Ex Parte Patil et al

Board of Patent Appeals and Interferences

Apr 29, 2010

09792705 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BASAVARAJ PATIL, KHIEM LE, STEFANO FACCIN, CURT
WONG, SRINIVAS SREEMANTHULA, and KENGATHARAN
SIVALINGAM
____________

Appeal 2009-001202
Application 09/792,705
Technology Center 2400
____________

Decided: April 29, 2010
____________

Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JAMES R. HUGHES, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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The Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection
of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and device for
controlling service execution in a communication network (Spec. 1).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method for controlling service execution in a control point
of a communication network, said method comprising the steps
of:

a) loading a service script for a user in response to the receipt of
an incoming message wherein said service script is void of
service logic;

b) checking whether a service is triggered based on a comparison
of said incoming message with said loaded service script; and

c) activating a service in an external service execution
environment, where a pre-existing service logic is provided, if a
service triggering has been determined in said checking step.

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The Reference
The Examiner relies on the following reference as evidence:
Glitho US 5,991,803 Nov. 23, 1999

The Rejection
Claims 1-19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Glitho.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellant 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) (2008).

II. ISSUE
Has the Examiner erred in finding that Gilitho teaches “wherein said
service script is void of service logic” and “activating a service in an external
service execution environment, where a pre-existing service logic is provided”
as recited in claim 1?

III. PRINCIPLES OF LAW

Scope of Claim
During prosecution before the USPTO, claims are to be given their
broadest reasonable interpretation, and the scope of a claim cannot be
narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1053-54 (Fed. Cir. 1997). The Office must apply the broadest
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reasonable meaning to the claim language, taking into account any definitions
presented in the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (citing In re Bass, 314 F.3d 575, 577 (Fed. Cir.
2002)).
“Giving claims their broadest reasonable construction ‘serves the public
interest by reducing the possibility that claims, finally allowed, will be given
broader scope than is justified.’” Id. (quoting In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984)) (internal citation omitted). “Construing claims broadly
during prosecution is not unfair to the applicant . . . because the applicant has
the opportunity to amend the claims to obtain more precise claim coverage.”
Id.

Anticipation
"[A]nticipation of a claim under § 102 can be found only if the prior art
reference discloses every element of the claim . . . ." In re King, 801 F.2d
1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
"[A]bsence from the reference of any claimed element negates anticipation."
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986),
overruled on other grounds by Knorr-Bremse Systeme Fuer Nutzfahrzeuge
GmbH v. Dana Corp., 383 F.3d 1337 (Fed.Cir. 2004).
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d
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628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim. We determine the scope of the claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d at 1364. The properly interpreted claim must then be compared
with the prior art.
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference
that discloses, either expressly or inherently, each limitation of a claim
invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Specification
1. The Specification describes that “service scripts provide a means
to create and manage value added service in a centralized session but
distribute fully the service execution.” and “[i]n general, service scripts
provide an efficient, portable and powerful tool for executing control
instructions in a distributed network.” (Spec. 1.)

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Giltho
2. Giltho discloses that a service execution agent 14 interprets or maps the
generic primitives 22 operating on the SIBs 24 to identify the service logic
execution environment specific primitives 26 and service independent SIBs 28
to create an equivalent service logic execution environment (SLEE) specific
service creation information (col. 4, l. 55-col. 5, l. 15).
3. Glitho further discloses that “[t]he service independent building blocks
24 comprise descriptions of basic functions, where any service may be
defined (to create service logic) by appropriately having the primitives 22
operate in a certain order and on certain ones of the blocks.” (col. 4, ll. 34-38)
and “[t]he primitives 22 comprise orders (commands or instructions) . . . .”
(col. 4, ll. 21-23). Glitho also discloses that the service execution agent 14
receives the primitives 22 and SIBs 24 from the service creation environment
10 and interprets them “to identify corresponding service logic execution
environment specific primitives 26 and service independent building blocks
28 (i.e., SLEE specific service creation information) for the certain service
control point 18 upon which the service is to be provided.” (col. 4. ll. 61-65).
4. Glitho also discloses that when a different service is requested, different
SIBs may be identified from the same generic service creation information to
create the SLEE service creation information (col. 5 ll. 10-15).

