Ex Parte Goldberg et al

Patent Trial and Appeal Board

Mar 19, 2013

10104086 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT N. GOLDBERG, BRUCE K. DANIELS,
YURY KAMEN, and SYED M. ALI
1

____________________

Appeal 2010-009721
Application 10/104,086
Technology Center 2100
____________________

Before JEAN R. HOMERE, BRYAN F. MOORE, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
rejection of claims 1-3, 5-29, 31-34, 36, and 37. Appellants previously
canceled claims 4, 30, and 35. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1
The Real Party in Interest is Sun Microsystems, Inc. (App. Br. 4.)
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STATEMENT OF THE CASE
2

The Invention
Appellants’ invention is directed to a method and apparatus for
generating an enterprise application. Spec. p. 3, ¶ [0005].
Exemplary Claims
1. Claim 1 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
1. A method for generating an enterprise application,
comprising:
creating a business object specification defining a
characteristic of a business object;
creating an application usage specification defining how
the business object is used in the enterprise application;
obtaining a tier specification defining a tiered
architecture upon which the enterprise application is
executed, wherein the tiered architecture comprises a plurality
of physical tiers upon which the enterprise application is to be
executed; and
generating the enterprise application based on the
business object specification, the application usage
specification, and the tier specification.

2
Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
May 15, 2006); Response to Non-Compliant Brief (“Summ. of Claimed
Subj. Matter” filed Oct. 5, 2006); Examiner’s Answer (“Ans.,” mailed Jan.
26, 2007); Final Office Action (“FOA,” mailed Aug. 10, 2005); and the
original Specification (“Spec.,” filed Mar. 22, 2002).
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2. Claim 2 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
2. The method of claim 1, further comprising:
specifying a second tiered architecture upon which the
enterprise application is executed to produce a second tier
specification; and
re-generating the enterprise application based on the
business object specification, the application usage
specification, and the second tier specification.

3. Claim 3 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
3. The method of claim 1, further comprising:
generating build/deployment information based on the
business object specification and the application usage
specification;
generating a build/deployment mechanism based on the
business object specification and the application usage
specification; and
generating a deployed enterprise application based on the
enterprise application, the build/deployment information, and
the build/deployment mechanism.

