Ex Parte Davis et al

Patent Trial and Appeal Board

Nov 18, 2013

11950473 (P.T.A.B. Nov. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS B. DAVIS, CHRISTOPHER B. FERRIS,
and PETER D. NIBLETT
____________

Appeal 2011-007495
Application 11/950,4731
Technology Center 2400
____________

Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
JOHNNY A. KUMAR, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines Corporation.
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 3-7, 9-13, and 15-18, which are
all the claims remaining in the application. Claims 2, 8, and 14 are
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to using computers to filter
policies to enable selection of policy subsets. See Spec., ¶ [0001].
Claim 1 is illustrative:
1. A method comprising:
receiving a policy from a service provider; and,
filtering a set of alternatives in the policy to provide a
subset of policy alternatives, the subset of policy alternatives for
provision to a service consumer, the subset of policy alternatives
matching the filtering criteria applied during the filtering, the filtering
criteria comprising a predicate expression of a filtering expression, the
predicate expression providing a set of criteria that are satisfied in the
context of a full XPath expression.

Appellants appeal the following rejections:

R1. Claims 6, 12, and 18 are rejected under 35 U.S.C. § 112, 2nd
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which appellants regard as the invention;
and
R2. Claims 1, 3-7, 9-13, and 15-18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chang (U.S. Patent Pub. 2008/0244693
A1, Oct. 2, 2008) and Loewy (U.S. Patent Pub. 2004/0193703 A1, Sept. 30,
2004).
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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
Rejected under 35 U.S.C. § 112, 2nd Paragraph
Claims 6, 12, 18

Issue 1: Did the Examiner err in finding that the term “well-defined
subject” is relative and thus the claims are indefinite?
Appellants contend that “the term well-defined is used to specify that
a certain subject (i.e., the well[-]defined subject) has clearly distinguishable
limits” (App. Br. 3). Appellants further contend that “the examples set forth
in ¶ 0071 of the specification all are satisfied by and further support the well
established definition of the term ‘well defined’” (id. at 4).
The Examiner found that “‘well-defined’ is a relative term and the
instant specification does not provide any sort of indication of how to
determine whether a subject is well-defined or not” (Ans. 7). We agree with
the Examiner.
As stated in Seattle Box Company, Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984):
Definiteness problems often arise when words of degree are used in a
claim. That some claim language may not be precise, however, does
not automatically render a claim invalid. When a word of degree is
used the district court must determine whether the patent’s
specification provides some standard of measuring that degree. The
trial court must decide, that is, whether one of ordinary skill in the art
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would understand what is claimed when the claim is read in light of
the specification.
Here, although Appellants direct our attention to paragraph [0071] of
the specification for clarifying what is meant by “well-defined,” we fail to
see any such clarifying examples, as no examples or standards are given for
a “well-defined subject.” Instead, paragraph [0071] merely specifies how a
well-defined subject might be obtained (i.e., via an out-of-bands
communication mechanism), not what it includes (see ¶ [0071]). In other
words, Appellants do not indicate or explain what in paragraph [0071]
constitutes a definition or a standard by which the meaning of the phrase
“well-defined subject” can be determined (see App. Br. 3).
It follows that Appellants have not identified any error in the
Examiner’s determination that the relative phrase “well-defined,” when
viewed in light of the supporting Specification, is indefinite within the
meaning of 35 U.S.C. § 112, second paragraph.

Rejected under 35 U.S.C. § 103(a)
Claims 1, 4-7, 10-13, and 16-18
Issue 2: Did the Examiner err in finding that the combined teachings
of Chang and Loewy teach and/or suggest filtering a set of alternatives in the
policy to provide a subset of policy alternatives?
Appellants contend that “Loewy does not disclose or suggest, a subset
of policy alternatives matching a filtering criteria which is applied during the
filtering . . . . This deficiency of Loewy is not cured by Chang” (App. Br.
5).
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The Examiner found that Chang, not Loewy, discloses the above-
noted limitation regarding filtering a set of alternatives in the policy to
provide a subset of policy alternatives (see Ans. 5 and 8; see also Chang ¶
[0149]). The Examiner brings in Loewy merely to teach and/or suggest
using a predicate expression in the context of a full XPath expression for
processing policies (see Ans. 5 and 8; see also Loewy ¶ [0050]).
Here, Appellants fail to rebut the Examiner’s specific findings
regarding Chang’s disclosure of filtering to provide a subset of policy
alternatives but instead attack Loewy for not suggesting such features. As
such, Appellants’ arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to
those of ordinary skill in the art.
(Citations omitted, emphasis added). This reasoning is applicable here. As
Appellants have not effectively rebutted the Examiner’s specific findings
noted above, we find such arguments unpersuasive.
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Chang and Loewy, the Examiner’s 35 U.S.C. § 103(a) rejection
of representative claim 1, as well as claims 4-7, 10-13, and 16-18 not
separately argued by Appellants, is sustained.

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Claims 3, 9, and 15
Issue 3: Did the Examiner err in finding that the combined teachings
of Chang and Loewy teach and/or suggest performing a policy intersection
operation, as set forth in claim 3?
Appellants contend that the features, as set forth in claims 3, 9, and
15, are “patentably distinct from examining available policy alternatives
against a pre policy alternatives filter, as disclosed by Chang” (App. Br. 6).
The Examiner found that “Chang teaches that based on previous
history, abnormal conditions, etc., an intersected policy with some
alternatives are automatically selected. Thereafter, the information is fed
back into the security policy selection process, so that the intelligent policy
alternative selection can be made” (Ans. 9).
While Appellants contend that the claimed feature in claim 3 is
patentably distinct from examining available policy alternatives against a
pre policy alternatives filter, as disclosed by Chang, Appellants have failed
to provide any meaningful analysis on why the claimed “policy intersection
operation” is distinguishable from the cited portions of Chang. Instead, a
mere conclusory statement is offered that it is patentably distinct. However,
mere 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); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); 37 C.F.R. § 1.111(b); and Ex parte Belinne, No. 2009-
004693, 2009 WL 2477843, slip op. at 7-8 (BPAI Aug. 10, 2009)
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(informative). We also note that Appellants have not filed a Reply Brief to
address the Examiner’s responsive arguments.2
Appellants have therefore failed to rebut the Examiner’s finding that
the combination of Chang and Loewy teaches “a policy intersection
operation” as recited in claim 3. Moreover, arguments not made are waived.
See 37 C.F.R. § 41.37(c)(1)(vii). Cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”)
In view of the above discussion, since Appellants have not
demonstrated that the Examiner erred in finding the argued limitations in the
disclosure of Chang and Loewy, the Examiner’s 35 U.S.C. § 103(a) rejection
of representative claim 3, as well as claims 9 and 15 not separately argued
by Appellants, is sustained.

DECISION
We affirm the Examiner’s § 112, 2nd paragraph and § 103(a)
rejections.
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).

2 “Silence implies assent.” Harper & Row Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 572 (1985).

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AFFIRMED

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