Ex Parte Day

Patent Trial and Appeal Board

Jan 18, 2018

12558441 (P.T.A.B. Jan. 18, 2018)

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.
12/558,441 09/11/2009 ROUVEN DAY 34874-436F01US/2009P00095 6465
64280 7590 01/22/2018
Mintz Levin/SAP
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
EXAMINER
FISHER, PAUL R
Boston, MA 02111 ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
IPDocketingBOS @mintz.com
IPFileroombos @ mintz. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROUVEN DAY
Appeal 2016-002612
Application 12/558,441
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Rouven Day (Appellant) seeks review under 35 U.S.C. § 134(a) of a
final rejection of claims 1-20, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 29, 2015) and Reply Brief (“Reply Br.,” filed December 30,
2015), and the Examiner’s Answer (“Ans.,” mailed October 30, 2015), and
Final Action (“Final Act.,” mailed February 10, 2015).
Appeal 2016-002612
Application 12/558,441
The Appellant invented “a system and method for modeling service
endpoints in BPMN tools using BPMN constructs.” Spec. para. 5.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method for modeling service
endpoints of a process based on business process model and
notation (BPMN), the method being performed by execution of
computer readable program code by at least one processor of at
least one computer system, the method comprising:
[1] modeling the process using at least one of the processors
running a BPMN modeling tool using BPMN graphic notation
and flowcharting techniques of BPMN;
[2] modeling a service endpoint using the BPMN modeling
tool,
wherein a user enters a name and selects a service
operation for a model entity for the modeled service
endpoint,
the modeling of the service endpoint includes creating a
message event definition reflective of the model entity,
wherein an instance of the message event definition is
created using a modeling infrastructure based on a
BPMN metamodel and is stored as a transient model
entity in at least one memory of the at least one computer
system,
wherein storage of the model entity includes storing the
modeled service endpoint as a trigger of a message start
event of the modeled process;
[3] attaching the message event definition to the message start
event of the modeled process;
and
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Application 12/558,441
[4] binding an operation instance of the modeled process to a
process instance of the modeled process using the message
event definition;
[5] generating, based on the entered name, using at least one of
the processors, a uniform resource locator (URL) identifying
the service endpoint, the URL being a web-based address under
which the service operation as represented by the process can
be called by a business process application;
and
linking, using at least one of the processors, the service
endpoint to the process.
The Examiner relies upon the following prior art:
Hapner US 5,692,183
Gish US 6,266,709 B1
Koehler US 2005/0209993 A1
Nov. 25, 1997
July 24, 2001
Sept. 22, 2005
Dec. 28, 2006
Jan. 4, 2007
Dec. 4, 2007
Ivanov US 2006/0293 941 A1
Larvet US 2007/0006134 A1
Bodin US 7,305,482 B2
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-3, 6-10, 13-16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ivanov, Gish, Koehler, Hapner, and Larvet.
Claims 4, 5, 11, 12, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Ivanov, Gish, Koehler, Hapner, Larvet, and Bodin.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than an abstract idea.
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Appeal 2016-002612
Application 12/558,441
The issues of obviousness turn primarily on whether the art applied
shows that the recited operations could be performed by a BPMN tool.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. “The Business Process Model and Notation (BPMN) is an
industry standard graphic notation for representing business
process workflows.” Spec. para. 2.
Facts Related to the Prior Art
Ivanov
02. Ivanov is directed to “modeling business processes.” Ivanov
para. 3.
03. Ivanov describes “graphically modeling business processes
using symbols that represent, for example, Business Process
Execution Language (BPEL) concepts.” Ivanov para. 3.
04. Ivanov describes “business processes [being] modeled with
symbols. Each symbol may have a color corresponding to a
semantic grouping and may comprise an icon pictorially
representing a BPEL concept. Further, each symbol may be linked
to XML code. The XML code may implement the BPEL concept
represented by each symbol.” Ivanov para. 13.
Gish
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Appeal 2016-002612
Application 12/558,441
05. Gish is directed to “operating system software for managing
Interprise computing in a network user interface.” Gish 1:24-27.
06. An application has a specific set of message events, and
each component (front 410 and back 400 ends) includes local
handlers for the set of message events. Thus, any two
components can be plugged into the execution framework 430
to form an application 440 if they include local handlers for
messages in the set of message events defined for the
application 440. The components each include a local instance
of a communication library 420. A component only interacts
with the Application Programming Interface (API) of its local
communication library 420 in order to send or receive message
events.
Gish 17:56-64.
Koehler
07. Koehler is directed to generating “an executable workflow code
from an unstructured cyclic process model, . . . executing a
workflow code of an arbitrary process model, [and] a workflow
execution engine for process models with or without control
cycles.” Koehler para. 1.
08. “As language for the workflow code for example BPEL4WS
(Business Process Execution Language for Web Services, can be
used.” Koehler para. 1.
09. Koehler Figure 1 shows an example of a graphical
representation of a business process model, wherein the
business process model describes the possible flow of activities.
This graphical representation uses well-defined elements from a
graphical modeling language that was designed for business
process modeling needs. Several different graphical modeling
languages exist today to describe the process model. Well-
known examples for these modeling languages are ARIS, WBI
