Ex Parte FLORES et al

Patent Trial and Appeal Board

Dec 14, 2018

13611065 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/611,065 09/12/2012 ROMELIA H. FLORES
73109 7590 12/18/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CHA920120020US l_ 8134-0134 8506
EXAMINER
SANTOS-DIAZ, MARIA C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMELIA H. FLORES and LEONARD S. HAND
Appeal2017-009232
Application 13/611,065 1
Technology Center 3600
Before LARRY J. HUME, CATHERINE SHIANG, and
JASON J. CHUNG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 21-38, which are all the claims pending and rejected in
the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify IBM Corporation as the real party in interest. App.
Br. 1.
Appeal2007-009232
Application 13/611,065
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention "relates to the
field of model driven architecture and, more particularly, to enabling
synchronicity between architectural models and operating environments."
Spec. ,r 1. Claim 21 is exemplary:
21. A computer-implemented method for enterprise management,
compnsmg:
identifying an operational environment including a computing system;
identifying an enterprise model within an enterprise organization;
creating a super model including at least one common component of
the enterprise model and the operational environment; and
synchronizing the super model with the operational environment and
the enterprise model, wherein the super model is a meta-model of the
enterprise model.
References and Rejections2
Claims 21-38 stand rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement. 3
Claims 21-38 stand rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter.
2 Throughout this opinion, we refer to the (1) Final Rejection dated
September 19, 2016 ("Final Act."); (2) Appeal Brief dated February 14,
2017("App. Br."); (3) Examiner's Answer dated April 14, 2017 ("Ans.");
and (4) Reply Brief dated June 14, 2017 ("Reply Br.").
3 The Examiner withdrew an indefiniteness rejection. Ans. 2-3.
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Application 13/611,065
Claims 21-24, 26-30, 32-36, and 38 stand rejected under pre-AIA
35 U.S.C. § I02(b) as being anticipated by Aiber (US 2007/0006177 Al;
January 4, 2007). 4
Claims 25, 31, and 37 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Aiber and Brunswig (US 2006/0080289
Al; April 13, 2006).
ANALYSIS 5
Pre-AJA 35 USC§ 112,first paragraph
The Examiner rejects the following claims for failing to comply with
the written description requirement: ( 1) claims 21-3 8 with respect to the
limitation "creating a super model"; (2) claims 22, 28, and 34 with respect to
the limitation "at least one inferred relationship between a component of the
enterprise model and a node of the operational environment"; (3) claims 23,
29, and 35 with respect to the limitation "at least one explicit relationship
between a component of the enterprise model and a node of the operational
environment"; and (4) Claims 26, 32, and 38 with respect to the limitation
"documentation of an architectural design is used to create the super model."
Final Act. 4--11.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Specifically, the
4 The heading incorrectly includes claim 31, which appears to be a
typographical error. Final Act. 18.
5 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.4I(b)(2).
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Application 13/611,065
description must "clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed" and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. ( citations omitted).
Further, the written description statute "requires that the written
description actually or inherently disclose the claim element." PowerOasis,
Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir. 2008).
[I]t is not a question of whether one skilled in the art might be
able to construct the patentee's device from the teachings of the
disclosure .... Rather, it is a question whether the application
necessarily discloses that particular device . . . A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997) (internal quotation marks and citations omitted) ( emphasis added).
First, the original claim 1, which is a part of the Specification, recites
"creating a super model." Original claim 1. Therefore, we agree with
Appellants that the Specification describes an invention understandable to a
skilled artisan and shows the inventors actually invented the invention with
respect to the limitation "creating a super model," as recited in each of
claims 21-38. See Ariad Pharms., 598 F.3d at 1351; App. Br. 11-12.
