Ex Parte Moore

Patent Trial and Appeal Board

Sep 17, 2012

10851352 (P.T.A.B. Sep. 17, 2012)

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.
10/851,352 05/21/2004 Dennis B. Moore 6631P026 3406
8791 7590 09/17/2012
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
CHONG CRUZ, NADJA N
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
09/17/2012 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 DENNIS B. MOORE
____________________

Appeal 2011-000221
Application 10/851,352
Technology Center 3600
____________________

Before: ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-18 and 221. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

BACKGROUND
Appellant’s invention is directed to a method and system to convert
project plans into workflow definitions and workflow-based systems
(Specification [0001]).
Claim 1 is illustrative:
1. A system to convert a project plan into an instance of a
workflow process, the system including:
a project information reader to read project data
associated with a project plan, the project plan being an existing
summary description of a business process, as previously
entered into a manually administered project management
system, the project data including a project header and project
tasks, the project data existing in a format native to the project
management system and not executable in a workflow system
that executes workflow processes;
a workflow steps converter to convert the project tasks
into workflow steps, each of which defines an operation
described by an associated project task, and to assemble the
converted workflow steps to generate an instance of a workflow

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 21, 2010) and Reply Brief (“Reply Br.,” filed September 14,
2010) and the Examiner’s Answer (“Ans.,” mailed July 14, 2010).
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process that performs the operations described by the project
plan; and
a workflow metadata converter to convert the project
header into workflow metadata compatible with the workflow
system, the workflow metadata including timing information
and parameters required for the workflow system server to
manage the operations of the instance of the workflow process.

Appellants appeal the following rejections2:
Claims 1-7, 9-173 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Charisius (US 2002/0077842 A1, pub. Jun. 20, 2002),
Berg (US 5,999,911, iss. Dec. 7, 1999), and Bussler, Workflow instance
scheduling with project management tools, Database and Expert System
Applications, Ninth International Workshop, 753-758 (1998) (hereinafter
“Bussler”).
Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Charisius, Berg, Bussler, and Official Notice that it is old and well
known to map a sub-project to a task within the main project.

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
FF 1. The ordinary and customary definition of the term associate, as
defined by Merriam Webster’s Collegiate Dictionary (10th ed.), is: “to

2 The rejection of claims 1-18 and 22 under 35 U.S.C. § 112, first paragraph,
is withdrawn. Ans. 3.
3 Although the Examiner recites that the rejection includes claims 8 and 18,
the analysis makes clear that these two claims are rejected additionally over
Official Notice. Ans. 20, 23.
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bring together or into relationship in any of various intangible ways (as in
memory or imagination).”
FF 2. Charisius discloses a project header converted into the
workflow system when the enterprise affiliate enters the name of a new
workflow 3202 into the system (para. [0124]).
FF 3. Berg discloses that a workflow designer is typically a project
manager. (Col. 6, ll. 63-65).
FF 4. Berg discloses that the information the designer provides
includes the name of a workflow step. (Col. 9, ll. 21-24).
FF 5. Berg discloses data conversion by the “flow builder [which]
takes the information obtained from the flow designer and stores it in a
metalanguage format. The metalanguage is ASCII text based flow definition
language used to describe a workflow.” (Col. 9, ll. 63-66).
FF 6. The Specification describes by example that “project metadata
information may include project name, project milestones, project tasks,
project start date, project end date, project duration, project status, and other
information.” (para. [0020]).
FF 7. The ordinary and customary definition of the term metadata, as
defined by Merriam Webster’s Collegiate Dictionary (10th ed.), is: “data
that provides information about other data.”
FF 8. Bussler discloses transferring workflow steps from a project
planning system to a workflow system, stating, “a workflow type defined
within InConcert [a workflow system] is transferred to MS Project [a project
planning system] and back (if changes are applied within MS Project).”
(page 754).
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FF 9. Bussler discloses that there is no difference between a project
planning system defining workflow steps and importing them to a workflow
system, or the reverse. (page 755).

ANALYSIS
We are not persuaded the Examiner erred in asserting that a
combination of Charisius, Berg, and Bussler renders obvious independent
claim 14. Appellant first asserts the name of the workflow in Charisius is not
part of the project plan, is not project data, and does not exist in the project
management system as part of the project plan as claimed. (App. Br. 6,
Reply Br. 2-7). The argument fails because it is not commensurate in scope
with the claim, which does not require that the project header to be
converted actually come from a project plan, because the claim merely
recites reading project data “associated with a project plan.” The term
“associated” is defined as brought “together or into relationship in any of
various intangible ways (as in memory or imagination)” (FF 1). The claim
therefore broadly includes data outside of existing project plans that has an
intangible relationship with a project plan. Therefore, the “project header,”
which is neither defined nor described by the Specification, is merely a piece
of data that “is associated with a project plan” and can have any source.
Cherisius discloses the project header as the “name of the workflow” entered
by an enterprise affiliate, because all that is required is that the project
header/workflow name have some intangible relationship with a project

4 As Appellants argue independent claims 1, 11, and 22 as a group (App. Br.
5), we choose claim 1 as representative of claims 1, 11, and 22. See 37
C.F.R. § 41.37(c)(1)(vii).
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plan, such as a reference to a project plan in the mind of the person entering
the name into the workflow system (FF 2).
We are not persuaded the Examiner erred by Appellant’s argument
that Berg does not disclose creating a workflow definition using a workflow
metadata converter (App. Br. 7-8), because we find Berg discloses a project
manager provides information (FF 3) of a step name (FF 4) that is converted
into a “metalanguage format” (FF 5). We find Berg’s step name is a
“project header” because it is a project task (FF 6) that is converted to the
undefined “metadata” because it provides information about the step/task it
names (FF 7).
We are not persuaded the Examiner erred by Appellant’s argument
that Bussler does not convert a project plan to workflow, because Bussler
only discloses converting the workflow to a project plan (App. Br. 8-11,
Reply Br. 7-8). However, Bussler discloses transferring workflow types
defined in a project planning system (MS Project) to a workflow system
(InConcert) if changes are applied within MS Project (FF 8). Additionally,
Bussler discloses that either system could define workflow types and import
them to the other (FF 9), further disclosing the claimed transfer of “project
tasks into workflow steps.”
For these reasons, we affirm the rejection of independent claims 1, 11,
and 22 under 35 U.S.C. § 103(a), as well as dependent claims 2-10 and 12-
18 that are not separately argued (App. Br. 11).

DECISION
We affirm the rejection of claims 1-18 and 22 under 35 U.S.C. §
103(a).
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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).

AFFIRMED

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