Ex Parte Kuehner et al

Patent Trial and Appeal Board

Feb 25, 2013

10890690 (P.T.A.B. Feb. 25, 2013)

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.
10/890,690 07/14/2004 Rupam Sinha Kuehner CA920040014US1 8566
46320 7590 02/25/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
PARKER, BRANDON
ART UNIT PAPER NUMBER
2172
MAIL DATE DELIVERY MODE
02/25/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte RUPAM SINHA KUEHNER, JEFFREY YU KWAN LIU,
and ALLAN S.L. ZHANG
_____________

Appeal 2010-009255
Application 10/890,690
Technology Center 2100
______________

Before ROBERT E. NAPPI, JASON V. MORGAN, and BRYAN F.
MOORE, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009255
Application 10/890,690

2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 4 through 10, 13 through 19, and 21 through 24.

We affirm-in-part.
INVENTION
The invention is directed to method for managing web services
deployment descriptors. Specification pages 2, 3, and Figures 4A and 4B.
Claim 1 is representative of the invention and reproduced below:

1. A method, in a data processing hardware system, for
managing Web services deployment descriptors, the method
comprising:
parsing, with a parser, a deployment descriptor document
to identify at least one data fragment;
providing a user interface component;
providing an adapter, wherein the adapter is associated
with the user interface component and the data fragment;
updating the data fragment in response to the adapter
being notified of a change to the associated user interface
component; and
updating the associated user interface component in
response to the adapter being notified of a change to the
associated data fragment.

REJECTIONS AT ISSUE
The Examiner has rejected claims 19 and 21 through 24 under 35
U.S.C. § 101 as directed to non-statutory subject matter. Answer 3.
1

1
Throughout this opinion we refer to the Examiner’s Answer mailed on
January 21, 2010.
Appeal 2010-009255
Application 10/890,690

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The Examiner has rejected claims 1, 4 through 10, 13 through 19, and
21 through 24 under 35 U.S.C. § 103(a) as unpatentable over by Pavlov
(U.S. 2006/0053087 A1), DeGrotte (U.S. 2006/0184915 A1) and Newman
(U.S. 2004/0230559 A1). Answer 4-12.

ISSUES

Rejection under 35 U.S.C. § 101
Appellants argue on pages 6 and 7 of the Brief, and 2 through 3 of the
Reply Brief that the Examiner’s rejection under 35 U.S.C. § 101 is in error.
2

These arguments present us with the issue did the Examiner err in
concluding that independent claim 19 is not drawn to statutory subject
matter?

Rejections under 35 U.S.C. § 103(a)
Appellants argue on pages 7 through 19 of the Brief, and 3 through 10
of the Reply Brief that the Examiner’s rejection under 35 U.S.C. § 103 is in
error. These arguments present us with the issue did the Examiner err in
finding the combination of Pavlov, DeGrotte, and Newman teach a user
interface and an adaptor associated with the user interface and a data
fragment, as recited in independent claims 1, 10, and 19?
3

2
Throughout this opinion we refer to the Appeal Brief dated August 17,
2009, and Reply Brief dated March 17, 2010.
3
We note Appellants’ arguments present us with additional issues, however
we do not reach the additional issues, as this issue is dispositive of the
appeal.
Appeal 2010-009255
Application 10/890,690

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ANALYSIS

Rejection under 35 U.S.C. § 101
We have reviewed Appellants’ arguments in the Brief, the Examiner’s
rejection and the Examiner’s response to the Appellants’ arguments. We
disagree with Appellants’ assertion that the Examiner erred in concluding
that independent claim 19 is not drawn to statutory subject matter.
Appellants acknowledge that software per se is an abstract idea, but argue
the claim is not limited to software. Brief 6. Appellants reason claim 19
recites that the handlers effectuate changes which necessarily means that
hardware is involved as software cannot perform functions. Brief 6. This
argument has not persuaded us that the Examiner erred in finding claim 19 is
directed to an abstract concept of software. Appellants’ Specification
identifies that “the present invention may take the form of … an entirely
software embodiment.” Specification 0022. Accordingly, we sustain the
Examiner’s rejection of claims 19 and 21 through 24 under 35 U.S.C. § 101.

Rejections under 35 U.S.C. § 103(a)
We have reviewed Appellants’ arguments in the Brief, the Examiner’s
rejection and the Examiner’s response to the Appellants’ arguments. We
agree with Appellants’ conclusion, that the Examiner erred in finding the
combination of Pavlov, DeGrotte and Newman teaches a user interface and
an adaptor associated with the user interface and a data fragment, as recited
in independent claims 1, 10, and 19. The Examiner finds that Pavlov
teaches “enterprise application servers as the document which has a message
drive component” as the claimed interface. Answer 12-13. Appellants
Appeal 2010-009255
Application 10/890,690

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argue this is an application programming interface and not a user interface.
Reply Brief 5. We concur with the Appellant as the Examiner has not
presented sufficient evidence to show that the combination of the references
makes use of a user interface as claimed. Accordingly, we will not sustain
the Examiner’s rejections of dependent claims 1, 4 through 10, 13 through
19, and 21 through 24 under 35 U.S.C. § 103(a).

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection
against claim 10 under 35 U.S.C. § 101. Claim 10 recites “A computer
program product . . . comprising a computer-readable medium . . . .”
Appellants’ Specification states “The computer-usable or computer-readable
medium may be . . . propagation medium.” and “a computer-usable or
computer-readable medium . . . may be any medium that can . . . propagate.”
Specification 0023. Thus, Appellants’ Specification identifies that the
medium can include a propagating signal. A signal is not within one of the
four categories of patentable subject matter as defined under 35 U.S.C.
§ 101. Nuijten, 500 F.3d at 1357; see also Manual of Patent Examining
Procedure (“MPEP”) § 2106(I), Ed. 8, Rev. 9 (Aug. 2012). Accordingly,
we now reject independent claim 10 and dependent claims 13 through 17 as
being drawn to subject matter that is not eligible for patent protection under
35 U.S.C. § 101.

CONCLUSION
We sustain the Examiner’s rejections of claims 19 and 21 through 24
under 35 U.S.C. § 101.
Appeal 2010-009255
Application 10/890,690

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We do not sustain the Examiner’s rejection of claims 1, 4 through 10,
13 through 19, and 21 through 24 under 35 U.S.C. § 103(a).
We enter a new rejection of claims 10, and 13 through 17 under 35
U.S.C. § 101.
The decision of the Examiner to reject claims 1, 4 through 10, 13
through 19, and 21 through 24 is affirmed- in-part.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection…
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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:
(1) 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. . . .

(2) Request that the proceeding be reheard
under § 41.52 by the Board upon the same
record. . . .

Appeal 2010-009255
Application 10/890,690

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

AFFIRMED-IN-PART
37 C.F.R. 41.50(b)

ELD