Ex Parte 7043486 et al

Patent Trial and Appeal BoardOct 28, 2015

95001395 (P.T.A.B. Oct. 28, 2015)

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. 95/001,395 07/16/2010 7043486 6115-0105L 4449 2292 7590 10/28/2015 BIRCH STEWART KOLASCH & BIRCH, LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 EXAMINER DESAI, RACHNA SINGH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/28/2015 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 ____________ SAP AMERICA, INC. Requester, v. WELLOGIX TECHNOLOGY LICENSING, LLC Patent Owner. ____________ Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 Technology Center 3900 ____________ Before MARC S. HOFF, STEPHEN C. SIU, and DENISE M. POTHIER, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION In an earlier Decision, Appeal No. 2013-007560, mailed October 10, 2013 (“Decision”) and in the Decision on Request for Rehearing, mailed June 27, 2014, we reversed the Examiner's decision favorable to the patentability of claims 32 and 37 as anticipated by Getting Started and we affirmed the rejections of claims 1-3, 5, 7, 9-11, 13, 14, 17, 18, 20, 22-24, 26, 27, 30, 38, and 40 as anticipated by Getting Started, claims 4, 8, 12, 15, Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 2 16, 21, 26, 28, and 29 as unpatentable over Getting Started, and claims 1-30 as unpatentable over Getting Started and R/3 Help but designated the affirmed rejections as new grounds. 1, 2 Decision 22, Decision on Request for Rehearing 10-11. Our reversal of the Examiner’s decision not to reject claims 32 and 37 was also designated as a new ground of rejection pursuant to 37 C.F.R. 41.77(b). Id. Patent Owner elected to reopen prosecution under 37 C.F .R. § 41.77(b)(1) (“Request to Reopen Prosecution and Amendment by Patent Owner Under 37 C.F.R. § 41.77(b)(l),” filed July 28, 2014 (“PO Request”)). Requester filed comments pursuant to 37 C.F.R. § 41.77(c) in response to Patent Owner’s request to reopen prosecution (“Third Party Requester’s Comments Opposing Patent Owner’s Request to Reopen Prosecution with Amendments,” filed August 28, 2014 (“3PR Comments”)). Requester also proposed rejections of claims 1-42 under 35 U.S.C. § 112, first paragraph for failing the written description requirement and under 35 U.S.C. § 112, second paragraph as being indefinite. 3PR Comments 4-9. In accordance with 37 C.F.R. § 41.77(e), the Examiner determined that Patent Owner’s request is “insufficient to overcome the original decision set forth by the PTAB and the Requester’s response to the Patent Owner’s amendment” and that “the claims as amended should remain rejected” (“Examiner’s Determination Under 37 C.F.R. § 41.77(d),” dated December 3, 2014 (“Examiner’s Determination” at 7)). The Examiner also 1 Dennis L. Prince, “Getting Started with SAP R/3,” 1998 (“Getting Started”). 2 Selected Excerpts from the SAP R/3 Online Help for R/3 version 4.5B, 1999 (“R/3 Help”). Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 3 adopted the proposed rejections of claims 1-42 under 35 U.S.C. § 112, first paragraph for failing the written description requirement and under 35 U.S.C. § 112, second paragraph as being indefinite. Examiner’s Determination 10-11. Hence, the Examiner rejects claims 1-3, 5, 7, 9-11, 13, 14, 17, 18, 20, 22-24, 26, 27, 30, 32, 37, 38, and 40 as anticipated by Getting Started; claim 4, 8, 12, 15, 16, 21, 26, 28, and 29 as unpatentable over Getting Started; claims 1-30 as unpatentable over Getting Started and R/3 Help; claims 1-42 under 35 U.S.C. § 112, first paragraph for failing the written description requirement; and claims 1-42 under 35 U.S.C. § 112, second paragraph as being indefinite . In response to Examiner’s Determination, Patent Owner filed “Patent Owner’s Comments Under 37 C.F.R. § 41.77(e),” filed January 5, 2015 (“PO Comments on Examr’s Determ.”) and Requester filed “Third Party Requester’s Comments Pursuant to 37 C.F.R. § 41.77(e) Following Examiner’s Determination,” filed February 2, 2015 (“3PR Comments on Examr’s Determ.”). Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to the Board so that we may reconsider the matter and issue a new decision. Requester’s Proposed Rejection under 35 U.S.C. § 112, First Paragraph (claims 1-42) Independent claim 1, as amended, recites “to permanently prevent further input of the actual data via the first version of the data input interface.” Independent claims 5 and 18 are similarly amended. As written description support for this claim amendment, Patent Owner argues that the Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 4 Specification discloses “retiring a version.” PO Request 13 (citing Spec. Fig. 30A, 3046). Notably, the phrase, “permanently prevent” is not found in the original disclosure of U.S. Patent No. 7,043,486. Even so, and if Patent Owner’s contention that the Specification discloses “retiring a version” is assumed to be correct, Patent Owner does not assert or demonstrate sufficiently that the Specification also conveys with reasonable clarity to one having ordinary skill in the art possession of the recited “permanently prevent[ing] further input of the actual data” (emphasis added) as recited. For at least this reason and reasons set forth by the Examiner and Requester, we are not persuaded by Patent Owner that the Specification provides adequate written description support for the disputed claim limitation of “permanently.” Examiner’s Determination 10-11; 3PR Comments 6-9. Requester’s Proposed Rejection under 35 U.S.C. § 112, Second Paragraph (claims 1-42) Patent Owner also argues that one of skill in the art would have understood “permanently” to mean “retired.” However, Patent Owner does not explain sufficiently why one of ordinary skill in the art would not have understood the term “permanently” to have its customary meaning of “permanently” rather than a different meaning (i.e., “retired”) or how one of skill in the art would have understood the term “permanently” to also encompass the meaning of “retired.” Given the lack of clarity as to how one of skill in the art would have understood the term “permanently,” as claimed, one of skill in the art would not have understood the metes and bounds of the claim (e.g., would not know whether the claim recites Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 5 “permanently” or “retired” – or, perhaps, encompasses some other non- specified term). Hence, we agree with the Examiner and Requester that claims 1-42 are indefinite for at least the reasons set forth by the Examiner and Requester and for reasons previously discussed above. Examiner’s Determination 10-11; 3PR Comments 5. Rejection of claims over Getting Started alone or in combination with R/3 Help (claims 1-30, 32, 37, 38, and 40) Claim 1, as amended, recites “providing a version number of the first version of the interface” and to “permanently prevent further input of the actual data via the first version of the data input interface.” Claim 5, as amended, recites “providing a version number of the first version of the data array module,” “providing an updated version number of the second version of the data array module,” and to “permanently prevent further storing of actual data according to the instructions of the first version of the data array module.” Patent Owner argues that Getting Started fails to disclose “the claimed version control – where each modification is assigned an updated version number.” PO Request 15–16. We note that claim 1 does not recite an “updated version number.” Therefore, we assume Patent Owner’s argument pertains only to claim 5. Requester states that Getting Started discloses identifying versions of interfaces (e.g., a name identifies a version of an interface) and also discloses identifying a document with a document number. 3PR Comments 17–18. The Examiner concurs with Requester. Examr’s Determ. 5–6 (citing Getting Started 85, 89, Fig. 6–4). We agree with the Examiner and Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 6 Requester. Patent Owner argues that claims 32 and 37, as amended, recite a “number” and that “[a] skilled artisan would not consider the . . . number . . . to be the name.” PO Comments 5. We cannot agree with Patent Owner’s contention that one of skill in the art, not being an automaton, would consider a “number” used as an identifier to be materially different from a “name” that is also used as an identifier. Also, as Requester points out, referring to an identifier as a “number” or a “name” “is simply a label for the underlying interface/data array modules” and would constitute “non- functional descriptive material,” given that the recited “version number” is merely provided and does not relate functionally to the remaining steps in the claim. 3PR Comments 14, 17. In any event, even if identification must be accomplished by a “number” and not by a “name,” as Requester points out, Getting Started discloses “identifying a document with a document number.” 3PR Comments 18 (citing Getting Started 89). Patent Owner also argues that Getting Started fails to disclose that “further input . . . is permanently prevented.” As indicated above, Patent Owner does not demonstrate the Specification has used or has an explicit definition of the term “permanently.” However, as for written description support of input of data being “permanently” prevented, Patent Owner argues that the Specification discloses that a version is “retired” (see previous discussion). PO Request 13–14. Patent Owner does not indicate that the Specification provides an explicit definition of the term “retired” and does not indicate that the Specification discloses that “retiring” a component is performed “permanently,” or what that term would encompass even if the Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 7 Specification provided such a disclosure. In any event, for purposes of analysis of the rejections over Getting Started (alone or in combination with R/3 Help) and based on Patent Owner’s reliance on the disclosure of “retired,” we assume that “permanently prevented,” as recited in claim 1, for example, means “retired.” Even assuming that “permanently prevented” means “retiring” or being “retired,” as Patent Owner appears to contend, we disagree with Patent Owner that Getting Started fails to disclose this feature for at least the reasons set forth previously in the Decision dated June 27, 2014 (“Decision” 8–9), reasons set forth by Requester (3PR Comments 19), and reasons set forth by the Examiner (Examr’s Determ. 6). Patent Owner argues that “[p]ermanent, according to its plain and ordinary meaning, means that input is prevented forever.” PO Comments after Examr’s Determ. 4. However, as previously explained, Patent Owner relies on the disclosure of “retired” in the Specification as written description support of the amended claim term “permanently.” Patent Owner does not explain sufficiently why one of skill in the art, under a broadest reasonable standard in light of the Specification, would have understood that a “retired” component must be also unable to receive input data “forever.” For example, the claim does not recite that an interface or data module is “retired” and that such a “retirement” must last “forever.” Nor does Patent Owner demonstrate sufficiently that the Specification discloses that an interface or data module, when “retired,” must be retired “forever” or be unable to receive input data “forever.” Therefore, we need not consider whether Getting Started discloses “forever” or not. Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 8 Patent Owner does not provide additional arguments in support of claims 2-4, 6-30, 32, 37, 38, and 40 with respect to Getting Started, alone or in combination with R/3 Help. The Examiner did not err in rejecting claims 2-4, 6-30, 32, 37, 38, and 40. DECISION We affirm the Examiner’s rejection of claims 1-3, 5, 7, 9-11, 13, 14, 17, 18, 20, 22-24, 26, 27, 30, 32, 37, 38, and 40 as anticipated by Getting Started; claim 4, 8, 12, 15, 16, 21, 26, 28, and 29 as unpatentable over Getting Started; claims 1-30 as unpatentable over Getting Started and R/3 Help; claims 1-42 under 35 U.S.C. § 112, first paragraph for failing the written description requirement; and claims 1-42 under 35 U.S.C. § 112, second paragraph as being indefinite. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Appeal 2015-007684 Reexamination Control 95/001,395 Patent 7,043,486 B2 9 AFFIRMED Patent Owner: BIRCH STEWART KOLASCH & BIRCH, LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 Third Party: GARTH A. WINN KLARQUIST SPARKMAN, LLP, ONE WORLD TRADE CENTER 121 S.W. SALMON ST., SUITE 1600 PORTLAND, OR 97204