Second, the Examiner acknowledges paragraph 29 of the Specification
explains "discovery data 160 can determine inferred relationships between
components of the enterprise model and/or nodes of an operational
environment." Final Act. 8; Spec. ,r 29. Therefore, we agree with
Appellants that the Specification describes an invention understandable to a
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Application 13/611,065
skilled artisan and shows the inventors actually invented the invention with
respect to the limitation "at least one inferred relationship between a
component of the enterprise model and a node of the operational
environment," as recited in each of claims 22, 28, and 34. See Ariad
Pharms., 598 F.3d at 1351; App. Br. 12.
Third, Appellants argue the original claim 2 and paragraphs 24 and 29
of the Specification separately disclose "at least one explicit relationship"
and "between a component of the enterprise model and a node of the
operational environment." See App. Br. 13. However, such separate
teachings do not actually or inherently disclose "at least one explicit
relationship between a component of the enterprise model and a node of the
operational environment." See PowerOasis, 522 F.3d at 1306--07; see also
Ariad Pharms., 598 F.3d at 1352 ("a description that merely renders the
invention obvious does not satisfy the [ written description] requirement")
( citation omitted). As a result, Appellants have not demonstrated the
Specification describes an invention understandable to a skilled artisan and
shows the inventors actually invented the invention with respect to the
limitation "at least one explicit relationship between a component of the
enterprise model and a node of the operational environment," as recited in
each of claims 23, 29, and 35. See Ariad Pharms., 598 F.3d at 1351.
Fourth, Paragraph 19 of the Specification describes "converting
architecture design (e.g., documentation 152) into a living document (e.g.,
super model 110)." Spec. ,r 19. Therefore, we agree with Appellants that
the Specification describes an invention understandable to a skilled artisan
and shows the inventors actually invented the invention with respect to the
limitation "documentation of an architectural design is used to create the
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Application 13/611,065
super model," as recited in each of claims 26, 32 and 38. See Ariad
Pharms., 598 F.3d at 1351; App. Br. 14.
For the reasons discussed above, we (i) reverse the Examiner's
rejection of claims 21, 22, 24--28, 30-34, and 36-38, and (ii) affirm the
Examiner's rejection of claims 23, 29, and 35 under pre-AIA 35 U.S.C. §
112, first paragraph.
35 us.c. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in determining claims 21-3 8 are directed
to patent-ineligible subject matter. See App. Br. 14--24; Reply Br. 6-10.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. That provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. . . . We have
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described step two of this analysis as a search for an "'inventive
concept'" -i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and
the Alice step-two inquiry as looking more precisely at what the claim
elements add-whether they identify an "inventive concept" in the
application of the ineligible matter to which the claim is directed. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).
For the reasons discussed below, we focus on the Alice step-two
inquiry in this case. In DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (2014), the Federal Circuit determines the claims satisfy
Alice step two because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks." DDR Holdings, 773 F.3d
at 1257. As a result, the DDR court holds the claims are patent
eligible regardless of whether the claims are characterized as an
abstract idea under Alice step one. See id. at 1257.
Similar to the claims in DDR, the claims here are necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of operating environment. See claims 21-38; see also Spec.
,r,r 1---6; DDR Holdings, 773 F.3d at 1257. As a result, the claims are patent
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Application 13/611,065
eligible regardless of whether they are characterized as an abstract idea
under Alice step one. See DDR Holdings, 773 F.3d at 1257.
In particular, the claims address the problem of divergence between
the operating environment and the original enterprise model. See claims 21-
38; see also Spec. ,r,r 1---6. To that end, the claims provide an improved
method and system for synchronizing between the operating environment
and the original enterprise model. See claims 21-3 8. For example,
independent claim 21 recites a method comprising "identifying an
operational environment ... ; identifying an enterprise model ... ; creating a
super model ... ; and synchronizing the super model with the operational
environment and the enterprise model .... " Claim 21. Independent
claims 27 and 33 recite similar functions. See claims 27 and 33. Contrary to
the detailed steps discussed above, the Examiner incorrectly asserts the
claims merely organize data (Ans. 11 ).
