Ex Parte Brunswig et alDownload PDFPatent Trial and Appeal BoardJul 29, 201612647732 (P.T.A.B. Jul. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/647,732 12/28/2009 Frank Brunswig 52025 7590 08/02/2016 SAP SE c/o BUCKLEY, MASCHOFF & TALWALKAR LLC 50 LOCUST A VENUE NEW CANAAN, CT 06840 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2009P00231US 2521 EXAMINER KONERU, SUJAY ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 08/02/2016 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): martin@BMTPATENT.COM szpara@bmtpatent.com colabella@bmtpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK BRUNSWIG and GUENTER PECHT-SEIBERT Appeal 2014-006291 1 Application 12/647,7322 Technology Center 3600 Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final rejection of claims 1-5, 7-11, and 13-20. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed Jan. 27, 2014) and Reply Brief ("Reply Br.," filed Apr. 29, 2014), and the Examiner's Final Office Action ("Final Act.," mailed Oct. 7, 2013) and Answer ("Ans.," mailed Mar. 5, 2014). 2 According to Appellants, the real party in interest is SAP AG (Appeal Br. 2). Appeal2014-006291 Application 12/647,732 Introduction Appellants' disclosure relates to "a service-oriented architecture to provide software services [and more specifically] to the provision of progress information to a service client during service fulfillment." (Spec. 1, 11. 7-9). Claims 1, 8, and 14 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method comprising: receiving, from a client application, a first request to execute a business process having a plurality of software work processes; during execution of the business process: receiving information at a progress information service, the information generated by a first software work process of the plurality of software work processes; providing the received information to an enterprise controller object (ECO), the ECO including knowledge of the executing business process; the progress information service receiving second information from a second software work process of the plurality of software work processes, and providing the second information to the ECO; the ECO determining, based on the ECO knowledge and information provided to the ECO in a callback from the progress information service, to store progress information in a shared memory by overwriting previously-stored content of the shared memory; and during execution of the business process receiving, at a third software work process, a second request for the determined progress information, retrieving, by the third software work process, the determined progress information and before a response is provided to the first request providing the determined progress information to the client application. (Appeal Br., Claims App.) 2 Appeal2014-006291 Application 12/647,732 Rejections on Appeal The Examiner maintains, and the Appellants appeal, the following rejections: 3 1. Claims 1-5, 8-11, 14-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gonzales (US 2009/0171893 Al, pub. July 2, 2009). 2. Claims 7 and 13 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Gonzales and Pederson (US 2009/0164933 Al, pub. June 25, 2009). ANALYSIS Independent claim 1 and dependent claims 2-5 We are persuaded by Appellants' argument that there is insufficient evidence to support the Examiner's determination that "tracked data can reasonably considered enterprise controller objects," as recited by independent ciaim 1, i.e., "providing the received information to an 3 In the event of further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the most recent Patent Office guidance on § 101 found in the May 4, 2016 Memorandum to the Examining Corps, titled "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection," and the "July 2015 Update on Subject Matter Eligibility," 80 Fed. Reg. 45429 (July 30, 2015), which supplements the "2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), and the "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to the Examining Corps, June 25, 2014. 3 Appeal2014-006291 Application 12/647,732 enterprise controller object (ECO), the ECO including knowledge of the executing business process" (see Appeal Br. 8; Reply Br. 13). The Examiner reasons as follows: It would have been obvious to one of ordinary skill in the art to view the intranet interfaces shown in Gonzales and interpret the various data and parameters that are tracked for progress as objects of the intranet system. Because the intranet system shown in Figs 4-16B can be considered equivalent to an enterprise system since the intranet interfaces clearly are related to project management for a business, the tracked data can reasonably be considered enterprise controller objects. (Final Act. 5). The Examiner further reasons as follows: It is old and well known that relational databases such as the ones that use SQL are used in conjunction with objected oriented programming. Object in this context is something that has values. Although Gonzales may not explicitly show what the objects are, because information such as progress is being tracked as shown in the reports of para [0038] and discussed in Figs 4--16; one of ordinary skill in the art would reasonably interpret this tracked progress to be an object of the SQL software project database. (Ans. 4). At bottom, the Examiner's determination is based on the definition that an "object" is "something that has values." This definition is inconsistent with the Specification and with the claim language itself. For example, paragraph 8 of the Specification states that the Enterprise Service Framework (ESP) may issue requests to an Enterprise Controller Object (ECO) and the ECO may "provide additional business knowledge and functionality" behind operation of the UI floorplan. In the context of the Specification, therefore, the Enterprise Controller Object may handle data, but it is not itself data. Further, the claim language itself recites 4 Appeal2014-006291 Application 12/647,732 "detennmmg" as a function of the ECO. The Examiner's finding that Gonzales meets the ECO limitation is based on this flawed claim construction. As such, the Examiner does not set forth a prima facie case of unpatentability over Gonzales. Therefore, we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent claim 1, and of claims 2-5, which depend therefrom. Independent claims 8 and 14 and dependent claims 9-11 and 15-20 Claims 8 and 14 contain similar language and requirements as independent claim 1. We do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claims 8 and 14 for similar reasons as for independent claim 1. For the same reason, we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claims 9-11 and 15-20, each of which depend from one of claims 8 and 14. Dependent claims 7 and 13 Dependent claims 7 and 13, depend respectively from claims 1 and 8, and stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gonzales and Pederson. The Examiner does not rely on Pederson to remedy the deficiency in the Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 1 and 8 over Gonzales. We, therefore, do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claims 7 and 13, for similar reasons as for independent claims 1 and 8. DECISION The Examiner's decision to reject claims 1-5, 7-11, and 13-20 under 35 U.S.C. § 103(a) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation