Ex Parte Sadiq et al

Patent Trial and Appeal Board

Feb 18, 2014

11019481 (P.T.A.B. Feb. 18, 2014)

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.
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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.”).
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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.
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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.
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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,
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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
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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
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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.

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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
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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).