Murray Beaton et al.

Patent Trials and Appeals Board

Oct 7, 2020

12266448 - (D) (P.T.A.B. Oct. 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.
12/266,448 11/06/2008 Murray J. Beaton CA920080040US1 (096) 4109
11445 7590 10/07/2020
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/07/2020 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 MURRAY J. BEATON, CHRISTINA P. LAU,
and SCOTT P. PEDDLE
____________

Appeal 2020-000882
Application 12/266,448
Technology Center 3600
____________

Before MICHAEL W. KIM, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 14–25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and designate our affirmance of the
Examiner’s rejection of claims 14–17 under 35 U.S.C. § 101 as
a NEW GROUND OF REJECTION pursuant to our authority under
37 C.F.R. § 41.50(b). We also enter a NEW GROUND OF REJECTION of
claims 18–25 under 35 U.S.C. § 101 pursuant to this same authority.
CLAIMED INVENTION
Appellant describes that “[t]he present invention relates to the field of
modeling” and, more particularly, to “managing process model assets”
(Spec. ¶ 1).
Claims 14, 18, and 22 are the independent claims on appeal.
Claim 14, reproduced below with bracketed notations added, is illustrative
of the claimed subject matter:
14. A method comprising:
[(a)] setting up a repository of reusable BPM assets, with
each BPM asset including a grouping of tasks, a grouping of
activities, a grouping of actors, a grouping of elements and
relationships [of] the groupings;

