International Business Machines Corporation

Patent Trials and Appeals Board

Mar 5, 2021

2020004036 (P.T.A.B. Mar. 5, 2021)

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.
16/505,609 07/08/2019 Annap Derebail CAM920130019US03_8150-988 3234
112978 7590 03/05/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/05/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANNAP DEREBAIL,
AMARESH RAJASEKHARAN, and
MAN MOHAN SINGH
____________

Appeal 2020-0040361
Application 16/505,609
Technology Center 3600
____________

Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s final decision to reject claims 21–40, which are all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We note related concurrent appeal 2020-004034, application 16/505,635.
We also note prior appeals 2017-001849, application 13/847,012, and
2017-001922, application 14/230,564, for which Decisions were mailed
July 25, 2018 and Decisions on Rehearing were mailed Nov. 9, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “IBM
Corporation.” Appeal Br. 1.
Appeal 2020-004036
Application 16/505,609

2
CLAIMED SUBJECT MATTER
The Appellant’s invention relates generally to “cross-domain
integration within a product lifecycle management (PLM) process.” Spec.
¶ 20. More specifically, the invention relates to “a network of finite state
machines [that] is implemented to facilitate cross-domain integration” where
each machine “is correlated with a particular business object,” such as a
customer order, engineering change order, bill of materials, or the like, and
business rules are used to control transitions from one lifecycle state, such as
“Received,” to another state, such as “Created.” Id. ¶¶ 20, 21, 24, 38.
Claims 21 and 31 are the independent claims on appeal. Claim 21 is
illustrative of the subject matter on appeal, and is reproduced below (lettered
bracketing added for reference).
21. A computer hardware system positioned between a
first enterprise information system and a second enterprise
information system and including a finite state machine
associated with a business object and defining a plurality of
lifecycle states of the business object, comprising:
a hardware processor configured to initiate the following
executable operations:
[(a)] associating a business rule, independent of the
finite state machine, with each of the plurality of lifecycle
states, the business rule defining a condition causing a
transition from the lifecycle state associated with the
business rule to a next lifecycle state of the finite state
machine;
[(b)] receiving the business object;
[(c)] evaluating, using the finite state machine
associated with the business object, one of the plurality of
business rules associated with the finite state machine; and
[(d)] performing an operation specified by the one
of the plurality of business rules.
Appeal 2020-004036
Application 16/505,609

3
Appeal Br. 19 (Claims App.). Claim 31 recites a program product with
code that causes a computer hardware system to perform operations (a)
through (d) as recited in claim 21. Id. at 21–22.

REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Ouchi US 2003/0037153 A1 Feb. 20, 2003
Nguyen US 2005/0043982 A1 Feb. 24, 2005
Cheng et al. (“Cheng”) US 2005/0108680 A1 May 19, 2005
Derebail et al. (“Derebail”) Appl. No. 16/505,635 July 8, 2019

REJECTIONS
Claims 21–24, 26–34, and 36–40 stand rejected under 35 U.S.C. § 103
as being unpatentable over Ouchi and Nguyen.
Claims 25 and 35 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ouchi, Nguyen, and Cheng.
Claims 21–40 stand rejected on the ground of provisional non-
statutory double patenting as being unpatentable over claims 21–30 of
Derebail.

OPINION
Obviousness
Claims 21–24, 26–28, 31–34, and 36–383
The Appellant argues claims 21–24, 26–28, 31–34, and 36–38 as a
group. Appeal Br. 8. We select independent claim 21 as representative of

