Ex Parte RabstejnekDownload PDFPatent Trial and Appeal BoardMar 16, 201713570608 (P.T.A.B. Mar. 16, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation