Ex Parte Erl

Patent Trial and Appeal Board

Mar 21, 2017

11879820 (P.T.A.B. Mar. 21, 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.
11/879,820 07/18/2007 Thomas F. Erl 05220.261 (P0235) 4804
14400 7590 03/21/2017
Patent Docket Administrator
LOWENSTEIN SANDLER LLP
65 Livingston Avenue
Roseland, NJ 07068
EXAMINER
ALHIJA, SAIF A
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
03/21/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte THOMAS F. ERL
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Appeal 2016-005551
Application 11/879,8201
Technology Center 2100
____________

Before MASHID D. SAADAT, CARL L. SILVERMAN, and
SCOTT A. HOWARD, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3–19, 21, 23–25, 27, 29, and 30, which are the
only claims pending. We have jurisdiction under 35 U.S.C. § 6(b).

We reverse.

STATEMENT OF THE CASE
The invention relates to the creation and management of service
composition candidates in a service-oriented architecture (SOA). Abstract.

1 The real party in interest is identified as Red Hat Inc. App. Br. 3.

Appeal 2016-005551
Application 11/879,820
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Claim 1, reproduced below, is exemplary of the subject matter on appeal
(disputed limitations emphasized):
1. A method, comprising:
identifying, by a processing device, a request to add a
composition candidate to a service-oriented architecture (SOA)
service model comprising a plurality of service candidates, each
service candidate including one or more operation candidates to
provide a set of logically associated capabilities;
in response to the identified request, selecting, by the
processing device, a set of service candidates from the plurality of
service candidates;
aggregating, by the processing device, the selected set of
service candidates together to form the composition candidate;
receiving, by the processing device, an input specifying an
operational relationship between two or more service candidates of
the composition candidate, the input identifying a first service
candidate of the set of service candidates as a requestor service, and
further identifying a second service candidate of the set of service
candidates as a provider service;
providing, in view of the received input, a visual representation
of the operational relationship, the visual representation including
visual designations of the requestor service and the provider service;
and
responsive to receiving a request to perform an action on the
SOA service model, determining whether the action is allowable in
view of the operational relationship.

App. Br. 14 (Claims App’x).

THE REJECTIONS
Claims 1, 3–10, 14–19, 21, 23–25, 27, and 29–30 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Able et al. (US 2005/0256882
A1; pub. Nov. 17, 2005) (“Able”). Final Act. 3–9.
Appeal 2016-005551
Application 11/879,820
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Claims 11–13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Able in view of Mamou et al. (US 2005/0223109 A1; pub.
Oct. 6, 2005) (“Mamou”). Final Act. 9–12.
ANALYSIS
Appellant argues Able does not disclose the claim 12 limitations as
required for anticipation (emphasis added):
(i) receiving, by the processing device, an input specifying an
operational relationship between two or more service candidates of
the composition candidate, the input identifying a first service
candidate of the set of service candidates as a requestor service, and
further identifying a second service candidate of the set of service
candidates as a provider service; and
(ii) providing, in view of the received input, a visual
representation of the operational relationship, the visual
representation including visual designations of the requestor service
and the provider service.
App. Br. 7–13; Reply Br. 3–6.
Regarding the limitation (i) receiving . . . an input specifying an
operational relationship between two or more service candidates of the
composition candidate, Appellant argues the Examiner errs in finding Able
discloses this limitation. App. Br. 7–10 (citing Able ¶¶ 21–23; Fig. 1; see
also Advisory Act. 2). Appellant argues the Examiner presents no
explanation of how Able describes this limitation. Id. at 8 (citing Able ¶ 23).
According to Appellant, the cited portions of Able “at least fail[s] to disclose
receiving input identifying the requestor and the provider.” Id.

2 Claim 1 is identified as a representative claim in the anticipation rejection
of independent claims 1, 21, and 25. App. Br. 7.
Appeal 2016-005551
Application 11/879,820
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Appellant further argues, in the absence of disclosure of this
limitation, Appellant interprets the Examiner’s finding “as constituting as an
inherency argument.” Id. at 9. Regarding inherency, Appellant argues
inherency is inapplicable here because the Examiner presents no evidence
supporting inherency wherein the inherent result necessarily flows from the
teaching of the prior art. Id. In particular, “Able’s disclosure of a web
services client ("Requestor") and a web services server ("Provider") or from
Able's Fig. 1, as referencing the requestor and provider designators does not
necessarily require receiving input specifying such designators.” Id.
Appellant further argues “merely referencing a requestor and a provider of a
web service does not necessarily require receiving input identifying an
operational relationship between the requestor and the provider. Reply Br.
4.
The Examiner finds Able web services provide capabilities which
meet the disputed limitation (i). Ans. 2–3 (citing Able Abstract; ¶¶ 18, 78,
84, 93, 120; Fig. 3). The Examiner presents an explanation of Able with
service candidates #2, composition candidate #3, and associated capabilities
#1. Id. The Examiner further finds:
Lastly as a summary with respect to this limitation, the recitation in
paragraph 120 of Able shows the creation of the web services in the
form of the tasks/functions and application creations which individually
represent the service candidates, which reads on the two or more service
candidates. The collection of these tasks and application sets/flows
reads on the aggregation into a composition candidate, see Figure 13 of
Able showing the aggregated composition candidate which is the
collection of application tasks/functions which are further represented
in the web service.

Id. at 3.

Appeal 2016-005551
Application 11/879,820
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We are persuaded by Appellant’s arguments because the Examiner’s
findings are insufficient to establish anticipation. A claim is anticipated only
if each and every element as set forth in the claims is found, either expressly
or inherently described in a single prior art reference, and arranged as
required by the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
F.2d 628, 631 (Fed. Cir. 1987). In particular, we agree the Examiner
presents insufficient finding regarding Able teaching the disputed limitation
(i). Moreover, we agree the Examiner does not address the requirements of
inherency. Reply Br. 4.
In view of the above, we do not sustain the rejection of claim 1, and
independent claims 21 and 25 which recite the disputed limitations. We also
do not sustain the rejection of dependent claims 3–10, 14–19, 23, 24, 27, 29,
and 30. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious . . . .”). Because our decision with regard to the
disputed limitation is dispositive of the rejection of all pending claims, we
do not address additional arguments raised by Appellant.
Regarding the rejection of dependent claims 11–13 for obviousness
over Able in view of Mamou, the Examiner presents no additional findings
regarding Able and the disputed limitation (i), discussed supra, and Mamou
is not cited for the disputed limitation (i). See Final Act. 10–12. Therefore,
we do not sustain the rejection of claims 11–13.
DECISION
We reverse the Examiner’s decision to reject claims 1, 3–19, 21, 23–
25, 27, 29, and 30.
REVERSED