Ex Parte Hind et al

Patent Trial and Appeal Board

Nov 26, 2013

11948342 (P.T.A.B. Nov. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN R. HIND and
NAVEENKUMAR V. MUGUDA
____________________

Appeal 2011-002201
Application 11/948,342
Technology Center 2400
____________________

Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
DEBRA K. STEPHENS, Administrative Patent Judges.

Per Curiam.

DECISION ON APPEAL

Appeal 2011-002201
Application 11/948,342

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Introduction
According to Appellants, the claims are directed to integrating
business objects within a message (Spec. ¶ [0001]).

Exemplary Claim
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method for messaging integration of a business object
comprising:

embedding a business object in message text in a
messaging session provided by a messenger;

applying an action to the business object from within the
message session of the messenger; and,

forwarding a copy of the message text to a backend
business component as a justification to the applied
action.

REFERENCES
Tumminaro
Hind
Hind
U.S. Pat. Pub. 2007/0244811 A1
U.S. Pat. App. 11/948,398
U.S. Pat. App. 11/948,323
Oct. 18, 2007
filed Nov. 30, 2007
filed Nov. 30, 2007

Appeal 2011-002201
Application 11/948,342

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REJECTIONS
The Examiner made the following rejections:
(1) Claims 1-18 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over (i) co-pending Application No. 11/948,398 in
view of Tumminaro and (ii) co-pending Application No.
11/948,323 in view of Tumminaro (Ans. 4-9).
(2) Claims 13-18 stand rejected under 35 U.S.C § 101 because the
claimed invention is directed to non-statutory subject matter
(Ans. 9-10).
(3) Claims 1-18 stand rejected under 35 U.S.C § 102(e) as being
anticipated by Tumminaro (Ans. 10-12).

We have only considered those arguments 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)(2011).

ISSUE 1
Double Patenting: Claims 1-18
Appellants argue the Examiner has not shown their invention as
recited in claims 1-18 is not patentably distinct from the subject matter
claimed in the two commonly owned patents, respectively (App. Br. 5-6).
Appellants point to a previous statement by the Examiner in co-pending
application 11/948,370 as support for their argument (App. Br. 5).
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We are not persuaded. The Examiner has set forth with specificity the
basis for the double patenting rejection for each of claims 1, 7, and 13. In
view of Appellants’ response, which does not directly address the rejection,
we summarily sustain the Examiner’s provisional rejections for obviousness-
type double patenting. Our affirmance of the double patenting rejections is
only provisional, and “might be obviated by future events.” In re Wetterau,
356 F.2d 556, 558 (CCPA 1966).

ISSUE 2
35 U.S.C. § 101: Claims 13-18
Appellants argue their invention as recited is directed to statutory
subject matter (App. Br. 7-10). The issue presented by this argument is:
Issue 2: Has the Examiner erred in concluding the invention as
recited is directed to non-statutory subject matter?

ANALYSIS
Appellants argue the claimed “computer usable storage medium” is
distinguishable from “computer usable medium” and the Examiner must
consider the addition of the term “storage” in the term (App. Br. 8 (emphasis
added)). According to the Appellants, the addition of the term “storage”
narrows the claimed phrase “computer-usable storage medium” from
Appellants’ explicitly defined phrase “computer-usable medium” (App. Br.
8; Spec.11, [0025]).
We are not persuaded by Appellants’ arguments. In particular, we do
not find any limitation on the form of the “computer usable storage medium”
in Appellants’ Specification. As such, we determine the ordinary and
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customary meaning of “computer-usable storage medium” to a person of
ordinary skill in the art is broad enough to encompass both non-transitory
and transitory media. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB
2013) (precedential) (a decision on an application to the same assignee as
the appeal before us).
Accordingly, the Examiner did not err in rejecting claims 13-18 as
being directed to non-statutory subject matter.