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 June 10, 2019) and Reply Brief (“Reply Br.,” filed November 13,
2019), and the Examiner’s Answer (“Ans.,” mailed September 13, 2019) and
Final Office Action (“Final Act.,” mailed December 17, 2018). Appellant
identifies International Business Machines Corporation as the real party in
interest (Appeal Br. 2).
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[(b)] selecting a BPM asset;
[(c)] copying, from the repository and to a process
modelling tool, the selected BPM asset;
[(d)] responsive to the copying, determining a plurality
of interdependent BPM assets that are required when using the
selected BPM asset;
[(e)] copying, from the repository and to the process
modelling tool, the plurality of interdependent BPM assets, with
the copying including:
[(e1)] detecting that a first interdependent BPM
asset of the plurality of BPM assets is already present in
the process modelling tool through a prompting of an end
user according to a comparison of:
(i) a unique identifier for the first
interdependent BPM asset in combination with a
name of the first interdependent BPM asset, and
(ii) with a unique identifier for an existing
asset in the process modelling tool combination
with a name of the existing asset,
[(e2)] responsive to the detection that a first
interdependent BPM asset of the plurality of BPM assets
is already present in the process modelling tool, resolving
a conflict, and resolving circular references amongst the
interdependent BPM assets by:
(i) tracking a navigation of each
interdependent BPM asset of the plurality of BPM
assets, and
(ii) prohibiting re-importation of one, or
more, interdependent BPM asset(s) already
encountered during copying of the plurality of
interdependent BPM assets; and
[(f)] modelling, by the process modeling tool, a business
process using:
(i) the selected BPM asset, and
(ii) the set of interdependent BPM asset(s) that are
required when using the selected BPM asset.
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REJECTIONS
Claims 14–17 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 14–25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Carlson et al. (US 2003/0046282 A1, published Mar. 6, 2003)
(“Carlson”) and Linehan (US 2007/0288412 A1, published Dec. 13, 2007).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 14–17 as a group (Appeal Br. 7–11). We
select independent claim 14 as representative. Claims 15–17 stand or fall
with claim 14. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
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of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
Here, in rejecting claims 14–17 under § 101, the Examiner determined
that independent claim 14 is directed to “setting up a repository of reusable
BPM assets,” i.e., to a method of organizing human activities, and, therefore,
to an abstract idea similar to other concepts that the courts have held
abstract, e.g., “gathering information from different data sources (i.e., ‘BPM
assets’), analyzing said gathered data[,] and displaying certain
information/results of the gathered and analyzed data (Electric Power
Group, LLC, v. Alstom[, S.A., 830 F.3d 1350, 1351, (Fed. Cir. 2016)])[,]
similar to the database management of a set of processes” (Final Act. 3).
The Examiner also determined that claim 14 does not include additional
elements sufficient to amount to significantly more than the abstract idea,
and that dependent claims 15–17 are patent ineligible for substantially the
same reasons (id.).
After the Final Office Action was mailed, but before Appellant’s
Appeal Brief was filed, the U.S. Patent and Trademark Office (the
“USPTO”) published revised guidance for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
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USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to comments received from the public.
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to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded here that the Examiner erred in determining that
claim 14 is directed to an abstract idea (Appeal Br. 13–22). The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification (including the claim language) that
claim 14 focuses on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification is titled “MANAGING REUSABLE BUSINESS
PROCESS MODELING (BPM) ASSETS,” and describes that process
modeling and simulation relates to the modeling and simulation of dynamic
or static systems, including business process systems, and that these systems
can be modeled and simulated for a variety of purposes, including
monitoring, analysis, control, design, simulation, and management (Spec.
¶ 2). Process models generally specify one or more tasks or activities of a
process and the relationship between the different tasks or activities (id. ¶ 3).
“In a business process model (BPM), the tasks, activities, actors, elements
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and the relationship there between can be individually grouped as BPM
assets,” and individual BPM assets can be reused in different combinations
with other BPM assets as part of different BPM solutions (id. ¶ 4). The
Specification cautions that “it can be critical,” in managing reusable BPM
assets in a development tool, e.g., a BPM modeling and/or simulation tool,
“to manage linkages between different reusable BPM assets as some BPM
assets will be dependent upon other BPM assets, and changes in one BPM
asset may impart changes in other linked BPM assets” (id. ¶ 5). And the
Specification describes that although advanced modeling tools have been
expressly created to govern and manage assets, and provide a facility to
download, submit, review, rate, and discuss BPM assets in a collaborative
environment, these advanced modeling tools do not recognize BPM assets