3 The claims are addressed in the order argued by the Appellant.
Appeal 2020-004036
Application 16/505,609

4
the group, with the remaining claims standing or falling therewith. See
37 C.F.R. § 41.37(c)(1)(iv).
The Appellant contends that the Examiner’s rejection of independent
claim 21 is in error because the combination of Ouchi and Nguyen does not
disclose or suggest “associating a business rule, independent of the finite
state machine, with each of the plurality of lifecycle states, the business rule
defining a condition causing a transition from the lifecycle state associated
with the business rule to a next lifecycle state of the finite state machine,” as
recited in limitation (a). Appeal Br. 8; see also id. at 9–12; Reply Br. 2–5.
After careful review of the record before us, we disagree.
The Examiner finds, in relevant part, that Ouchi teaches the system of
claim 21 comprising a processor configured to associate a business rule,
independent of a finite state machine associated with a business object, with
each of the plurality of defined lifecycle states of the business object and
“that transition between lifecycle states of the finite state machine.” Final
Act. 8–11 (citing Ouchi ¶¶ 6, 7, 38, 53, 60, 63, Figs. 1, 9). Acknowledging
“Ouchi does not explicitly teach the business rule defining a condition
causing a transition from the lifecycle state associated with the business rule
to a next lifecycle state of the finite state machine,” the Examiner relies on
Nguyen to correct that deficiency. Id. at 11. The Examiner determines:
It would have been obvious to one having ordinary skill in
the art prior to the effective filing date to combine the condition
required to transition between lifecycle states of a finite state
machine of Nguyen with the finite state machines between two
enterprise systems that associate rules with lifecycle states of
Ouchi. This combination would have yielded a predictable result
because each would have performed the same with or without the
other, but the addition of Nguyen would simply add the explicit
criteria that transitions from one state to another in a finite state
Appeal 2020-004036
Application 16/505,609

5
machine. It would not change the overall functionality of Ouchi
to add a feature from Nguyen.
Id. at 14.
We find supported the Examiner’s findings that Ouchi teaches a
processor configured to associate a business rule, independent of the finite
state machine, with each of the plurality of lifecycles states and a transition
between lifecycle states of the finite state machines. See Final Act. 10–11;
Ans. 4–6.
Ouchi relates “to the information transfer protocols and processing,
the topology of information exchange, and the delivery of the information
transfer service” for a “private exchange for exchanging information
between trading partners where each trading partner has an information
transfer protocol server and information is exchanged using the information
transfer protocol.” Ouchi, Abst. Ouchi discusses an existing public
consortium, RosettaNet, for business-to-business information transfer
whereby most business processes “were in fact finite state machines where
the transactions between partners move each partner through state
transitions.” Id. ¶¶ 6, 7. “The business processes are closed loop in that
both trading partners must acknowledge moving to complementary states
and both must end in terminating states at the end of the process,” and that
“coined the term ‘Partner Interface Process’, or PIP, that defined the specific
states for each trading partner and the message contents for each transaction
that changed the state of the partners.” Id. ¶ 7. “The business process
definition includes the closed loop transactions for the initial orders and
subsequent changes and the potential exceptions that may occur at the
trading partner interface.” Id.
Appeal 2020-004036
Application 16/505,609

6
Although “RosettaNet defined the processes between trading partners
and covered most of the exception situations as seen at the trading partner
interface,” RosettaNet was not able to “define how each enterprise should
detect these exceptions nor define how to process these within the
enterprise.” Id. Thus, Ouchi aims “to provide the framework so that a
public business-to-business information transfer standard protocol like
RosettaNet can begin to function and evolve to fulfill its promised
expectations” (id.) and “provide a private exchange where each trading
partner has a dedicated RosettaNet system and these RosettaNet systems
communicate with each other using the RosettaNet PIP protocol,” whereby
“[e]ach trading partner may have independent business processes and
integrate with their own enterprise systems using the Web interface
described earlier” (id. ¶ 38).
The improved “RosettaNet system provides a means for a multi-site
enterprise to consolidate the external interface to their trading partners
without impacting their sites and their different enterprise systems.” Id.
Ouchi’s Private Exchange Server supports not only RosettaNet systems but
also “the general class of information exchange servers where trading
partners share business information using controlled business processes.”
Id. ¶ 63. “The Private Exchange Server separates the business information
and business processes so that each trading partner has its own separate
business information and business processes.” Id.
Figure 9 depicts a system with two partners, A and B, each having
their own, people, web, enterprise systems, and independent RosettaNet
systems, and both engaging in a private exchange. See id. ¶ 46. The
RosettaNet system receives a transaction, determines the next state from the
Appeal 2020-004036
Application 16/505,609

7
transaction information, the current PIP state in the PIP State Storage, and
the PIP State Model. Id. ¶ 58. Upon receiving needed information, the PIP
State Storage reflects the next PIP state, updates the Dynamic Information
Storage, creates a new transaction, and sends the new transaction. Id.
RosettaNet’s filter function permits people “to set rules and values that
compare the state and content of each PIP instance transaction and filter the
transactions into classes.” Id. ¶ 60. The rules and values are stored in the
Database Server that, when a transaction is received by the RosettaNet
Business-to-business Server, is accessed by the Application Server that then
compares the values with the transaction data, “applies the rules to
determine the classification of the transaction,” such as whether the
transaction prompts an automated response, is to be sent directly to the
enterprise server, or is determined to be processed by people using the Web
client, and sends updates to the state and value information to the Database
Server. Id.; see also id. ¶¶ 41–44, 63.
The Appellant appears to argue that Ouchi does not teach that the
business rule is “associated with each of a plurality of lifecycle states.”
Appeal Br. 8–9. However, outside of stating that “[n]othing in this passage
[of Ouchi’s paragraph 7] refers to a business rule being associated with each
of a plurality of lifecycle states” (id. at 9), the Appellant provides no further,
substantive argument why the Examiner’s findings regarding this element
are in error. In the absence of a more detailed explanation, we are not
persuaded of error on the part of the Examiner. See in re Jung, 637 F.3d.
1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections” (citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
Appeal 2020-004036
Application 16/505,609

8
(precedential) (“The panel then reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon.”))).
Rather, the Appellant focuses on and specifically argues that Ouchi,
upon which the Examiner relies, does not teach that the “business rules are
independent of the finite state machine.” Appeal Br. 8; see also id. at 9–12;
Reply Br. 2–5. The Appellant asserts that “independent” means “not
dependent upon.” Reply Br. 3. However, it is not clear how “not dependent
upon” the state machine the rules must be to be independent. The claim
requires that the rules relate to causing transitions from a state associated
with the business rule and a state of the finite state machine and that the
finite state machine evaluates the rules. Thus, there must be some
dependency between the finite state machine and the rules.
We note that the Specification, including the claims, provides no
explicit definition for “independent.” At best, the Specification provides
“the business rules exist independently and separately from the finite state
machines. As such, business rules can be modified [i.e., added, deleted, or
changed] as required to change the behavior of the finite state machine. The
finite state machine itself, however, requires no modification.” Spec. ¶ 40.
Ouchi teaches that the rules, set by people, are stored in a database and are
accessed and evaluated by a separate server. See supra; Ouchi ¶¶ 41–45, 60.
Although the server can update the state and value information, the server
does not add, delete, or change the stored rules—only the people who set
them may do so. Id. Thus, we disagree with the Appellant’s contention that
the “state machine (i.e., RosettaNet) defines the business rules of Ouchi,”
Appeal 2020-004036
Application 16/505,609