4. Claim 26 is an exemplary claim representing an aspect of the
invention which is reproduced below (emphasis added):
26. A method for generating an enterprise application,
comprising:
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creating a business object specification defining a
characteristic of a business object;
creating an application usage specification defining how
the business object is used in the enterprise application;
obtaining a tier specification defining a tiered
architecture upon which the enterprise application is
executed. wherein the tiered architecture comprises a plurality
of physical tiers upon which the enterprise application is to be
executed;
generating the enterprise application based on the
business object specification, the application usage
specification, and the tier specification;
specifying a second tiered architecture upon which the
enterprise application is executed to produce a second tier
specification;
re-generating the enterprise application based on the
business object specification, the application usage
specification, and the second tier specification;
generating build/deployment information based on the
business object specification and the application usage
specification;
generating a build/deployment mechanism based on the
business object specification and the application usage
specification; and
generating a deployed enterprise application based on the
enterprise application, the build/deployment information, and
the build/deployment mechanism.
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Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Dale US 6,049,664 Apr. 11, 2000
Green US 2002/0095650 A1 Jul. 18, 2002
Combined Business Object Facility - Business Object Component
Architecture Proposal, Version 1.2, OMG Document, bom/98, 06-04,
pages 1-420, June 26, 1998 (hereinafter “BOCA”).
Microsoft Press Computer Dictionary, Third Edition, Copyright 1997 by
Microsoft Corporation, pages 266, 267 & 327. (See PTO - form 892 - art
made of record).
Rejections on Appeal
1. Claims 1, 3, 5-25, 27, 29, 32, 34 and 36 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of BOCA with
Dale. Ans. 3.
2. Claims 2, 26, 28, 31, 33, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of BOCA with Dale
and Green. Ans. 3.
GROUPING OF CLAIMS
Appellants’ group the claims on appeal as follows (App. Br. 8):
1. Group 1
Claims 1, 5-25, 27, 32, and 36 stand or fall with independent claim 1.
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2. Group 2
Claims 2, 28, and 33 stand or fall with dependent claim 2.
3. Group 3
Claims 3, 29, and 34 stand or fall with dependent claim 3.
4. Group 4
Claims 26, 31, and 37 stand or fall with independent claim 26.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2010).
ISSUES AND ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions with respect to claims 1-3, 5-29, 31-34, 36, and 37, and we
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons and rebuttals
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Arguments. However, we highlight and address specific
findings and arguments regarding representative claims 1-3 and 26 for
emphasis as follows.
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1. Rejection of Claims 1, 5-25, 27, 32, and 36
Issue 1
Appellants argue (App. Br. 9-11) that the Examiner’s unpatentability
rejection of claim 1 under 35 U.S.C. § 103(a) over the combination of
BOCA with Dale is in error. These contentions present us with the
following issue:
Did the Examiner err in finding that Appellants’ claimed
method for generating an enterprise application is rendered
unpatentable over the combination of BOCA with Dale by
teaching or suggesting, inter alia, the step of “obtaining a tier
specification defining a tiered architecture upon which the
enterprise application is executed, wherein the tiered
architecture comprises a plurality of physical tiers upon which
the enterprise application is to be executed,” as recited in claim
1?
Analysis
Appellants argue “the claims require that the tier specification define a
tiered architecture that includes at least two physical tiers.” App. Br. 9
(emphasis in original). Appellants also contend:
Dale only allows the user to specify a single tier upon which to
deploy a component (See Dale, col. 6, 1. 61 - col. 7, l. 11). The
ability of the user to specify a specific tier upon which to
deploy the component (i.e., a portion of an application) falls
short of being equivalent to defining the physical tiers upon
which the application is to be deployed. The aforementioned
feature of Dale only serves to, at most, define one tier of the
physical platform as it relates to one component of the
application. The Examiner's attempt to equate the above
teachings of Dale with the tier specification reads out the
explicit wording of the claim limitation, namely, that the tier
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specification defines the plurality of physical tiers upon which
the enterprise application (as opposed to individual
components within the application) is to be executed.
App. Br. 10. Appellants further contend “even assuming arguendo that
specifying the tier upon which a given component is to be executed is
considered a tier specification, Dale only teaches the ability to specify a
single location for a component.” App. Br. 10 (citing Dale, col. 6:61 -
col. 7:11). In response, the Examiner disagrees and points out that Dale
expressly discloses creating a software application distributed across
multiple tiers.
Figure 4B and the related text (See Dale, Column 8, lines 29-
54), expressly disclose and illustrate a software application 19
(or enterprise application), defining the physical platform across
which the application, as a whole, is to be executed on, wherein
there are multiple physical tiers (Client 20a and Server 24a).
Accordingly, Dale clearly teaches specifying multiple physical
tiers, “wherein the tiered architecture comprises a plurality of
physical tiers upon which the enterprise application is to be
executed” as claimed.
Ans. 5. We disagree with Appellants and agree with the Examiner’s
findings.
In particular, Appellants have failed to compare and contrast the
Examiner’s specific findings in the Answer, including the Examiner’s
“Response to Arguments” section (Ans. 5) in which the Examiner rebutted
Appellants’ contentions in the Appeal Brief that “Dale only allows the user
to specify a single tier upon which to deploy a component. App. Br. 10
(citing Dale col. 6:61 – col. 7: 11). Accordingly, Appellants have not
provided sufficient evidence or arguments to convince us of any error in the
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Examiner’s characterization of the cited art and related claim construction.
Therefore, we sustain the Examiner’s rejection of representative claim 1, and
claims 5-25, 27, 32, and 36, grouped with claim 1.
2. Rejection of Claims 2, 28, and 33
Issue 2
Appellants argue (App. Br. 11-15) that the Examiner’s unpatentability
rejection of claim 2 under 35 U.S.C. § 103(a) over the combination of
BOCA with Dale and Green is in error. These contentions present us with
the following issue:
Did the Examiner err in finding that Appellants’ claimed
method for generating an enterprise application is rendered
unpatentable over the combination of BOCA with Dale and
Green by teaching or suggesting, inter alia, the step of
“specifying a second tiered architecture upon which the
enterprise application is executed to produce a second tier
specification,” as recited in claim 2?
Analysis
Appellants argue that:
[C]laim [2]
3
is intended to cover the retargetable feature of the
invention. Specifically, the claimed invention allows a user to
specify a single application usage specification (AUS) and a
single Business Object Specification (BOS), which define the
application to be generated. The user can then obtain a first tier
specification that defines the physical tiers upon which the