and BPM assets relationships, and “lack the ability to recognize versions of
processes and services, and the ability to search for processes, the linkage
between development, test and production environment for a particular
process or service” (id. ¶ 6).
The claimed invention is ostensibly intended to address this
deficiency by providing “a novel and nonobvious method, system[,] and
computer program product for managing reusable BPM assets” (Spec. ¶ 7).
Claim 14, thus, recites a method comprising: (1) establishing a repository of
reusable BPM assets, i.e., “setting up a repository of reusable BPM assets,
with each BPM asset including a grouping of tasks, a grouping of activities,
a grouping of actors, a grouping of elements and relationships the
groupings” (step (a)); (2) selecting a BPM asset from the repository and
copying the BPM asset to a process modeling tool, i.e., “selecting a BPM
asset” and “copying, from the repository and to a process modelling tool, the
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selected BPM asset” (steps (b) and (c)); (3) copying, from the repository and
to the process modeling tool, a plurality of interdependent BPM assets that
are required when using the selected BPM asset, i.e., “responsive to the
copying, determining a plurality of interdependent BPM assets that are
required when using the selected BPM asset” and “copying, from the
repository and to the process modelling tool, the plurality of interdependent
BPM assets” (steps (d) and (e)); and (4) modeling a business process using
the selected BPM asset and the interdependent BPM assets, i.e., “modelling,
by the process modeling tool, a business process using: (i) the selected BPM
asset, and (ii) the set of interdependent BPM asset(s) that are required when
using the selected BPM asset” (step (f)).
Claim 14 recites that copying the plurality of interdependent BPM
assets to the process modeling tool includes detecting whether an
interdependent BPM asset is already present in the process modeling tool
and, if so, preventing the re-importation of the BPM asset into the modeling
tool, i.e.,
detecting that a first interdependent BPM asset of the
plurality of BPM assets is already present in the process
modelling tool through a prompting of an end user according to
a comparison of:
(i) a unique identifier for the first interdependent
BPM asset in combination with a name of the first
interdependent BPM asset, and
(ii) with a unique identifier for an existing asset in
the process modelling tool combination with a name of the
existing asset,
responsive to the detection that a first interdependent BPM
asset of the plurality of BPM assets is already present in the
process modelling tool, resolving a conflict, and resolving
circular references amongst the interdependent BPM assets by:
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(i) tracking a navigation of each interdependent
BPM asset of the plurality of BPM assets, and
(ii) prohibiting re-importation of one, or more,
interdependent BPM asset(s) already encountered during
copying of the plurality of interdependent BPM assets
(steps (e1) and (e2)). These limitations, when given their broadest
reasonable interpretation, recite copying, i.e., retrieving, BPM assets
(including a selected BPM asset and a plurality of interdependent BPM
assets that are required when using the selected BPM asset) from a
repository of reusable BPM assets into a process modeling tool.
Retrieving data reasonably can be characterized as an observation that
can be performed by a human mentally or manually using a pen and paper.
Identifying interdependent BPM assets also reasonably can be characterized
as an evaluation, judgment, or opinion that can be performed in the human
mind. Claim 14, thus, reasonably can be characterized as reciting mental
processes and, therefore, an abstract idea. See 2019 Revised Guidance,
84 Fed. Reg. at 52. See also Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (holding “the concept of . . .
collecting data, . . . recognizing certain data within the collected data set, and
. . . storing that recognized data in a memory” patent ineligible); Elec. Power
Grp., 830 F.3d at 1353 (merely selecting information, by content or source,
for collection, analysis, and display does nothing significant to differentiate
a process from ordinary mental processes).
Appellant ostensibly does not dispute that claim 14 recites an abstract
idea; instead Appellant maintains that claim 14 is not “directed to” an
abstract idea because the claim provides an improvement to the technical
field of managing reusable BPM assets, i.e., that claim 14 integrates any
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alleged abstract idea into a practical application (Appeal Br. 10–11).3
Referencing paragraph 28 of the Specification, Appellant characterizes the
improvement as “the resolution of circular references amongst dependencies
during BPM asset importation” (id. at 11). Yet, we are not persuaded that
resolving circular references during BPM asset importation, i.e., detecting a
conflict between a BPM asset selected for importation and an existing BPM
asset in the process modeling tool and prohibiting re-importation of the BPM
asset, amounts to a technical improvement as opposed to an improvement in
the abstract idea of copying reusable BPM assets into a process modeling
tool, which is not enough for patent eligibility. See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does
not protect such claims [i.e., claims to an asserted advance in the realm of
abstract ideas], without more, no matter how groundbreaking the advance.”).
This is particularly so where, as here, we find no indication in the
Specification, nor does Appellant direct to any indication, that the operations
recited in claim 14 require any specialized computer hardware or other
inventive computer components, invoke any allegedly inventive

