Ex Parte Dubbels et al

Patent Trial and Appeal Board

Feb 24, 2017

13181561 (P.T.A.B. Feb. 24, 2017)

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.
13/181,561 07/13/2011 Joel C. Dubbels ROC920100355US1 4633
7590
IBM (ROC-KLS)
c/o Kennedy Lenart Spraggins LLP
301 Congress Avenue
Suite 1350
AUSTIN, TX 78701
EXAMINER
ANDERSON, FOLASHADE
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
office@klspatents.com
kate@klspatents.com
hanna@klspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL C. DUBBELS and RICHARD J. STEVENS
Appeal 2014-0082711
Application 13/181,5612
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 7, 8, 10—14, and 16—18. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief (“Br.,”
filed Apr. 8, 2014) and Specification (“Spec.,” filed July 13, 2011), and to
the Examiner’s Answer (“Ans.,” mailed Apr. 25, 2014) and Final Action
(“Final Act.,” mailed Oct. 28, 2013).
2 According to the Appellants, the real party in interest is “International
Business Machines Corporation (‘IBM’).” Br. 1.
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Application 13/181,561
STATEMENT OF THE CASE
The Appellants’ invention is directed to “data processing” and more
specifically, to “methods, systems, and products for administering medical
digital images in a distributed medical digital image computing environment
and dynamically allocating business workflows.” Spec. 1,3.
Claims 7 and 13 are the independent claims on appeal. Claim 7 (Br.,
Claims App) is illustrative of the subject matter on appeal and is reproduced
below (bracketing and paragraphing added for reference):
7. A system for dynamically allocating business
workflows, each workflow comprising a reusable component of
a business transaction, the system comprising
[(a)] one or more computer processors and computer
memory operatively coupled to the computer processors,
[(b)] the computer memory having disposed within it
computer program instructions that, when executed by the one or
more computer processors, cause the one or more computer
processors to carry out the steps of:
[(bl)] receiving, by a workflow orchestrator, a
request for a business transaction, including receiving one
or more desired result parameters in the request for the
business transaction;
[(b2)] determining, by the workflow orchestrator, a
desired result for the business transaction in dependence
upon the request and the one or more desired result
parameters, including identifying a desired output type;
[(b3)] selecting, by the workflow orchestrator, one
or more workflows from a set of available workflows in
dependence upon the request and the desired result;
[(b4)] determining an execution order for the one or
more workflows; and
[(b5)] executing, by the workflow orchestrator, the
one or more selected workflows in the execution order.
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Application 13/181,561
REJECTIONS3
I. Claims 13, 14, and 16—18 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.4 Final Act. 6.
II. Claims 7, 8, 10, 13, 14, and 16 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Stef-Praun et al., Accelerating Medical
Research using the Swift Workflow System, 126 Stud. Health Technol.
Inform. 201—216 (2007) (hereafter referred to as “Stef-Praun”). Id. at 12.
III. Claims 11 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stef-Praun and Pulsipher (US 8,108,878 Bl, iss.
Jan, 31, 2012). Id. at 16.
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.5
3 The provisional rejection of claims 7 and 13 on the ground of provisional
non-statutory double patenting as being unpatentable over claims 6 and 11 of
co-pending Application No. 13/181,127 is moot in view of the Feb, 12, 2014
Notice of Abandonment for Application No. 13/181,127. Accordingly, the
appeal is dismissed as to the claims rejected under provisional obviousness-
type double patenting.
4 Although the heading for the rejection lists claims 13—20 as being rejected
under § 101 (Final Act. 6, Ans. 2), claims 15, 19, and 20 have been
cancelled. Further, both the Examiner and the Appellants consider only
claims 13, 14, and 16—18 as being included in this rejection. See Ans. 13;
Br. 5. Thus, we consider only claims 13, 14, and 16—18 as being included in
this rejection and the inclusion of the other claims inadvertent error.
5 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/181,561
ANALYSIS
Rejection I - § 101
The Examiner interprets the computer readable medium of
independent claim 13 “to cover both non-transitory tangible media as well as
transitory a carrier wave” and is thus directed to non-statutory subject
matter. Final Act. 7; see also Ans. 13 (citing In re Nuitjen, 500 F.3d 1346
