Ex Parte Agostini et al - Page 5

                Appeal 2006-3430                                                                                 
                Application 10/178,439                                                                           
                                            FINDINGS OF FACT                                                     
                       Group I:     Findings with respect to the rejection of claims 3, 4, 8-9,                  
                13-14, 17-20, 23, 25-28, 31, 33-36, and 39 under 35 U.S.C. § 102(e) for                          
                being anticipated by Morales:                                                                    
                   1. Morales teaches a method and program on a medium for developing                            
                       software that executes business rules using a rules engine.  Ruleflow                     
                       templates associate a task with a group of rule templates created by                      
                       users not necessarily skilled in programming using user interfaces to                     
                       edit the rules. (Morales, col. 2).                                                        
                   2. Appellants contend that Morales does not teach the claimed reading of                      
                       a script file, converting it to a source code file, compiling the source                  
                       code file to generate an executable rule, and storing the executable                      
                       rule in a repository.  (Br. 6).  The Examiner counters that contention                    
                       in his Answer, page 11, reading the claimed limitations on the                            
                       disclosure of Morales.  We do not find error in this reading.  Of                         
                       special note is the issue of whether the rule in its executable form is                   
                       stored in repository 108, as claimed.  Examiner correctly points out                      
                       executable Rule Group 828 (col. 9, ll. 12-13) is stored in Rules                          
                       element 128 as shown in Figure 8.  In Figure 1A of Morales it is                          
                       clearly shown that Rules element 128 is stored in Repository 108.  We                     
                       thus find that the claimed limitation “placing the generated executable                   
                       rule into the repository” is anticipated by Morales.                                      
                   3. In the Reply Brief, page 5, Appellants indicate that indeed executable                     
                       rules 828 are stored in repository 108, but the reference is obviated                     
                       because “source code” rules 128 are also stored in the repository, and                    

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