9
such that they are not independent of the finite state machine. Reply Br. 4;
see also Appeal Br. 10.
Having not been persuaded of deficiencies in the Examiner’s reliance
on Ouchi, and because the Examiner relies on Ouchi for teaching
“associating a business rule, independent of the finite state machine, with
each of the plurality of lifecycle states,” we find unpersuasive of Examiner
error the Appellant’s argument that Nguyen fails to cure the deficiencies of
Ouchi. See Appeal Br. 9; Reply Br. 2.
Thus, based on the record before us, we are not persuaded of
Examiner error, and we sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of independent claim 21 and thus also the rejection of claims 22–24,
26–28, 31–34, and 36–38.
Claims 29 and 39
The Appellant contends that the Examiner’s rejection of dependent
claims 29 and 39 is in error because Ouchi does not teach “‘a plurality of
business rules are associated with a current lifecycle state of the finite state
machine associated with the business object’ and ‘the evaluating is
performed on each of the plurality of business rules associated with the
current lifecycle state.’” Appeal Br. 12; see also Reply Br. 6. After careful
review of the record before us, we disagree.
Claims 29 and 39 depend from independent claims 21 and 31,
respectively, and recite “wherein a plurality of business rules are associated
with a current lifecycle state of the finite state machine associated with the
business object; and the evaluating is performed on each of the plurality of
business rules associated with the current lifecycle state.” Appeal
Br. 20–21, 23 (Claims App.). The Examiner relies primarily on Ouchi for
Appeal 2020-004036
Application 16/505,609

10
teaching these limitations. See Final Act. 17–18, 20 (citing Ouchi ¶¶ 58, 60,
Fig. 14). Specifically, the Examiner finds that Ouchi “describes rules
(plural) that compare the state of each PIP instance transaction. Further,
rules (again, plural) are applied to each transaction that has a current state.”
Ans. 6.
The Appellant argues claims 29 and 39 require that “for a particular
‘current lifecycle state,’ a plurality of business rules are associated
therewith.” Appeal Br. 13. Specifically, the Appellant argues “[w]hile the
Examiner’s analysis refers to a plurality of rules, these rules are not
associated with a single current lifecycle state of a finite state machine, as
claimed.” Reply Br. 6. However, the Appellant does not provide further
explanation as to how or why Ouchi’s plurality of rules are not associated
with a single state. We note that the Specification, including the claims,
does not define what comprises “associated” as the term is used in claims 29
and 39. As best we can tell, a rule is associated with a state if it somehow
relates to that state. See Spec. ¶ 38 (“When the conditions, as specified by
one or more business rules associated with the ‘ECO Received’ state are
met, one of the operations to be performed is transitioning the lifecycle state
of the engineering change order to ‘EC Created.’”). Ouchi teaches that a
transaction is received, passed to the Application server, compared to rules
to determine the current and next states, and processed based on that
determination. See Ouchi ¶¶ 41, 58, 60. Although the Appellant emphasizes
“single current lifecycle state,” the Appellant does not explain why Ouchi’s
comparing of rules to each PIP instance to determine the current and next
states does not meet that claimed element. In the absence of a more detailed
explanation, we are not persuaded of error on the part of the Examiner.
Appeal 2020-004036
Application 16/505,609

11
To the extent the Appellant argues that Ouchi’s rules do not cause a
transition from one state to another (Reply Br. 6), the argument is
unpersuasive as not being commensurate with the scope of the claim.
Dependent claims 29 and 39 recite “a plurality of business rules,” not “the
plurality” as recited in claims 21 and 31. Thus, is it not apparent that the
rules of claims 29 and 39 are the same rules of claims 21 and 31 that define a
condition causing a transition from one state to another state. We further
note that the Examiner relies on the combination of Ouchi and Nguyen for
teaching the rule causing a transition from one state to another. See Final
Act. 11, 14. The test for obviousness is not what any one reference would
have suggested, but rather what the combined teachings of the references
would have suggested to those of ordinary skill in the art. See In re Keller,
642 F.2d 413, 426 (CCPA 1981). “[O]ne cannot show non-obviousness by
attacking references individually were, as here, the rejections are based on
combinations of the references.” Id. (citation omitted).
Thus, based on the record before us, we are not persuaded of
Examiner error, and we sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of dependent claims 29 and 39.
Claims 30 and 40
The Appellant contends that the Examiner’s rejection of dependent
claims 30 and 40 is in error because Ouchi does not teach “the business
object is data provided by the first enterprise information system to the
second enterprise information system,” as recited in the claims. Appeal
Br. 14; see also id. at 15–16; Reply Br. 7–8. After careful review of the
record before us, we disagree.
Appeal 2020-004036
Application 16/505,609

