Ex Parte Andres et al

Patent Trial and Appeal Board

Mar 16, 2017

13553551 (P.T.A.B. Mar. 16, 2017)

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.
13/553,551 07/19/2012 Markus Andres 2058.751US1 9636
50400 7590 03/20/2017
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CHUNG, ANDREW
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS ANDRES, AYMEN MOUELHI,
CONSTANTIN SAVU, EMMANUEL TURCI,
HELMUT FIERES, and ROMAN RAPP
Appeal 2017-000010
Application 13/553,551
Technology Center 2100
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000010
Application 13/553,551
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1—18, 20-27, and 29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a system and method for authoring guided
procedures. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
a computer processor and a computer storage device
configured to:
receive a software system from a software vendor, the
software system comprising an infrastructure comprising a
plurality of business processes and a plurality of guided
procedures;
maintain the guided procedures in the infrastructure,
wherein the guided procedures comprise a user guide, a system
guide, or an operator guide comprising step by step instructions
relating to assisting a customer of the software vendor in the
use, maintenance, and trouble shooting of the software system;
and
provide a software tool to the customer via a user
interface, the software tool relating to the guided procedures;
wherein the software tool is configured to permit the
customer to create a first guided procedure, to activate the first
guided procedure, and to publish the availability of the first
guided procedure such that a particular second customer of the
software vendor is permitted access to the published first
guided procedure.
1 Appellants indicate that SAP SE is the Real Party in Interest. (App. Br. 2).
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chenthamarakshan
Yaseen et al.
Reter et al.
Rangaswamy et al.
Gowel
US 2007/0156585 Al
US 2007/0226637 Al
US 2011/0126123 Al
US 2011/0282708 Al
US 2012/0072416 Al
July 5, 2007
Sept. 27, 2007
May 26, 2011
Nov. 17,2011
Mar. 22, 2012
REJECTIONS
The Examiner made the following rejections:
Claims 1—3, 5—10, 14, 16—18, 20, 21, 23, 24, 26, and 27 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Yaseen in
view of Chenthamarakshan.
Claims 4, 15, 22, 25, and 29 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Yaseen in view of Chenthamarakshan
further in view of Reter.
Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yaseen in view of Chenthamarakshan.
Claim 12 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yaseen in view of Chenthamarakshan further in view of
Rangaswamy.
Claim 13 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Yaseen in view of Chenthamarakshan further in view of
Gowel.
ANALYSIS
With respect to independent claims 1,16, and 23, Appellants present
separate arguments for patentability, and we will address Appellants’
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arguments thereto. Consequently, we will address Appellants’ arguments in
the order set forth in the Appeal Brief.
With respect to independent claim 1, the Examiner maintains the
Yaseen reference teaches and suggests the use of a software tool relating to
creating procedures in paragraphs 31, 40, and 45—47. (Final Act. 3; see also
Ans. 3—6).
Appellants contend:
As just noted, Yaseen does not disclose permitting a
customer to create guided procedures relating to step by step
procedures relating to the use, maintenance, and troubleshooting
of a software system. Rather, Yaseen only relates to a system
that allows an intermediate user to create user interfaces for
business tasks. Adding Chenthamarakshan to Yaseen does not
cure this shortcoming. A combination of Yaseen and
Chentharmarakshan only teaches receiving software from a
vendor that can be used in creating user interfaces for business
tasks. The combination of Yaseen and Chenthamarakshan does
not teach permitting customers of a software vendor to author
guided procedures and make them available to other customers
of the software vendor.
(App. Br. 10). Appellants further contend:
Simply put, the leap from Chenthamarakshan and Yasseen
[sic] to Appellant’s claimed invention is too great, for there is no
teaching in either Yassen [sic] or Chenthamarakshan that
customers of a software vendor can author guided procedures
and make them available to other customers of the software
vendor.
(App. Br. 11). We disagree with Appellants’ contention regarding the
“leap” from the prior art references to the claimed invention.
Appellants repeat the language of the claims and further argue:
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That is, in other words, customers of a software vendor are
capable of generating documentation for the software system of
the software vendor, and making that customer-generated
documentation available to other customers of the software
vendor.
(Reply Br. 1). We find Appellants’ general argument to be similar to
proffering that any user of any software could not provide commentary and
instructions and post the instructions on the Internet or any other network for
other users of the same product to view and use. We find Appellants’
general contention to be unavailing.
Appellants further contend:
Appellants respectfully submit that Yaseen’s business process
modeling and business task execution are not a disclosure of
Appellants’ claimed subject matter of the creation of guided
procedures, and that Appellants’ claimed subject matter would
not have been obvious, as a whole, in view of Yaseen, either
alone or in combination with any other reference.
(Reply Br. 2). Appellants further contend that there are “specifically-recited
features in Appellants’ claims that are not disclosed” in either reference.
(Reply Br. 2). Appellants specifically identify the claimed limitation “to
publish the availability of the [customer-generated] guided procedure such
that a particular second customer of the software vendor is permitted access
to the published [customer-generated] guided procedure.” (Reply Br. 2).
We disagree with Appellants because Yaseen discloses a task
development tool used by intermediate users which stores guided procedures
in the metadata repository 106 which are then usable by an end user.
Consequently, these guided procedures are published to the end user in some
manner to make them available. (Figure la, ^fl[ 38-43).
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We find Appellants’ arguments directed to the “customer of the
software vendor” and other labels used in the claimed invention do not
distinguish and differentiate the claimed “system.” Moreover, the claim
language “wherein the software tool is configured to permit the customer”
does not distinguish or differentiate how an intermediate user would be
different than a “customer of the software vendor” in the claimed “system.”
Appellants further contend:
the Examiner’s Answer conflates Appellants’ recited
“customer” (who created the guided procedure) and the “second
customer” (who is given access to the customer-generated guided
procedure) with the completely different terms “user” and
“software developer.” Appellants respectfully submit that such
