Jean-Baptiste Leonelli et al.

Patent Trials and Appeals Board

Nov 23, 2020

2020003762 (P.T.A.B. Nov. 23, 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.
11/853,143 09/11/2007 Jean-Baptiste Leonelli TEM004 2546
54698 7590 11/23/2020
MOSER TABOADA
1030 BROAD STREET
SUITE 203
SHREWSBURY, NJ 07702
EXAMINER
PRATT, EHRIN LARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
docketing@mtiplaw.com
llinardakis@mtiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN-BAPTISTE LEONELLI
and TRISALA CHANDARIA

Appeal 2020-003762
Application 11/853,143
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
JAMIE T. WISZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 70–89 under 35 U.S.C. § 102 as
anticipated and 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 REVERSE.

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 Ciambella
Ltd. Appeal Br. 3.
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STATEMENT OF THE CASE
The Examiner rejected claim 77–89 in the Final Office Action as
follows:
1. Claim 77–81 under pre-AIA 35 U.S.C. § 102(e) as anticipated by
Kapur (US 2007/0264985 A1, published Nov. 15, 2007). Final Act. 2.
2. Claims 70–72, 74–76, 82–84, and 86–89 under pre-AIA 35 U.S.C.
§ 103(a) as obvious in view of Maconi (US 7,475,107 B2, issued Jan. 6,
2009) and Kapur. Final Act. 5.
3. Claims 73 and 85 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Maconi, Kapur, and Shah (US 2006/0036799 A1, published Feb. 16,
2006). Final Act. 15.
There are three independent claims on appeal, claims 70, 77, and 82.
Claim 77 is illustrative and reproduced below, with bracketed numbers
added for reference to the specific limitations in the claim:
77. A method for generating a workflow and
implementing workflow tasks, the method comprising:
[1] receiving, at a target device from a user device, a
workflow record associated with a graphical workflow, the
workflow record comprising one or more tasks related to
remote services of the target device, a sequence for performing
the one or more tasks, and parameters associated with the
workflow record, the one or more tasks comprising at least a
first task and a second task;
[2] generating, at the target device, computer-executable
instructions based on the workflow record and the parameters
by combining code from libraries stored on the target device,
wherein the libraries comprise routines for performing the
remote services, and are correlated with each of the one or more
tasks; and
[3] deploying the computer-executable instructions in
response to receiving instructions for deployment from the user
device,
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[4] wherein the first task is deployed to listen for a
service request for a remote service from the remote services of
the target device, and the second task is deployed on the target
device based on the first task receiving the service request.
Appeal Br. 26–27 (Claims Appendix).

Claim 77
Claim 77 is directed to a method for generating a workflow and
implementing workflow tasks. In the first step of claim 77, a workflow
record associated with a graphical workflow is received at a target device
from a user device. A workflow, as explained in the Specification, can
include “a workflow to facilitate processing of information as it moves
among or within any business disciplines, including purchasing,
manufacturing, marketing, sales, accounting, recruitment, information
technology support and the like, of the company and/or its clients, vendors,
supplier.” Spec. ¶ 5. The workflow record is recited in the claim to be
“associated with a graphical workflow.” A graphical workflow is graphical
representation of the workflow, e.g., using widget task icons to represent the
tasks. Spec. ¶ 33.
The claim specifically recites that the tasks are related to remote
services of the target device, i.e., tasks that are performed on remote devices.
There is a first and second task. The Specification discloses that the tasks
can be automatable, such as downloading information from servers,
converting files into different formats, sending email messages, etc. Spec.
¶ 6.
Computer-executable instructions based on the workflow record are
generated at the target device using computer code from libraries stored on
the target device in the second step [2] of claim 77. The Specification
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describes how a code generator searches through libraries to identify
computer codes that match the tasks to be performed. Spec. ¶ 99. Thus, in
this step of the claim, a computer application is generated using the
graphical workflow to determine the sequence of operations needed to carry
out the task.
The computer-executable instructions for carrying out the workflow is
deployed “in response to receiving instructions for deployment from the user
device” in step [3] of the claim. Clause [4] of the claim identifies the tasks
deployed on the target device (“first task is deployed to listen for a service
request for a remote service from the remote services of the target device”).
The term “deploy” is not expressly defined in the Specification.
However, the “wherein” clause [4] of the claim recites that “the first task is
deployed to listen for a service request for a remote service from the remote
services of the target device, and the second task is deployed on the target
device based on the first task receiving the service request.” (Emphasis
added.) In this context, we interpret “deploy” to mean that the computer
executable code is installed and executed on the target device to perform the
first and second tasks. This interpretation is consistent with the Specification
disclosure that the “workflow-deployment module may execute the
workflow-executable code at any time after generation of the workflow-
executable code [step [2] of claim 77] and receiving the execution
command.” Spec. ¶ 104.
Thus, in claim 77, a workflow record associated with a graphical
workflow is received at a target device from a user device. The target device
generates computer-executable instructions to carry out the tasks in the
workflow (i.e., a computer application), and the computer-executable
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instructions are then deployed on the target device to accomplish the tasks.
The deployment on the target device is “in response to receiving instructions
. . . from the user device.”

