Ex Parte Liebich et al

Patent Trial and Appeal BoardAug 30, 2013

10975999 (P.T.A.B. Aug. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/975,999 10/29/2004 Gunther Liebich 07781.0166-00 7573 60668 7590 09/03/2013 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER NGUYEN, KIM T ART UNIT PAPER NUMBER 2163 MAIL DATE DELIVERY MODE 09/03/2013 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 ____________________ Ex parte GUNTHER LIEBICH, PETER VON ZIMMERMANN, and ROMAN RAPP ____________________ Appeal 2011-001343 Application 10/975,999 Technology Center 2100 ____________________ Before THU A. DANG, JAMES R. HUGHES, and JEFFERY S. SMITH, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001343 Application 10/975,999 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 4-15, 18-21, 23-27, 30-33, 36-39, and 41. Claims 2, 3, 16, 17, 22, 28, 29, 34, 35, and 40 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION Appellants’ invention generally relates to electronic data processing and evaluating costs and measuring performance, and more particularly, to allowing a user to model and evaluate any set of costed entities, such as business-related activities associated with running a business or developing and providing a product or service, or other costed entities such as resources, personnel, products, parts or raw material (Spec. 2, [002]). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A computer-implemented method comprising: creating a network of costed entities based on an input from a user, the network including edges linking the costed entities in a value chain, the costed entities having attributes, input values, and output values, the network including formulas associated with the costed entities, the formulas being based on the attributes, the input values, and the output values of the costed entities; and performing, using a processor, a value chain analysis by evaluating the attributes, the input values, and the output values of the costed entities using the formulas associated with the costed entities along the value chain to analyze costs associated with the costed entities. Appeal 2011-001343 Application 10/975,999 3 C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ha US 5,721,911 Feb. 24, 1998 Claims 1, 4-15, 18-21, 23-27, 30-33, 36-39, and 41stand rejected under 35 U.S.C. § 102(b) as being anticipated by Ha.1 II. ISSUES The main issues before us are whether the Examiner has erred in finding that Ha teaches “creating a network of costed entities based on an input from a user, the network including edges linking the costed entities in a value chain,” and “performing, using a processor, a value chain analysis” (claim 1, emphasis added). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Ha 1 Although the claims were rejected in the Final Rejection under 35 U.S.C. § 103(a) over Ha and Sengodan, the Examiner indicates in the Examiner’s Answer that the claims are rejected under 35 U.S.C. § 102(b) (Ans. 3). This is a New Ground of the Rejection, which requires signatory approval by the Technology Center Director, and the Examiner’s Answer fails to provide such approval (Ans. 13). However, Appellants acknowledge this New Ground but do not object to such lack of approval (Reply Br. 2). Accordingly, we find this signatory omission to be harmless error. Appeal 2011-001343 Application 10/975,999 4 1. Ha discloses a mechanism for an information catalog system which allows metadata users to link objects in a linear or peer-to-peer relationship (Abstract). 2. Data Analysis object type is used to represent an informational application to perform, wherein the analysis could be in the form of a query, a chart, a report, a spreadsheet, or an SQL request (col. 4, ll. 24-27). IV. ANALYSIS Although Appellants concede that “Ha discloses ‘links between objects’” (App. Br. 17), Appellants argue that “Ha fails to disclose or suggest that the objects in the information catalog metadata model are, for example, value-adding or value-generating activities in the production of a product” (id.). That is, Appellants contend that “the objects in Ha are not ‘link[ed]… in a value chain,’ as recited” (id.). Furthermore, although Appellants concede that Ha discloses “Data Analysis,” Appellants contend that “Ha fails to disclose or suggest that the Data Analysis involves, for example, ascertaining how much value is added to the product or how much cost is associated with the value adding activities” (id.). That is, Appellants contend that “Ha is completely silent with respect to analyzing ‘costs’” and thus, “Ha fails to teach or suggest ‘performing… a value chain analysis… to analyze cost’” (id.). However, the Examiner finds that the “Business Group object type and Data Analysis object type [of Ha] are the costed entities” wherein “[t]hey are related to each other by edges linking in a linear or peer-to-peer relationship in a value chain” (Ans. 12). The Examiner finds that “Business Group object type is represented for business related activities associated Appeal 2011-001343 Application 10/975,999 5 with the cost” while “the Data Analysis object type is used for analyzing (Business Group object type with costs associated with business related activities)” (id.). We generally agree with the Examiner’s findings. We give the claims their broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, we will not read limitations from the Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Thus, although Appellants contend that Ha fails to disclose “that the objects in the information catalog metadata model are, for example, value-adding or value- generating activities in the production of a product” (App. Br. 17) or “that the Data Analysis involves, for example, ascertaining how much value is added to the product or how much cost is associated with the value adding activities” (id.), such contentions are not commensurate in scope with the recited language of the claims. Further, by contending that Ha’s link between objects differ from Appellants’ “value chain” (App. Br. 17), we find Appellants’ principal argument urging patentability is predicated on non-functional descriptive material (i.e., the type or content of the data that is being created). That is, the “network” is a data structure being created and the “value chain” is the type/content of data included in the network, but the type of data being included in the network does not change the functionality of or provide an additional function to the “creating” step. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information content of a memory . . . . Nor does he seek to patent the content of Appeal 2011-001343 Application 10/975,999 6 information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). Here, the data structure being created and the informational content of the data that is included in the created data structure are entitled to no weight in the patentability analysis. Furthermore, we note that claim 1 merely requires that the “chain analysis” is performed “to analyze cost” by a processor. That is, claim 1 does not positively recite any step of analyzing cost. Instead, we find such “to analyze cost” language merely represents a statement of intended use or purpose (intended result) of the evaluated data which does not limit the claim. Particularly, an intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Accordingly, we conclude that claim 1 merely requires creating a data structure based on input data, the data including linked data; and performing, using a processor, an analysis by evaluating the data. Ha disclose an information catalog system in which objects are linked in a linear or peer-to-peer relationship (FF 1). As Appellants concede, “Ha discloses ‘links between objects’” (App. Br. 17). We find Ha discloses a data structure, such as a network, that includes linked data. Appeal 2011-001343 Application 10/975,999 7 Furthermore, as Appellants concede, Ha discloses Data Analysis (App. Br. 17; FF 2). That is, Ha discloses performing an analysis by evaluating the data. Thus, Ha discloses creating a data structure based on input data, the data including linked data; and performing, using a processor, an analysis by evaluating the data, as required by claim 1. Nevertheless, we find no error in the Examiner’s finding that “Business Group object type is represented for business related activities associated with the cost” while “the Data Analysis object type is used for analyzing (Business Group object type with costs associated with business related activities)” (Ans. 12). That is, we find no error with the Examiner’s findings that Ha’s business related activities would comprise cost related activities, and that Ha’s analysis of such activities would comprise value analysis. Accordingly, we find that Appellants have not shown that the Examiner erred in rejecting claim 1 over Ha. Appellants do not provide arguments for independent claims 7, 15, 19, 27, 33, and 37, and dependent claims 4-6, 8-14, 18, 20, 21, 23-26, 30-32, 36, 38, 39, and 41, separate from those of claim 1 (App. Br. 21), and thus, claims 4-15, 18-21, 23-27, 30-33, 36-39, and 41 fall with claim 1 over Ha. V. CONCLUSION AND DECISION The Examiner’s rejections of claims 1, 4-15, 18-21, 23-27, 30-33, 36-39, and 41 under 35 U.S.C. § 103(a) are 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)(1)(iv). Appeal 2011-001343 Application 10/975,999 8 AFFIRMED pgc