Ex Parte Casati et al

Patent Trial and Appeal Board

Oct 29, 2012

11497654 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FABIO CASATI and
MARIA GUADALUPE CASTELLANOS
____________

Appeal 2010-006029
Application 11/497,654
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006029
Application 11/497,654

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 4-22. Claim 3 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method executed in a computer, comprising:

receiving events from at least one source;

providing an abstract definition of a process to provide a
modified version of the process, wherein the process has plural
steps, and wherein the abstract definition of the process
identifies a subset of the plural steps to provide the modified
version of the process;

in accordance with a mapping definition that maps events
to corresponding steps in the modified version of the process,
identifying events from the received events that correspond to
the modified version of the process; and

storing data relating to execution of the process into a
repository, wherein the stored data is produced from the
identified events.

REJECTION1
Claims 1-2 and 4-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Katz, US Pub. No. 2002/0138316
published on Sept. 26, 2002, and Walsh, US Patent No. 6,920,474, issued

1 The non-statutory obviousness-type double patenting rejection of claims 1,
14, and 18 was withdrawn by the Examiner. (Ans. 2).
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Application 11/497,654

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July, 19, 2005.
Grouping of Claims
Based on Appellants’ arguments, we decide the appeal on the basis of
claims 1, 2, and 10. See 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Brief, pages 6-14.
Based upon our review of the record, we disagree with Appellants’
contentions regarding the Examiner’s rejections of the claims. (App. Br.
6-14). 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 Answer in response to arguments made in
Appellants’ Appeal Brief. (Ans. 17-30). We highlight and address specific
findings and arguments below.
Claims 1, 4-9, 12, 13, and 21
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
the following disputed limitations (labeled L1, L2 for convenience):
[L1] providing an abstract definition of a process to provide a
modified version of the process, wherein the process has plural
steps, and wherein the abstract definition of the process
identifies a subset of the plural steps to provide the modified
version of the process;

[L2] in accordance with a mapping definition that maps events
to corresponding steps in the modified version of the process,
identifying events from the received events that correspond to
the modified version of the process,
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Appeal 2010-006029
Application 11/497,654

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definition of a process” by pointing to where in the Specification an artisan
is given notice of such definition.2 We note that element 128 in Figure 1
(shown above) provides no details regarding any such definition. (App. Br.
3).
Given that the plain language of claim 1 does not preclude the
Examiner’s broader reading, we are not persuaded that the Examiner’s claim
construction of the disputed limitation “abstract definition of a process” is
overly broad, unreasonable, or inconsistent with the Specification. Because
“applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted).
Thus, we agree with the Examiner that limitation L1 would have been
taught or at least suggested by Katz’s teaching of module layer 86 (Fig. 5),
which includes, inter alia, an embodiment having “[a] set of analysis
algorithms to address domain-specific analyses” (para. [0079]) and “[a] set
of optimization algorithms [i.e., modified version of a process] to be able to
provide domain relevant recommendations” (para. [0080]). As pointed out
by the Examiner, Walsh also teaches modification of a business process (col.

2 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.”).
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21, ll. 14-15), and Walsh additionally teaches “using all or a subset of the
functions and settings available within all the business process products
present in the enterprise network.” (Col. 15, ll. 52-54; see also Ans. 28).
We note that the Examiner’s legal conclusion of obviousness is based upon
the combined teachings and suggestions of Katz and Walsh. On this record,
we find unavailing Appellants’ contention that the “hypothetical
combination of Katz and Walsh would not have led a person of ordinary
skill in the art to the claimed subject matter.” (App. Br. 11).
Likewise, regarding limitation L2, we observe that both Katz and
Walsh teach or suggest the known concept of mapping software elements:
“mapping data from source objects onto target objects and optionally
applying conversions to the data” (Katz, para. [0183]) and “mapping and
transforming data associated with enterprise transactions [i.e., events]”
(Walsh, col. 9, ll. 5-6; see also Ans. 27, last paragraph). On this record, we
are not persuaded that combining the respective familiar elements of the
cited references in the manner proffered by the Examiner would have been
“uniquely challenging or difficult for one of ordinary skill in the art” at the
time of Appellants’ invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
For these reasons, we are not persuaded of Examiner error.
Accordingly, for essentially the same reasons set forth by the Examiner in
the Answer, as discussed above, we sustain the Examiner’s obviousness
rejection of claim 1 and of claims 4-9, 12, 13, and 21 (not argued
separately), which fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

