Ex Parte Leming et alDownload PDFPatent Trial and Appeal BoardMay 17, 201613172708 (P.T.A.B. May. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/172,708 06/29/2011 46320 7590 05/19/2016 CRGOLAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 FIRST NAMED INVENTOR Matthew W. Leming 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. GB920110048US1 (739) 7799 EXAMINER DO,STEVENM ART UNIT PAPER NUMBER 2196 NOTIFICATION DATE DELIVERY MODE 05/19/2016 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): docketing@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW W. LEMING, MARK R. PHILLIPS, and FENGLIAN XU Appeal2014-009462 Application 13/172,708 Technology Center 2100 Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009462 Application 13/172,708 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The application is directed to "[a] method, system, and computer program product fo[r] automatically generating service definitions for application clients of a message broker." (Abstract.) Claim 1, reproduced below, is illustrative: 1. A method for automatically generating service definitions for application clients of a message broker comprising: retrieving a trace of interactions between different application instances and corresponding message queues in a message brokering system; analyzing messages in the trace to identify the application instances and related message exchange data; and, generating a service definition document for each identified application instance using the related message exchange data to describe computational services provided by the identified application instance. 1 Appellants identify International Business Machines Corporation as the real party in interest. (See App. Br. 2.) 2 Appeal2014-009462 Application 13/172,708 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Harrison et al. US 2002/0083210 Al Goyal et al. US 2003/0189603 Al Hite et al. US 2006/0053144 Al Bendiksen et al. US 2006/0085798 Al THE REJECTIONS June 27, 2002 Oct. 9, 2003 Mar. 9, 2006 Apr. 20, 2006 A. Claims 9-12 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. (See Final Act. 2-3.) B. Claims 1, 4, 5, 8, 9, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hite and Bendiksen. (See Final Act. 3-6.) C. Claims 2, 6, and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hite, Bendiksen, and Harrison. (See Final Act. 6-7.) D. Claims 3, 7, and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hite, Bendiksen, Harrison, and Goyal. (See Final Act. 7- 9.) APPELLANTS' CONTENTIONS Appellants argue that the rejections were improper for the following reasons: 1. With respect to the Section 101 rejection, "independent claim 15 [sic, 9] recites[] 'a computer readable storage medium having computer readable program code embodied therewith', not just a 'computer readable 3 Appeal2014-009462 Application 13/172,708 medium'" and "[t]urther, the specification distinguishes a 'storage medium' from a mere 'signal medium'." (App. Br. 8.) 2. Rite's "ontologies" are "not the same as a service definition which describes functionality offered by a web service" and "Hite does not teach generating a service definition using related message exchange data obtained from a trace of interactions between different application instances and corresponding message queues in a message brokering system." (App. Br. 10.) 3. "[I]n Hite the interactions are between the applications, not between different application instances and corresponding message queues in a message brokering system." (App. Br. 12.) ANALYSIS Section 101 With respect to the rejections under Section 101, we observe that another panel, in Ex parte Liu, et al., recently considered claims of the same real party in interest in which the relevant claim language and disclosure was the same as in the instant application, finding the claims non-statutory. See March 2, 2016 Decision in Appeal No. 2014-002408 (Serial No. 12/961,046), pp. 3-5.2 2 Appellants' claim 9 and claim 9 in Liu both read as follows: "A computer program product for ... , the computer program product comprising: a computer readable storage medium having computer readable program code embodied therewith, the computer readable program code comprising .... " Paragraphs 27-30 of Appellants' specification and paragraphs 21-24 of Liu 's specification are identical. 4 Appeal2014-009462 Application 13/172,708 We concur in the analysis of the Liu panel, as the Specification merely provides (in i-f 28) that a "computer readable storage medium may be, for example, but not limited to," certain media, and that "specific examples (a non-exhaustive list) of the computer readable storage medium would include" certain other media, compelling the conclusion that, even considering the examples in the Specification, the claimed "computer readable storage medium" encompasses non-statutory transitory signal media. We, therefore, sustain the Section 101 rejections in this appeal. See In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007) (explaining that "physical but transitory forms of signal transmission such as ... electrical signals through a wire, and light pulses through a fiber-optic cable" are non- statutory); Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) ("[W]e conclude that those of ordinary skill in the art would understand the claim term 'machine-readable storage medium' would include signals per se."). Obviousness "generating a service definition document for each identified application instance using the related message exchange data to describe computational services provided by the identified application instance" Appellants argue that Hite' s ontologies are not the claimed "service definition documents" because "an ontology, which represents a concept within a domain, is not the same as a service definition which describes functionality offered by a web service." (App. Br. 10.) We see no such distinction. Hite explains that "[t]he collection of ontology elements 402 associated with the service(s) provided by an application instance 202 forms an ontology 122," which "is associated with an application type identifying 5 Appeal2014-009462 Application 13/172,708 the domain 110 in which the application is contained (such as SAP, Siebel, or Oracle) and an application instance name." (Hite i-f 59.) The reference explains that "[e]ach ontology includes one or more ontology elements, which represent one or more components of the application including, e.g., input parameters, output parameters, and/or services (e.g., a service, a class method, function call, etc.)." (Id. i-f 10.) Appellants have not persuaded us that the ontology elements, which represent "input parameters, output parameters, and/or services" do not describe functionality of the application instance. Appellants also argue that "Hite does not teach generating a service definition using related message exchange data obtained from a trace of interactions between different application instances and corresponding message queues in a message brokering system." (App. Br. 10.) This argument is also unpersuasive. The Examiner relies on Hite for teaching creation of the service definitions from application interactions, but turns to Bendiksen for message queues in a message brokering system. (See Final Act. 4--5 ("Bendiksen teaches retrieving a trace of interactions between different application instances and corresponding message queues in a message brokering system").) Appellants are improperly arguing the references individually, where the rejection is based on a combination. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants finally argue that "in Hite the interactions are between the applications, not between different application instances and corresponding message queues in a message brokering system." (App. Br. 12.) We find the Examiners' response, that "only active applications have interaction and any active application is an instance of that application," convincing and 6 Appeal2014-009462 Application 13/172,708 further note that, as referenced above, Hite expressly discloses that its ontologies are associated with application instances. (See Hite i-f 60 ("The collection of ontology elements 402 associated with the service( s) provided by an application instance 202 forms an ontology 122.").) For these reasons, we sustain the rejections of claims 1, 4, 5, 8, 9, and 12 under 35 U.S.C. § 103(a). For the same reasons, we sustain the Section 103 rejections of claims 2, 3, 6, 7, 10, and 11, which are not argued separately. DECISION The rejections of claims 1-12 are 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)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation