Ex Parte Bossmeyer et al

Patent Trial and Appeal Board

Apr 28, 2016

12200033 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/200,033 08/28/2008
23911 7590 05/02/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
FIRST NAMED INVENTOR
Hans-Juergen Bossmeyer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
080437.60119US 7048
EXAMINER
PEACHER, LORENA R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
edocket@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-WERGEN BOSSMEYER,
PETER RATZ, MICHAEL REGER, and
CHRISTIAN HUBER
Appeal2014-004188
Application 12/200,033 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hans-Juergen Bossmeyer, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner's Final rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Bayerische Motoren W erke Aktiengesellschaft as
the real party in interest. App. Br. 1.
Appeal2014-004188
Application 12/200,033
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for identifying technology-based
solutions comprising the acts of:
identifying a plurality of technical components for
each of a plurality of technical systems;
identifying technological functions associated
with at least one of the plurality of technical
components;
identifying, using at least in part the identified
technological functions, obstacles associated with
technical component development;
accessing a technology database using at least one
of the identified obstacles and identified technological
functions;
accessing prior project information; and
generating a set of potential solutions for said one
or more obstacles based on the prior project
information and information from the technology
database.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Wing
Chakraborty
Venolia
US 2005/0120112 Al
US 2006/0167760 Al
US 2007/0277148 Al
2
June 2, 2005
July 27, 2006
Nov. 29, 2007
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Application 12/200,033
Atkinson US 8,306, 795 B2
The following rejections are before us for review:
Nov. 6, 2012
1. Claims 11-20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1, 2, 5-12, and 15-20 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Wing and Venolia.
3. Claims 3 and 13 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Wing, V enolia, and Atkinson.
4. Claims 4 and 14 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Wing, Venolia, and Chakraborty.
ISSUES
Did the Examiner err in rejecting claims 11-20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 2, 5-12, and 15-20 under
35 U.S.C. §103(a) as being unpatentable over Wing and Venolia; claims 3
and 13 under 35 U.S.C. §103(a) as being unpatentable over Wing, Venolia,
and Atkinson; and, claims 4 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Wing, Venolia, and Chakraborty?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
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Application 12/200,033
ANALYSIS
The rejection of claims 11-20 under 35 U.S. C. §1 OJ as being directed to
non-statutory subject matter.
The Appellants are correct that "an Advisory Action mailed on
June 10, 2013 indicated that, for purposes of appeal, the 'amendment will be
entered as it resolves 35 USC[§] 101 issues directed to claims 11-20.'
Advisory Action, Continuation Sheet." Reply Br. 1. But we have no record
of the amendment having been entered. In fact the Answer includes a
rejection of claims 11-20 under 3 5 USC § 101, albeit a duplicate of the
rejection made in the Final Rejection, and the claims attached to the Appeal
Brief do not include the amendment to the claims that the Examiner
indicated would resolve the rejection. Under these circumstances, the
rejection under § 101 remains on appeal.
There being no substantive arguments challenging the rejection, it is
sustained.
The rejection of claims 1, 2, 5-12, and 15-20 under 35 U.S.C. §103(a) as
being unpatentable over Wing and Venolia.
The Appellants argued claims 1, 2, 5-12, and 15-20 as 3 groups:
claims 1 and 11 (App. Br. 7); claims 9 and 19 (App. Br. 13); and, claims 2,
5-10, 12, and 15-20 (App. Br. 14). The third group relies on arguments
used to challenge the rejection of the first group. We select claim 1 as the
representative claim for the first and third groups, and the remaining claims
2, 5-8, 10-12, and 15-20, stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv). The arguments with respect to the second argument are
addressed below.
The independent claims are method claim 1 and product claim 11.
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Application 12/200,033
Both are directed to identifying technology-based solutions for a
technical component development process and require a server, in part, to:
(a) populate a graphical user interface with a plurality of technical
components for each of a plurality of technical systems; (b) populate the
graphical user interface with technological functions associated with at least
one of the plurality of technical components; and ( c) identify, by using at
least in part the identified technological functions, development obstacles
associated with the technical component development process.
According to the Examiner, (a)-(c) are disclosed in Wing at
paragraphs 38 and 61---64. Final Rejection 4--5. Paragraph 38 describes a
process of managing knowledge and delivering content as shown in Figs. 5A
and 5B, a process which employs a server (see Fig. 4). Paragraphs 61---64
describe populating a window with information as well as a
disposition/potential solutions window 768 [that] will allow a
technician to review in varying levels of detail dispositions (i.e.,
approved fixes) and potential solutions that have been identified in
connection with the selection made in the machine inventory
window 764.
Wing, para. 64.
"The Appellant submits that Wing cannot reasonably be interpreted as
relating to the recited 'component development process,' nor certainly to
providing a 'technology-based solution' to any identified 'development
obstacles."' App. Br. 9. Rather, the Appellants argue, "Wing's 'system for
the intelligent management of knowledge and delivery of content' is
basically a troubleshooting system to facilitate providing technical support to
computer end users." App. Br. 8-9.
The Appellant respectfully submits that Wing would not be regarded
by one skilled in the art as disclosing or relating to such a
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Application 12/200,033
developmental environment and process, but would rather be
interpreted as relating to the troubleshooting of post-developed, post-
manufactured and post-distributed devices that are malfunctioning for
their respective end users.
App. Br. 9.
The Examiner responds, in part, by arguing that
Applicant asserts that Wing is not applicable in a 'development
process'; however, the same information captured in the database of
Wing could be utilized in any type of context whether it be a
development process or a repair/maintenance scenario. Regardless of
