13861483 - (R) (P.T.A.B. Feb. 18, 2020)

Vincent Beraudier et al.

Patent Trials and Appeals BoardFeb 18, 2020

13861483 - (R) (P.T.A.B. Feb. 18, 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. 13/861,483 04/12/2013 Vincent Beraudier RSW920110082US1 (759) 1623 11445 7590 02/18/2020 IBM Corporation - Endicott Drafting Center 1701 North Street Building 256-3 Endicott, NY 13760 EXAMINER KASSIM, HAFIZ A ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 02/18/2020 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 VINCENT BERAUDIER, PHILIPPE COURONNE, and GEORGES-HENRI MOLL1 ____________________ Appeal 2018-002761 Application 13/861,483 Technology Center 3600 ____________________ Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on Appellant’s Request for Rehearing of our Decision mailed July 22, 2019. We have reconsidered our Decision in light of Appellant’s Request, and we grant Appellant’s Request and change our Decision for the reasons discussed, infra. 1 According to Appellants, the real party in interest is International Business Machines Corporation. App. Br. 2. Appeal 2018-002761 Application 13/861,483 2 BACKGROUND2 Appellant has filed a paper under 37 C.F.R. § 41.52 requesting we reconsider our Decision affirming the Examiner’s rejection of claims 22–33 under 35 U.S.C. § 101. Request 2–3.3 APPELLANT’S ARGUMENTS Appellant contends the 2019 Revised Guidance and Berkheimer Memorandum utilized in our de novo review of the subject matter eligibility rejection of claims 23–33 under 35 U.S.C. § 101 in the Decision were unavailable at the time of filing of the Appeal and Reply Briefs. Unfortunately, given the timing of the 2019 Guidelines, Appellants have not been afforded the opportunity to prove under Prong Two of Mayo step 2A that Appellants’ claims (the actual claim language as a combination of claimed steps) reflect an improvement in the technical field of coordinating mixed integer programming with business rules management. Had Appellants been afforded such opportunity and had Appellants been aware of the 2019 Guidelines, Appellants would have referenced the combination of four elements as claimed that provide for the determination for each candidate rule whether a no-failure condition is met, with the no-failure condition being considered as met when a mixed integer programming (MIP) 2 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed Oct. 13, 2017); Reply Brief (“Reply Br.,” filed Jan. 16, 2018); Request for Rehearing (“Request,” filed Sept. 23, 2019); Examiner’s Answer (“Ans.,” mailed Nov. 15, 2017); Final Office Action (“Final Act.,” mailed June 5, 2017); our Decision on Appeal (“Decision,” mailed July 22, 2019); and the original Specification (“Spec.,” filed Apr. 12, 2013). 3 Although other rejections were addressed in our Decision and acknowledged by Appellant, Appellant avers “[i]t is only in respect to the rejections under 35 U.S.C. § 101 for which rehearing is sought.” Request 3. Because claim 22 has been canceled, we note a typographical error in Appellant’s statement that “claims 22 through 33 stand rejected under 35 U.S.C. § 101.” Id. Appeal 2018-002761 Application 13/861,483 3 constraint of a left hand side of a corresponding enveloping rule for the candidate rule did not fail, the removal from the set of candidate rules of any of the rules in the candidate set for which a no-failure condition is not met, but the selection from the set of candidate rules of a conflict set of selected rules such that each selected rule has been determined to meet the no-failure condition, the generation of an agenda, including an agenda order, for the conflict set of selected rules that ranks the conflict set of the selected rules and the application of only those rules in the conflict set in agenda order to a working memory of a rules engine in a business rules management system (BRMS). Request 8–9. “Consequently, Appellants believe that the consideration of the rejections under 35 U.S.C. § 101 in the Decision is a ‘new grounds of rejection’.” Request 10. RESPONSE TO ARGUMENTS We find Appellant’s arguments persuasive as to the § 101 rejection being a new ground of rejection in light of the 2019 Revised Guidelines. In the interests of fairness and due process, we agree that the § 101 rejection of claims 23–33 should be designated as a new ground of rejection, and grant Appellant’s request with respect to the § 101 rejection of claims 23–33. We further note our Decision with respect to the other rejections addressed in our Decision remain unchanged as indicated in the summary table below.4 4 Appellant incorrectly states, “[a]t page 4 of the Decision, the Board has determined that the foregoing [Obviousness-Type Double Patenting (OTDP)] rejections are not ripe for review on Appeal.” Request 3, n.1. We disagree with this characterization because, as discussed in the Decision, we pro forma affirmed the Examiner’s provisional OTDP rejection of claims 23–33. “Based on the lack of any evidence of record concerning a Terminal Appeal 2018-002761 Application 13/861,483 4 CONCLUSION We have considered all of the arguments timely raised by Appellant in the Request and Appellant has persuasively shown that our Decision should be modified. For the aforementioned reasons, Appellant’s contentions have persuaded us of error in our Decision. SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C § Reference(s)/Basis Denied Granted 23–33 101 Subject matter eligibility 23–33 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C § Reference(s)/ Basis Affirmed Reversed New Ground 23–33 Provisional non- statutory obviousness-type double patenting 23–33 23–33 101 Subject matter eligibility 23–33 23–33 23–33 112(a) Written description 23–33 23–33 103(a) Proctor, Belcsak 23–33 Overall Outcome 23–33 23–33 Disclaimer in this case, we pro forma affirm the Examiner's provisional Rejection RI of claims 23–33.” Decision 6. Appeal 2018-002761 Application 13/861,483 5 FINALITY AND RESPONSE This Decision on Rehearing contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection under 37 CFR 41.50(b) was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution. If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time. MPEP § 1214.01 (“Procedure Following New Ground of Rejection by Board”) [R-08.2017]. We leave it to Appellant to file an appropriate response and/or amendment with the Examiner with respect to only the new ground of rejection of claims 23–33 under 35 U.S.C. § 101. GRANTED; 37 C.F.R. § 41.50(b)