International Business Machines Corporation

Patent Trials and Appeals Board

Feb 7, 2020

14573364 - (D) (P.T.A.B. Feb. 7, 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.
14/573,364 12/17/2014 Pierre D. Feillet GB920130125US1 2645
87220 7590 02/07/2020
Walder Intellectual Property Law (END)
C/O Walder Intellectual Property Law, P.C.
1701 N. Collins Blvd.
Suite 2100
Richardson, TX 75080
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
02/07/2020 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
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PIERRE D. FEILLET and PIERRE-ANDRE PAUMELLE

Appeal 2019-003592
Application 14/573,364
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
Appeal 2019-003592
Application 14/573,364

2
The claims stand finally rejected by the Examiner as follows:
Claims 1–5, 7–10, 16, 17, 19–22, 24, and 25 under pre-AIA 35 U.S.C.
§ 103(a) as obvious in view of Fellenstein et al., US 2005/0154789 A1,
published Jul. 14, 2005 (“Fellenstein”) and Cutler et al., US 2012/0005145
A1, published Jan. 5, 2012 (“Cutler”). Final Act. 8.
Claim 6, 18, and 23 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Fellenstein, Cutler, and Schuetze et al., US 2005/0065967 A1,
published Mar. 24, 2005) (“Schuetze”). Final Act. 19.
There are three independent claims on appeal, claims 1, 9, and 10.
Appellant argues the independent claims as a group. Appeal Br. 38. We
select claim 1 as representative. Claim 1 is reproduced below (bracketed
numbering added for reference to the recited claim limitations):
1. A method, in a data processing system, of making a decision
in a service oriented architecture, the method comprising:
[1] receiving, by a rule set analyzer in the data processing
system, a decision request from a source, wherein the decision
request comprises a plurality of user-defined parameters;
[2] generating, by a key generator in the data processing
system, a key based on relevant parameters in the plurality of
user-defined parameters, wherein the relevant parameters are
parameters to be used by a rule set in making the decision;
[3] searching, by the rule set analyzer, a cache to find a
match between the key and a key in a set of keys identified in
the cache;
[4] responsive to detecting a match between the key and
the key in the set of keys, retrieving, by the rule set analyzer,
the decision associated with the key in the set of keys from the
cache;
[5] returning, by the rule set analyzer, the retrieved
decision to the source of the decision request;
[6] responsive to failing to detect the match between the
key and the key in the set of keys, requesting, by a decision
response filter in the data processing system, the decision from
Appeal 2019-003592
Application 14/573,364

3
a rule engine on a server, wherein the rule engine uses the rule
set to make the decision;
[7] responsive to receiving the decision from the rule
engine, storing, by the decision response filter, the key and the
decision in the cache; and
[8] returning, by the rule set analyzer, the decision to the
source of the decision request.

Id. at 41 (Claims Appendix). Independent claim 9 is directed to a computer
program that would perform such a method and independent claim 10 is
directed to a system with a processor and memory that would perform such a
method. Id. at 44–45.

REJECTION BASED ON FELLENSTEIN AND CUTLER
Claim 1 is directed to a method “of making a decision in a service
oriented architecture.” In the first step of the claim, a decision request
comprising “a plurality of user-defined parameters” is received by a rule set
analyzer. The Specification explains that the rule set analyzer uses such
“parameters” to make the decision. Spec. ¶¶ 8, 29. The rule set analyzer “is
a component that is used when a rule set is authored and/or deployed for
execution by the rule engine.” Spec. ¶ 30.
In step [2] of the claim, a “key generator” generates a “key” based on
“relevant parameters.” The Specification explains that such a key “is
generated using only the parameters relevant to the decision making process,
i.e. discarding the parameters that do not drive the decision making process.”
Spec. ¶ 28. The key acts as an identifier of the decision. Spec. ¶ 39. The
Specification discloses that “[k]ey generation is well-known per se.” Spec.
¶ 28.
Appeal 2019-003592
Application 14/573,364

