerning the
meaning of claim language.); See also In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970).

VII. 37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
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rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner ….

(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record.

VIII. CONCLUSIONS OF LAW
1. Appellants have not shown that the Examiner erred in finding
claims 6 through 8, 10 through 16, 20 through 22, 24 through 30, 34, 36, 37,
and 39 unpatentable.
2. Appellants have shown that the Examiner erred in finding that
Mitchell anticipates claims 17 through 19 and 31 through 33.
3. We have entered a new ground of rejection against claims 9
and 23 for being indefinite.

IX. DECISIONS
1. We affirm the Examiner’s decision rejecting claims 6 through
8, 10 through 16, 20 through 22, 24 through 30, 34, 36, 37, and 39.
2. We reverse the Examiner’s decision rejecting claims 17 through
19 and 31 through 33.
3. We reverse the Examiner’s decision rejecting claims 9 and 23
and enter our own rejection against these claims.
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4. Because of the new ground of rejection, our decision is not a
final agency action.
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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