Ex Parte Lemcke et al

Patent Trial and Appeal Board

Apr 14, 2016

12854026 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/854,026 08/10/2010
50400 7590 04/18/2016
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Jens Lemcke
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.
2058.546US 1 6973
EXAMINER
JACKSON, ERNEST ADEYEMI
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/18/2016 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):
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 JENS LEMCKE, ANDREAS FRIESEN, and TIRDAD RAHMANI
Appeal2013-009798 1
Application 12/854,0262
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-5 and 7-21. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
March 22, 2013) and Reply Brief ("Reply Br.," filed August 2, 2013), and
the Examiner's Answer ("Ans.," mailed June 6, 2013) and Final Office
Action ("Final Act.," mailed December 24, 2012).
2 Appellants identify SAP AG as the real party in interest. App. Br. 2.
Appeal2013-009798
Application 12/854,026
CLAIMED INVENTION
Appellants' claimed invention "relates generally to the field of
business process management and particularly to validation of a component-
based implementation of business processes" (Spec. i-f 1 ).
Claims 1 and 18, reproduced below, are illustrative of the subject
matter on appeal:
1. A method comprising:
accessing an abstract business process and a specific
business process, the specific business process including sub-
steps that refine a step in the abstract business process;
validating, using one or more processors, a refinement
between the abstract business process and the specific business
process, the validating being performed using a first Petri Net,
the refinement including a mapping of one or more of the sub-
steps in the specific business process to the step in the abstract
business process model;
accessing components models, the respective component
models to describe an operation performed by a component
corresponding to the component model; and
validating, using a second Petri Net, a grounding between
the first sub-step and the component
18. A system comprising:
a grounding module to validate, using one or more
processors, grounding between one or more activities in a
business process model and one or more operations performed
by components, the grounding module to validate the grounding
using a Petri Net.
2
Appeal2013-009798
Application 12/854,026
REJECTIONS
Claim 21 is rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
Claims 1-5 and 7-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Passova (US 2010/0174583 Al, pub. July 8, 2010) and S.
Haddad and P. Moreaux, Evaluation of High Level Petri Nets by Means of
Aggregation and Decomposition (hereinafter "Haddad"). 3
ANALYSIS
Non-Statutory Subject Matter
Claim 21 recites a "computer-readable storage medium having
instructions embodied thereon, the instructions executable by a processor for
performing a method comprising" the steps recited in claim 1.
In rejecting claim 21under35 U.S.C. § 101, the Examiner finds that
under a broadest reasonable interpretation, the term "computer-readable
storage medium," as recited in claim 1 covers non-transitory media, e.g., a
signal per se, and, therefore, encompasses non-statutory subject matter. We
disagree.
There is a heavy presumption that claim terms take on their "plain,
ordinary, and accustomed meaning to one of ordinary skill in the relevant
art." Prima TekII, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed.
Cir. 2003). However, a patent applicant may overcome that presumption by
acting as his or her own lexicographer to assign a special definition to each
claim term so long as any such definition is "clearly [set] forth" and
"explicit." Id.
3 The rejection of claim 6 under 35 U.S.C. § 103(a) has been withdrawn.
3
Appeal2013-009798
Application 12/854,026
Here, Appellants acted as their own lexicographer by providing a
clear and explicit definition in the Specification for the claim term
"machine-readable storage medium." Paragraph 81 of the Specification
states, "[t]he term 'machine-readable storage medium' shall be taken to
exclude any medium that is capable of carrying a set of instructions (such as
carrier waves)."
We agree with Appellants that the Specification, thus, expressly
excludes transitory signals as "computer-readable storage media" (App.
Br. 29). Therefore, we do not sustain the Examiner's rejection of claim 21
under 35 U.S.C. § 101.45
Obviousness
Independent claim 1 and dependent claims 2-5 and 7-17
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner
acknowledges that Passova does not expressly disclose "validating, using a
4 We note for the record that Appellants are incorrect in suggesting that use
of the term "computer-readable storage medium" alone is sufficient to
exclude transitory signals (App. Br. 29). See Ex parte Mewherter,
107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (finding a machine
readable storage medium non-statutory under§ 101 ).
5 Our decision only addresses the issue of ineligibility based on the non-
transitory signal reasoning raised by the Examiner. Thus, should there be
further prosecution of this application, the Examiner may wish to consider
reviewing all the claims for compliance under 35 U.S.C. § 101 in light of the
most recent Office guidance on § 101 found in "July 2015 Update on
Subject Matter Eligibility," 80 Fed. Reg. 146 (July 30, 2015), which
supplements the "2014 Interim Guidance on Patent Subject Matter
Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014) and the "Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to
the Examining Corps, June 25, 2014.
4
Appeal2013-009798
Application 12/854,026
second Petri Net, a grounding between the first sub-step and the
component," as recited in claim 1 (Ans. 6). And the Examiner cites
pages 3-14 of Haddad to cure the deficiency of Passova:
Passova mentions the use of Petri Net, as described earlier, but
does not expressly teach the limitations comprising:
•validating, using a second Petri Net, a grounding between the
first sub-step and the component (See pages 3-14 of Haddad).
However, Haddad teaches Petri Net extensively in "Evaluation
of High Level Petri Nets." It would have been obvious to one of
ordinary skill in the art at the time of the invention to include an
extensive application or use of Petri Net in Passova, as taught by
Haddad, for a more efficient evaluation method.
Ans. 5---6. Yet the difficulty with the Examiner's analysis, as Appellants
observe, is that the pages of Haddad are numbered 11-20 (App. Br. 13).
Indeed, even if the first page of the Haddad article were treated as page one,
the entire document is only ten pages long. Thus, even assuming that
Appellants can identify cited page 3 of Haddad, page 14 cannot be identified
(id. at 13-14).
Other than citing pages 3-14, the Examiner does not identify any
specific disclosure of Haddad, or explain in what way Haddad discloses or
suggests "validating, using a second Petri Net, a grounding between the first
sub-step and the component," as recited in claim 1. As such, the rejection
does not comply with the minimal notice requirements of 35 U.S.C. § 132.
See Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (35 U.S.C.
§ 132 is violated "when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection").
5
Appeal2013-009798
Application 12/854,026
The Examiner has failed to establish a prima facie case of obviousness
with respect to claim 1. Therefore, we do not sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of claim 1, and claims 2-5 and 7-17,
which depend therefrom.
Independent claims 18, 20, and 21 and dependent claim 19
Independent claims 18, 20, and 21 include language substantially
similar to the language of claim 1, and were rejected based on the same
rationale applied in rejecting claim 1 (Ans. 10-11). Therefore, we do not
sustain the Examiner's rejection of claims 18, 20, and 21under35 U.S.C.
§ 103(a) for the same reasons set forth above with respect to claim 1. We
also do not sustain the Examiner's rejection of claim 19, which depends
from independent claim 18.
DECISION
The Examiner's rejection of claim 21under35 U.S.C. § 101 is
reversed.
The Examiner's rejection of claims 1-5 and 7-21 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
6