(Fed. Cir. 2007)).
The Appellants contend that because the claim specifically excludes
signals, it cannot be interpreted to cover a carrier wave and is thus statutory
under § 101. Br. 5—6.
We agree with the Appellants. The Specification provides that the
computer readable storage medium may be “an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system, apparatus, or device, or
any suitable combination of the foregoing.” Spec. 37,11. 22—26. Specific
examples of the medium include (but is not limited to) an electrical
connection with wire(s), a diskette, a hard drive, RAM, ROM, EPROM or
Flash memory, an optical fiber, CD-ROM, an optical storage device, and a
magnetic storage device. Id. at 37,11. 25—31. The Specification further
differentiates a computer readable medium from a computer readable signal
medium. Id. at 37, 38. “A computer readable signal medium may include a
propagated data signal with computer readable program code embodied
therein, for example, in baseband or as part of a carrier wave.” Id. at 38,
11. 5—7. Independent claim 13 recites that the program product “is disposed
upon a computer readable medium, wherein the computer readable medium
is not a signal” (Br. 13), and not to a computer readable signal medium that
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Application 13/181,561
includes a carrier wave. Thus, we disagree with the Examiner’s
interpretation of the claim as covering a transitory carrier wave.
Based on the foregoing, we are persuaded the Examiner’s rejection of
independent claim 13 under § 101 is in error, and we do not sustain this
rejection of claims 13—18.
Rejection II - § 102
Independent claims 7 and 13 recite the limitation of “determining a
desired result for the business transaction in dependence upon the request
and one or more desired result parameters, including identifying a desired
output type,” as recited in limitation (b2) of claim 7. Br. 11, 13. The
Appellants contend that the Examiner’s rejection of independent claims 7
and 13 is in error because Stef-Praun does not disclose this limitation.
The Examiner finds that Stef-Praun discloses receiving a request for a
transaction in the “description of the algorithm [that] first defines the data
types of each dataset (file) that participates in the workflow.” Final Act. 13
(citing Stef-Praun 5). The Examiner further finds that Stef-Praun discloses
an output parameter that meets the claimed output type, i.e., desired result,
and that the output of the processing/analysis of the brain scan is determined
based on parameter settings of the defined types of data entities. See id.
(citing Stef-Praun 5 and Fig. 1); Ans. 16 (citing Stef-Praun 5, 6).
However, it is not clear to us, and the Examiner does not adequately
explain, how Stef-Praun discloses receiving a request for a transaction and
determining a desired result based on the request. Stef-Praun discloses that
the SwiftScript algorithm defines the data types of each file that participates,
i.e., is inputted, in the workflow and defines the procedures that process the
input files. Stef-Praun 5. But we do not see how or where Stef-Praun
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discloses receiving a request for a transaction. Even assuming arguendo that
simply implementing the SwiftScript algorithm is the “request,” we do not
see how a desired result/output is determined based on the implementation.
Rather, we agree with the Appellants that Stef-Praun does not disclose
identifying a desired output type/result and further agree that Stef-Praun’s
defining of data types and procedures does not disclose determining a
desired output or result. Br. 7.
Based on the foregoing, we are persuaded the Examiner’s rejection of
independent claims 7 and 13 under § 102 is in error, and we do not sustain
this rejection of independent claims 7 and 13 and of dependent claims 8, 10,
14, and 16.
Rejection III - § 103
The Examiner’s rejection of claims 11 and 17 under § 103 depends on
the same erroneous finding. See Final Act. 16. Pulsipher does not cure this
deficiency. Thus, for the same reasons we do not sustain the Examiner’s
rejection of claims 7 and 13 under § 102, we also do not sustain this
rejection of claims 11 and 17 under § 103.
DECISION
The Examiner’s rejection of claims 13, 14, and 16—18 under 35 U.S.C.
§ 101 is REVERSED.
The Examiner’s rejection of claims 7, 8, 10, 13, 14, and 16 under
35 U.S.C. § 102(b) is REVERSED.
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Application 13/181,561
The Examiner’s rejection of claims 11 and 17 under 35 U.S.C.
§ 103(a) is REVERSED
REVERSED
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