The Boeing Company

Patent Trials and Appeals Board

Oct 4, 2021

2020005128 (P.T.A.B. Oct. 4, 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.
13/860,676 04/11/2013 William D. Kelsey B86918 1380US.1 (0055.6) 6247
128836 7590 10/04/2021
WOMBLE BOND DICKINSON (US) LLP/BOEING
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
EXAMINER
BROCK, ROBERT S
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
10/04/2021 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):
ipdocketing@wbd-us.com
patentadmin@Boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM D. KELSEY and DAVID H. JONES
Appeal 2020-005128
Application 13/860,676
Technology Center 2100
Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Boeing
Company. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
The Application is directed to “managing a model having an object
cycle.” Spec. 1:5. The “model may be for a physical or non-physical
product,” the model “may reflect functional relationships or associations
between various [product] components by connections or associations
between nodes,” and the model “may be executed (machine code) or
compiled for execution (source code) in a virtual environment (e.g., on a
computer), such as to enable one to study interactions between the
components during design of the product.” Spec. 6:18–29.
Claims 1–23 are pending; claims 1, 8, and 15 are independent.
Appeal Br. 14–21. Claim 8 is reproduced below for reference (emphasis
added):
8. A method comprising:
receiving an information model that describes a product
and includes a plurality of objects that describe discrete physical
components or processes of the product;
performing a cycle identification to identify a cycle of
related objects in the information model, and creating a map that
describes the cycle of related objects including at least a first
object that refers to a second object through an association, and
that is referred back to by the second object or a later object
through another association;
creating another map that indicates the other association
through which the second object or the later object refers back to
the first object, and includes one or more policies for creation of
a second instantiable object or a later instantiable object for
respectively the second object or the later object; and
automatically generating, by a runtime code generator,
runtime model artifacts for the information model using the
information model, the map and the other map, the runtime
model artifacts including an instantiable information model and
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an object registry that are executable or compilable for execution
in a virtual environment on a computer,
wherein automatic generation of the runtime model
artifacts including the instantiable information model includes
generation of a plurality of instantiable objects for respective
ones of the objects of the information model and thereby
respective ones of the discrete physical components or processes
of the product, including identification of the other association
using the map, generation of the second instantiable object or the
later instantiable object according to the one or more policies
from the other map and that, for the other association, includes
an object qualifier that identifies a referenced object for the first
object, the referenced object to be instantiated through the object
registry.
References and Rejections
Claim 23 is rejected under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement. Final Act. 3.
Claims 1–6, 8–13, and 15–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Fowler (Martin Fowler et al., Patterns of Enterprise
Application Architecture; Addison-Wesley Professional, 2002, 389 pages) in
view of Beaton (US 2010/0114631 A1; May 6, 2010). Final Act. 4.
Claims 7, 14, and 21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Fowler in view of Beaton, and further in view of LTE
(Extract, Transform, Load; Wikipedia, The Free Encyclopedia, as archived
18 March 2013, retrieved 14 Dec. 2015 from https://en.wikipedia.org/w/
index.php?title=Extract,_transform,_load&oldid=545266783). Final Act.
11.
Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over
Fowler in view of Beaton, and further in view of CORBA (Common Object
Request Broker Architecture; Wikipedia, The Free Encyclopedia,
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https://en.wikipedia.org/w/index.php?title=Common_Object_Request_Brok
er_Architecture&old id=486581946 (accessed June 24, 2019). 9 pages).
Final Act. 12, 13.
Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over
Fowler in view of Beaton, and further in view of Vernadat (F.B. Vernadat,
Enterprise modeling and integration (EMI): Current status and research
perspectives, 26 Annual Reviews in Control 15–25 (2002)). Final Act. 14.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

A. Obviousness
Appellant argues independent claims 1, 8, and 15 as a group. See
Appeal Br. 5. We choose claim 8 as representative of this group. Appellant
argues dependent claims 3, 10, and 17 as a group. See Appeal Br. 10. We
choose claim 10 as representative of this group.
We disagree with Appellant that the Examiner erred and adopt as our
own the findings and reasons set forth by the Examiner, to the extent
consistent with our analysis below. We add the following primarily for
emphasis.