1. ANTICIPATION REJECTION
Citing to paragraphs 63–68 of Kapur, the Examiner found that Kapur
describes all the steps of claim 77. Final Act. 2–3, 18–19. The Examiner
states that the “build environment 160” of Kapur corresponds to the target
device recited in claim 77 and that the “GUI environment” transmits the
application flow graph to the build environment to create the executable
program. Final Act. 18. In other words, the Examiner finds that the “GUI
environment” corresponds to the claimed user device and the “build
environment” to the claimed target device.
Appellant argues that the Examiner erred in finding that Kapur
describes each and every element of the claim. Appeal Br. 8. Specifically,
Appellant states that the application in Kapur, which corresponds to the
computer-executable instructions of claim 77, is built at the “build
environment 160” and then deployed on the “handheld device 110 or the
CPE 120, which are clearly distinct from the build environment 160.” Id. at
9. Appellant therefore contends that the application in Kapur is not
deployed on the build environment – the target device of claim 77 – as
required by the claim. Id. Appellant also argues that the Examiner considers
the GUI environment of Kapur to be the claimed user device, and that the
GUI environment does not send instructions to the build environment (the
claimed “target device”) to deploy the application as required by step [3] of
claim 77 (“deploying the computer-executable instructions in response to
receiving instructions for deployment from the user device.”) Id. at 11.
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Discussion
Kapur describes a method for “enabling rapid creation of
combinational applications for deployment on handheld communication
devices and/or customer premises equipment (CPE)”. Kapur ¶ 17. The
method can be used by an application developer who “may receive a request
from a service provider who intends to introduce a new service into the
network, [or] a device manufacturer who intends to introduce a new
application,” etc. Kapur ¶ 48.
Kapur describes a graphical user interface, GUI (180), which is used
to perform various functions, including to build applications from
application independent blocks (AIB) by linking the AIBs together in an
application graph. Kapur ¶¶ 21, 46, 49, 63, 64. The GUI therefore creates the
claimed “workflow record associated with a graphical workflow” of step [1]
of claim 77.
Once the GUI (180) creates the application graph, “[b]uild
environment (160) generate[s] the applications based on this graph.” Kapur
¶¶ 64, 65.2 Because the build environment generates the computer-
executable instructions of the application, it serves as the target device of
step [2]. The build environment comprises the libraries containing the
executable code as required by the rejected claim (“by combining code from
libraries stored on the target device, wherein the libraries comprise routines

