Farver, Jennifer M. et al.

Patent Trials and Appeals Board

Jun 30, 2020

12959985 - (D) (P.T.A.B. Jun. 30, 2020)

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.
12/959,985 12/03/2010 Jennifer M. Farver 07470-0236001 6230
26161 7590 06/30/2020
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
HUYNH, LINDA TANG
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JENNIFER M. FARVER, JOSHUA GOLDSHLAG,
DAVID PARMENTER, and TIM WAKELING
____________________

Appeal 2019-005270
Application 12/959,985
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection2 of claims 49–100. Appeal Br. 12. Appellant has cancelled
claims 1–48. Appeal Br. 29. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE. We also newly reject claims 49–100 under 35 U.S.C.
§ 112(b) as being indefinite.

1 Appellant identifies the real party in interest as Ab Initio Technology LLC.
Appeal Br. 1.
2 Unless otherwise specified, “Final Act.” is the action mailed Dec. 1, 2017.
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CLAIMED SUBJECT MATTER
Claim 49 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
49. A method of processing data, the method including
[A.] presenting, in a first user interface of a first program, a
development environment configured to receive
information about one or more data processing programs;
[B.] receiving input in the first user interface, and, based on the
received information and input, generating one or more
structured documents;
[C.] storing the one or more structured documents in tangible
computer-readable data storage media;
[i.] the one or more structured documents representing a
specification defining a second user interface that
enables a user of the second user interface to
configure one or more data processing programs;
[ii.] the one or more structured documents including
(1) identification of user interface elements to be
presented in the second user interface,
(2) variables defining characteristics of the user
interface elements,
(3) identification of a data processing program
capable of being parameterized, wherein the
data processing program includes processing
steps to be executed by a computer system,
(4) identification of one or more parameters to be
used in parameterizing the data processing
program to generate a parameterized instance
of at least part of the data processing program,
wherein the parameterized instance may be
used to process input data received from at
least one data source, and wherein the
parameters affect execution of processing of
the input data;
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[D.] executing the second program;
[E.] providing the specification to the second program;
[F.] instantiating the second user interface by the second
program, including, based on the specification,
[i.] displaying at least one user interface element that
enables a user to affect a value of at least one
parameter, and
[ii.] displaying an interactive visualization of one or more
parameters or variables related to the data processing
program;
[G.] based on the value of that one parameter, generating a
parameterized instance of at least part of the data
processing program;
[H.] executing the parameterized instance on input data to
produce processed data, wherein the processed data may be
intermediate data or output data; and
[I.] displaying display data, based on at least some of the
processed data, in the second user interface.

REFERENCES3
The Examiner relies on the following references:
Name Reference Date
Wholey, III et al. US 7,164,422 B1 Jan. 16, 2007
Fowler US 2008/0082959 A1 Apr. 3, 2008

