Ex Parte LI

Patent Trial and Appeal Board

Jun 28, 2013

10907141 (P.T.A.B. Jun. 28, 2013)

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.
10/907,141 03/22/2005 Chang Li CA920040021US1 4141
46320 7590 06/28/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
06/28/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte CHANG LI 7
___________ 8
9
Appeal 2011-007412 10
Application 10/907,141 11
Technology Center 3600 12
___________ 13
14
15
Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK and 16
THOMAS F. SMEGAL, Administrative Patent Judges. 17
18
SMEGAL, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL 22
23
Appeal 2011-007412
Application 10/907,141
2

STATEMENT OF THE CASE1 1
Appellant seeks our review under 35 U.S.C. § 134 of the final 2
rejection of claims 1, 5, 9 and 13-21, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 35 4
U.S.C. § 6(b). 5
6
We AFFIRM-IN-PART. 7
8
Appellant’s Invention 9
Appellant invented a computer implemented method and system for 10
providing transaction oriented conflict resolution for an electronic commerce 11
application (App. Br. 2). 12
13
Illustrative Claim 14
An understanding of the invention can be derived from a reading of 15
exemplary claim 1, which is reproduced below: 16
17
1. A computer implemented method for providing 18
transaction oriented conflict resolution for an electronic 19
commerce application, the computer implemented method 20
comprising: 21
obtaining one or more promotions each having at least 22
one associated policy; 23
creating a context object containing a plurality of objects 24
indicative of an initial state of a computer system; 25
creating a control object containing clones of the 26
plurality of objects contained within the context object; 27

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 13, 2010) and Reply Brief (“Reply Br.,” filed January
20, 2011) and the Examiner’s Answer (“Ans.,” mailed November 22, 2010).
Appeal 2011-007412
Application 10/907,141
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applying the one or more promotions to the control 1
object; 2
checking for violation of the at least one policy 3
associated with the respective one or more promotions; and 4
based upon the checking, selecting between 5
committing the promotion upon no violation being 6
found, and 7
rolling back the computer system to the initial state 8
indicated by the context object and ending the transaction. 9
10
Prior Art Relied Upon 11
The Examiner relies upon the following prior art as evidence of 12
unpatentability: 13
Rich US 6,457,065 Sep. 24, 2002 14
Baron US 7,076,444 Jul. 11, 2006 15
16
Rejections on Appeal 17
18
The Examiner rejects the claims on appeal as follows: 19
Claims 1, 5 and 13-18 stand rejected under 35 U.S.C. § 101 as being 20
directed to non-statutory subject matter. 2 21
Claims 1, 5 and 9 stand rejected under 35 U.S.C. § 112, second 22
paragraph, as being indefinite for failing to particularly point out and 23
distinctly claim the subject matter which applicant regards as the invention. 24
Claims 1, 5, 9 and 13-21 stand rejected under 35 U. S.C. § 103(a) as 25
being unpatentable over the combination of Baron and Rich. 26
27

2 As the Examiner correctly points out (Ans. 2), claims 5 and 16-18 also
stand rejected under 35 U.S.C. §101 as being directed to non-statutory
subject matter.
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4

