Ex Parte Rabstejnek

Patent Trial and Appeal Board

Mar 16, 2017

13570608 (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.
13/570,608 08/09/2012 Wayne S. Rabstejnek 67442-001 PUS4 1043
26096 7590 03/20/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
GART, MATTHEW S
ART UNIT PAPER NUMBER
3623
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):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE S. RABSTEJNEK
Appeal 2014-008503
Application 13/570,608
Technology Center 3600
Before ANTON W. FETTING, KEVIN W. CHERRY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed May 13, 2014), Reply Brief (“Reply Br.,” filed Aug. 4,
2014), and Specification (“Spec.,” filed Aug. 9, 2012), and to the
Examiner’s Answer (“Ans.,” mailed June 2, 2014) and Final Office Action
(“Final Act.,” mailed May 13, 2013).
2 According to the Appellants, the real party in interest is Renderprise, LLC.
Appeal Br. 1.
Appeal 2014-008503
Application 13/570,608
STATEMENT OF THE CASE
The Appellant’s invention “relates to enterprise resource planning
(‘ERP’) software, and more particularly to an enterprise rendering platform
for executing ERP functionality on a computing device having a web
browser.” Spec. 12.
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and is reproduced below:
1. A method of providing enterprise resource planning
(“ERP”) functionality from an ERP system to a computing
device having a web browser, comprising:
A) organizing selected inputs and outputs of a selected
ERP function into an application view in a rendering editor,
wherein no programming is required to create the application
view including a layout of the view, and wherein the rendering
editor, a single instance of an execution engine, and a computing
device gateway are all components of a platform, wherein the
execution engine facilitates real-time, dynamic execution of the
selected ERP function and other ERP functions without
generating machine code or operating system compiled code for
executing the selected ERP function or the other ERP functions;
B) importing business function definitions including
inputs and outputs from the ERP system into a database in the
platform as metadata, the metadata further including ERP system
connection information, application view definitions including
input and output layouts, virtual state definitions, an assigned
virtual state of the application view and user roles, wherein the
user roles include a first role and a second role, wherein the
application view is available to remote users having a first role
and are hidden from remote users having a second role based
upon the assigned virtual state of the application view;
C) receiving user input from a computing device by a first
user having the first role;
D) invoking the execution engine to execute the selected
ERP function on the ERP system in response to the user input
2
Appeal 2014-008503
Application 13/570,608
based upon the metadata including the assigned virtual state and
the first role of the first user, wherein the selected ERP function
is only operable to invoke existing business logic in the ERP
system, and wherein steps (A)-(C) do not add any additional
business logic to the platform;
E) the execution engine establishing ERP connections to
the ERP system using the ERP system connection information
stored in the database;
F) the execution engine formatting a command based on
at least the metadata and sending the command to the ERP
system to execute the selected ERP function and receiving ERP
data from the executed selected ERP function in response to the
command, wherein the ERP data received includes at least one
of application function data, an error message, an informational
message, or a return code;
G) closing the ERP connections after said step F);
H) the execution engine generating browser data based
upon the metadata including constructing the layout of the view,
said browser data being formatted for display on the browser on
the computing device, said browser data including the ERP data
from said step F);
I) rendering the view on the computing device gateway,
based upon the metadata including the output layouts, the
rendered view including the ERP data received from the ERP
system via the selected ERP function, the computing device
gateway being remote from the computing device; and
J) sending the rendered view to the computing device for
display in a web browser on the computing device.
Appeal Br. 10-11 (Claims App.)
REJECTIONS
I Claims 1—19 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 8.
3
Appeal 2014-008503
Application 13/570,608
II Claims 1—19 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Id. at 9.
III Claims 1—3, 5, 11—15, and 17—19 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Baffler (US 7,739,308 B2, iss.
June 15, 2010), Polizzi (US 6,832,263 B2, iss. Dec. 14, 2004), and
Charbonneau (US 2007/0220423 Al, pub. Sept. 20, 2007). Id. at 11.
IV Claims 4 and 8—10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baffler, Polizzi, Charbonneau, and Lonnroth
(WO 0056033, pub. Sept. 21, 20003). Id. at 30.
V Claims 6, 7, 16, and 20-224 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Baffler, Polizzi, Charbonneau and SAP
AG’s NetWeaver Product (system, method, application) as evidenced by at
least SAP NetWeaver Visual Composer - User Guide (2004) (“SAP”) and
Lonnroth. Id. at 34.
ANALYSIS
Rejection I— Written Description
The Examiner finds that the Specification does not describe step A of
claims 1 and 11 such that one of ordinary skill in the art at the time of the
invention would be taught
how to create an application view wherein no programming is
required[,]. . . or even who or what entity is not required to
program[,] . . . how to dynamically execute selected ERP
3 The Examiner cites to the International Application, which was later
issued on Nov. 30, 2004 as US patent 6,826,591 Bl.