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V. ANALYSIS

The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of unpatentability in the
Examiner’s Answer. Therefore, we look to Appellants’ Briefs to show error
therein. Id.
Grouping of Claims
The Appellants have elected to argue claims 1-19 together as a group
(App. Br. 5). Therefore, we select independent claim 1 as the representative
claim for this group, and we will address the Appellants’ arguments with
respect thereto. 37 C.F.R. § 41.37 (c)(1)(vii). See In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987).

35 U.S.C. §102 rejection
We start our review by first determining the appropriate scope of the
argued claim limitations in the independent claims. The claims themselves
and Appellants’ Specification do not define the argued terms. Therefore, we
give these terms their broadest reasonable interpretations.
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Furthermore, in light of the breadth of the Appellants’ Specification, we
broadly but reasonably construe the claimed limitation “a service script” as
any code or command or list of codes or commands for creating or managing
a service (FF 1). We also broadly but reasonably construe the claimed
limitation “service execution environment” as any service execution
environment. We further broadly yet reasonably construe the claimed
limitation “service logic” as any service logic (either specific or generic) that
could be used for a service.
We now address the merits of the Appellants’ contentions under our
claim construction.
With respect to claim 1, the Appellants contend that “[i]n the claimed
invention, this separation between service logic and service script is defined
by the service script being void of service logic (emphasis added) and by the
service logic pre-existing in an external service execution environment
(emphasis added).” (Reply Br. 4). According to the Appellants, Glitho’s
service script is not void of service logic, but creates by mapping or
interpreting the defined primitives selectively operating on the service
independent building blocks (Reply Br. 5). The Appellants further contend
that the service logic of Glitho is not pre-existing, instead it is created in
response to loading a service script having logic that dictates how to generate
the resultant service logic. (See generally App. Br. 7, first para.; Reply Br. 4,
first para.).
We disagree with Appellants’ narrow interpretation of the disputed
claim terminology and the reading of the Glitho reference by the Appellants.
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We find Giltho teaches that the separate set of primitives 22 working with the
service execution agent 14 generates a service script (commands or codes) and
operates on the separate SIBs (either 24 or 28) to create the SLEE specific
service creation information (FF 2). In our view, the claimed limitation
“service script” can be read on either the generic primitives 22 or specific
primitives 26 under our claim construction because they are the commands or
codes to create a service. According to Giltho, a separate set of service
independent building blocks 24 (SIBs), i.e., a set of generic service logic, and
a separate set of SLEE specific SIBs 26, i.e., a set of specific service logic, are
provided from the generic service creation environment 10 (FF 3). For
different service requests, by choosing or identifying different specific SIBs
with the same primitives (scripts), a different SLEE specific service can be
created (FF 4). As such, the service script, i.e., primitives, (either generic or
specific) does not contain the service logic. Finally, we conclude that the
SIBs are pre-existing because the SIBs are independent from the SLEE
specific service and can be provided by another service creation environment
10 (FF 4).
Therefore, based on the record before us, we find the Appellants have
not demonstrated error in the Examiner’s showing of anticipation.
Accordingly, we sustain the Examiner’s rejection of representative
claim 1 as being anticipated by Giltho under 35 U.S.C. § 102. Independent
claim 12 contains similar limitations, and the Appellants present similar
arguments thereto which we similarly do not find persuasive of error in the
Examiner’s showing of anticipation. Therefore, we also sustain the
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Examiner’s anticipation rejection of independent claim 12.
We also sustain the Examiner’s anticipation rejection of dependent
claims 2-11 and 13-19, which have not been separately argued. See 37 C.F.R.
§ 41.37 (c)(1)(vii)(2008). In re Nielson, 816 F.2d at 1572.
CONCLUSION
Based on our consideration of the totality of the record before us, we
have weighed the evidence of anticipation in the teachings of the applied
reference, with Appellants’ countervailing evidence and arguments for
anticipation and conclude that the claimed invention encompassed by
appealed claims 1-19 is anticipated by Giltho under 35 U.S.C. § 102.

VII. DECISION
We affirm the rejection of claims 1-19 under 35 U.S.C. § 102.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
erc

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