Joachim Frank

Patent Trials and Appeals Board

Jun 5, 2020

2019005705 (P.T.A.B. Jun. 5, 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.
11/695,151 04/02/2007 Joachim H. Frank RSW920060090US1 2155
11445 7590 06/05/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
EVANS, KIMBERLY L
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/05/2020 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOACHIM H. FRANK
____________

Appeal 2019-005705
Application 11/695,151
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
BETH Z. SHAW, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5, 16–20, and 23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed January 15, 2019) and Reply Brief (“Reply Br.,” filed July 16, 2019),
and the Examiner’s Answer (“Ans.,” mailed May 16, 2019), and Final
Office Action (“Final Act.,” mailed July 27, 2018). Appellant identifies
International Business Machines Corporation as the real party in interest
(Appeal Br. 2).
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CLAIMED INVENTION
The claimed invention “relates to the field of conversation protocol
validation in e-business” and, more particularly, to “business-to-business
(B2B) conversation protocol validation” (Spec. ¶ 1).
Claims 1, 16, and 23 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method for testing
protocol compatibility between roles in a business-to-business
(B2B) conversation, the method comprising:
selecting at least two roles with known interaction
behavior for each participant to a B2B conversation over a
computer communications network;
deriving local protocols for each of the selected roles each
in a form of a protocol state machine;
constructing a single conversation protocol in a
corresponding state machine from the local protocols by
computing a product of the local protocols through forming an
initial state of the single conversation protocol as a product of
each initial state of each of the local protocols augmented by a
message count comprising a tuple of non-negative integers, one
for each defined message that indicates a number of message
instances that are in flight in the initial state of the local
protocols, with a position of each of the non-negative integers in
the tuple corresponding to one or more different message types
able to be exchanged so that sent messages sent to a participant
increment a corresponding count in the tuple, and messages sent
from the participant decrement the corresponding count in the
tuple, constructing outbound send and receive transitions for
each state in the single conversation protocol and marking states
whose constituents are solely final states of the local protocols as
final conversation states;
determining if the state machine of the constructed single
conversation protocol has a dead end state; and
identifying protocol incompatibility when it is determined
that a dead end state exists in the state machine of the constructed
single conversation protocol, while identifying protocol
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compatibility in the absence of dead-end states in the state
machine of the constructed single conversation protocol.
REJECTIONS2
Claims 1–5, 16–20, and 23 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claim 23 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention.
Claims 1, 2, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stewart et al. (US 2002/0013759 A1, published Jan. 31,
2002) (“Stewart”), Flores et al. (US 5,208,748, issued May 4, 1993)
(“Flores”), OASIS ebXML Collaboration Protocol Profile and Agreement
Technical Committee, “Collaboration-Protocol Profile and Agreement
Specification Version 2.0,” September 23, 2002, available at
www.ebxml.org/specs/index.htm#whitepapers (“OASIS”), Kemp, II et al.,
(US 7,124,110 B1, issued Oct. 17, 2006) (“Kemp”), and Kraft,
(US 2005/0027738 A1, published Feb. 3, 2005).
Claims 3–5 and 18–20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stewart, Flores, OASIS, Kemp, Kraft, and Boigelot et al.,
(US 5,768,498, issued June 16, 1998) (“Boigelot”).
Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Stewart, Boigelot, Kraft, and Kemp.

2 The Examiner has withdrawn the rejection of the pending claims under
35 U.S.C. § 101 (Ans. 4).
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ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, the inventors were
in possession of the claimed invention. See id.
The Examiner notes here that each of independent claims 1, 16, and
23 recites
with a position of each of the non-negative integers in the tuple
corresponding to one or more different message types able to be
exchanged so that sent messages sent to a participant increment
a corresponding count in the tuple, and messages sent from the
participant decrement the corresponding count in the tuple
(Final Act. 6 (emphasis omitted)). And the Examiner ostensibly takes the
position that the Specification fails to provide adequate written description
support because “[i]t does not describe the position(s) of non-negative
integers in the tuple” (id. (emphasis omitted)).3 Therefore, the Examiner

3 We understand the written description rejection to relate to the “message
count” limitation. However, to the extent the Examiner maintains that the
claims fail to comply with the written description requirement because
Appellant’s Specification “provides no description of sufficiently definite
structure that performs the claimed function for constructing a state machine
as recited in the limitations” (Final Act. 6), we note that independent
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concludes, “[t]he claim(s) define the invention in functional language
specifying a desired result but the [S]pecification does not sufficiently
identify how the inventor has devised the function to be performed or result
achieved” (id. at 6–7), and Appellant “has failed to provide adequate
disclosure in [the] [S]pecification reciting such a feature” (id. at 7).
We agree with Appellant that the requisite written description support
is provided at least in paragraph 29 of the Specification (Appeal Br. 11).
There, as the Examiner acknowledges (Final Act. 6), the Specification
explicitly discloses that the positions of each of the integers in the tuple
correspond to the different message types that participants may exchange,
and that messages sent to a participant increment a corresponding count in
the tuple, whereas messages sent from the participant decrement the
corresponding count in the tuple.
We find that the Specification provides sufficient evidence that the
inventors were in possession of the claimed invention, as recited in
independent claims 1, 16, and 23, including the cited limitation, at the time
the present application was filed. Therefore, we do not sustain the
Examiner’s rejection of claims 1–5, 16–20, and 23 under 35 U.S.C. § 112,

