Ex Parte Subramaniam

Board of Patent Appeals and Interferences

May 1, 2012

10722408 (B.P.A.I. May. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUBHASHINI SUBRAMANIAM
____________

Appeal 2010-012252
Application 10/722,408
Technology Center 3600
____________

Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012252
Application 10/722,408

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 3-6, 8-11, 13-16,
18-21, 23-26, 28-31, and 33-36. We have jurisdiction to review the case
under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to providing users the ability to
customize work-flows (Spec. 2:6-7). Claim 1, reproduced below, is further
illustrative of the claimed subject matter.
1. A method of enabling a user to extend a work flow
for synchronization/consolidation of data between at least two
data sources, said work flow for execution in a meta directory
server, said method comprising:
providing, by a designer, a sequence of built-in tasks
which together when executed implement said work flow for
synchronization/consolidation of data between at least two data
sources, a built-in task in said sequence of built-in tasks
containing an extension point at a point of interest in said work
flow for users,
said work flow being designed for execution by multiple
users as corresponding instances,
wherein each user is provided the ability to specify a
corresponding custom task associated with said extension point
without editing said work flow, the custom task specified by a
user containing corresponding program logic to provide a
customization desired by the user,
said flow being designed to execute the specified desired
custom task in the corresponding instance if specified by
corresponding user at said extension point;
receiving from said user data indicating a custom task
associated with said extension point, wherein said custom task
is separate from said sequence of built-in tasks and contains a
program logic specified by said user for the corresponding
desired customization;
executing said custom task when said extension point is
reached during execution of said built-in task in an instance of
said work-flow for said user; and
Appeal 2010-012252
Application 10/722,408

3
continuing execution of said sequence of built-in tasks
from said extension point in said built-in task after executing
said custom task in said instance such that all of said sequence
of built-in tasks are executed to complete
synchronizing/consolidating data between said two data
sources.

Claims 1, 3-6, 8-11, 13-16, 18-21, 23-26, 28-31, and 33-36 stand
rejected under 35 U.S.C. § 112, 1st paragraph, for failing to comply with the
written description requirement; claims 1, 3, 4, 8-11, 13, 14, 18-21, 23, 24,
28-31, and 32-34 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Chatterjee (US 5,774,661, iss. Jun. 30, 1998) in view of Hansen (US
7,013,316 B1, iss. Mar. 14, 2006) and Bacon (US 6,430,538 B1, iss. Aug. 6,
2002); and claims 5, 6, 15, 16, 25, 26, 35, and 36 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Chatterjee in view of Hansen, Bacon,
and Randell (US 5,745,687, iss. Apr. 28, 1998).
We AFFIRM.

ISSUES
Did the Examiner err in asserting that the Specification fails to
provide written description support for “specify[ing] a corresponding custom
task associated with said extension point without editing said work flow,” as
recited in independent claim 11?

1 For this rejection, we choose independent claim 1 as representative of
claims 1, 3-6, 8-11, 13-16, 18-21, 23-26, 28-31, and 33-36. See 37 C.F.R. §
41.37(c)(1)(vii).
Appeal 2010-012252
Application 10/722,408

4
Did the Examiner err in asserting that a combination of Chatterjee,
Hansen, and Bacon renders obvious independent claim 12?
Did the Examiner err in asserting that a combination of Chatterjee,
Hansen, and Bacon renders obvious “determining a corresponding set of
extension points available in each of said sequence of built-in tasks,” as
recited in dependent claim 4?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact concerning Chatterjee and
Bacon, as set forth on pages 19-23 of the Examiner’s Answer.

Dictionary
FF1. “Customize” is defined as “to modify or build according
to individual or personal specifications or preference.” Dictionary.com
Unabridged (Random House, Inc.)
(http://dictionary.reference.com/browse/customize) (last accessed: Apr. 23,
2012).
FF2. “Edit” is defined as “to modify (a computer file) by, for
example, deleting, inserting, moving, or copying text.” Dictionary.com
Collins English Dictionary - Complete & Unabridged (10th Ed.,
HarperCollins Publ.) (http://dictionary.reference.com/browse/edit) (last
accessed: Apr. 30, 2012).