2 “The build environment (160) uses the information obtained from the build
interface (170) for generating the final application. While GUI (180)
provides a framework for user interaction wherein the application developer
can define the application further, the build environment (160) does the
actual application generation.” Kapur ¶ 65.
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for performing the remote services”). Kapur ¶ 65 (“The user libraries contain
pre-compiled code for the AIBs that are used in the application graph.”).
Limitations [3] and [4] of claim 77 require the computer-executable
code to be deployed on the target device to perform the first and second
tasks. The Examiner cited paragraphs 64, 65, and 68 of Kapur for this
limitation. Final Act. 3. The Examiner explained that “the final application
cannot be deployed without the build environment which represents the
target device. Further, the build environment would have to deploy the final
application with input from the interface before the application would be
executed on a user device,” citing the same disclosure from Kapur. Ans. 5.
The build environment 160 is described in Kapur as part of an off-line
tool environment 150, which also contains the GUI 180. Kapur, Fig. 1. The
device on which the 150, 160, and 180 operate corresponds to the claimed
target device.
Kapur also describes handheld communication devices, such as
mobile and PDA devices, and customer premise devices (CPE). Kapur, Fig.
1. The handheld devices and the CPE serve as the user device of claim 77.
Kapur discloses that a receiving means receives user preferences for
application deployment which then sends it to the off-line tool environment,
namely the target device. Kapur ¶ 48. Step [1] of claim 77 requires that “a
workflow record associated with a graphical workflow” is received by the
target device from the user device. However, in Kapur, the graphical
workflow is created at the target device using the GUI (180). Kapur ¶¶ 21,3

3 “said GUI to generate an application flow graph and generating any one of
said combinational applications by a build environment wherein the method
enables an application developer to rapidly create combinational
applications in an off-line environment.”
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48. Thus, the Examiner did not establish that this limitation of the claim is
met by Kapur.
Once the application is built on the target device using the tools of the
off-line tool environment described in Kapur, the application is deployed on
the handheld devices or CPE, which are user devices:
the method enables an application developer to rapidly create
combinational applications in an off-line environment, said
combinational application is deployed on handheld
communication device and/or CPE independent of underlying
networks and platforms of the same.
Kapur ¶ 21.
Thus, the system enables the application developer to rapidly
create combinational applications in said off-line environment
for deploying said combinational applications in said handheld
communication device and/or CPE independent of underlying
networks and platforms of the same.
Kapur ¶ 30.
Compiler [of the build environment (160] compiles the code
generated by code generator and links the various libraries as
needed, and generates the final application that is ready to be
deployed on the handheld device (110) and/or CPE (120).
Kapur ¶ 65.
FIG. 2 provides a flow diagram of a process for rapidly creating
combinational applications for deployment on a handheld
communication device/CPE in accordance with an embodiment
of the present invention. . . . The final requested application by
the user is deployed on handheld device (11) and/or CPE (120)
at step (270).
Kapur ¶ 68.
The Examiner did not point to any instance in Kapur where the
application, which is built on the target device using the build environment,
is also deployed on the target device to perform the tasks in the application
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as required by step [4] of the claim (“the first task is deployed to listen for a
service request for a remote service from the remote services of the target
device”). As indicated by the disclosures above, deployment occurs on the
handheld communication device/CPE after it is generated on the target
device. Indeed, the application is built in an environment described by Kapur
as “off-line” (Kapur ¶¶17, 21, 22, 30) and therefore it is unclear how it
would be configured to perform the remote services associated with the first
and second tasks.
The claim further requires that the deployment is in response to
receiving instructions form the user device. Claim 77, step [3]. The
Examiner stated that the “the build environment would have to deploy the
final application with input from the interface before the application would
be executed on a user device” (Ans. 5), but provides no support for this
statement and does not identify in the cited paragraphs of Kapur where the
handheld device or CPE instructs the on-line tool to deploy the application.
Kapur describes compiling the code in the build interface, i.e., the target
device of the claim. Kapur ¶ 65. However, the Examiner did not establish,
nor identify, the compiling step as meeting the “deploying” step of the
claim.
To anticipate under 35 U.S.C. § 102, a publication must “disclose all
elements of the claim within the four corners of the document” and
“arranged as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
1359, 1369 (Fed. Cir. 2008). As explained above, the Examiner did not meet
the burden of establishing that all the elements recited in claim 77 are
described by Kapur, specifically that Kapur describes a target device
receiving a workflow record associated with a graphical record from a user
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device (step [1]), deploying the computer-executable instructions in response
to receiving instructions from the user device (step [3]), and deploying first
and second tasks on the target device (step [4]). Consequently, we are
compelled to reverse the anticipation rejection based on Kapur of claim 77.
Dependent claims 78–81 incorporate all the limitations of claim 77 and are
reversed for the same reasons.