claims 1 and 16 do not recite “constructing a state machine.” Instead,
claim 1 recites “constructing a single conversation protocol in a
corresponding state machine from the local protocols by computing a
product of the local protocols,” and claim 16 includes substantially similar
language. Independent claim 23 does recite “constructing a state machine.”
It also recites how the state machine is constructed, i.e., “by forming an
initial state of the state machine as a product of each initial state of each of
the local protocols augmented by a message count comprising a tuple of
non-negative integers.” A detailed discussion of the construction of the
conversation protocol also is provided in paragraphs 28–32 of the
Specification, with reference to Figure 4.
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first paragraph, as failing to comply with the written description
requirement.
Indefiniteness
In rejecting claim 23 under 35 U.S.C. § 112, second paragraph, the
Examiner notes that claim 23 recites
constructing a state machine corresponding to the state execution
graph by forming an initial state of the state machine as a product
of each initial state of each of the local protocols augmented by
a message count comprising a tuple of non-negative integers, one
for each defined message that indicates a number of message
instances that are in flight in the initial state of the local
protocols, with a position of each of the non-negative integers in
the tuple corresponding to one or more different message types
able to be exchanged so that sent messages sent to a participant
increment a corresponding count in the tuple, and messages sent
from the participant decrement the corresponding count in the
tuple, constructing outbound send and receive transitions for
each state in the state machine and marking states whose
constituents are solely final states of the local protocols as final
conversation states
(Final Act. 7–8 (emphasis omitted)). The Examiner opines, “Examiner is
unable to determine the metes and bounds of this limitation,” and asks
“[w]hat exactly is applicant claiming regarding the construction of a state
machine?” (id. at 8; see also Ans. 8 (“Appellant claims several steps for
constructing a state machine in this lengthy limitation, however it is unclear
to the Examiner what exactly appellant is claiming to be the inventive
concept(s) in this limitation for constructing a state machine.”)). But, the
Examiner provides no substantive analysis or reasoning to support this
position; nor does the Examiner otherwise explain why a person of ordinary
skill in the art would not understand what is claimed when claim 23 is read
in light of the Specification.
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We agree with Appellant that the Examiner has failed to establish a
prima facie case of indefiniteness (Appeal Br. 5–7). Therefore, we do not
sustain the Examiner’s rejection of claim 23 under 35 U.S.C. § 112, second
paragraph.
Obviousness
Independent Claims 1 and 16 and Dependent Claims 2 and 17
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 16 under 35 U.S.C. § 103(a) at least
because Kemp, on which the Examiner relies, does not disclose or suggest
“a message count comprising a tuple of non-negative integers . . . a position
of each of the non-negative integers in the tuple corresponding to one or
more different message types able to be exchanged,” as recited in claim 1,
and similarly recited in claim 16 (Appeal Br. 12–16).
The Examiner cites column 7, lines 46–62; column 9, lines 16–25 and
40–45; Figures 4C and 4D; column 13, lines 8–14; and Table 2 of Kemp as
disclosing the argued limitation (Final Act. 16–17). However, we agree with
Appellant that although Kemp is concerned with ensuring that the number or
frequency of transmission messages transmitted to an exchange does not
exceed message thresholds, and discloses “a ‘limiting event’ for ‘in-flight
transactions’ that may include the transmission of a transaction to an
exchange which causes an increment, or the receipt of an order
acknowledgement from the exchange which causes a decrement” (Appeal
Br. 16), there is nothing in the cited portion of Kemp that discloses or
suggests that “a position of each of the non-negative integers in the tuple
correspond[s] to one or more different message types,” as called for in
claims 1 and 16.
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Responding to Appellant’s argument in the Answer, the Examiner
further describes the Kemp system and method (Ans. 10–14). But, the
Examiner does not point to any portion of Kemp that discloses or suggests
the argued limitation.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 16 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner’s rejection of dependent
claims 2 and 17. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).
Dependent Claims 3–5 and 18–20
Claims 3–5 and 18–20 depend, directly or indirectly, from one of
independent claims 1 and 16. The rejection of these dependent claims does
not cure the deficiency in the Examiner’s rejection of claims 1 and 16.
Therefore, we do not sustain the Examiner’s rejection of dependent
claims 3–5 and 18–20 for the same reasons set forth above with respect to
independent claims 1 and 16.
Independent Claim 23
Independent claim 23 includes language substantially similar to the
language of claims 1 and 16, and stands rejected based on the same rationale
(regarding Kemp) applied with respect to claims 1 and 16 (Final Act. 33–
34). Therefore, we do not sustain the Examiner’s rejection of independent
claim 23 for the same reasons set forth above with respect to independent
claims 1 and 16.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–5, 16–20,
23
112, first
paragraph
Written
Description
1–5, 16–20,
23
23 112, second
paragraph
Indefiniteness 23
1, 2, 16, 17 103(a) Stewart,
Flores,
OASIS,
Kemp, Kraft
1, 2, 16, 17
3–5, 18–20 103(a) Stewart,
Flores,
OASIS,
Kemp, Kraft,
Boigelot
3–5, 18–20
23 103(a) Stewart,
Boigelot,
Kraft, Kemp
23
Overall
Outcome
1–5, 16–20,
23

REVERSED