4
A “cache” is searched in the claim’s step [3] “to find a match between
the key and a key in a set of keys identified in the cache.” The cache is
computer memory. Spec. ¶ 61. When a match is found between the key and
the set of keys in the cache, the decision that matches the key is retrieved by
the rule set analyzer from the cache (step [4]) and the decision is returned to
the source of the request (step [5]).
When a match between keys is not detected, a decision is requested
from “a rule engine on a server” by “a decision response filter” (step [6]).
The rule engine uses a set of rules to make the decision. Spec. ¶ 25. The
Specification discloses that “[i]t is of course well-known per se to design
such rule engines.” Spec. ¶ 26. The Specification explains that the
“decision response filter . . . filters the relevant portions from the decision,
and optionally places wild cards in the decision to replace irrelevant
parameters.” Spec. ¶ 35. The decision is received from the rule engine, and
the key and decision are stored in the cache (step [7]). In the last step of the
claim (step [8]), the decision is returned to the source of the decision request.
In sum, a decision is requested and the claim identifies the decision in
a cache by searching for a match between the decision key and a set of keys
in the cache. If there is no match in the cache for the decision key, the
method uses a rule engine on a server to make the decision and stores this
new decision and new key for it in the cache.
The Examiner found that Fellenstein teaches steps [1]–[5], [7], and [8]
of claim 1. Final Act. 8–11. With respect to step [6] of claim 1, the
Examiner found that Fellenstein does not teach employing a rule set and
relevant parameters to make a decision upon failing to detect a match
between keys in the cache. Final Act. 9, 10–11. However, the Examiner
Appeal 2019-003592
Application 14/573,364

5
found that Cutler does teach this claim element/step. Id. at 9–10. The
Examiner determined it would have been obvious to one of ordinary skill in
the art to use Cutler’s rule engine in Fellenstein “to meet requirements in
decision making of Fellenstein.” Final Act. 12.
Appellant, in challenging the rejection, acknowledges:
Similar to the combination of Fellenstein and Cutler, the rule
set analyzer of the present invention retrieves the decision
associated with the key in the set of keys from the cache in
responsive to detecting a match between the key and the key in
the set of keys and returns the retrieved decision to the source
of the decision request.
Appeal Br. 36.
However, Appellant argues that “different from the combination of
Fellenstein and Cutler, [in the claimed method,] responsive to failing to
detect the match between the key and the key in the set of keys, a decision
response filter requests the decision from a rule engine on a server.” Id. at
36–37 (referencing step [6] of claim 1). Appellant also contends that step
[7] also is not described by the combination of Fellenstein and Cutter. Id. at
37. Appellant further argues that while “Cutler may describe rule sets using
a parameter, . . . nowhere in . . . Fellenstein and Cutler . . . is there any
teaching . . . [that] responsive to failing to detect the match between the key
and the set of keys (step [4]), . . . the decision [is requested] “from a rule
engine on a server” where the rule engine uses the rule set to make the
decision (step [6]) and then performing step [7] of the claim. Reply Br. 3–4.
Appellant’s arguments do not persuade us that the Examiner erred in
finding the claims obvious in view of Fellenstein and Cutler.
The Examiner relied on Cutler for teaching making a decision using a
rule set from a rule engine. Cutler in paragraph 26 describes a “rule engine
Appeal 2019-003592
Application 14/573,364

6
provided with a cache containing a decision tree . . . [which] is a compiled
version of the rule set.” Appellant did not establish that this rule engine and
rule set are different from the corresponding rule engine and rule set recited
in step [6], and we conclude that the evidence supports that they are not
different. Cutler discloses that the rule engine is on a “network device,” but
doesn’t specifically teach that the device is a server as required by all the
claims (Cutler ¶ 16: “It is an object of the invention to provide a means of
changing a rule set for a rule engine in a PCRF [policy and charging rules
function] network device with minimal service interruptions.”). However,
Fellenstein discloses that its grid management system “may be part of
multiple types of networks, including a peer-to-peer network, or may be part
of a single computer system, such as computer system 100.” Fellenstein ¶
37. Fellenstein further teaches that “computer system 100” can be
“implemented as a server system.” Fellenstein ¶ 39. Therefore, Fellenstein
teaches the interchangeability of network and server systems. Consequently,
it would have been obvious to one of ordinary skill in the art to install the
rule engine of Cutler on a server because Cutler describes the rule engine on
a network device and Fellenstein teaches that a server is interchangeable
with a network system. For this reason, we are not persuaded by Appellant’s
argument that requesting a decision from a rule engine on a “server” would
not have been obvious from the combination of Fellenstein and Cutler.
Appellant does not identify a deficiency in the Examiner’s finding
about Fellenstein and Cutler describing a “decision response filter” recited in
step [6] of claim 1. Final Act 10–12 (citing Fellenstein ¶¶ 63, 69–72, 75, 76;
Cutler ¶ 26).
Appeal 2019-003592
Application 14/573,364