3 The 2019 Revised Guidance references MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e) in non-exhaustively listing
considerations indicative that an additional element or combination of
elements may have integrated the recited judicial exception into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. at 55. Thus, for
example, an additional element may have integrated the judicial exception
into a practical application if the additional element (1) reflects an
improvement in the functioning of a computer or an improvement to other
technology or technical field; (2) implements the judicial exception with, or
uses the judicial exception with, a particular machine or manufacture
integral to the claim; or (3) effects a transformation or reduction of an article
to a different state or thing. Id.
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programming, or that the claimed invention is implemented using other than
generic computer components as tools operating in their normal, routine, and
ordinary capacity.
We conclude, for the reasons outlined above, that claim 14 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim beyond the abstract idea, i.e., “a repository” and “a process
modeling tool,” are no more than generic computer components used as
tools to perform the recited abstract idea. As such, they do not integrate the
abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–
24 (“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 14 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 14 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 14 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
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Appellant argues that the rejection of claim 14 cannot be sustained
because the Examiner has not established that “the combination of steps
claimed [is] un-conventional, non-routine and not well-known” (Appeal
Br. 11). But, that argument is not persuasive at least because “the relevant
inquiry is not whether the claimed invention as a whole is unconventional or
non-routine.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). Instead, the question under step two of the Mayo/Alice
framework (i.e., step 2B) is whether the claim includes additional elements,
i.e., elements other than the abstract idea itself, that “‘transform the nature of
the claim’ into a patent-eligible application.” Alice Corp., 573 U.S. at 217
(quoting Mayo, 566 U.S. at 79, 78). See also Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(citation omitted) (emphasis added)).
Here, the only claim elements beyond the abstract idea are “a
repository” and “a process modeling tool.” The repository is generally
described in the Specification as a storage medium for receiving and storing
reusable assets, i.e., a generic computer component (see, e.g., Spec. ¶¶ 20,
21, 27, 30). And the process modeling tool is similarly described at a high
level (see, e.g., Spec. ¶¶ 19, 24), i.e., as a conventional modeling tool
capable of modeling a business process.
Appellant cannot reasonably maintain, nor does Appellant, that there
is insufficient factual support for the Examiner’s determination that the
operation of these components is well-understood, routine, or conventional,
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where, as here, there is nothing in the Specification to indicate that the
operations recited in claim 14 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than generic off-shelf components operating in their normal, routine,
and ordinary capacity. Indeed, the Federal Circuit, in accordance with Alice,
has “repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
concurring) (citations omitted); see also BSG Tech, 899 F.3d at 1291
(“BSG Tech does not argue that other, non-abstract features of the claimed
inventions, alone or in combination, are not well-understood, routine and
conventional database structures and activities. Accordingly, the district
court did not err in determining that the asserted claims lack an inventive
concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 14 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 14, and claims 15–17, which fall
with claim 14. Because our rationale differs from that set forth by the
Examiner, we denominate our affirmance as a new ground of rejection.
We also enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
New Ground of Rejection
Independent claim 14, as described above, is directed to the abstract
idea of copying reusable BPM assets from a repository of reusable BPM
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assets to a conventional process modeling tool, and does not include
additional elements sufficient to amount to significantly more than the
recited abstract idea.
Independent claim 18 recites a computer program product comprising
computer program instructions, which, when executed by a computer, cause
the computer to perform the method recited in claim 14. And independent
system claim 22 recites a collection of generic computer components
configured to implement the same abstract idea recited in claim 14.
Claims 18 and 22 are not materially different in substance from
claim 14, and are patent ineligible for the same reasons set forth above with
respect to claim 14. See Alice Corp., 573 U.S. at 226 (noting that the Court
has warned against interpreting § 101 in ways that make patent eligibility
depend simply on the draftsman’s art). Therefore, we enter a new rejection
of independent claims 18 and 22, and claims 19–21 and 23–25, which
depend therefrom, under 35 U.S.C. § 101 as directed to a judicial exception
without significantly more.
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 14, 18, and 22 under 35 U.S.C. § 103(a) at least
because neither Carlson nor Linehan, individually or in combination
discloses or suggests “resolving circular references amongst the
interdependent BPM assets by: (i) tracking a navigation of each
interdependent BPM asset of the plurality of BPM assets, and (ii) prohibiting
re-importation of one, or more, interdependent BPM asset(s) already
encountered during copying of the plurality of interdependent BPM assets,”
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as recited in claim 14, and similarly recited in claims 18 and 22 (Appeal
Br. 14–16).
The Examiner cites paragraphs 87, 88, and 99 of Carlson as tracking
the navigation of each interdependent BPM assets of plurality of BPM assets
(Final Act. 6). But, the Examiner acknowledges that Carlson does not
expressly disclose “resolving circular references amongst the interdependent
BPM assets by: . . .(ii) prohibiting re-importation of one, or more,
interdependent BPM asset(s) already encountered during copying of the
plurality of interdependent BPM assets” (id. at 7). The Examiner cites
Linehan to cure the deficiency of Carlson (id. (citing Linehan ¶¶ 107–109,
Table III, and ¶¶ 132–136)). And the Examiner concludes that
it would have been obvious to a person of ordinary skill in the art
to use Linehan’s method of generating an implementation of a
business rule in Carlson’s system to improve the system and
method with reasonable expectation that this would result in a
reusable software management system that is able to provide
more improved tracking of assets
(id. at 7–8).
Carlson is directed to a system for managing software assets, and
describes that a “software asset” refers to a set of one or more related
artifacts that have been created or harvested for the purpose of applying that
asset repeatedly in subsequent development environments (Carlson
Abstract). Carlson describes that the system includes a repository to store
artifacts, and an asset source to generate a software asset based on the
artifacts; the system also includes an asset management system to receive the
software asset from the asset source and store the software asset within an
asset library (id.). Carlson discloses, in paragraphs 87, 88, and 99, on which
the Examiner relies, that, in some fully automated environments, the asset
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source validates the asset information using asset definition templates so that
the asset is then ready for publication to the asset library.
Linehan is directed to a method and system for implementing business
rules (Linehan Abstract), and discloses that the business rules can generally
be classified as one of two types: alethic and deontic (id. ¶ 106). Deontic
rules state what is obligatory or permitted or prohibited and may have
enforcement levels (id. ¶¶ 107–109). Thus, for example, if the available
enforcement levels are “pay a fine” or “go to jail,” the deontic rule “a person
may not have more than one spouse at a time” may have an associated
enforcement level of “go to jail” (id. ¶ 108).
Linehan discloses, in paragraphs 132–136, on which the Examiner
also relies, an exemplary impossibility rule, i.e., “[a]n order never has more
than one payment,” and exemplary obligation rule, i.e., “[a] customer must
pay for each order that is completed,” and describes that creation of a new
payment is refused if one already exists, and that the business modeling
client prevents shipping of the order if payment has not been made.
The Examiner compares the claimed “prohibiting of re-importation of
one, or more, interdependent BPM asset(s) already encountered during
copying of the plurality of interdependent BPM assets” to the “deontic rules
for prohibiting or preventing such as the impossibility obligation” (Final
Act. 7). But, we fail to see how, and the Examiner does not adequately
explain how, the cited portion of Carlson, which refers only to the validation
of asset information by an asset source using a template, in combination with
Linehan’s deontic rules, discloses or suggests resolving circular references
amongst interdependent BPM assets by tracking the navigation of each asset
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during importation and prohibiting the re-importation of an asset already
encountered, as called for in the independent claims.
Therefore, we do not sustain the rejection of independent claims 14,
18, and 22 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of dependent claims 15–17, 19–21, and 23–25. 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”).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed New
Ground
14–17 101 Eligibility 14–17 14–17
14–25 103 Carlson,
Linehan
14–25
18–25 101 Eligibility 18–25
Overall
Outcome
14–17 18–25 14–25
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides that
[w]hen the Board enters such a non-final decision, 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:
Appeal 2020-000882
Application 12/266,448

19
(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. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)