Prima Facie Case
Appellant argues the Examiner’s obviousness rejection of independent
claim 8 is in error, because “the generalized teachings cited in Fowler do not
teach or suggest a runtime code generator configured to automatically
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generate runtime model artifacts for the information model using the
claimed information model, the claimed map and the claimed other map, as
recited in claim 8.” Appeal Br. 5. Particularly, Appellant contends the
Examiner’s “parenthetical and piecemeal approach” does not “establish a
prima facie case of obviousness, and do[es] not constitute explicit analysis
as to how or why the statements in Fowler would be interpreted by a person
of ordinary skill in the art as a teaching or suggestion of the claimed
material.” Reply Br. 3; see Appeal Br. 7, 8.
We do not find the Examiner has failed to present a prima facie case
of obviousness.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
That section “is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter
the grounds for rejection.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (internal citations omitted).
Appellant does not persuade us that the Examiner’s rejection prevents the
Appellant from recognizing and seeking to counter the grounds for rejection.
With respect to the “automatically generating, by a runtime code
generator” limitation, the Examiner finds “[t]he ‘automatically generating’
step and ‘wherein’ clause provide for the generation of runtime code and a
description of functionality/data of the runtime code.” Final Act. 23. The
Examiner explains that “Fowler is cited (p7 of the Office Action) for the
‘generating’ itself and for linking the material cited for the functionality/data
to the code so generated,” as “i) Fowler discloses the particular design
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patterns and ii) Fowler discloses the use of the patterns to generate
applications – accordingly Fowler has disclosed the ‘generated’ versions of
the design patterns.” Final Act. 23, 25; Fowler pp. 6, 95, 155–165. The
Examiner further maps the limitations to the particular teachings of Fowler:
Fowler discloses design patterns which match the claimed
elements, e.g. claimed “information model”/“plurality of
objects[”]) (Prior Action at p4 - citation regarding “object graph”
and “domain model”), “map” (id at p5 - citation regarding
“cycles” and “foreign key” database), “another [the other] map”
(id bridging pp5-6 – citation regarding “back pointers” of three
types – “virtual proxy”, “value holder”, and “ghost”).
Ans. 4; see also Ans. 8; Final Act. 5–7; Fowler pp. 182, 184, 185.
In rejecting claim 8, the Examiner identifies the limitations, maps
these limitations to corresponding teachings of the reference, and provides
supporting analysis. In contrast, Appellant does not challenge any specific
finding2; rather, Appellant broadly alleges the rejection is insufficient. See,
e.g., Appeal Br. 7. We disagree with Appellant. We find the Examiner’s
rejection is reasonable and supported by the evidence of record, as discussed
above.

2 In the Reply Brief, Appellant newly argues Fowler’s “[i]nformal language
about a need to ‘watch out’ for cycles in links is not a teaching or suggestion
of the specific map describing cycles of two objects with the specific
referential associations recited in the claims.” Reply Br. 3. We do not
consider these new arguments, because the Examiner has not been provided
a chance to respond and Appellant has not shown good cause for failing to
raise this argument in the initial brief. See 37 C.F.R. § 41.41(b)(2); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining
that arguments and evidence not timely presented in the Appeal Brief, will
not be considered when filed in a Reply Brief, absent a showing of good
cause).
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Appellant does not persuade us the Examiner has failed to present a
prima facie case of obviousness. Further, we find no substantive issue—on
the record before us—showing there are gaps between the prior art and
claim 1. See Jung, 637 F.3d at 1363 (“But whether there are gaps between
the prior art and the rejected claims is a substantive issue, and [Appellant’s]
assertion that the examiner must ‘bridg[e] the facial differences’ between the
claims and the prior art begs the substantive question of whether there are
facial differences to be bridged.”). Accordingly, we are not persuaded of
reversible error in the obviousness rejection of claim 8.