3
As pointed out by the Examiner (Ans. 5-6), Appellants have mistakenly
argued with reference to claim 3, where it appears that claim 2 was intended.
As did the Examiner, we interpret Appellants’ arguments for Group 2 as
being directed to claim 2, and not claim 3.
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application is to be executed. At some later point in time, the
user may wish to deploy the application on a second set of
physical tiers. Using the invention, the user only needs to
regenerate the application using the original AUS and BOS
along with the second tier specification, where the second tier
specification defines the second set of physical tiers.
App. Br. 12-13 (citing Spec. ¶ [0039]). In response, the Examiner finds:
[T]he tiered architecture is interpreted as a plurality of physical
tiers comprising the corresponding software applications. Here,
Green discloses modifying a number of tiers or software
architectures . . . wherein the software applications are
employed on a plurality of physical tiers.
Ans. 7 (citing Green ¶ [0040]). We disagree with Appellants, and agree with
the Examiner’s findings.
Furthermore, we note that Appellants fail to address any specific
teaching of the combination of BOCA, Dale, and Green with respect to the
limitations of claim 2, other than to allege that the reference combination
does not teach or suggest all the limitations.
Such statements are not considered to be arguments. 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Thus, we do not find Appellants’ arguments to be persuasive.
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Accordingly, Appellants have not convinced us of any error in the
Examiner’s characterization of the cited art and related claim construction.
Therefore, we sustain the Examiner’s rejection of representative claim 2, and
claims, 28 and 33, grouped with claim 2.
3. Rejection of Claims 3, 29, and 34
Issue 3
Appellants argue (App. Br. 15-17) that the Examiner’s unpatentability
rejection of claim 3 under 35 U.S.C. § 103(a) over the combination of
BOCA with Dale is in error. These contentions present us with the
following issue:
Did the Examiner err in finding that Appellants’ claimed
method for generating an enterprise application is rendered
unpatentable over the combination of BOCA with Dale by
teaching or suggesting, inter alia, the steps of “generating
build/deployment information based on the business object
specification and the application usage specification; [and]
generating a build/deployment mechanism based on the
business object specification and the application usage
specification,” as recited in claim 3?
Analysis
Appellants argue
[C]laim 3 requires not only that “build/deployment
information” and “build/deployment mechanism” be generated
but that they are generated using both the business object
specification and the application usage specification. In
maintaining his rejection, the Examiner appears to have
misconstrued the aforementioned claim limitations.
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App. Br. 15. Appellants further contend:
[T]he claim is directed to generation of “a build/deployment
information” and “a build/deployment mechanism,” where the
“build/deployment information” and the “build/deployment
mechanism” are subsequently used generate a deployed
enterprise application.
App. Br. 16. In response, the Examiner finds that:
[I]t is the Examiner[’s] position that Page 235, Section 3.1.1.4
Ease of development and deployment, discloses such
build/deployment information and mechanism limitations by
using the BOCA's teachings (see BOCA, Page 235, Attachment
A); for example, BOCA discloses: “Component assembly and
reuse is an inherently easy method for building and deploying
business object models” (see BOCA, Attachment A,
Component Assembly and Reuse, third paragraph) and “. . . the
entire application can be built with component assembly”
(BOCA, Attachment A, Component Assembly and Reuse,
second paragraph). Moreover, it is stated by BOCA that the
method they are disclosing is meant to generate a deployed
enterprise application; for example, “. . . the Business Object
Component Architecture provides for tailoring, configuration,
and integration of business objects within an enterprise”
(BOCA, Attachment A, last paragraph).
Ans. 9-10. We disagree with Appellants, and agree with the Examiner’s
findings.
In addition, we point out that Appellants have again failed to address,
in a substantive way, specific teachings of the combination of BOCA and
Dale with respect to the limitations of claim 3 as set forth by the Examiner,
other than to allege that the reference combination does not teach or suggest
all the limitations. Such arguments are not persuasive. See In re Lovin, 652
F.3d 1357.
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Accordingly, Appellants have not convinced us of any error in the
Examiner’s characterization of the cited art and related claim construction.
Therefore, we sustain the Examiner’s rejection of representative claim 3, and
claims, 29 and 34, grouped with claim 3.
4. Rejection of Claims 26, 31, and 37
Issue 4
Appellants argue (App. Br. 17) that the Examiner’s unpatentability
rejection of claim 26 under 35 U.S.C. § 103(a) over the combination of
BOCA with Dale and Green is in error. These contentions present us with
the following issue:
Did the Examiner err in finding that Appellants’ claimed
method for generating an enterprise application is rendered
unpatentable over the combination of BOCA with Dale and
Green by teaching or suggesting the steps of claims 1, 2, and 3
as identified above with respect to Issues 1, 2, and 3, and as
recited in claim 26?
Analysis
Appellants argue that “[i]ndependent claim 26 includes the limitations
of independent claim 1, dependent claim 2 and dependent claim 3. Thus,
independent claim 26 is a patentable over BOCA, Dale, and Green, for at
least the reasons discussed above with respect to independent claim 1,
dependent claim 2 and dependent claim 3.” App. Br. 17.
Based upon Appellants’ contention, we find that the patentability of
claim 26 turns on Issues 1, 2, and 3, discussed supra. Accordingly, we find
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that Appellants’ arguments that the Examiner erred with respect to the
rejection of independent claim 26 are not persuasive.
Accordingly, Appellants have not convinced us of any error in the
Examiner’s characterization of the cited art and related claim construction.
Therefore, we sustain the Examiner’s rejection of representative claim 26,
and claims, 31 and 37, grouped with claim 26.
CONCLUSIONS
(1) The Examiner did not err with respect to the rejection of claims
1, 3, 5-25, 27, 29, 32, 34 and 36 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of BOCA with Dale. We therefore
sustain the rejection.
(2) The Examiner did not err with respect to the rejection of claims
2, 26, 28, 31, 33, and 37 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of BOCA with Dale and Green. Therefore, we sustain
the rejection.
DECISION
The decision of the Examiner to reject claims 1-3, 5-29, 31-34, 36,
and 37 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED
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