7
As the Examiner found, Fellenstein teaches step [7] of storing
decisions in a decision cache so that they may be reused:
Once a decision is stored in decision cache 608, decision
controller 614 may reuse the decision. Decision cache 608 may
implement a data storage format, such as a table, for storage of
decisions with characteristics of the job for which the decision
was made. Preferably, data is stored in decision cache 608 . . . .
Fellenstein ¶ 70.
Thus, as found by the Examiner, it would have been obvious to store
the decisions made by the rule engine of Cutler in order for it be reused for
subsequent new job requests.
Appellant also argues that the combination of Fellenstein and Cutler
do not teach “the rule set searches a cache to find a match between the key
and a set of keys identified in the cache” as step [3] of claim 1. Appeal Br.
38 (emphasis omitted). This argument is not persuasive. The Examiner
identified the following disclosures of Fellenstein to meet this limitation
(Final Act. 11):
Preferably, data is stored in decision cache 608 so that decision
controller 614 can compare characteristics of new job requests
with stored characteristics of previous job requests and reuse
decisions made for previous job requests with the same or
similar characteristics. For example, the system state and job
priority are characteristics that may be stored with a decision
and subsequently matched with other jobs.
Fellenstein ¶ 70.
Advantageously, the decisions made for a job request are stored
as a system state and decision code in a decision cache so that
even if a second similar job is executing back-to-back with the
first, the second similar job is more efficiently processed using
the predetermined decisions in the decision cache.
Fellenstein ¶ 71.
Appeal 2019-003592
Application 14/573,364

8
Thus, Fellenstein discloses matching “characteristics” between a
decision made for a previous request and a new job request. Id. at ¶¶ 70, 71.
While Fellenstein does not identify these characteristics as “keys” as recited
in steps [2] and [3] of claim 1, Appellant did not distinguish “characteristics”
as the term is used in Fellenstein from the “keys” recited in rejected claim 1,
and we conclude the evidence supports that there is no difference. The keys
are based on “user-defined parameters.” Claim 1, step [2]. A parameter is a
characteristic.2 Accordingly, we find that Fellenstein’s teaching meets the
claim limitation. Further, Cutler teaches when its rule engine is used,
parameters and conditions are used in the decision making process. Cutler
¶ 26. Thus, when using Cutler’s rule engine, it would have been obvious to
have used “user-defined parameters” as recited in the claims and to base a
match on these as in step [3] of claim 1.
For the foregoing reasons, the rejection of claims 1–5, 7–10, 16, 17,
19–22, 24, and 25 as obvious in view of Fellenstein and Cutler is affirmed.

REJECTION BASED ON FELLENSTEIN, CUTLER, AND SCHUETZE
Claims 6, 18, and 23 are rejected based on the combination of
Fellenstein, Cutler, and Schuetze. Appellant made the same arguments as
for claim 1. Appeal Br. 39. The rejection of these claims is affirmed for the
same reasons as discussed above.

2 According to Merriam-Webster, a “parameter” is: “3: something
represented by a parameter: a characteristic element
broadly : CHARACTERISTIC, ELEMENT, FACTOR.”
(https://www.merriam-webster.com/dictionary/parameter, last accessed Jan.
13, 2020).
Appeal 2019-003592
Application 14/573,364

9
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–10,
16, 17, 19–
22, 24, 25
103 Fellenstein, Cutler 1–5, 7–10,
16, 17, 19–
22, 24, 25

6, 18, 23 103 Fellenstein, Cutler,
Schuetze
6, 18, 23
Overall
Outcome
1–10, 16–25

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED