Ex Parte CINA et al

Patent Trial and Appeal Board

Mar 7, 2016

12333766 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/333,766 12/12/2008
53000 7590 03/09/2016
KENYON & KENYON LLP
1500 K STREET N.W.
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Miroslav CINA
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.
11884-499101 6989
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIROSLA V CINA, ANDREAS JAECKLE, and
CLAUS STEIMER
Appeal2013-008157
Application 12/333,766
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims3 1--4 and 6-12 under 35 U.S.C. § 103(a) as
unpatentable over Brand,4 Warady,5 and Mendoza. 6 We have jurisdiction
under 35 U.S.C. § 6(b ).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Mar.
4, 2013), Reply Brief ("Reply Br.," filed June 6, 2013), and the Examiner's
Answer ("Ans.," mailed Apr. 11, 2013).
2 Appellants identify the real party in interest as SAP AG. App. Br. 1.
3 Claim 5 is canceled. Id. at 27, Claims App.
4 Brand, US 2004/0117203 Al, pub. June 17, 2004.
s Warady et al., US 6,067,522, iss. May 23, 2000.
6 Mendoza et al., US 2008/0300893 Al, pub. Dec. 4, 2008.
Appeal2013-008157
Application 12/333,766
ST ATEivIENT OF THE DECISION
We AFFIRM.
CLAIMED INVENTION
The claimed invention "relates to a system and method for providing
automated services, in particular, services that require approvals and review
of status." Spec. i-f 2. Claims 1, 2, 3, and 4 are independent and recite
substantially similar subject matter. See App. Br. 18. Claim 1 is illustrative
of the subject matter on appeal.
1. A method for providing benefits from a plurality of
differing social service providers, who provide a plurality of
different types of social services, the method comprising:
[2a] providing a generic software layer executing on a
computer system, the generic software layer defining a common
workflow [2b] to support benefits management for the plurality
of differing social service providers;
[3a] responsive to a request for benefits, providing a
benefits application form to a requester according to the common
workflow defined in the generic software layer,
[3 b] the benefits application form being provided by a
customization layer based on a type of benefits requested,
[3c] the customization layer being selected from a
plurality of customization layers that each adapts performance of
the generic software layer to be appropriate for specific benefits
programs,
[3d] the benefits application form containing information
to be used for determining which of the plurality of differing
social service providers from whom the requester is eligible to
receive social services;
[ 4] validating, by the computer system, a completed form
received from the requester,
[5] creating an application object in the computer system
corresponding to the request for benefits by extracting data from
the form, wherein the application object includes the data
extracted from the form,
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Application 12/333,766
[ 6] verifying, by the software layer, data contained in the
application object related to the requested benefits according to
a verification rule set provided by the customization layer,
wherein the verification rule set defines what information or
evidence need to be verified and criteria for satisfactory
verification;
[7] formulating, by using the application object, an item
proposal strategy according to item proposal strategy rules of the
customization layer indicating item data to be added to the
application object, wherein the item data represents services to
be provided to a requester;
[8] analyzing by the software layer the form data and item
data of the application object with respect to an analysis rule set
provided by the customization layer to determine benefits
suitable for the requestor;
[9] determining by the software layer whether the
requester is eligible to receive all of the requested benefits
indicated in the item proposal strategy, the determination made
with reference to a eligibility rule set provided by the
customization layer,
[10] wherein the eligibility rule set defines extent of
services or benefits to be provided, and any conditions that limit
or extend services and benefits;
[ 11] forwarding the eligibility determination and the
application object to an approval module for analysis of the
eligibility determination, wherein the application object includes
the form data and the verified items data according to an approval
rule set associated with the software layer; and
[12] upon approval, issuing a notification to a service
provider from the plurality of the differing service providers of
the approved services indicated by the verified items data for the
requester.
App. Br. 20-21, Claims App (with bracketed matter added).
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Application 12/333,766
ANALYSIS
Claims 1, 6, and 7
Appellants argue claims 1, 6, and 7 as a group. App. Br. 13-17. We
select claim 1 as representative, and thus, claims 6 and 7 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellants argue that the combined teachings of Brand, Warady, and
Mendoza do not render obvious limitations [2a], [2b], [3a], [3b], and [3c] of
claim 1. App. Br. 13-17; Reply Br. 2-5. According to Appellants, "[n]one
of the three references disclose a generic software layer that defines a
common workflow to support benefits management for the plurality of
differing social service providers. Nor do any of the three cited references
recite a customization layer." Reply. Br. 3.
Regarding limitation [2a], Appellants assert that Brand does not
disclose a generic software layer because "[a]ll Figure 1 discloses is a
computer program that lists a plurality of social benefits, ... compares the
information of the eligibility requirements, and predicts which benefits for
which recipients qualify." App. Br. 14. Regarding limitation [2b],
Appellants argue that although Figure 3 at step 22 and paragraph 5 of Brand
disclose a plurality of social benefits, Brand does not disclose "to support
benefits management for the plurality of differing social service providers,"
as claimed. Id.
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). Appellants' Specification discloses that
"the generic software layer is common to all public benefits programs being
managed by a software user." Spec. i-f 15. The Specification further
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Appeal2013-008157
Application 12/333,766
discloses that "[t]he workflow defines a fixed, predetermined process
through which an enterprise management system receives new requests for
benefits, determines whether the request meets eligibility criteria and awards
or rejects the benefits request." Id.
The Examiner relies on Figure 1 of Brand as disclosing the "generic
software layer" of claim 1. See Ans. 4. Brand's Figure 1 defines a fixed,
predetermined process comprising steps 13, 15, 17, and 19. At step 15, the
fixed process receives new requests for benefits ("solicit information from
potential recipients"). At step 1 7, the system determines whether the request
meets eligibility criteria ("compare information to eligibility requirements of
benefit programs"). At step 19, the system determines whether the benefits
request will be awarded or rejected ("predict benefits for which recipients
qualify").
Furthermore, Brand teaches that the workflow of Figure 1 is common
to all of the benefits programs. See Brand i-f 30 ("method is intended to be
used with over 70 currently known benefit programs, used for all 50 states of
the United States and its possessions and be compatible with the
requirements of every federal, state and private organization which
administers a social benefit program.") Brand also teaches that the common
workflow of Figure 1 is customized by "modules handling data specific to a
particular benefits program." Brand i-f 38. Thus, by receiving information
from potential recipients related to eligibility requirements for social benefits
and comparing the received information to the eligibility requirements for
the social benefits, Brand identifies those social benefits of the plurality of
social benefits for which the potential recipients qualify to be awarded. See
Brand i-f 26. Therefore, in light of the Specification, Appellants' arguments
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Application 12/333,766
do not apprise us of error with regard to the Examiner's findings that Brand
teaches a generic software layer defining a common workflow to support
benefits management for the plurality of differing social service providers,
as set forth in limitations [2a] and [2b].
Appellants' unpersuasively dispute the Examiner's finding with
regard to limitation [3a] on the grounds that Brand only shows support for
paper application forms. App. Br. 15 (referencing Brand i-fi-137, 38); see also
Reply Br. 3. However, Brand discloses in paragraphs 37 and 38 that
application forms can be either generated in paper form or communicated
electronically. See also Brand i1 8 ("Once it is known which benefits the
recipient qualifies for, applications may then be generated for that set of
social benefits on behalf of the potential recipients. Application may then be
made for the set of social benefits on behalf of the potential recipients, either
through paper forms or by direct electronic means.") Moreover, Appellants'
argument is not commensurate in scope with the disputed claim language.
The claim limitation does not preclude providing a benefits application form
to a requester in paper form via a printer.
With regard to limitations [3b] and [3c], Appellants contest the
Examiner's findings that Brand discloses the claimed customization layers.
App. Br. 15. In particular, Appellants contend that paragraph 26 of Brand
does not disclose the use of a customization layer to provide a benefits
application form. Id. Appellants acknowledge that "[t]he 'interactive expert
system' described in i1 [0029] does pose questions to elicit required
information to determine what benefits are desired, but argue that it does not
disclose using a customization layer to do so." Id.
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We are not persuaded of reversible error by Appellants' arguments.
Appellants' Specification describes "a customization layer which includes a
number of customization objects, each customization object adapting
performance of the generic software layer to be appropriate for a specific
benefits program." Spec. i-f 15; see also Spec. i-f 24 ("local customized rules
allow individual jurisdictions to decide the criteria that will be used to
decide the extent of services or benefits to be provided to a requester, and
any conditions that limit or extend services and benefits to a requester.")
The Examiner finds that paragraph 38 of Brand (see Ans. 5) teaches the
claimed plurality of customization layers because the benefits modules
(22a-22e) and state modules (34a-34c) of Brand each handle "data specific
to a particular benefits program" such as "qualifications and benefits [that
are] different for each state." In view of the Specification, Brand's benefits
and state modules perform a similar function to the claimed customization
layers, namely, adapting performance of the generic software layer to be
appropriate or suitable to the specific benefits programs in each individual
state or jurisdiction.
In view of the foregoing, we sustain the rejection of independent
claim 1, and claims 6 and 7 which fall with claim 1.
Appellants arguments that W arady and Mendoza also fail to disclose
limitations [2a], [2b], and [3a-3c] ofclaim 1 (App. Br. 16-17) do not
apprise of reversible error on the part of the Examiner as discussed above.
Claims 24 and 812
Appellants rely on arguments presented with regard to claim 1 in
contesting the rejection of claims 2--4 and 8-12. See App. Br. 18-19.
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Application 12/333,766
Therefore, we sustain the rejection of claims 2--4 and 8-12 for the same
reasons discussed above.
DECISION
The Examiner's decision to reject claims 1--4 and 6-12 is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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