Ex Parte Scherberger et al

Patent Trial and Appeal BoardDec 19, 2012

11322328 (P.T.A.B. Dec. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GUNTER SCHERBERGER, MICHAEL HOHENDORF, and MONIKA MOREY ____________ Appeal 2011-000899 Application 11/322,328 Technology Center 3600 ____________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000899 Application 11/322,328 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-20 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellants’ claimed invention is directed to a plurality of logical deployment units that are distributed throughout a system (Spec. [0002]). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. A process comprising: using a computer processor for distributing a plurality of logical deployment units; using the computer processor for providing at least one business object within each logical deployment unit; using the computer processor for providing links between the plurality of logical deployment units; and using the computer processor for enabling at least one of the logical deployment units to receive a business transaction and to identify an individual material associated with the business transaction; wherein each business object is visible only within its own logical deployment unit and has access to the individual material; wherein the plurality of logical deployment units and the at least one business object are integrated; and wherein the individual material associated with the business transaction is a reference to a physical object in a business organization; and further Appeal 2011-000899 Application 11/322,328 3 [1] wherein the individual material contains no indication regarding a type of asset associated with the physical object. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Hahn-Carlson US 2005/0274792 A1 Dec. 15, 2005 The following rejection is before us for review: 1. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hahn-Carlson. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:1 FF1. Hahn-Carlson at paragraphs [0033], [0034], [0041], and [0042] does not specifically disclose a process “wherein the individual material contains no indication regarding a type of asset associated with the physical object”. ANALYSIS The Appellants argue that the rejection of claim 1 is improper because the cited prior art does not show or suggest claim limitation [1] which requires “wherein the individual material contains no indication regarding a 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-000899 Application 11/322,328 4 type of asset associated with the physical object” (App. Br. 13-15). See also Reply Br. 1-3). In contrast, the Examiner has determined that Hahn-Carlson does not explicitly show claim limitation [1] but that such a modification would have been obvious in view of paragraph [0026] of the same reference (Ans. 6). We agree with the Appellants. Hahn-Carlson at paragraphs [0033], [0034], [0041], and [0042] does not specifically disclose a process “wherein the individual material contains no indication regarding a type of asset associated with the physical object” (FF1) without speculation about the probabilities of how the process could possibly function. The Examiner’s rationale for modification is given by a citation to paragraph [0026] (Ans. 6). Here, paragraph [0026] does not provide any suggestion or motivation for the reference to have no indication of the type of asset associated with the physical object as claimed. As the cited rejection of claim 1 lacks articulated reasoning with rational underpinnings for the modification, this rejection is not sustained. The remaining claims contain a similar limitation and the rejection of these claims is not sustained for these same reasons. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting claims 1-20. DECISION The Examiner’s rejection of claims 1-20 is reversed. Appeal 2011-000899 Application 11/322,328 5 REVERSED mls