12
The Examiner relies primarily on Ouchi for teaching this limitation.
See Final Act. 18, 20 (citing Ouchi ¶ 46, Fig. 9). Specifically, the Examiner
finds that Ouchi’s “Figure 9 shows exchange of data between partners A and
B that each contain Enterprise systems A and B, respectively. That data is a
business object.” Ans. 7.
In light of the Specification and the claims, the Appellant’s definition
of a “business object” as “something that is associated with a finite state
machine and has a plurality of business states” (Appeal Br. 15; see also
Reply Br. 7–8) is unsupported. The Specification provides a definition for
the term “business object” as “an electronic document that can be specified
in any of a variety of different formats, e.g., eXtensible Markup Language
(XML) or the like. A non-exhaustive list of business object examples
includes a customer order, an engineering change order, a bill of materials,
or the like.” Spec. ¶ 24. There is no requirement in the Specification or
claims 21 and 31 that the business object is associated with a state machine
or has a plurality of states. Rather, claims 21 and 31 provide a definition for
the finite state machine as being associated with a business object and
defining a plurality of lifecycle states for the business object. Appeal Br. 19,
21 (Claims App.). Claims 21 and 31 do not define a business object.
Claims 30 and 40 define that business object as being “data provided by the
first enterprise information system to the second enterprise information
system.” Appeal Br. 21, 23 (Claims App.).
Ouchi discloses a first enterprise system of Partner A exchanging
information with a second enterprise system of Partner B, that such
information can comprise changes to purchase order transactions that can be
“done manually using phone, FAX, and e-mail,” and that are then integrated
Appeal 2020-004036
Application 16/505,609

13
into the enterprise systems. Ouchi ¶¶ 38, 46. As such, we are not persuaded
of error in the Examiner’s finding that Ouchi teaches the business object
(such as a purchase order) being data provided by a first system to a second
system as recited in claims 30 and 40.
Thus, based on the record before us, we are not persuaded of
Examiner error, and we sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of dependent claims 30 and 40.
Claims 25 and 35
The Appellant contends that the Examiner’s rejection of dependent
claims 25 and 35 is in error because “[t]he additional reference to Chen does
not cure the argued deficiencies of the combination of Ouchi and Nguyen”
relating to independent claims 21 and 31. Appeal Br. 17. Having not been
persuaded of the Appellant’s arguments regarding deficiencies in the
Examiner’s combination of Ouchi and Nguyen for claims 21 and 31, we are
similarly unpersuaded of error in the Examiner’s rejection of claims 25
and 35.
Thus, based on the record before us, we sustain the Examiner’s
rejection under 35 U.S.C. § 103 of dependent claims 25 and 35.

Double Patenting
The Examiner rejects claims 21–40 on the ground of provisional non-
statutory double patenting over claims 21–30 of co-pending application
16/505,635 (Derebail). Final Act. 7. This rejection was not withdrawn.
The Appellant presents no argument against this rejection but states in
a footnote “[t]his rejection is not the subject of the present appeal.
Appeal 2020-004036
Application 16/505,609

14
Appellants will make a determination as to the filing of a Terminal
Disclaimer upon indication of allowable subject matter.” Appeal Br. 3 n.1.
Because the Appellant provides no arguments against the double
patenting rejection, we summarily sustain this rejection.

CONCLUSION
The Examiner’s decision to reject claims 21–40 is sustained.

In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–24,
26–34,
36–40
103 Ouchi, Nguyen 21–24,
26–34,
36–40

25, 35 103 Ouchi, Nguyen,
Cheng
25, 35

21–40 Nonstatutory Double
Patenting
21–40
Overall
Outcome
21–40

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