the context (e.g. development process) the instant invention is
fundamentally a database including information regarding systems,
devices, hardware and software components, etc., which can be used
as a tool to assist users in retrieving relevant information regarding the
various components of a system. It is evident that Wing has similar
functionality as the instant application and as such does teach and
suggest this limitation.
Answer 14--15.
In our view, the Examiner has the better argument.
That Wing discloses a server and uses said server to populate an
interface with information and identify other information from said
information is not being disputed. The dispute is over the content of the
information being populated/identified; that is, between "technology-based
solutions for a technical component development process" (claims) and
knowledge that allows end users to access targeted fixes in connection with
resolving problems with appliances (Wing). It is a dispute over the
difference in the content of the information processed by the server.
The content of information to be processed by the server as recited in
claim 1 is subject to a printed matter analysis.
The first step of the printed matter analysis is the determination that the
limitation in question is in fact directed toward printed matter. Our past
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Application 12/200,033
cases establish a necessary condition for falling into the category of
printed matter: a limitation is printed matter only if it claims the content
of information. . . . Only if the limitation in question is determined to
be printed matter does one tum to the question of whether the printed
matter nevertheless should be given patentable weight. Printed matter
is given such weight if the claimed informational content has a
functional or structural relation to the substrate.
In re Distefano, 808 F.3d 845, 848-850 (Fed. Cir. 2015).
In that regard, there is insufficient evidence of record showing a
functional relationship between information being populated/identified in
claim 1 and the server claimed. Absent such evidence, it is reasonable to
characterize the type of information as descriptive, and as such, patentably-
inconsequential. See Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005)
(informative). "Non-functional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious." Id. at
1274 (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). Cf In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is
not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability). See
also In re Xiao, 462 Fed. Appx. 947, 950-52 (Fed. Cir. 2011) (non-
precedential):
[T]he Board did not create a new "mental distinctions" rule in
denying patentable weight. . . . On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation---consistent with our
precedents-when it concluded that any given position label's
function . . . is a distinction "discemable only to the human
mind[;]" [see] In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(describing printed matter as "useful and intelligible only to the
human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399
(CCPA 1969)).
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Application 12/200,033
Xiao, 462 Fed. Appx. at 951-952. "Thus non-functional descriptive
material, being useful and intelligible only to the human mind, is given no
patentable weight." Ex parte Graf, Appeal 2012-003941, slip op. at 7
(PTAB July 23, 2013) (non-precedential), ajf'd, In re Graf, 585 Fed. Appx.
1012 (Fed. Cir. 2014) (Fed. Cir. 2014) (non-precedential). "The rationale
behind this line of cases is preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279
(Fed. Cir. 2010).
Notwithstanding that "the claims more particularly recite 'identifying
... development obstacles associated with the technical component
development process.'" (Reply Br. 3) and that Wing may not expressly
disclose this objective, Appellants have not shown any functional
relationship between the "development obstacles associated with the
technical component development process" and the server used to make that
identification. Id.
The Appellants also argue that claims 1 and 11 recite "at least some
solutions in the set of potential technology-based solutions are from a
plurality of different subtechnologies" (App. Br. 11) and, with respect to
claims 9 and 19, "spontaneous solutions, solutions based on interconnections
with other projects and solutions based on interconnections with other
technologies" (App. Br. 13). Our reasoning with respect to these limitations
is the same.
By these arguments the Appellants are making a case for patentability
based on the content of the information being processed by the server. Yet
we see no structural or functional difference between the claimed manner by
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which the server processes information and the manner by which Wing's
server processes information. Rather, the argued-over difference lies in the
content of the information being processed by the server, not in how it is
processed. As already discussed, we consider that argued-over difference -
that is, the content of the information claimed - subject to the printed matter
doctrine. And, given no evidence of a functional relationship between the
content of the information claimed and the server, it is reasonable to
conclude that said "solutions" information is patentably-inconsequential.
No other patentably-consequential difference between the claimed
subject matter and the cited prior art having been argued, the rejection is
sustained.
The rejection of claims 3 and 13 under 35 U.S.C. §103(a) as being
unpatentable over Wing, Venolia, and Atkinson.
The rejection of claims 4 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Wing, Venolia, and Chakraborty.
We also shall sustain the standing 35 U.S.C. § 103 rejections of
dependent claims 3, 4, 13, and 14 as being unpatentable over the cited prior
art combinations because the Appellants have not challenged such with any
reasonable specificity except to rely on the arguments made in challenging
the rejection of claim 1, thereby allowing claims 3, 4, 13, and 14 to stand or
fall with the parent claims (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).
CONCLUSIONS
The rejection of claims 11-20 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is affirmed.
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Application 12/200,033
The rejection of claims 1, 2, 5-12, and 15-20 under 35 U.S.C. § 103(a)
as being unpatentable over Wing and Venolia is affirmed.
The rejection of claims 3 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Wing, V enolia, and Atkinson is affirmed.
The rejection of claims 4 and 14 under 35 U.S.C. §103(a) as being
unpatentable over Wing, Venolia, and Chakraborty is affirmed.
DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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