4 Although the heading for the rejection lists only claims 6 and 7, it is clear
from the body of the rejection that claims 16 and 20—22 are included in this
rejection.
4
Appeal 2014-008503
Application 13/570,608
function and other ERP functions without generating machine
code[,]... or even who or what entity does not need to generate
machine code.
Final Act. 8. The Examiner finds it is unclear what entity need not program
and the metes and bounds of the phrase “coding.” Ans. 5. The Examiner
further finds that “a single line within applicant’s originally filed application
stating that no custom code is required is not the same as enabling one
skilled in the art at the time of the invention to facilitate the real-time
dynamic execution of a selected ERP function without the need for custom
code.” Id.
The Appellant contends the rejection is in error because, in relevant
part, the Specification provides adequate support at paragraphs 84 through
87 and Figure 2. Appeal Br. 6. The Appellant further argues that it is not
clear whether the Examiner rejects the claims based on written description,
being “unclear,” or enablement. Reply Br. 2.
We agree with the Appellant. As the Appellant points out {id.), the
written description requirement is separate and distinct from the enablement
requirement of the first paragraph of 35 U.S.C. § 112. See Ariad Pharm.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1345 (Fed. Cir. 2010) (en banc)
(“we also read Supreme Court precedent as recognizing a written description
requirement separate from an enablement requirement even after the
introduction of claims.”).
To satisfy the written description requirement, the specification must
describe the invention in sufficient detail so ‘that one skilled in the art can
clearly conclude that the inventor invented the claimed invention as of the
filing date sought,’” (In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008)
(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
5
Appeal 2014-008503
Application 13/570,608
1997)), i.e., “whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date” (Ariad, 598
F.3d at 1351). To satisfy the enablement requirement, “the specification of a
patent must teach those skilled in the art how to make and use the full scope
of the claimed invention without ‘undue experimentation.’” In re Wright,
999 F.2d 1557, 1561 (Fed. Cir. 1993). When rejecting the claim under the
enablement requirement, the Examiner must provide sufficient reasons as to
why the scope of protection provided by the claim is not adequately enables
by the Specification. Id. at 1561—62.
The Specification provides that the platform requires no programming
knowledge because a user can create a view by selecting from a plurality of
inputs and outputs, such as by drop-down menus or a drag-and-drop
interface. Spec. Tflf 84—87. Claim 1 requires that selected inputs and outputs
are organized into an application view such that no programming is required
to create the view. Appeal Br. 10.
We find that the Specification discusses how the application view is
created without programming such as to reasonably convey to one of
ordinary skill in the art that Appellant had possession of the claimed
invention to satisfy the written description requirement. We further find that
the Examiner does not provide adulate reasoning as to why the Specification
does not enable the claim.
Thus, we are persuaded the rejection is in error, and we do not sustain
the rejection of claims 1—19 under § 112, first paragraph.
6
Appeal 2014-008503
Application 13/570,608
Rejection II - Indefiniteness
The Examiner finds that claims are indefinite because they “utilize
terms which are either not clearly defined (e.g. programming, coding,
platform, enterprise resource planning system), or never recited in
applicant’s disclosure (e.g. machine generated code, operating system
compiled code).” Final Act. 9. The Examiner asserts that without
definitions for these terms, “one skilled in the art would not be properly
advised as to the meets and bounds of the claims.” Ans. 6.
The Appellant contends the rejection is in error because the Examiner
was able to give the terms “their broadest reasonable interpretation in light
of the specification and knowledge of one skilled in the art at the time of the
invention.” Appeal Br. 6 (quoting Final Act. 9).
We agree with the Appellant. As the Examiner shows, the claim
terms are capable of being understood to one of ordinary skill in the art. The
Examiner’s concern regarding metes and bounds is a matter of breadth rather
than indefinites. However, “[bjreadth is not indefmiteness.” In re Gardner,
All F.2d 786, 788 (1970).
Thus, we are persuaded the rejection is in error, and we do not sustain
the rejection of claims 1—19 under § 112, first paragraph.
Rejection III— Obviousness -Claims 1—3, 5, 11—15, and 17—19
The Appellant argues claims 1—3, 5, 11—15, and 17—19 as a group.
See Appeal Br. 8. We consider claim 1 as representative of the group.
7
Appeal 2014-008503
Application 13/570,608
Claims 2, 3, 5, 11—15, and 17—19 stand or fall with claim l.5 See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Appellant contends that the Examiner’s rejection of claim 1 is in
error because “Baffler does not disclose importing functions” and “[njeither
Baffler nor Polizzi nor Charbonneau disclose importing the virtual states and
user roles as metadata from the ERP system.” Appeal Br. 8—9. The
Appellant further argues that the Examiner’s prima facie case is not clear
because: (1) it is not clear for what elements the Examiner relies on Polizzi,
(2) “the Examiner has not explained the differences between the claims and
the prior art or any rationale for modifying the prior art,” and (3) it is not
“clear what prior art the Examiner proposes to modify.” Id. at 9, Reply
Br. 3.
Upon careful review of the Appellant’s arguments in the Appeal and
Reply Briefs, we are not persuaded that the Examiner erred in the rejection
of claim 1 for at least the reasons below.
We find unpersuasive the Appellant’s argument that Baffler discloses
importing templates but does not disclose importing functions. Appeal
Br. 8; Reply Br. 3. As the Examiner points out (Ans. 7), the terms
“importing” and “business function definitions,” as recited in claim 1, step
B, are not defined in the Specification. The Appellant does not argue that
the Examiner’s interpretations (Final Act. 12) of “importing” as “inputting,
receiving, accessing, retrieving, copying, etc.” and of “business function
definitions” as “data, specification, requirements, APIs, etc.” are incorrect.
We agree with the Examiner’s findings that Baffler discloses inputting,
5 We note that independent claim 11 recites limitations similar to and
parallel with the limitations of claim 1.
8
Appeal 2014-008503
Application 13/570,608
receiving, accessing, retrieving, or copying data, specifications,
requirements, or API’s. Even assuming arguendo that Baffler discloses
templates, the templates are a form of data that can be considered a
“business function definition” as broadly, and reasonably construed by the
Examiner and uncontested by the Appellant.
We further find unpersuasive the Appellant’s argument that “[njeither
Baffler nor Polizzi nor Charbonneau disclose importing the virtual states and
user roles as metadata from the ERP system” (Appeal Br. 9) at least because
it is an argument against the art individually when the Examiner relies on a
combination to disclose the limitation. The test for obviousness is not what
any one reference would have suggested, but rather what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[0]ne cannot
show non-obviousness by attacking references individually were, as here,
the rejections are based on combinations of the references.”).
Here, the Examiner relies on Baffler for teaching importing business
function definitions as metadata (see Final Act. 12—13), but acknowledges
Baffler does not teach the metadata including ERP system connection
information (id. at 15) or virtual state definitions (id. at 20). The Examiner
relies on Polizzi for teaching importing business function definitions as
metadata including ERP system connection information (id. at 18), finding
that one of skill in the art would combine Baffler and Polizzi because “the
claimed invention is merely a combination of old elements, and in the
combination each element merely would have performed the same function
as it did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable” (id. at 19).
9
Appeal 2014-008503
Application 13/570,608
The Examiner relies on Charbonneau for teaching the metadata including
virtual state definitions (id. at 20), finding that one of skill in the art would
combine Charbonneau with Baffler and Polizzi to “enable[e] a more
efficient creation and posting of views” (id. at 20-21 (citing Charbonneau,
19)). We find the Examiner has made the factual inquiries of determining
the scope and content of the prior art, ascertaining the differences between
the claimed invention and prior art, and resolving the level of ordinary skill
in the pertinent art. See Graham v. John Deere Co., 383 U.S. 1 (1966).
Thus, we find the Examiner has established a prima facie case of
obviousness as the Examiner has provided articulated reasoning with
rational underpinning to support a legal conclusion of obviousness. See KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellant’s argument that Baffler does not teach importing
business functions is unpersuasive for the reasons discussed above. The
Appellant argues that the rejection is unclear (Appeal Br. 8; Reply Br. 3),
but, as discussed above, we disagree and find the Examiner established a
prima facie case of obviousness. The Appellant provides no argument
regarding the Examiner’s finding regarding Polizzi. The Appellant further
makes statements regarding Charbonneau (Appeal Br. 8—9), but does not
provide adequate evidence or technical reasoning why the Examiner’s
findings regarding Charbonneau are in error. Furthermore, the Appellant
does not provide evidence or technical reasoning why the Examiner’s
articulated reasons for the combination are in error.
Based on the foregoing, we are not persuaded of error on the part of
the Examiner in the rejection of claim 1. We therefore sustain the rejection
of claim 1 and of claims 2, 3, 5, 11—15, and 17—19, which fall with claim 1.
10
Appeal 2014-008503
Application 13/570,608
Rejections IV and V— Obviousness -Claims 4, 6—10, 16, and 20—22
The Appellant does not provide separate arguments against the
rejections of claims 4, 6—10, 16, and 20-22. Thus, we also sustain the
rejections of those claims.
DECISION
The Examiner’s rejections of 1—19 under 35 U.S.C. § 112 are
REVERSED.
The Examiner’s rejections of claims 1—22 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)(l)(iv).
AFFIRMED
11