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Appeal 2016-002612
Application 12/558,441
Modeler (IBM), and BPMN (Business Process Modeling
Notation). The invention can be used for any of these modeling
languages and others not mentioned here, but known to the
expert. Which one is used depends on the technical boundary
conditions. Strictly speaking, FIG. 1 shows an example of an
electronic purchasing business process adopting a BPMN-like
notation.
Koehler para. 75-76.
Hapner
10. Hapner is directed to “providing transparent persistence within a
distributed object operating environment.” Hapner 1:10-13.
Larvet
11. Larvet is directed to “a method of providing a new web service,
a computer program product adapted to implement that method, in
particular a use case assistant, and a computer file obtained by that
method.” Larvet para. 2.
ANALYSIS
Claims 1—20 rejected under 35 U.S.C. § 101 as directed to non—statutory
subject matter
Claims 1, 8, and 14 are the independent claims on appeal, with the rest
of the claims on appeal depending therefrom.
The Examiner rejects these claims according to the two step procedure in
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347 (2014). As to the first
step, the Examiner finds that the claims are directed to modeling a business
process using standard notation, which is similar to organizing information
through mathematical correlations. Final Act. 3.
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Application 12/558,441
Appellant argues that
the Examiner appeared to improperly generalize the subject
matter disclosed in the present application and recited in the
pending claims by indicating that "the act of modeling itself is
an abstract idea and the addition of computers to carry out that
abstract idea does not serve to be significantly more than the
abstract idea itself This is so because it does not change the
field of web services nor does it change the specific computers
carrying out the web services but rather merely models how the
individual processes would be carried out at some future point."
Reply Br. 4.
We agree with the Appellant that the determination under step 1 that the
claims are directed to an abstract idea is oversimplified. The claims are
required to be considered as a whole.
“In determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981). “The ‘abstract idea’ step of the
inquiry calls upon us to look at the ‘focus of the claimed advance over the
prior art’ to determine if the claim’s ‘character as a whole’ is directed to
excluded subject matterAffinity Labs of Texas v. DirectTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016); see also Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), quoted in Apple, Inc. v.
Ameranth, Inc., 7842 F.3d 1229, 1241 (Fed. Cir. 2016).
Examiner in particular fails to explain why limitations [2]—[4], which
Appellant points to (Appeal Brief 11), do not alter the scope of what the
claims as a whole are directed to. Because the claims have not been
considered as a whole, the explanation for determining that the claims are
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Application 12/558,441
directed to an abstract idea is inadequate. See May 2016 Memorandum 2
(“the rejection . . . must provide an explanation . . . which [is] sufficiently
clear and specific to provide applicant sufficient notice of the reasons for
ineligibility.”)
Given the inadequacy of the determination under the first part of the
Alice framework, we need not address the second part of the framework.
We reverse the rejection of claims 1-20.
Claims 1—3, 6—10, 13 16, 19, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ivanov, Gish, Koehler, Hapner, and Larvet
We are persuaded by Appellant’s argument that
None of the references teach or suggest use of the recited
“BPMN modeling tool”, “BPMN metamodels” based on
which an instance of the message event definition is created
and stored, in accordance with the conditions recited in claim 1
(i.e., “storing”, “attaching” and “binding”), as a transient model
entity in memory, (emphasis supplied). While some of the
references may refer to use of a web service definition language
(“WSDL”), it is irrelevant to the use of BPMN modeling tool
and BPMN metamodels for the purposes of modeling service
endpoints of a business process in accordance with the
recitation of claim 1.
Reply Br. 8. See also Appeal Brief 20-29.
The Examiner finds that the references would describe the independent
claims were those claims to recite using BPEL instead of BPMN and that
both BPEL and BPMN are widely known business modeling tools.
Appellant does not dispute this.
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Application 12/558,441
The Examiner does not find that BPMN and BPEL have overlapping
techniques for performing the specific modeling actions recited in the
claims. Absent such a finding with supporting evidence, one of ordinary
skill would not know whether, despite being an alternative modeling
platform, BPMN could perform those particular modeling actions as
described in the art.2 Essentially, the Examiner fails to support the findings
with an enabling description in the art.
Claims 4, 5, 11, 12, 17, and 18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ivanov, Gish, Koehler, Hapner, Larvet, and Bodin
These are dependent claims.
CONCLUSIONS OF LAW
The rejection of claims 1-20 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is improper.
2 We note that two references in the record suggest there are differences
between the specific capabilities of BPMN and BPEL.
Mark Nelson, “Choosing BPMN or BPEL to model your processes”,
February 13, 2012,
http ://redstack.wordpress.com/2012/02/13/choosing-bpmn-or-bpel-to-model
-your-processes.
Chun Ouyang et al., “Translating BPMN to BPEL”, available 2006,
bpmcenter.org/wp-content/uploads/reports/2006/BPM-06-02.pdf.
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Appeal 2016-002612
Application 12/558,441
The rejection of claims 1-3, 6-10, 13-16, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Ivanov, Gish, Koehler, Hapner, and Larvet is
improper.
The rejection of claims 4, 5, 11, 12, 17, and 18 under 35 U.S.C. § 103(a)
as unpatentable over Ivanov, Gish, Koehler, Hapner, Larvet, and Bodin is
improper.
DECISION
The rejections of claims 1-20 are reversed.
REVERSED
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