Inherency
Appellant further argues the Examiner’s rejection of independent
claim 8 is in error, because “the Examiner’s findings improperly rely on
allegations of inherency without proper support.” Appeal Br. 8.
Particularly, Appellant contends “the Examiner asserts that every aspect of
the claim clause describing the particulars of the recited automatic
generation of the runtime model artifacts including the instantiable
information model ‘necessarily result from the generation according to the
mechanisms cited above.’” Id. at 9 (quoting Final Act. 7).
Appellant’s arguments focus on inherency; however, the Examiner’s
rejection is based on obviousness. See Final Act. 8. As explained by the
Examiner, rather than relying on inherency, the rejection “is a combination
of ‘clear teachings or suggestions in the actual cited references’ with a
clarifying remark that the citation is interpreted in the context of generating
code.” Ans. 25; Fowler pp. 235–242. We agree. The Examiner reasonably
finds one of ordinary skill would understand Fowler’s “software application
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is an artifact and thus if a software application exists then it was generated.”
Final Act. 24; Fowler p. 235 (“With code generation you write a program
whose input is the metadata and whose output is the source code of classes
that do the mapping.”). Appellant fails to provide sufficient evidence or
technical reasoning to show persuasively that the Examiner’s obviousness
determination is in error.
Accordingly, we are not persuaded the obviousness rejection of claim
8 contains reversible error. We sustain the Examiner’s rejection of
independent claims 1, 8, and 15.

Dependent Claims
Appellant argues the Examiner’s rejection of dependent claim 10
(which depends from claim 8) is in error, because “[a]bsent from the
rejection is any explicit analysis about why the general statement in Fowler
renders the particulars of the claim element obvious, much less any
discussion of how that statement . . . could be modified and combined with
material in a different chapter placed some fifty pages later in the reference.”
Appeal Br. 10.
We are not persuaded the Examiner’s obviousness rejection of claim
10 is in error, for the same reasons discussed above with respect to
independent claim 8. Particularly, Appellant’s general allegations of
insufficiency do not identify any gaps in the Examiner’s analysis, or
between the cited references and the claims at issue. See Ans. 30–33; Final
Act. 9; Fowler pp. 96, 185. Accordingly, we sustain the Examiner’s
obviousness rejection of dependent claim 10. Cf. In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this
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court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art.”)
We sustain the Examiner’s rejection of dependent claims 3, 10, and
17. Appellant does not present separate substantive arguments for the
remaining dependent claims. See Appeal Br. 10, 11. We, thus, sustain the
Examiner’s rejection of claims 2–7, 9–14, and 16–23.

B. Written Description
Dependent claim 23 depends from claim 8, and recites, inter alia,
“producing the product including the discrete physical components,
according to a design of the product that is consistent with the information
model and thereby the runtime model artifacts and simulation of the
product.” Appeal Br. 21.
The Examiner finds “although the specification describes the
invention in the context of product design, there appears to be no support for
producing the product” as claimed. Final Act. 3. The Examiner explains
that “[w]hat appears to be missing is a disclosure of the link between the
manufacturing and simulation” (Final Act. 17), as the Specification’s
disclosure of a machine “appears to be with regard to . . . instructions for
carrying out[] the methods,” and “does not appear to be related to use of the
information model itself to produce or manufacture products” (Ans. 34).
Appellant argues the Examiner’s written description rejection is in
error, because “the subject matter of the claim need not be described literally
. . . in order for the disclosure to satisfy the description requirement.”
Appeal Br. 12 (internal quotations omitted). Appellant contends the claim is
properly supported by the disclosure, because the Specification describes
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that a computer can “function in a particular manner to thereby generate a
particular machine or particular article of manufacture,” and “[t]he . . .
specification also references a range of physical products, the design and
production of which can be improved through implementations of the
developments disclosed in the specification.” Id.
We are persuaded the Examiner’s rejection is in error. As cited by
Appellant, the Specification discloses information models may be used for
“the design of products . . . like aircraft,” which suggests the designed
product will be produced. Appeal Br. 12; Spec. 3:5. The Specification
makes this suggestion explicit, as it explains that “instructions stored in the
computer-readable storage medium may produce an article of manufacture”
and “[i]nformation models, sometimes referred to herein as data models, are
increasingly utilized in design and manufacture of a wide variety of
products.” Spec. 19:1–2, 1:8–9. One of ordinary skill, in view of the
Specification, would understand the inventors had possession of the claimed
step of “producing the product.” Accordingly, we do not sustain the
Examiner’s written description rejection of dependent claim 23.
DECISION SUMMARY
The Examiner’s decision is affirmed, because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 37
C.F.R. § 41.50(a)(1).
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23 112 (a) Written
Description
23
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1–6, 8–13,
15–20
103 Fowler, Beaton 1–6, 8–13,
15–20

7, 14, 21 103 Fowler, Beaton,
LTE
7, 14, 21
22 103 Fowler, Beaton,
CORBA
22
23 103 Fowler, Beaton,
Vernadat
23
Overall
Outcome
1–23

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