14227794 - (R) (P.T.A.B. Feb. 18, 2020)

Vincent Beraudier et al.

Patent Trials and Appeals BoardFeb 18, 2020

14227794 - (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. 14/227,794 03/27/2014 Vincent Beraudier RSW920110082US2 (759CON) 8981 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 2018-002718 Application 14/227,794 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 18, 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 Appellant, the real party in interest is International Business Machines Corporation. Appeal Br. 2. Appeal 2018-002718 Application 14/227,794 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 11–16 under 35 U.S.C. § 101. Request 1–2.3 APPELLANT’S ARGUMENTS Appellant contends the 2019 Revised Guidance4 and Berkheimer Memorandum5 utilized in our de novo review of the subject matter eligibility rejection of claims 11–16 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 2 Our Decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Oct. 13, 2017); Reply Brief (“Reply Br.,” filed Jan. 16, 2018); Request for Rehearing (“Request,” filed Nov. 26, 2019); Examiner’s Answer (“Ans.,” mailed Nov. 15, 2017); Final Office Action (“Final Act.,” mailed June 2, 2017); the original Specification (“Spec.,” filed Mar. 27, 2014); our Decision on Appeal (“Decision,” mailed July 18, 2019); and Appellant’s Request for Rehearing (“Request,” filed Sept. 18, 2019). 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. 4 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). 5 “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP Inc.),” USPTO Memorandum, Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, April 19, 2018 (the “Berkheimer Memorandum”)). Appeal 2018-002718 Application 14/227,794 3 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) 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 are persuaded by Appellant’s arguments that the § 101 analysis in the Decision, which relied on the 2019 Revised Guidelines, is an undesignated new ground of rejection. In the interests of fairness and due process, we agree that the § 101 rejection of claims 11–16 should be designated as a new ground of rejection, and grant Appellant’s request with respect to the § 101 rejection of claims 11–16. We further note the other rejections addressed in our Decision remain unchanged as indicated in the summary table below. Appeal 2018-002718 Application 14/227,794 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 Rejected 35 U.S.C § Reference(s)/Basis Denied Granted 11–16 101 Subject matter eligibility 11–16 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C § Reference(s)/ Basis Affirmed Reversed New Ground 11–16 Provisional non- statutory obviousness-type double patenting6 11–16 101 Subject matter eligibility 11–16 11–16 11–16 112(a) Written description 11–16 11–16 103(a) Proctor, Belcsak 11–16 Overall Outcome 11–16 11–16 6 We do not reach the merits of the Examiner’s provisional non-statutory obviousness-type double patenting Rejection R1 of claims 11–16 because this issue is not ripe for decision by the Board. Appeal 2018-002718 Application 14/227,794 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 11–16 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). GRANTED; 37 C.F.R. § 41.50(b)