3 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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REJECTIONS
A.
The Examiner rejects claims 49–100 under 35 U.S.C. § 103 as being
unpatentable over the combination of Fowler and Wholey. Final Act. 6–13.
We select claim 49 as the representative claim for this rejection. The
contentions discussed herein as to claim 49 are determinative as to this
rejection. Therefore, we do not address the details of the merits of the
35 U.S.C. § 103 rejection of claims 50–100 further herein.
B.
The following grounds of rejection . . . have been withdrawn by
the [E]xaminer.
The [Examiner’s] rejection of claims 55–56, 58,
68–69, 73, 86, and 98 under 35 U.S.C. § 112(b) is
withdrawn.
The [Examiner’s] rejection of claims 49–100 under
35 U.S.C. § 101 is withdrawn.
Ans. 3.
PROSECUTION HISTORY
We limit this history to the rejections based on 35 U.S.C. §§ 102 and
103. Even this limited prosecution history is complex as there were eight (8)
Office Actions each responded to by Appellant with a significant
amendment to the pending claims. Claims 49–100 are on appeal and are
rejected under 35 U.S.C. § 103 using a reference combination unique to the
last Office Action. Claim 49 was present only in the last two (2) Office
Actions, and claims 50–100 were present only in that last Office Action.
1. On December 3, 2010, U.S. Patent Application 12/959,985 was
filed containing claims 1–29, and claiming benefit to U.S.
Provisional Application 61/286,293 filed December 14, 2009.
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2. On September 19, 2012, the Examiner mailed a non-final rejection
rejecting claims 1–15, 17, 28, and 29, under 35 U.S.C. § 102 based
on Hudson (US 2008/0270920 A1), and rejecting claims 16 and
18–27 under 35 U.S.C. § 103 based on Hudson in view of Engels
(US 2007/0233655 A1).
3. On December 17, 2012, Appellant filed an amendment (amending
all independent claims) and request for reconsideration.
4. On February 5, 2013, the Examiner mailed a final rejection again
rejecting claims 1–15, 17, 28, and 29, under 35 U.S.C. § 102 based
on Hudson, and rejecting claims 16 and 18–27 under 35 U.S.C.
§ 103 based on Hudson in view of Engels.
5. On August 5, 2013, Appellant filed a request for continued
examination (RCE) significantly amending claims 1–29 and
adding new claims 30–39.
6. On December 19, 2013, the Examiner mailed a second non-final
rejection rejecting claims 1–15, 17–19, and 28–39, under 35
U.S.C. § 102 based on Hudson, rejecting claims 16 and 23–27
under 35 U.S.C. § 103 based on Hudson in view of Engels, and
rejecting claims 20–22 under 35 U.S.C. § 103 based on Hudson in
view of Kudukoli (US 2001/0020291 A1).
7. On May 12, 2014, Appellant filed an amendment (cancelling
claims 28 and 29, significantly amending claims 1–27 and 30–39,
and adding new claims 40–43) and request for reconsideration.
8. On August 15, 2014, the Examiner mailed a second final rejection
rejecting claims 1–14, 16–27, and 30–43, under 35 U.S.C. § 102
based on Geller (US 5,844,554), and rejecting claim 16 under 35
U.S.C. § 103 based on Geller in view of Olsen (US 2003/0172193
A1).
9. On February 13, 2015, Appellant filed a second request for
continued examination (RCE) significantly amending claims 1–27
and 30–43, and adding new claims 44–46.
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10. On October 14, 2015, the Examiner mailed a third non-final
rejection rejecting claims 1–14, 16–27, and 30–46, under 35
U.S.C. § 103 based on Geller in view of Wholey (US
2007/0011668 A1), and rejecting claim 16 under 35 U.S.C. § 103
based on Geller in view of Wholey ’688 in view of Olsen.
11. On March 14, 2016, Appellant filed an amendment (significantly
amending claims 1–27 and 30–46, and adding new claim 47) and
request for reconsideration.
12. On July 7, 2016, the Examiner mailed a third final rejection
rejecting claims 1–27 and 30–47, under 35 U.S.C. § 103 based on
Stienhans (US 2005/0257198 A1) in view of Burns (US
2010/0262902 A1).
13. On January 6, 2017, Appellant filed a third request for continued
examination (RCE) cancelling claim 34, significantly amending
claims 1–27, 30–33, and 35–47, and adding new claims 48–49.
14. On April 10, 2017, the Examiner mailed a fourth non-final
rejection rejecting claims 1–27, 30–33, and 35–49, under 35
U.S.C. § 103 based on Fowler (US 2008/0082959 A1).
15. On August 8, 2017, Appellant filed an amendment (cancelling all
claims except claim 49, significantly amending claim 49, and
adding new claims 50–100) and request for reconsideration.
16. On December 1, 2017, the Examiner mailed a fourth final
rejection rejecting claims 49–100 under 35 U.S.C. § 103 based on
Fowler in view of Wholey (US 7,164,422 B1).
17. On May 29, 2018, Appellant filed a Notice of Appeal.
18. On December 31, 2018, Appellant filed an Appeal Brief.
19. On May 3, 2019, the Examiner mailed an Examiner’s Answer to
the Appeal Brief.
20. On June 28, 2019, Appellant filed a Reply Brief.
21. On June 10, 2020, an oral hearing was held before the Patent
Trial and Appeal Board.
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NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
49–100 under 35 U.S.C. § 112(b), as being indefinite.
Part D of independent claim 49 recites “the second program” which
lacks antecedent basis in claim 49. At the hearing held on June 10, 2020,
Appellant’s representative indicated the step of “executing the second
program” should read –executing a second program–. For purposes of
Appellant’s appeal of the § 103 rejections, we read part D of claim 49 as
–executing a second program–. We determine the “dataflow graph
execution environment” (Spec. 4:6–5:8) is exemplary of a second program.
Independent claims 77 and 89 contain the same indefiniteness as
claim 49. Dependent claims 50–76, 78–88, and 90–100, respectively
incorporate by dependency the indefiniteness of claims 49, 77, and 89.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellant’s
other contentions are not discussed in detail herein.
A.
The Examiner finds as to above part C.ii.(3) of claim 49:
Fowler discloses a method of processing data, the method
including
. . .
(3) identification of a data processing program capable of
being parameterized [para 0032-0034, parameterisable
specification data], wherein the data processing program
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includes processing steps to be executed by a computer system
[para 0018, 0026, specify pattern including instructions],
Final Act. 4–5.
B.
Appellant contends that the Examiner erred in rejecting claim 49
under 35 U.S.C. § 103 because:
Fowler did not suggest structured documents representing
a specification defining a second user interface that includes
identification of a data processing program capable of being
parameterized, as recited in Appellant’s Claim 49.
Appeal Br. 16.
C.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the rejections do not adequately
explain the Examiner’s findings of fact.
We agree with the Examiner that Fowler discloses “one or more
structured documents representing a specification defining a second user
interface [para 0010, 0015-0020, generate further specification data based on
original specification and input].” Final Act. 6. However, we agree with
Appellant that the language of claim 49 requires “identification of a data
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processing program capable of being parameterized,” and we disagree with
the Examiner’s reasoning (Final Act. 7 (repeating the page 22 reasoning of
the April 10, 2017 Non-Final Action)) that Fowler (paragraphs 18, 32–43,
26) without more is sufficient to show the argued claim limitation.
We conclude, consistent with Appellant’s arguments that there is
insufficient articulated reasoning to support the Examiner’s finding that
Fowler discloses the argued “identification of a data processing program
capable of being parameterized” claim limitation. However, we find that
Wholey does disclose “identification of a data processing program capable
of being parameterized,” at figures 14–16 and column 15, line 16 through
column 16, line 12. Wholey also discloses that these parameters are
provided to the program in a parameter grid and presented in a user interface
(column 9, lines 49–50).
We leave it to the Examiner to determine the determine the
appropriateness of any subsequent rejection under 35 U.S.C. § 103 based on
(1) substituting a structured document representing a specification as in
Fowler for the “parameter grid” of Wholey and (2) using such a structured
document to additionally define Wholey’s user interface for presenting
direct entry runtime parameters to a user (the user interface elements and
variables disclosed by Wholey at column 9, line 49 through column 10, line
52).
We conclude, consistent with Appellant’s arguments that there is
insufficient articulated reasoning to support the Examiner’s findings that
Fowler discloses, “identification of a data processing program capable of
being parameterized,” as required by claim 49. Therefore, we conclude that
there is insufficient articulated reasoning to support the Examiner’s final
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conclusion that claim 49 would have been obvious to one of ordinary skill in
the art at the time of Appellant’s invention.
D.
Although we do not address the individual merits of dependent claims
50–76, 78–88, and 90–100 further herein, we note that we agree with many
of Appellant’s numerous arguments that Fowler is lacking. However, as
above we find the Wholey reference (assigned to the present real party in
interest) potentially discloses or renders obvious many of these claim
limitations. Again, we leave it to the Examiner to determine the
appropriateness of any rejection under 35 U.S.C. § 103 of claims 50–76, 78–
88, and 90–100 over the combination of Wholey in view of Fowler. We
agree with the Examiner that the Wholey and Fowler references are each
highly relevant, just not in the Fowler in view of Wholey format used by the
Examiner.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 49–100 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 49–100 as being unpatentable
under 35 U.S.C. § 103 is reversed.
We newly reject claims 49–100 under 35 U.S.C. § 112(b) as being
indefinite.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
49–100 103 Fowler, Wholey 49–100
49–100 112(b) Indefiniteness 49–100
Overall
Outcome
49–100 49–100
TIME PERIOD FOR RESPONSE
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 Appellant, 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. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. 41.50(b)