ISSUE 3
35 U.S.C. § 102(e): Claims 1-18
Appellants argue their invention is not anticipated by Tumminaro
(App. Br. 9-18). The issue presented by these arguments is:
Issue 3: Has the Examiner erred in finding Tumminaro discloses the
limitations as recited in claim 1?

ANALYSIS
Appellants contend the Examiner misconstrues the term “business
object” and has not produced any substantial evidence as to the meaning of
the term “business object” (App. Br. 13-14; Reply Br. 10). According to
Appellants, Tumminaro discloses text; however, this text does not
encapsulate lower-level objects that implement a business process or
simulate corporate procedures and translate into software objects (App. Br.
14).
Initially, as a matter of claim construction, we note Appellants have
not explicitly defined the term “business object” but point us to disclosure in
the Specification describing a business object encapsulates traditional lower-
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level objects that implement a business process (Spec. ¶ [0004]). However,
this disclosure is not a definition. Appellants have not proffered sufficient
evidence or argument to persuade us of error in the Examiner’s
interpretation.
Moreover, even interpreting “business object” as Appellants urge us,
we agree with the Examiner that Tumminaro discloses “embedding a
business object in message text in a messaging session provided by a
messenger” as recited in claim 1 (Ans. 10-11 and 18-19). Appellants assert
typing of the “‘command’” into the message does not disclose the claimed
“‘embedding a business object in message text in a messaging session
provided by a messenger’” (Reply Br. 12).
We are not persuaded by Appellants’ arguments. Specifically, we
agree with the Examiner that Tumminaro discloses a business object
(keyword) encapsulates traditional lower-level objects that implement a
business process, i.e., a functionality that implements a business process
(e.g., Pay, Request Pay, Balance, History) (Ans. 18-19). Therefore,
Tumminaro discloses “embedding a business object in message text in a
messaging session provided by a messenger” as recited in claim 1.
Appellants next contend the Examiner has not shown Tumminaro
discloses “‘applying an action to the business object from within the
message session of the messenger’” (App. Br. 14). Specifically, Appellants
argue although Tumminaro teaches receiving an SMS message, this is not an
action being applied to a business object from within the message session of
the messenger (id.). Appellants further assert entering of a keyword cannot
be both embedding the business object and applying an action to the
business object, and a user sending the keyword command to the payment
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server is not the recited “applying an action” step (App. Br. 15; Reply Br.
12).
The Examiner finds the user sending the SMS message is “applying
an action” to the business object because the keyword together with
additional information in the text body constructs a command that is then
sent (Ans. 19-20).
We agree with the Examiner, and therefore, find Tumminaro teaches
“applying an action to the business object from within the message session
of the messenger” as recited in claim 1.
Appellants also argue Tumminaro does not disclose “‘forwarding a
copy of the message text to a backend business component as a justification
to the applied action’” (App. Br. 16). According to Appellants, although
Tumminaro teaches documenting the transaction by sending the transaction
amount and description of the transaction to a service, the transaction
amount and the description of the transaction do not disclose the claimed
message text in which the business object is embedded (App. Br. 17-18).
Again, we are not persuaded by Appellants’ arguments. We agree
with the Examiner’s findings (Ans. 10-11 and 20-21).
Accordingly, we are not persuaded the Examiner erred in finding
Tumminaro discloses the invention as recited in independent claim 1 and as
commensurately recited in independent claims 7 and 13. Dependent claims
2-6, 8-12, and 14-18 were not separately argued, and therefore, these claims
fall with their respective independent claims. Thus, we sustain the rejection
of claims 1-18 under 35 U.S.C. § 102(b) as anticipated by Tumminaro.

Appeal 2011-002201
Application 11/948,342

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DECISION
The Examiner’s provisional rejection of claims 1-18 on the grounds of
nonstatutory obviousness-double patenting is affirmed.
The Examiner’s rejection of claims 13-18 under 35 U.S.C. § 101 as
being directed to non-statutory matter is affirmed.
The Examiner’s rejection of claims 1-18 under 35 U.S.C. § 102(e) as
being anticipated by Tumminaro 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).

AFFIRMED

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