a conflation is improper because every word in a claim must be
given meaning, and changing Appellants’ recited “customer” to
“user” does not give meaning to the recited term “customer.”
Moreover, the alteration of Appellants’ “customer” and “second
customer” of the software vendor to any “user” or any “software
developer” changes the scope and meaning of the claimed
subject matter. This further is improper, and therefore a prima
facie case of obviousness has not been established by the
Examiner.
(Reply Br. 3).
“In the patentability context, claims are to be given their broadest
reasonable interpretations . . . [and] limitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
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Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written
description.”). Absent an express intent to impart a novel meaning to a
claim term, the words take on the ordinary and customary meanings
attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
We disagree with Appellants. We further find that Appellants have
not identified any specific or express definition of any of the claim
terminology to differentiate the claimed “system” from the system disclosed
by the combination of the Yaseen and Chenthamarakshan references. As a
result, we find Appellants’ arguments unpersuasive to show error in the
Examiner’s factual findings or conclusion of obviousness. Consequently,
we sustain the Examiner’s rejection of independent claim 1 and its
respective dependent claims not separately argued.
Claim 16
With respect to independent claim 16, Appellants contend that:
claim 16 recites that a “software tool is configured to maintain a
versioning system for the procedures, such that a particular
version of a procedure can be associated with a particular sub­
system, a particular group or entity, or a particular issue on the
system or subsystem by orchestrating a place on a customer side
of the infrastructure where the particular version is placed.”
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(App. Br. 11). We note that independent claim 16 is directed to a “process”
which merely sets forth two steps of “maintaining ...” and “providing a
software tool. . . .” Appellants contend:
The disclosure of a business task of applying for a loan or
conducting a survey is not a disclosure of different versions of
applying for a loan or conducting a survey. Moreover, it is surely
not a disclosure of maintaining different versions of applying for
a loan or conducting a survey by orchestrating a place on a
customer side of an infrastructure where the particular version is
placed.
(App. Br. 11). Appellants further contend:
Contrary to the unsupported assertion on page 21 of the Final
Office Action, wherein the Examiner equates a task to a version,
Appellant respectfully submits that a task by itself, or a task
within a business process, is not a versioning system. Rather it
is a task, something to be done, not different versions of a
particular procedure. To be sure, Merriam-Webster
(www.miriam-webster.com) defines a task as “a piece of work
that has been given to someone” and “a job for someone to do,”
and defines a version as “a form of something that is different in
some way from other forms.” There is simply no equating of
version to task in the definition of a task, and no equating of task
to version in the definition of version.
(App. Br. 12).
We find Appellants’ argument repeats the language of the claim and
generally contends that the prior art does not meet the claimed invention.
(App. Br. 11—12). Furthermore, we find that Appellants have not set forth a
date for the proffered definition to evidence an interpretation at the time of
the invention, but Appellants generally contend that the “task” of the Yaseen
reference is not a claimed “version.” (App. Br. 12).
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We find Appellants’ argument to be unpersuasive of error in the
Examiner’s factual findings or conclusion of obviousness of independent
claim 16.
As discussed supra, claims are given their broadest reasonable
interpretation consistent with the Specification.
Additionally, 37 C.F.R. § 41.37(c)(l)(iv) requires more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
The Examiner maintains:
The most important issue here seems to be the interpretation of
“a versioning system.” The current claim language does not
express or further define what a “versioning system” is, only
stating that “a particular version of a procedure can be associated
with a particular sub-system, particular group or entity, or a
particular issue.” Yaseen discloses in paragraphs 0031- 0037
instance when procedures may be associated with a particular
aspect, for instance, “setting up new user accounts with roles,
security and profile information.” This is in line with what the
current claim language dictates.
(Ans. 5). We agree with the Examiner.
Appellants further contend:
The disclosure of a business task of applying for a loan or
conducting a survey is not a disclosure of different versions of
applying for a loan or conducting a survey. Moreover, it is surely
not a disclosure of maintaining different versions of applying for
a loan or conducting a survey by orchestrating a place on a
customer side of an infrastructure where the particular version is
placed, as is recited in claim 16.
(Reply Br. 4).
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We find Appellants’ argument does not show error in the Examiner’s
factual findings or conclusion of obviousness regarding the claimed
“process” and its two steps of “maintaining . . and “providing . . .
Therefore, we sustain the rejection of independent claim 16 and its
respective dependent claims not separately argued.
Claim 23
With regards to independent claim 23, Appellants repeat the language
of the claim and generally contend that the relied upon portions of the
Yaseen reference do not mention comparing versions of guided procedures
for a software system. (App. Br. 12).
The Examiner further identifies Yaseen, paragraphs 31—37 to support
the comparison of task/work flows. (Ans. 5—6). We find Appellants’
general argument for patentability does not show error in the Examiner’s
factual findings or conclusion of obviousness of independent claim 23 and
its respective dependent claims not separately argued.
Dependent Claims 3, 5, 6, 10, and 14
Appellants repeat the language of the claim and generally contend that
the claim would not have been obvious over the combination of prior art
references. (App. Br. 13—15). The Examiner further identifies paragraphs
31—37 and 44 of the Yaseen reference with regards to the rejection of these
dependent claims. Again, we find Appellants’ argument to be no more than
repeating the claim language and presenting a general argument for
patentability. Because we found Appellants’ argument to be unpersuasive
above, we find Appellants’ general contention to be unpersuasive of error in
the Examiner’s factual findings or conclusion of obviousness.
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CONCLUSION
The Examiner did not err in rejecting claims 1—18, 20—27, and 29
based upon obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1-18, 20-27, and 29 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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