ISSUES 1
The issues are whether the Examiner: 2
(1) failed to substantiate that claims 1, 5 and 13-18 are directed to non-3
statutory subject matter as being abstract subject matter (claim 1) or 4
unpatentable software (claim 5); 5
(2) failed to substantiate that claims 1, 5 and 9 are indefinite for use of 6
the term “object”; and 7
(3) failed to substantiate that claims 1, 5, 9 and 13-21 are unpatentable 8
over the combination of Baron in view of Rich. 9
10
ANALYSIS 11
Nonstatutory Subject matter Rejection 12
Claims 1 and 13-15 13
We are persuaded of error on the part of the Examiner that method 14
claims 1 and 13-15 recite nonstatutory subject matter. This is because the 15
use of a computer and its database is inextricably required throughout the 16
creating, applying, checking and selecting steps recited by the method 17
claims. Furthermore, we agree with Appellant that determining the need for 18
a step such as “rolling back the computer system” is central to the purpose of 19
the method and imposes a meaningful limit on the scope of the method 20
claims (Reply Br.6). 21
We therefore reverse the rejection of claims 1 and 13-15 under 35 22
U.S.C. § 101. 23
Claims 5 and 16-18 24
We are also persuaded that the Examiner erred in rejecting claims 5 25
and 16-18 by asserting a lack of physical structure in reciting “modules” that 26
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the Examiner contends are non-statutory software (Ans. 6). As Appellant 1
points out, “a person skilled in the art would understand that modules are at 2
least a combination of software and hardware because any software would 3
need to be executed by the computer to provide any functionality” (Reply 4
Br. 7). Further, we agree with Appellant that in reciting a “computer 5
system,” claim 5 includes “a concrete thing, consisting of parts, or of certain 6
devices and combination of devices” (Id., citing to In re Nuitjen, 500 F.3d 7
1346 (Fed. Cir. 2007)). 8
Accordingly, we find that the Examiner has failed to establish a prima 9
facie showing that claims 5 and 16-18 are directed to non-statutory subject 10
matter. 11
For this reason, we reverse the rejection of claims 1, 5 and 13-18 12
under 35 U.S.C. § 101. 13
14
Indefiniteness Rejection 15
Claims 1, 5 and 9 16
We are persuaded by Appellant’s arguments that the Examiner erred 17
in rejecting claims 1, 5 and 9 under 35 U.S.C. § 112, second paragraph, for 18
failing to particularly point out and distinctly claim the subject matter which 19
applicant regards as the invention. The Examiner contends that the term 20
“object” is vague and indefinite. However, the Examiner acknowledges that 21
at paragraph 32 of the specification, the system “also uses object technology 22
to externalize the process of determining the list of promotions” and 23
concedes that “for purposes of examination, an object is taken to be a 24
software construct containing data and/or programmed process(es)”(Ans. 4). 25
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We agree with Appellant that the term “object” has an extremely well-1
recognized meaning to those skilled in the art (App. Br. 7, n. 3, reciting a 2
definition of “object” from Wikipedia.org where we cite a well known 3
definition for the term). 4
By way of further extrinsic evidence of its well-known meaning, the 5
American Heritage Dictionary of the English Language provides two 6
definitions of “object’ in the computer science field, including “[a] discrete 7
item that can be selected and maneuvered, such as an onscreen graphic”; and 8
“[i]n object-oriented programming, objects include data and the procedures 9
necessary to operate on that data.” AMERICAN HERITAGE DICTIONARY OF 10
THE ENGLISH LANGUAGE (5th ed. 2011). 11
Based on the foregoing, we find that the Examiner has failed to 12
establish a prima facie showing that the term “object” is vague and 13
indefinite. For that reason, we reverse the rejection of claims 1, 5 and 9 14
under 35 U.S.C. § 112. 15
16
Obviousness Rejection 17
Claims 1, 5 and 9 18
“Section 103 forbids issuance of a patent when ‘the differences 19
between the subject matter sought to be patented and the prior art are such 20
that the subject matter as a whole would have been obvious at the time the 21
invention was made to a person having ordinary skill in the art to which said 22
subject matter pertains.’” KSR Int’l Co. Teleflex, Inc., 550 U.S. 398, 406 23
(2007). The mere existence of differences between the prior art and the 24
claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 25
230 (1976). The issue is “whether the difference between the prior art and 26
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the subject matter in question ‘is a difference sufficient to render the claimed 1
subject matter unobvious to on skilled in the applicable art’” Dann, 425 U. 2
S. at 228-29 (citation omitted). The question before us is whether sufficient 3
difference exists between the prior art and Appellants’ claims to render the 4
claims nonobvious. 5
We are not persuaded of error by Appellant’s arguments that the 6
combination of prior art references fails to teach or suggest “testing 7
promotions for conflicts without changing the state of the system when there 8
is a conflict” (Reply Br. 8). While the Examiner acknowledges that Baron 9
does not disclose using “object” technology (Ans. 21), the Examiner 10
correctly notes that Rich is properly combined for the reason that it discloses 11
object technology (col. 7, l. 33-col. 8, l. 18). In particular, Rich describes 12
that in using the transaction approach, “all changes that the user wants to 13
make to an object within the scope of a transaction are made first to an 14
internal copy (called a ‘version’) of the object, without actually updating the 15
persistent, stored object itself” (col. 7, l. 67 – col. 8, l. 4). Thus, Rich 16
discloses that it was known in the prior art at the time of the invention to use 17
internal copies, i.e., clones, in evaluating promotions so as to enable “rolling 18
back the computer system” to the initial state. 19
Accordingly, we affirm the rejection of independent claims 1, 5 and 9 20
under 35 U.S.C. § 103 as being unpatentable over the combination of Baron 21
and Rich. 22
Claims 13-21 23
We will also sustain the Examiner’s rejection of claims 13-21 because 24
Appellant has not argued the separate patentability of these dependent 25
claims (App. Br. 10). 26
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DECISION 1
The decision of the Examiner to reject claims 1, 5, 9 and 13-21 is 2
affirmed. 3
No time period for taking any subsequent action in connection with 4
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R. § 5
1.136(a) (1) (iv). 6
7
AFFIRMED 8
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mls 14