Ex Parte Holdsworth et alDownload PDFPatent Trial and Appeal BoardJul 14, 201412274402 (P.T.A.B. Jul. 14, 2014) Copy Citation 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. 12/274,402 11/20/2008 Simon Antony Holdsworth GB920070086US1 1168 58139 7590 07/15/2014 IBM CORP. (WSM) c/o WINSTEAD P.C. P.O. BOX 131851 DALLAS, TX 75313 EXAMINER OSMAN, RAMY M ART UNIT PAPER NUMBER 2457 MAIL DATE DELIVERY MODE 07/15/2014 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 SIMON ANTONY HOLDSWORTH and GREGORY LOUIS TRUTY ________________ Appeal 2012-000654 Application 12/274,402 Technology Center 2400 ________________ Before JAMES T. MOORE, ANDREW J. DILLON, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-14. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1-14 are rejected under 35 U.S.C. § 102(e) as anticipated by Roestenburg (US 7,249,197 B1; issued July 24, 2007). Ans. 4-5. We reverse, and enter a new ground of rejection. Appeal 2012-000654 Application 12/274,402 2 STATEMENT OF THE CASE Appellants’ invention relates to processing messages and locating elements within a message. Spec. ¶ 1. Claim 1 is illustrative and reproduced below: 1. A method for a mediation processing node computer processor to update an electronic message, comprising: receiving an electronic message for processing by the mediation processing node computer processor; deducing from a declared interface of the mediation processing node computer processor that one or more message values will be updated by the mediation processing node computer processor as a result of its processing; obtaining one or more updated values using the interface of the mediation processing node computer processor; and applying the updates to the message. ANALYSIS The Examiner finds Roestenburg describes all limitations of claim 1. Ans. 4-5. The Examiner finds Roestenburg’s proxy server identifying occurrences of attributes relating to currency describes the recited deducing from a declared interface. Ans. 4-5 (citing col. 10, ll. 44-45). Appellants, among other arguments, argue “Roestenburg discloses that proxy server 20 converts an amount of money from one currency to another currency; however, the Examiner has not pointed to any language in Roestenburg directed to a declared interface or deducing from a declared interface that one or more message values will be updated.” App. Br. 5. Appellants further explain “[a] software module is a portion of a program Appeal 2012-000654 Application 12/274,402 3 which accomplishes a particular function and contains everything necessary to accomplish this function. The Examiner has not provided any basis in fact and/or technical reasoning to support the assertion that a software module corresponds to a declared interface.” App. Br. 5; see also Reply Br. 2-5, 6-8. In response, the Examiner explains Appellants have not provided any facts or technical explanations as to how a proxy module of Roestenburg, which is used to obtain user currency preferences, is different from the claimed “interface” which is used to obtain “updated values”. The converted currency preferences of Roestenburg [are] seen to be equivalent to the claimed “updated values”. Accordingly tasks performed by the proxy server (like the claimed deducing steps) are seen to be inherently performed by a proxy software module which is functionally equivalent to the claimed “interface”. Appellant has failed to dispute this functional equivalency on any technical grounds. Ans. 6. Appellants’ arguments persuade us that the Examiner erred in finding that Roestenburg describes the recited deducing from a declared interface. This appeal hinges on one question: what is a “declared interface”? Appellants’ Specification does not define the term “declared interface” but does describe “[t]he values to be updated could, for example, be deduced from the names of the declared interface’s method calls or could be deduced from additional information exposed by the declared interface.” Spec. ¶ 9. Appellants’ Specification also describes “[t]he mediation [40, in an embodiment illustrated in Fig. 2a,] exposes at its declared interface (I/F) 45 a list of ‘set’ and ‘get’ methods.” Spec. ¶ 33. Appellants’ claim 1 recites “deducing from a declared interface.” The term “declaration” is defined in the computer context as: Appeal 2012-000654 Application 12/274,402 4 n. A binding of an identifier to the information that relates to it. For example, to make a declaration of a constant means to bind the name of the constant with its value. Declaration usually occurs in a program’s source code; the actual binding can take place at compile time or run time. See also bind, constant, data declaration, data type, identifier, instruction, routine, type declaration, variable. MICROSOFT COMPUTER DICTIONARY 149 (5th ed. 2002). Thus, we conclude a broad but reasonable construction of “declared interface” requires a binding of one or more names to the interface, and requires exposing information including the one or more bound names. This construction is consistent with the claim language, the Specification, and the plain meaning of “declaration” in the computer context. Roestenburg (col. 10, ll. 44-47) describes “[t]he proxy server 20 then identifies occurrences of the attributes relating to currency and retrieves (step 56) the personal information from the second storage device 22 corresponding to the attribute relating to currency.” We do not see a compelling explanation in the record of how Roestenburg deduces from a declared interface as recited in claim 1, which requires deducing from an interface exposing information including one or more bound names. Although Roestenburg’s proxy server does identify attributes in an intercepted generic web page, there is no explanation of how Roestenburg deduces from the proxy server (mapped by the Examiner to the recited declared interface) the names of these attributes. Further, there is no explanation of how Roestenburg’s proxy server (mapped by the Examiner to the recited declared interface) includes a binding of one or more names and exposes information from which deduction may take place. In short, claim 1 Appeal 2012-000654 Application 12/274,402 5 is narrower than identifying attributes in a generic web page — the claim requires deducing from a declared interface (deducing from an interface exposing information including one or more bound names), which is not described by Roestenburg’s proxy server. We, therefore, do not sustain the Examiner’s rejection of claim 1, or of claims 2-7, which depend from claim 1. We also do not sustain the Examiner’s rejection of independent claim 8, which recites “computer-readable program code configured to deduce from a declared interface of the mediation processing node computer processor that one or more message values will be updated by the mediation processing node computer processor as a result of its processing,” or of claims 9-14, which depend from claim 8. NEW GROUND OF REJECTION The following new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). Claims 8-14 are rejected under 35 U.S.C. § 101 as being directed toward non-statutory subject matter. Claims 8-14 recite a computer program product disposed on a computer-readable storage. Appellants’ Specification describes “[t]he computer-usable or computer-readable medium may be, for example but not limited to, an electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system, apparatus, device, or propagation medium.” Spec. ¶ 24 (emphasis added). Therefore, we find Appellants’ claimed invention encompasses transitory propagating signals, which are unpatentable under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter). Appeal 2012-000654 Application 12/274,402 6 ORDER The Examiner’s decision rejecting claims 1-14 is reversed. We enter a new ground of rejection of claims 8-14. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50 (b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED 37 CFR § 41.50(b) ELD Copy with citationCopy as parenthetical citation