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Dependent Claim 2
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
the disputed pairwise correlation of events associated with the modified
version of the process, within the meaning of claim 2?
Regarding claim 2, Appellants contend that the relied upon paragraphs
of Katz (paras. [0132], [0145], [0152], [0199]) provide “no hint of
performing pairwise correlation of events associated with a modified version
of the process, as provided by the abstract definition of the process, as
recited in claim 2.” (App. Br. 12).
We disagree. As discussed above, Walsh teaches modification of a
business process (col. 21, ll. 14-15). The Examiner particularly points to
Walsh’s Figure 23 which depicts step 2302: “Receive user request to create
or modify a business process.” The Examiner also points to Walsh at
column 14 which teaches an enterprise business process management system
100 that may include visualization software that creates graphical
information that, inter alia, may include statistical information (i.e.,
suggestive of correlation). (Walsh, col. 14, ll. 56-65; Ans. 7). As for a
specific teaching or suggestion of pairwise correlation, per se, we agree with
the Examiner (Ans. 7) that Katz’s teaching of conditions (i.e., events) that
are correlated with alarms is suggestive of the claimed disputed limitation of
“pairwise correlation.” (Claim 2). Similar to our discussion above, on this
record, we are not persuaded that combining the respective familiar elements
of the cited references in the manner proffered by the Examiner would have
been “uniquely challenging or difficult for one of ordinary skill in the art” at
the time of Appellants’ invention. Leapfrog, 485 F.3d at 1162.
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For these reasons, we are not persuaded of Examiner error. Because
we find the weight of the evidence supports the Examiner’s ultimate legal
conclusion of obviousness, we sustain the Examiner’s rejection of dependent
claim 2.
Dependent Claims 10 and 11
Issue: Under § 103, did the Examiner err in finding that the cited
references, either alone or in combination, would have taught or suggested
the disputed conversion of correlated events, within the meaning of claim
10?
Regarding claim 10, Appellants contend that the cited passages of
Katz relied on by the Examiner (paras. [0046], [0048], and [0183]) provide
no hint of converting correlated events (correlated using the mapping
definition) in an execution set into data structures that organize the
correlated events according to the steps of the process. (App. Br. 13).
However, we agree with the Examiner that the conversion of data into
various formats is at least suggestive of the disputed claimed conversion of
correlated events:
Data about suppliers and vendors in vendors database, while
external data from product, and related data from product
databases integrated into enterprise workflow process [page 5,
0043], further, Katz also teaches identifying various events
related to discovery services, identifying and establishing event
rules according to user-defined criteria including alerts and
collection and integration of both external and internal data and
representing data in various formats [page 5, 0048, 0132- 0133]
i.e., converting and organizing the event data and presenting
into multiple formats.
(Ans. 30).
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Moreover, on this record, we are not persuaded that combining the
respective familiar elements of the cited references in the manner proffered
by the Examiner would have been “uniquely challenging or difficult for one
of ordinary skill in the art” at the time of Appellants’ invention. Leapfrog,
485 F.3d at 1162.
For these reasons, we are not persuaded of Examiner error. Because
we find the weight of the evidence supports the Examiner’s ultimate legal
conclusion of obviousness, we sustain the Examiner’s rejection of dependent
claim 10. Claim 11 (not argued separately) falls therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Claims 14-20 and 22
For these claims, Appellants merely: (1) recite the language of the
claim and assert that the claim language is not disclosed or suggested, and
(2) assert that “no reason existed that would have prompted a person of
ordinary skill in the art to combine the teachings of Katz and Walsh to
achieve the claimed subject matter.” (App. Br. 14).
However, Appellants have failed to traverse the specific factual
findings made by the Examiner. (See Ans. 10, et seq.). A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii).
Moreover, Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). “Argument in the brief does
not take the place of evidence in the record.” In re Schulze, 346 F.2d 600,
602 (CCPA 1965) (citing In re Cole, 326 F.2d 769, 773 (CCPA 1964)).
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On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
claims 14-20 and 22. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“we hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”).
For these reasons, we sustain the Examiner’s § 103 rejection of claims
14-20 and 22 over the combination of Katz and Walsh.

DECISION
We affirm the Examiner’s rejection under §103 of claims 1, 2, and
4-22.
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.
§ 41.50(f).

ORDER
AFFIRMED

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