Instead of adhering to the conventional way of managing an operating
environment, the claims provide an improved method and system of
synchronizing between the operating environment and the original enterprise
model. See claims 21-38; DDR Holdings, 773 F.3d at 1258-59. Therefore,
similar to the claims of DDR and contrary to the Examiner's determinations
(Ans. 10-11 ), "[ w ]hen the limitations of [this invention] are taken together
... , the claims recite an invention that is not merely the routine or
conventional use of' general-purpose computers. See DDR Holdings, 773
F.3d at 1259; see also claims 21-38.
Finally, "[i]t is also clear that the claims at issue do not attempt to
preempt every application of the idea of' synchronizing between the
operating environment and the original enterprise model. "Rather, they
recite a specific way" based on detailed identifying, creating, and
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synchronizing steps discussed above. DDR Holdings, 773 F.3d at 1259. As
a result, the claims include "additional features" that ensure the claims are
"more than a drafting effort designed to monopolize the [abstract idea]." Id.
( citing Alice, 134 S. Ct. at 2357). In short, "the claimed solution amounts to
an inventive concept for resolving this particular" operating environment
problem, rendering the claims patent eligible. Id.
Accordingly, we reverse the Examiner's rejection of claims 21-38
under 35 U.S.C. § 101.
35 USC§ 1026
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in finding the cited portions of Aiber
disclose "creating a super model including at least one common component
of the enterprise model and the operational environment," as recited in
independent claim 1 ( emphasis added). See App. Br. 26-27; Reply
Br. 11-12.
The Examiner cites Aiber's Figures 2 and 5 and paragraphs 36, 37,
65, 72, 74, and 117-121 for disclosing the above claim limitation. See Final
Act. 19. Appellants argue, and we agree, the cited Aiber' s excerpts do not
disclose "at least one common component of the enterprise model and the
operational environment," let alone "creating a super model including at
least one common component of the enterprise model and the operational
environment," as required by claim 1. See App. Br. 26-27; Reply
Br. 11-12.
6 Appellants raise additional arguments about the anticipation rejection.
Because the identified issue is dispositive of the appeal with respect to the
anticipation rejection, we do not need to reach the additional arguments.
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In response to Appellants' arguments, the Examiner determines that
claim 1 does not require "at least one common component of the enterprise
model and the operational environment." See Ans. 15-16. Instead, the
Examiner concludes claim 1 merely requires creating a super model
including at least one component of the enterprise model and at least one
component of the operational environment. See Ans. 15. We disagree with
the Examiner because that claim interpretation omits the "common"
component of the enterprise model and the operational environment," as
required by claim 1.
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner's rejection of claim 1.
Each of independent claims 27 and 33 also recites "creating a super
model including at least one common component of the enterprise model
and the operational environment." Claims 27 and 33. The Examiner applies
similar findings and claim interpretation discussed above. See Final Act. 23,
25-26. Therefore, for similar reasons, we reverse the Examiner's
anticipation rejection of independent claims 27 and 33.
We also reverse the Examiner's anticipation rejection of
corresponding dependent claims 21-24, 26, 28-30, 32, 34--36, and 38.
35 us.c. § 103
The Examiner cites an additional reference for the obviousness
rejection of claims 25, 31, and 3 7. The Examiner relies on Aiber in the same
manner discussed above in the context of claim 1, and does not rely on the
additional reference in any manner that remedies the deficiencies of the
underlying anticipation rejection. See Final Act. 27-28.
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Accordingly, we reverse the Examiner's obviousness rejection of
claims 25, 31, and 37.
DECISION
We (i) reverse the Examiner's decision rejecting claims 21, 22, 24--28,
30-34, and 36-38, and (ii) affirm the Examiner's decision rejecting claims
23, 29, and 35 under pre-AIA 35 U.S.C. § 112, first paragraph.
We reverse the Examiner's decision rejecting claims 21-3 8 under pre-
AIA 35 U.S.C. §§ 101-103.
Because we affirm at least one ground of rejection with respect to
each of claims 23, 29, and 35, we affirm the Examiner's decision rejecting
claims 23, 29, and 35. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 4I.50(f).
AFFIRMED-IN-PART
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