Ex Parte Doyle et al

Patent Trial and Appeal Board

Mar 23, 2016

12199626 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/199,626 08/27/2008
46320 7590 04/05/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Ronald P. Doyle
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.
RSW920080227US1 (409) 6283
EXAMINER
NGUYEN, TAND
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
04/05/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD P. DOYLE, EDITH H. STERN, and
BARRY E. WILLNER
Appeal2013-008212
Application 12/199,6261
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ronald P. Doyle, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-7 and 19-21. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 2.
Appeal2013-008212
Application 12/199,626
We AFFIRM.2
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A community input method comprising:
receiving from an end user from over a computer
communications network a request to access a portion of a
workflow in a business process instance in memory of a
computer;
receiving from over the computer communications
network from the end user community input to community
documentation for the portion of the workflow; and,
transmitting the community documentation over the
computer communications network to other end users accessing
the portion of the workflow.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hughes
Friesenhahn
Duquene
US 2002/0133395 Al
US 2007 /0260648 Al
US 2009/0112869 Al
Sep. 19,2002
Nov. 8, 2007
Apr. 30, 2009
Bachmann and Merson, Experience Using the Web-Based Tool Wiki for
Architecture Documentation (2005) (hereinafter "Bachmann").
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed Dec. 18, 2012) and Reply Brief ("Reply Br.," filed June 10,
2013), and the Examiner's Final Office Action ("Final Act.," mailed July 18,
2012) and Answer ("Ans.," mailed Apr. 10, 2013).
2
Appeal2013-008212
Application 12/199,626
The following rejections are before us for review:
1. Claims 1-7 and 19-21 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the
invention.
2. Claims 2-5 are rejected under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit the
subject matter of the claim from which each depends.
3. Claims 1-7 and 19-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hughes and Friesenhahn, or alternatively, Hughes
and Duquene.
4. Claims 1-7 and 19-21 are rejected under 35 U.S.C. § 102(b) as
anticipated by Bachmann, or alternatively under 35 U.S.C. § 103(a) as
unpatentable over Bachmann.
ISSUES
Did the Examiner err in rejecting claims 1-7 and 19-21 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
applicants regard as the invention?
Did the Examiner err in rejecting claims 2-5 under 35 U.S.C. § 112,
fourth paragraph, as being of improper dependent form for failing to further
limit the subject matter of the claim from which each depends?
3
Appeal2013-008212
Application 12/199,626
Did the Examiner err in rejecting claims 1-7 and 19-21 under
35 U.S.C. § 103(a) as unpatentable over Hughes and Friesenhahn, or
alternatively, Hughes and Duquene?
Did the Examiner err in rejecting claims 1-7 and 19-21 under
35 U.S.C. § 102(b) as anticipated by Bachmann, or alternatively under
35 U.S.C. § 103(a) as unpatentable over Bachmann?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Final Office
Action and Examiner's Answer. Additional findings of fact may appear in
the Analysis below.
ANALYSIS
The rejection of claims 1-7and19-21under35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention.
The Examiner rejected claim 1 as indefinite because the Examiner
found it unclear as to whether the step of "transmitting the community
documentation" refers to the original version of the community
documentation or the modified version that includes "the end user ...
community input." Ans. 5---6. However, claim 1 recites "receiving ... end
user community input to community documentation" and "transmitting the
community documentation." There is no limitation to a "modified version."
The claim simply calls for "community documentation" and "end user
community input to community documentation." The claimed method does
4
Appeal2013-008212
Application 12/199,626
not require that the "end user community input" modify the "community
documentation." The claim is simply broad.
Accordingly, the rejection of claims 1-7 and 19-21under35 U.S.C.
§ 112, second paragraph, as being indefinite is not sustained.
The rejection of claims 2-5 under 35 U.S. C. § 112, fourth paragraph, as
being of improper dependent form for failing to further limit the subject
matter of the claim from which each depends.
Claims 2-5 are rejected as being of improper dependent form for
failing to further limit the subject matter of the claim from which each
depends. The Examiner determined that claim 2 is directed to further
limiting a "sending step" that is not recited in claim 1, and therefore
improper. Ans. 6. The Examiner rejected claims 3-5 for the same reason
because they depend from claim 2. Id. at 7.
Appellants contend that the rejection is improper. Reply Br. 4.
Claim 2 recites "[t]he method of claim 1, wherein receiving from the
end user community input to community documentation for the portion of
the workflow, comprises prompting the end user to provide community input
to community documentation for the portion of the workflow." On its face,
claim 2 recites an additional step of "prompting the end user" that is absent
in claim 1. Thus, the rejection of claims 2-5 as being of improper dependent
form is not sustained.
5
Appeal2013-008212
Application 12/199,626
The rejection of claims 1-7and19-21under35 U.S.C. § 103(a) as
unpatentable over Hughes and Friesenhahn, or alternatively, Hughes and
Duquene.
Appellants contend that the Examiner has applied an "improper claim
construction of workflow" in claim 1, and therefore "could not have located
all claimed elements of Appellants' claims in any of the cited references."
App. Br. 9-10. Appellants offer the following construction for the
"workflow" of claim 1:
The term "workflow" is known in the art to mean a "progression
of steps (tasks, events, interactions) that comprise a work
process, involve two or more persons, and create or add value to
the organization's activities. In a sequential workflow, each step
is dependent on occurrence of the previous step; in a parallel
workflow, two or more steps can occur concurrently."
Id. at 7. Appellants contend that the rejection is improper under this claim
construction because "the document of Hughes is a technical spec for a
product--not documentation for a portion of a workflow of a business
process instance." Id.
The Examiner finds the "community documentation for the portion of
the workflow" of claim 1 in the "draft technical standard" of Hughes, e.g. in
paragraph 9. Final Act. 9. Paragraph 9 of Hughes discusses "developing a
technical standard in the process of product development." Regarding these
technical standards Hughes discloses that "[t]hroughout the life cycle of
product development and manufacture, standards (sometimes called
specifications) are used to communicate and record product requirements"
such as "raw materials, product formulation, packaging materials, product
packing, test methods, and the like." Hughes, i-f 5. Thus, the technical
6
Appeal2013-008212
Application 12/199,626
standards of Hughes describe a portion of the product development and
manufacture process, namely, product requirements.
Applying the interpretation of "workflow" proffered by Appellants, a
"workflow" reads on the process of product development and manufacture
disclosed in Hughes because product development and manufacture is "a
progression of steps (tasks, events, interactions) that comprise a work
process, involve two or more persons, and create or add value to the
organization's activities." Thus, under Appellants' claim construction, the
draft technical standards for product development of Hughes are
documentation for a portion of a workflow as recited in claim 1. As such,
we are not persuaded by Appellants' arguments that Hughes does not
disclose documentation for a portion of a workflow.
The rejection of claims 1-7 and 19-21under35 U.S.C. § 103(a) as
unpatentable over Hughes and Friesenhahn, or alternatively, Hughes and
Duquene, is sustained.
The rejection of claims 1-7and19-21under35 U.S.C. § 102(b) as
anticipated by Bachmann, or alternatively under 35 U.S.C. § 103(a) as
unpatentable over Bachmann
Because we have affirmed the rejection of claims 1-7 and 19-21
under 35 U.S.C. § 103(a) as unpatentable over Hughes and Friesenhahn, or
alternatively, Hughes and Duquene, we find it unnecessary to reach a
decision about the cumulative rejection of claims 1-7 and 19-21. See
37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a claim on any
of the grounds specified constitutes a general affirmance of the decision of
the examiner on that claim .... ")
7
Appeal2013-008212
Application 12/199,626
CONCLUSIONS
The rejection of claims 1-7 and 19-21under35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention is
not sustained.
The rejection of claims 2-5 under 35 U.S.C. § 112, fourth paragraph,
as being of improper dependent form for failing to further limit the subject
matter of the claim from which each depends is not sustained.
The rejection of claims 1-7 and 19-21under35 U.S.C. § 103(a) as
unpatentable over Hughes and Friesenhahn, or alternatively, Hughes and
Duquene is sustained.
The rejection of claims 1-7 and 19-21under35 U.S.C. § 102(b) as
anticipated by Bachmann, or alternatively under 35 U.S.C. § 103(a) as
unpatentable over Bachmann is not reached.
DECISION
The decision of the Examiner to reject claims 1-7 and 19-21 is
affirmed.
8
Appeal2013-008212
Application 12/199,626
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9