Ex Parte Sadiq et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201411019481 (P.T.A.B. Feb. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SHAZIA W. SADIQ, MARIA E. ORLOWSKA, WASIM SADIG, and KARSTEN A. SCHULZ ____________________ Appeal 2011-008219 Application 11/019,481 Technology Center 2100 ____________________ Before RICHARD E. SCHAFER, DEBORAH KATZ, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 13-18 and 27-33.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.3 1 The real Party of Interest is SAP AG. 2 Claims 1-12 and 19-26 have been cancelled and are not on appeal. Appeal 2011-008219 Application 11/019,481 2 STATEMENT OF THE CASE Appellants’ Invention Current business process and workflow management systems are limited in their ability to deal with dynamic changes, business exceptions, and modeling constructs. See Spec. ¶ [0005]. Appellants’ invention seeks to add grouping, ungrouping and regrouping functions of activities as extensions to current workflow process management system. Id. at ¶ [0022]. According to Appellants, the workflow system includes the functions of generating a first set of activities, ungrouping the first set of activities into a second set of activities, generating a third set of activities from the second set of activities, and regrouping the third set of activities into a fourth set of activities. The grouping, ungrouping and regrouping are accompanied by activity IDs, process instance IDs, activity instance IDs, and activity states that identify a particular activity or a particular set of activities. Id. at ¶ [0028], FIG. 1, FIG. 9, and Abstract. Claims on Appeal Claims 13, 16, 27, and 31 are the independent claims on appeal. Claim 13 is illustrative of Appellant’s invention, and is reproduced below with disputed limitations emphasized: 13. A workflow management process including: generating with a computer processor a first set of one or more activities, the activities of the first set including: 3 Our decision refers to Appellant’s Appeal Brief filed November 16, 2010 (“App. Br.”); Reply Brief filed April 14, 2011 (“Reply Br.”); Examiner’s Answer mailed February 17, 2011 (“Ans.”); Final Office Action mailed July 22, 2010 (“Final Rej.”); and the original Specification filed December 21, 2004 (“Spec.”). Appeal 2011-008219 Application 11/019,481 3 a first activity ID; a first set of process instance IDs; a first set of activity instance IDs; and a first activity state; ungrouping with the computer processor the first set of one or more activities, thereby creating a second set of one or more activities, the activities of the second set including: a second set of activity instance IDs; generating with the computer processor a third set of one or more activities from the second set of one or more activities, the activities of the third set including: a second activity ID; a second activity state; and a second set of activity instance IDs; and regrouping with the computer processor the third set of one or more activities, thereby creating a fourth set of one or more activities, the activities of the fourth set including: a first group instance ID; and a third set of activity instance IDs. Evidence Considered Ohmura US 6,151,583 Nov. 21, 2000 Wiesenbach De Lamaziere US 6,232,875 B1 Jan. 6, 2005 Examiner’s Rejection Claims 13-18 and 27-33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wiesenbach and Ohmura. Ans. 3-6. Issue on Appeal Based on Appellants’ arguments, the dispositive issue on appeal is whether the Examiner erred in rejecting claims 13-18 and 27-33 under 35 U.S.C. § 103(a) as being unpatentable over Wiesenbach and Ohmura. App. Appeal 2011-008219 Application 11/019,481 4 Br. 4-9. In particular, the appeal turns on whether the Examiner’s combination of Wiesenbach and Ohmura discloses or suggests several limitations of Appellants’ independent claims 13, 16, 27, and 31. App. Br. 11-13; Reply Br. 1-4. ANALYSIS With respect to independent claims 13, 16, 27, and 31, the Examiner finds Wiesenbach discloses a workflow management system including generating first, second, third and fourth sets of one or more activities and different activity identifiers, and grouping, ungrouping, and regrouping of these activities. Ans. 3-5 (citing Wiesenbach, ¶¶ [0012], [0056], [0060]- [0061], [0063], [0070], [0073], and [0079]). The Examiner acknowledges that Wiesenbach does not disclose “the activities of the first set including a first set of process instance IDs,” but finds that limitation disclosed by Ohmura. Id. at 5 (citing Ohmura, col. 3, ll. 10-25; col. 6, ll. 9-40; and FIGS. 3A-3C). Based on these disclosures, the Examiner concludes that: [i]t would have been obvious … to modify the teaching of a first set of process instance IDs as taught by Ohmura in order to gain the advantage of efficient and careful management of a huge work flows [sic, flow] in which a large number of departments are related. Id. at 5. Appellants do not dispute the Examiner’s articulated reasoning for combining Wiesenbach and Ohmura. Appellants even acknowledge Wiesenbach discloses “a system and method for handling physical orders. Appeal 2011-008219 Application 11/019,481 5 Each product has an identifier and corresponds to a physical order. The orders can be grouped into a multiplicity of groups, and ungrouped into a multiplicity of subgroups. Similarly, the products can be grouped and associated with the order groups.” App. Br. 12 citing (Wiesenbach, ¶ 0012]). Nevertheless, rather than challenging the Examiner’s specific findings regarding Wiesenbach and Ohmura, Appellants contend broadly that Wiesenbach does not disclose “Appellants’ specifically claimed generation of the first, second, third, and fourth sets of activities and the different identifiers in the chain of the creation of those activities.” Id. Likewise, Appellants further contend broadly that Ohmura does not disclose: the claimed grouping, ungrouping, and regrouping of a chain of activities, wherein the grouping, ungrouping, and regrouping uses the most recently created activity, and wherein this grouping, ungrouping, and regrouping is tracked via activity IDs, process instance IDs, activity instance IDs, group instance IDs, and activity states. Id. (emphasis added). Appellants then argue that the Examiner’s interpretation of certain terms of Appellants’ claims 13, 16, 27, and 31 is incorrect and is divorced from Appellants’ Specification. Id. In particular, Appellants argue that the term “second activity ID [included in a third set of activities]” and the term “first group instance ID [included in a fourth set of activities]” cannot be interpreted broadly as the subset C3 and the subset C4 of C3 of Weisenbach because: Appellants’ specification does not disclose or teach that the first group instance ID is a subset of the second activity ID. Rather, Appeal 2011-008219 Application 11/019,481 6 as explained in paragraph [0038] of the Appellants’ specification, the first group instance ID and the second activity ID are simply different parts of the activity signature . . . . The second activity ID and the first group instance ID do not exist one as a subset of the other. Therefore . . . Weisenbach’s C3 cannot be the recited second activity ID and Weisenbach’s C4 cannot be the claimed first group instance ID.” Id. 12-13 (emphasis added). We are not persuaded by Appellants’ arguments. At the outset, we note that Appellants’ arguments are not commensurate with the scope of claims 13, 16, 27, and 31. For example, claim 13 simply requires that the “second activity ID” is included in the third set of activities and the “first group instance ID” is included in the fourth set of activities. Neither an activity signature nor any subset of one for the other type of ID is recited in Appellants’ claims 13, 16, 27, and 31. Second, claim terms are given their broadest reasonable construction consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Such claim terms are “given their ordinary and customary meaning” as understood by one of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). In the instant appeal, Appellants do not point to and we do not find an explicit definition of the claim terms “first group instance ID” and “second activity ID” in Appellants Specification. In the absence of such an explicit definition, the Examiner may adopt the broadest reasonable definition of the term consistent with the Specification. In re Morris, 127 F.3d 1048, 1053-54 (Fed. Cir. 1997). In particular, the Examiner has broadly interpreted: (1) the claimed generation Appeal 2011-008219 Application 11/019,481 7 of first, second, third, and fourth sets of activities as encompassing different sets of orders C, including C1 (first), C2 (second), C3 (third), and C4 (fourth) as described by Wiesenbach; (2) the claim term “first group instance ID” as encompassing a “Definitively Executable Order” as disclosed by Wiesenbach (“subset C4”), and (3) the claim term “second activity ID” as encompassing an “Executable Order” as disclosed by Wiesenbach (“subset C3”). Ans. 7-9 (citing Wiesenbach, ¶¶ [0056], [0063], [0073], [0079]- [0080], [0084]-[0086]; and FIG. 5). We find the Examiner’s interpretation of these claimed terms to be reasonable in view of Appellants’ own Specification, particularly, when the “Definitively Executable Order” is included in the third set of order C3, and the “Executable Order” is included in the fourth set of order C4. Consequently, we find Wiesenbach discloses the generation of the first, second, third and fourth sets of activities as well as the third set of activities including the second activity ID and the fourth set of activities including the first group instance ID, as correctly found by the Examiner. Id. Third, and more importantly, we find Appellants’ arguments urging patentability of independent claims 13, 16, 27, and 31 are predicated solely on non-functional descriptive material, i.e., data items indicative of different sets of activities, i.e., first, second, third and fourth sets of activities, as well as the organization of such data items, i.e., grouping, ungrouping, and regrouping of these data items for a computer processor. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information content of a memory. . . Nor Appeal 2011-008219 Application 11/019,481 8 does he seek to patent the content of information resident in a database.”) Likewise, data items manipulated by a computer processor do not make patentable an otherwise unpatentable process. See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006); and MPEP §2111.05(III). The data representative of different sets of activities, i.e., first, second, third and fourth sets of activities, as well as the grouping, ungrouping, and regrouping of these activities do not functionally change or affect the computer processor as recited in Appellants’ claims 13, 16, 27, and 31 in anyway. Accordingly, we do not find Appellants’ arguments based on different types of data items to be persuasive. For the reasons set forth above, Appellants’ contentions have not persuaded us of any error in the Examiner’s position. Accordingly, we sustain the Examiner’s obviousness rejection of independent claims 13, 16, 27, and 31 based on Wiesenbach and Ohmura. With respect to dependent claims 14-15, 17-18, 28-30, and 32-33, Appellants present no separate patentability arguments. For the same reasons discussed, we also sustain the Examiner’s obviousness rejection of claims 14-15, 17-18, 28-30, and 32-33. Appeal 2011-008219 Application 11/019,481 9 CONCLUSION On the record before us, we conclude that the Examiner has not erred in rejecting claims 13-18 and 27-33 under 35 U.S.C. § 103(a) as being unpatentable over Wiesenbach and Ohmura. DECISION We AFFIRM the Examiner’s final rejections of claims 13-18 and 27- 33.4 4 We note that the instant appeal was filed shortly after the Supreme Court’s opinion in Bilski v Kappos, 130 S.Ct. 3218 (2010). Since the Supreme Court’s decision in Bilski, the Federal Circuit has repeatedly addressed the issue of whether claims directed to subject matter of the type here involved are patent-eligible under 35 U.S.C. § 101. These cases includeCyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (holding that a method for verifying the validity of a credit card transaction over the Internet to be nonstatutory as an abstract idea capable of being performed in the human mind or by a human using a pen and paper) and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible.” (citation omitted)). Thus, in the event of further prosecution, we leave it to the Examiner to evaluate claims 13-18 and 27-33 for compliance with 35 U.S.C. § 101 in view of Bilski, MPEP revised § 2106.01 (August 2012), and CyberSource Corp. For example, Appellants’ independent claims 13, 16, 27, and 31 do not appear to meet the safe-harbor “machine-or-transformation” (MoT) test of Bilski. None of the recited steps in Appellants’ claims 13, 16, 27, and 31 refers to a specific machine by reciting structural limitations of any apparatus or to any specific operations that would cause a machine to be the mechanism to perform these steps. Consequently, the inclusion of a computer processor in Appellant’s claims 13, 16, 27, and 31 does not impose meaningful limits on the claim’s scope; nor does such a computer processor “play a significant part in permitting the claimed method to be performed” in any way. SiRF Tech., Inc. v. Int’l Appeal 2011-008219 Application 11/019,481 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED lp Trade Comm’n, 601 F.3d at 1333. In addition, data items are related to a specific machine (i.e., a computer processor), but the method itself is not inherently tied to any machine and, likewise, the processes do not inherently require a specific machine or apparatus. Consequently, the inclusion of a computer processor is merely an insignificant extra-solution activity. Moreover, and similarly to CyberSource Corp., these claims could also be viewed as an abstract idea capable of being performed in the human mind or by a human using a pen and paper. In addition, Beauregard-type claim 16 could be broadly construed to cover forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when Appellants’ Specification is silent. The Examiner may also review whether claim 16 should be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007); and U.S. Patent and Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, at 2 (Aug. 2009), available at http://www.uspto.gov/patents/law/comments/2009-08- 25_interim_101_instructions.pdf; see also David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Copy with citationCopy as parenthetical citation