2 We choose independent claim 1 as representative of all claims, except
dependent claim 4. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2010-012252
Application 10/722,408

5
ANALYSIS
Written Description
We are not persuaded the Examiner erred in asserting that the
Specification fails to provide written description support for “specify[ing] a
corresponding custom task associated with said extension point without
editing said work flow,” as recited in independent claim 1 (App. Br. 9-10;
Reply Br. 1-2). Appellant asserts that “Figure 9 clearly demonstrates work
flow 920 (containing built-in tasks 910-919), which is not edited, while any
of a desired custom task (CT1-CT4) is associated with respective extension
points (EP1-EP4)” (App. Br. 10). However, page 21, lines 8-9 of the
Specification disclose that “Figure 9 contains a display screen illustrating the
manner in which a user may be provided the ability to customize a work
flow” (emphasis added), with the customizations occurring by adding CT 4
and CT 3 from custom tasks 950 to work flow 920 as tasks 961, 962,
altering work flow 920 (p. 21, l. 9 through p. 22, l. 10). Appellant has not
identified a definition in the Specification distinguishing “customize” from
“edit.” Indeed, the Specification does not even mention the term “edit” at
all, while independent claim 1 does not recite “customize.” Moreover, the
dictionary definition of “edit” (FF2) appears to subsume the dictionary
definition of “customize” (FF1). Accordingly, as one of ordinary skill
would construe “edit” as at least being the equivalent of “customize” under
these circumstances, we agree with the Examiner that customizing work
flow 920 by adding tasks 961, 962 from custom tasks 950 is editing the
work flow (Exam’r’s Ans. 4-5, 17-19). Thus, the aspect “without editing
said work flow” is not supported.

Appeal 2010-012252
Application 10/722,408

6
Independent Claim 1
We are not persuaded the Examiner erred in asserting that a
combination of Chatterjee, Hansen, and Bacon renders obvious independent
claim 1 (App. Br. 10-12; Reply Br. 2-6). Appellant asserts that “the
workflow builder display 300 of Figure 3 of Chatterjee is for contiguous
construction (akin to an editor),” and thus not customizable by a user, as
recited in independent claim 1 (Reply Br. 3-4). However, a developer is also
a user.
For the balance of Appellant’s arguments concerning independent
claim 1 (App. Br. 10-13; Reply Br. 2-6), we agree with and adopt the
Examiner’s findings and rationales, as set forth on pages 19-22 of the
Examiner’s Answer. We acknowledge the aforementioned issues, under 35
U.S.C. § 112, 1st paragraph, with the aspect of “specify[ing] a
corresponding custom task associated with said extension point without
editing said work flow.” Solely for the purposes of the obviousness
analysis, however, we refer to Figure 9 of the Specification, and construe the
above aspect to be met when a “main” work flow (920) with individual tasks
(910-919) has sub-work flows (930, 950) branching from one of those
individual tasks (910-919). To that end, we agree with the Examiner that
Chatterjee’s workbaskets (col. 6, ll. 22-26) and sub-work flows (col. 7, ll. 8-
13), and the personal subflows of Bacon (col. 9, ll. 6-13, 27-30, 44-53), all
of which branch from a “main” work flow task, properly correspond to
“specify a corresponding custom task associated with said extension point
without editing said work flow,” as recited in independent claim 1. While
Appellant appears to be attempting to claim a user only being able to
“customize” the work flow from options set forth in a pre-existing menu of
Appeal 2010-012252
Application 10/722,408

7
tasks, such an aspect is not set forth in the claims. See CollegeNet, Inc. v.
ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the
specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims).

Dependent Claim 4
We are not persuaded the Examiner erred in asserting that a
combination of Chatterjee, Hansen, and Bacon renders obvious “determining
a corresponding set of extension points available in each of said sequence of
built-in tasks,” as recited in dependent claim 4 (App. Br. 12-13; Reply Br.
6). We agree with the Examiner that the predefined conditional statements
of Chatterjee correspond to the recited “available extension points”
(Exam’r’s Ans. 22-23).
Appellant also asserts that “the ‘decision points’ merely imply a
choice of paths, but is not an inherent requirement that execution return to
such point and continue from there onwards” (Reply Br. 6). However, other
portions of Chatterjee are cited for disclosing the “return” aspect (Exam’r’s
Ans. 21-22).

DECISION
The decision of the Examiner to reject claims 1, 3-6, 8-11, 13-16, 18-
21, 23-26, 28-31, and 33-36 is AFFIRMED.

Appeal 2010-012252
Application 10/722,408

8
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

hh