Ex Parte Schaad

Patent Trial and Appeal Board

Sep 16, 2013

11412372 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREAS SCHAAD
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Appeal 2011-010299
Application 11/412,372
Technology Center 3600
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Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
THOMAS F. SMEGAL, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010299
Application 11/412,372

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STATEMENT OF THE CASE
Andreas Schaad (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1, 2, 4-16, and 18-29. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A method comprising:
mapping, using one or more processors, a
private task of a private workflow of a first entity
to a public task of a public collaborative workflow;
and
defining a public control relating to the
public task, the public task and the public control
to be published to a second entity with which the
first entity collaborates utilizing the public
collaborative workflow, the public control being
defined in terms of a separation of duties with
respect to the public task.

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Dec. 21, 2010) and the Examiner’s Answer (“Ans.,” mailed Mar. 18,
2011).

Appeal 2011-010299
Application 11/412,372

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Navani US 2002/0052769 A1 May 2, 2002

The following rejection is before us for review:
1. Claims 1, 2, 4-16, and 18-29 are rejected under 35 U.S.C.
§102(b) as being anticipated by Navani.

ISSUE
The issue is whether Navani inherently describes the limitation that
“the public control to be published to a second entity with which the first
entity collaborates utilizing the public collaborative workflow.”

ANALYSIS
We are persuaded by the Appellant’s argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Navani. At issue is claim 1’s recitation of “the public control to be
published to a second entity with which the first entity collaborates utilizing
the public collaborative workflow.” To meet this limitation, the Examiner
asserts that:
it is inherent (necessarily present) in any U.S.
government agency regulations such as U.S.
Department of Energy requirements of amounts in
inventory at each of the distribution points (pg. 1,
paragraph 0010, ll. 3-6), to be published in the
Federal Register. And the Federal Register
Appeal 2011-010299
Application 11/412,372

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publication is distributed and made available
throughout the nation, hence to a second entity.
Ans. 13.
However, Navani’s paragraph [0010] does not teach the Examiner’s
assertion that the Department of Energy’s distribution point inventory
amounts are published in the Federal Register, and the Examiner provides no
other evidence to support this assertion. Further, assuming arguendo, that
the Examiner’s assertion is correct, the limitation at issue requires that the
publication be made “utilizing the public collaborative workflow.” Navani
does not describe that the Department of Energy and Federal Register are
part of the claimed public collaborative workflow.
Independent claims 15 and 28 recite similar limitations and were
similarly rejected by the Examiner. The Examiner fails to establish a prima
facie showing of anticipation. Accordingly, the rejection of claims 1, 15,
and 28, and claims 2, 4-14, 16, 18-27, and 29 dependent thereon, under 35
U.S.C. § 102(b) as being anticipated by Navani is reversed.

DECISION
The decision of the Examiner to reject claims 1, 2, 4-16, and 18-29 is
reversed.

REVERSED

mls