Ex Parte SoumokilDownload PDFPatent Trial and Appeal BoardDec 12, 201610573031 (P.T.A.B. Dec. 12, 2016) 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. 10/573,031 01/30/2007 Mike Soumokil 2003P00797WOUS 4433 62730 7590 SAP SE 3410 HILLVIEW AVENUE PALO ALTO, CA 94304 12/14/2016 EXAMINER ANDERSON, JOHN A ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 12/14/2016 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): APRIL.MENG@SAP.COM GIPinhouse@sap.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKE SOUMOKIL Appeal 2014-0066591 Application 10/573,0312 Technology Center 3600 Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 30, 31, 36, 38, 40, 41, 45, and 49-55. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Throughout this opinion, we refer to the Appellant’s Appeal Brief (“Appeal Br.,” filed Jan. 29, 2014), Reply Brief (“Reply Br.,” filed May 22, 2014), and Specification (“Spec.,” filed Mar. 22, 2006), and to the Examiner’s Answer (“Ans.,” mailed Apr. 9, 2014) and Final Action (“Final Act.,” mailed May 29, 2013). 2 According to the Appellant, the real party in interest is SAP AG. Appeal Br. 3. Appeal 2014-006659 Application 10/573,031 STATEMENT OF THE CASE The Appellant’s invention is directed to “computerized processing of invoices which a company has presented to, for example, two or more customers.” Spec. 2. Claims 30, 53, and 54 are the independent claims on appeal. Claim 30 is illustrative of the subject matter on appeal and is reproduced below (bracketing added for reference): 30. A method for processing invoices, the method being performed by a computer and comprising: [(a)] selecting, from a plurality of electronic-invoice records, by using a processor of the computer, invoices which are due within a pre-selectable time or on a pre-selectable date; [(b)] assigning a first state to the selected invoices, wherein the assigned first state includes a first set of characters that are stored in a data field of each selected electronic-invoice record; [(c)] selecting, from the plurality of electronic-invoice records, invoices that satisfy a specified condition; [(d)] assigning a second state to said selected invoices that satisfy the condition, wherein the second assigned state includes a second set of characters that are stored with the first set of characters in the data field of each selected electronic-invoice record; [(e)] assigning a first priority to a first invoice included in the selected invoices, wherein the first invoice is associated with a first due date; [(f)] assigning a second priority to a second invoice included in the selected invoices, wherein the second invoice is associated with a second due date and the second priority is a higher priority than the first priority; [(g)] using the first state and the second state to control processing of the invoices, wherein, based on the first priority and the second priority, the second invoice is processed before 2 Appeal 2014-006659 Application 10/573,031 the first invoice even if the second due date identifies a date that occurs after a date identified by the first due date; and [(h)] sending a message including description information corresponding to one of the selected invoices, the message including location information identifying a path for accessing the one selected invoice. Appeal Br., Claims App. REJECTIONS Claims 30, 54, and 55 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2. Claims 30, 31, 40, and 51—55 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown (US 2010/0023452 Al, pub. Jan. 28, 2010) and Lam (US 2003/0220875 Al, pub. Nov. 27, 2003). Id. at 4. Claims 36 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown, Lam, and Neely (US 6,044,362, iss. Mar. 28, 2000). Id. at 7. Claims 41, 45, 49, and 50 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown, Lam, Neely, and Kriplani (US 7,353,203 Bl, iss. Apr. 1, 2008). Id. at 8. 3 Appeal 2014-006659 Application 10/573,031 FINDINGS OF FACT The findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 ANALYSIS Written Description - § 112, first paragraph The Examiner rejects claims 30, 54, and 55 under § 112 finding that the Specification does not provide a written description of limitations (f) and (g) of assigning a second priority and processing based on the second priority such as to reasonably convey to one skilled in the art that the inventor had possession at the time the invention was filed. See Final Act. 3; Ans. 12—13. Specifically, the Examiner finds that although the Specification mentions high, medium, and low priorities, it “does not explain or define the application of higher priority as applied in the limitations of claims 30, 54 or 55,” such as how invoices would be processed if they had the same due date or if the first invoice had a high priority. Ans. 12—13. The Appellant contends