OBVIOUSNESS REJECTION BASED ON MACONI AND KAPUR
Independent claim 70 is directed to a system comprising a user and a
target device. The claim comprises steps in which a user device generates a
workflow record of a graphical workflow and an express step in which it
triggers deployment of computer-executable instructions based on the
workflow record on the target device. These steps are not recited in claim
77. The claim further recites steps performed on the target device, which are
the same steps recited in claim 77.
The Examiner found that Maconi describes all the steps recited in the
claim that are performed on the user device and relied on Kapur for
describing the remaining limitations in the claim for the target, citing the
same support as cited in the rejection of claim 77. Final Act. 5–9.
This rejection has the same defect as the anticipation rejection. The
Examiner cites Kapur for disclosing sending the workflow with the
graphical workflow to the target device and deploying the application
comprising the executable instructions on the target device. Final Act. 7.
However, as explained above, these features are not described in Kapur.
Maconi describes generating a code for a mobile agent (col. 10, ll. 26–36)
and graphical interface for configuring mobile agents (col. 10, ll. 60–65; col.
11), but the Examiner did not provide a reason to use the graphic workflow
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feature on the user device, rather than on the target device as in Kapur. Final
Act. 8–9. The Examiner also did not cite Maconi as making up for the other
deficiencies in Kapur, specifically deploying the computer-executable
instructions in response to receiving instructions from the user device (step
[3]), and deploying first and second tasks on the target device (step [4]).
Thus, the obviousness rejection of claim 70 based on Maconi and Kapur is
reversed.

Claim 82
Claim 82 generates “a workflow record of the graphical workflow” on
the user device, and then dispatches the record to the target device to carry
out the remote services. The user device triggers “via an instruction to the
target device, deployment of computer-executable instructions based on the
workflow record on the target device.” Claim 80, therefore, like claim 77,
requires sending a workflow record of a graphical workflow to a target
device and sending the instruction to the target device to deploy the
computer-executable instruction based on the workflow record. Because
Maconi is not described by the Examiner as meeting the deficiencies of
Kapur described above, the obviousness rejection of claim 80 based on
Maconi and Kapur is also reversed.

Dependent claims
Dependent claims 72, 74–76, 83, 84, and 86–89 incorporate all the
limitations of the independent claims, and therefore the obviousness
rejection based on Maconi and Kapur of these claims is also reversed.

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OBVIOUSNESS REJECTION BASED ON MACONI, KAPUR, AND
SHAH
Claims 73 and 85 are further rejected based on the additionally cited
Shah publication. Claim 73 depends from claim 71 and further recites
“wherein the user device further dispatches the workflow record in either a
test mode or a production mode, and the test mode comprises mimicking
deployment in the production mode and deploying the computer executable
instructions against a test for evaluation on the target device.” Claim 85
depends from claim 82 and further recites “dispatching the workflow record
in either a test mode or a production mode, and the test mode comprises
mimicking deployment in the production mode and deploying the computer-
executable instructions against a test for evaluation.”
The Examiner further relies on Shah for describing the additional
limitations in claim 73 and 85. Final Act 16. The Examiner did not rely on
Shah as meeting the deficiencies of Kapur described above. Furthermore,
Shah describes creating a graphical program (at ¶ 13) on one device and then
deploying and executing it on execution target (at ¶¶ 18, 85). Thus, Shah
does not describe the missing limitations in Kapur and the rejection is
reversed.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
77–81 102 Karpur 77–81
70–72, 74–
76, 82–84,
86–89
103 Maconi, Karpur 70–72, 74–
76, 82–84,
86–89
73, 85 103 Maconi, Karpur,
Shah
73, 85
Overall
Outcome
77–89

REVERSED