the rejection is in error because there is clear support in the Specification, citing page 9, lines 30—33, which state “[a]s an example, invoices of high priority may be presented 10 days before their due date, medium priority 7 days before their due date and low priority invoices on the due date.” Appeal Br. 10. The Appellant further argues that the Specification provides examples of how the different priorities would be applied, and, thus, “reasonable clarity is present in the specification” to 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 4 Appeal 2014-006659 Application 10/573,031 convey to those skilled in the art that, as of the filing date sought, the Appellant was in possession of the invention as claimed. Reply Br. 2. We find the Appellant’s arguments persuasive. Claim 30 recites assigning a first priority to a first invoice associated with a first due date, assigning a second priority to a second invoice associated with a second due date, processing the invoices, wherein based on the priorities, the second invoice is processed before the first invoice even if the second due date occurs after the first due date. The Specification discusses assigning priority states based on the balance value and due date. See Spec. 23,1. 15 through 24,1. 10. As noted above, the Specification also discusses processing high, medium, and low priority invoices a specific number of days before the due date. As such, a low priority invoice, i.e., a first invoice with a lower balance value, may have a due date of June 10 and would be processed on that date, June 10, whereas a medium priority invoice, i.e., a second invoice with a higher balance value, may have a due date of June 11 but would get processed June 4. Thus, we find the Specification does provide adequate description to reasonable convey to one of skill in the art that the Appellant has possession of assigning a second (higher) priority that can be processed before the first (lower) priority even if the due date is later. In view of the foregoing, we do not sustain the Examiner’s rejection under 35 U.S.C. § 112. Obviousness - § 103(a) Each of independent claims 30, 54, and 55 recites the limitations of assigning a second priority and processing the second invoice before the first invoice, as recited in limitations (f) and (g) of claim 30. 5 Appeal 2014-006659 Application 10/573,031 The Appellant contends the Examiner’s rejection of claim 30 is in error because Lam, upon which the Examiner relies, does not teach or suggest the features of limitations (f) and (g) of assigning a second priority to a second invoice, the second priority being a higher priority than the first priority of limitation (e), and controlling the processing of the invoices when the second invoice with the higher priority is processed before the first invoice with the lower priority even if the second invoice’s due date occurs after the first invoice’s due date. Appeal Br. 11—12. Specifically, the Appellant argues that Lam discloses the opposite of what is claimed in that “a document with a closer due date or less time remaining is necessarily given a higher priority.” Id. Conversely, the Examiner finds Lam discloses the limitations at paragraphs 37 and 39 by “prioritizing invoices based on due date and dollar amount for the invoice in addition to the number of days left for payment.” Ans. 13—14. The Examiner interprets “claim 30 [as] assigning a priority based [on] due date and a second priority, with the second priority having a higher priority.”4 Id. at 14. Paragraph 37 of Lam discloses that invoices are automatically approved if they meet particular rules that may be based on the supplier, item, amount, frequency, dollar amount and/or number of days left for payment. Paragraph 39 of Lam discloses that invoices may be prioritized automatically based on the time remaining until they are due and on the due 4 The Examiner actually states “priority based due date,” but in the next sentence states “prioritizing invoices based on due date and dollar amount.” Ans. 14. Thus, we determine the Examiner’s omission of the word “on” an inadvertent error. 6 Appeal 2014-006659 Application 10/573,031 date, and may be presented to the user in the order of priority. Even assuming arguendo that the Examiner’s finding that Lam discloses assigning priorities based on due date and dollar amount, it is not clear that, and the Examiner does not explain how, Lam discloses that processing of a higher priority invoice occurs before a lower priority invoice even if the due date for the higher priority invoice is after the due date with the lower priority due date, as recited in limitation (g) of claim 30. In other words, it is not clear that Lam assigns a higher priority to an invoice with more time remaining until due or with a later due date than an invoice with a lower priority. In view of the foregoing, we do not sustain the Examiner’s rejection of claims 30, 54, and 55 under 35 U.S.C. § 103(a) as obvious over Brown and Lam. For the same reasons, we also do not sustain the rejection of dependent claims 31, 40, and 51—53. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). Claims 36, 38, 41, 45, 49, and 50 depend, directly or indirectly, from independent claim 30. The Examiner’s rejections of these dependent claims do not cure the deficiency in the Examiner’s rejection of claim 30. Therefore, we do not sustain the Examiner’s rejections of claims 36, 38. 41, 45, 49, and 50 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to claim 30. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 30, 31, 36, 38, 40, 41, 45, and 49-55 under 35 U.S.C. § 101 as being 7 Appeal 2014-006659 Application 10/573,031 directed to non-statutory subject matter. We find the claims are ineligible for patent protection because they are directed to an abstract idea. The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) identified a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under §101. We analyze the claims using the two part analysis: 1) determine whether the claims are directed to an abstract idea; and 2) if an abstract idea is present in the claims, determine whether any element, or combination of elements, in the claims is sufficient to ensure the claims amount to significantly more than the abstract idea itself to transform the claims into a patent-eligible invention. See id. at 2355. Taking claim 30 as representative of the claims on appeal, the claimed subject matter is directed to the concept of processing invoices. See Spec. 1, 11. 5—9. The Supreme Court has held certain fundamental economic and conventional business practices, like intermediated settlement (see Alice, 134 S. Ct. at 2356—57), and budgeting (see Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)), as being abstract ideas. The processing of invoices of claim 30 is similar to these abstract ideas, and, thus claim 30 is directed to an abstract idea. Under the second step of the analysis, we find neither independent claims 30, 54, and 55, nor dependent claims 31, 36, 38, 40, 41, 45, and 49—53 have any additional elements that amount to significantly more to transform the abstract idea of processing invoices. Independent claim 30 and dependent claims 31, 36, 38, 40, 41, 45, and 49—53 recite a method of selecting invoices, assigning states to invoices, assigning priorities to invoices, controlling the processing of invoices, and sending a message 8 Appeal 2014-006659 Application 10/573,031 corresponding to the invoices. Although the steps are performed by a computer and comprise electronic records, any general purpose computer available at the time the application was filed would have been able to perform these functions. The Specification supports that view. See Spec. 6, 11. 7—12, 22,11. 9—20, and Fig. 1. Independent apparatus claims 54 and 55 recite a system comprising a memory, devices, storage component, and processor, i.e., a general computer, or a storage medium storing a computer program to perform the functions of the claims. The introduction of a computer to implement an abstract idea is not a patentable application of the abstract idea. Alice, 134 S. Ct. at 2357—58. The computer implementation here is purely conventional and performs basic functions. See id. at 2359- 60. The claims do not purport to improve the functioning of the computer itself, nor do they effect an improvement in any other technology or technical field. See id. at 2359. Thus, under the two-part analysis, we find that claim 30 is directed to subject matter that is judicially excepted from patent eligibility under §101. The other independent claims — system claim 54 and program product claim 55 parallel claim 1 — similarly are directed to claimed subject matter that is judicially excepted from patent eligibility under § 101. See id. at 2360. The dependent claims describe various versions of selecting and assigning invoices that do little to patentably transform the abstract idea. Therefore, we enter a new ground of rejection of claims 30, 31, 36, 38, 40, 41, 45, and 49-55 under 35 U.S.C. § 101. 9 Appeal 2014-006659 Application 10/573,031 DECISION The Examiner’s rejection of claims 30, 54, and 55 under 35 U.S.C. § 112 is REVERSED. The Examiner’s rejections of claims 30, 31, 36, 38, 40, 41, 45, and 49-55 under 35 U.S.C. § 103(a) are REVERSED. A NEW GROUND OF REJECTION has been entered for claims 30, 31, 36, 38, 40, 41, 45, and 49-55 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant(s), WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... 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). REVERSED: 37 C.F.R, $ 41.50(b) 10 Copy with citationCopy as parenthetical citation