Ex Parte BECK et al

Patent Trial and Appeal Board

Oct 14, 2016

13285669 (P.T.A.B. Oct. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/285,669 10/31/2011 Oliver BECK
140285 7590 10/14/2016
Jones Day For SAP
250 Vesey Street
New York, NY 10281-1047
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.
14291-147-999/2011P00273U 6747
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
MAILDATE DELIVERY MODE
10/14/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER BECK, FRANK BEUNINGS, and HANS CHELNIAK
Appeal2014--004813
Application 13/285,669
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Oliver Beck, Frank Beunings, and Hans Chelniak (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 1-20, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed November 8, 2013) and Reply Brief ("Reply Br.," filed March 7,
2014), and the Examiner's Answer ("Ans.," mailed January 9, 2014), and
Final Action ("Final Act.," mailed June 11, 2013).
Appeal2014-004813
Application 13/285,669
The Appellants invented a way of connecting an existing ERP system to
a separate Governance, Risk, and Compliance system, usually referred to as
a GRC system. Specification para. 5.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for processing electronic documents with business
systems, comprising:
[ 1] receiving at least one electronic document in a control
system connected to at least one business system;
[2] extracting contents
from the at least one electronic document by the control
system
according to an extraction table in the control system,
wherein the extraction table defines the contents to
be extracted
[3] determining,
for each type of electronic document that is
processed;
by the control system,
a business process to be implemented, from a plurality of
business processes defined in a business processes table
in the control system,
based on a comparison of
at least one of the extracted contents
to
an extracted content table in the control system,
wherein the extracted content table defines an associated
business process
for each of the at least one extracted contents;
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Application 13/285,669
[ 4] determining,
and
by the control system,
a sequence of processing steps to be implemented, from a
plurality of processing steps defined in a process steps
table in the control system,
based on a comparison of
the determined business process
to
a process flow sequence table in the control
system,
wherein the process flow sequence table defines the
sequence of processing steps for each business process;
[5] implementing the sequence of processing steps by the
control system according to a control process flow table in the
control system,
wherein the control process flow table defines pre-
requisites for implementing a next processing step in the
sequence of processing steps for each business process.
The Examiner relies upon the following prior art:
Donahue
Cobb
US 2005/0027733 Al
US 2007 /0288253 Al
Feb.3,2005
Dec. 13, 2007
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Donahue and Cobb.
ISSUES
The issues of obviousness tum primarily on whether Donahue describes
the use of tables as recited in the claims.
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Application 13/285,669
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "table."
02. The ordinary meaning of "table" in a computer context is an
orderly arrangement of data, especially one in which the data are
arranged in columns and rows in an essentially rectangular form. 2
Facts Related to the Prior Art
Donahue
03. Donahue is directed to creating and modifying a workflow
process by starting with a document resulting from that workflow
process. The document is tagged using a software tool that
permits parts of the document to be selected and associated with
one or more parameters of the workflow process, such as a phase
of the process in which it will be executed. After the document
has been suitably tagged, the tagged document is converted into a
data structure that is used to drive a transaction engine that
executes an ordered sequence of steps that prompt a user of the
business process tool for information. After the user enters the
information in accordance with the workflow process, the
2 The American Heritage Dictionary of the English Language, Fifth Edition,
Houghton Mifflin Harcourt Publishing Company (2015),
https://www.ahdictionary.com/word/search.html?q=table
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Application 13/285,669
transaction engine generates a new document reflecting a new
execution of the business process. Donahue para. 4.
04. Donahue describes a document shown in FIG. 5B that can be
"deconstructed" into a phase, two steps, and several subsidiary
questions. Once this information is extracted from the document
and supplemented with certain other information as described
below, the workflow process can be executed to prompt the user
to enter information according to the phase, two steps, and
multiple questions but for a different property. A user tags a
previously completed document in such a way that certain
portions of the document are traceable to and controlled by a
particular phase, step, and/or question in the workflow process.
The document is tagged using a software tool that permits the user
to specify the order in which the tagged information must be
provided within the workflow process; the question or questions
that the user will be asked in order to elicit the desired
information; and (optionally) the range of acceptable answers for
the question. Donahue paras. 43--44.
05. Donahue describes the XML document being exported into a
data structure that is used to drive a structured transaction engine.
The structured transaction engine generates computer screens of
the type illustrated in Figure 4, so that a user is prompted to enter
information in a structured manner (e.g., according to a set of
phases containing questions arranged in a series of steps). The
data structure in essence defines the workflow process, which is
executed by the structured transaction engine. In one
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Application 13/285,669
embodiment, the XML document itself may serve as the data
structure, such that the structured transaction engine can execute
the workflow based directly on the XML document. Donahue
para. 46.
06. Donahue describes a document editing tool allowing the user to
select text in the document and then execute functions associated
with the selected text. Then, by clicking on a right mouse button,
the user is presented with a drop-down menu pertaining to the
selected text. The user selects one or more functions from the
drop-down menu, which permit the user to specify process
workflow parameters associated with the selected text. Donahue
para. 48.
07. Donahue describes a structured transaction engine that operates
on each workflow data structure to execute the workflow
structure, by generating computer display screens of the type
shown in Figure 4, such that the user is presented with an ordered
set of prompts for information according (in one variation) to a
phase, step, and question approach. As the user enters information
according to each workflow, the responses are stored in a
database, and a document generator generates new work product
based on the inputs entered by the user. As explained above, the
structured transaction engine may instead operate directly on
XML documents that are created as part of the deconstruction
process. Donahue para. 67.
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Application 13/285,669
Cobb
08. Cobb is directed to an open and extensible framework for
managing business controls within a heterogeneous enterprise
environment. Cobb para. 2.
09. Cobb describes an open controls framework for managing
controls in a heterogeneous enterprise environment that uses
various XML-based formats, including Controls Definition
Language (XCDL) and Controls Reporting Language (XCRL) to
handle communication in the framework. The framework may
further include one or more components that collectively make
testing, remediation, publishing, and monitoring of internal
controls an open and automated process. The components, which
may include an integration layer, a foundation services layer, a
controls authoring suite, and an enterprise controls suite, among
others, may be implemented within a service-oriented architecture
providing core services for an enterprise controls management
solution. By standardizing data formats used in various enterprise
systems and applications, controls solutions implemented using
the framework may integrate and interoperate within a large and
complex corporate IT environment. Cobb para. 9.
10. Cobb describes the integration layer as capturing and
normalizing controls data from any enterprise application or
system, including proprietary applications or systems, as well as
organization-specific applications or systems. The integration
layer may interact with any such system or application using an
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Application 13/285,669
adapter framework associated with an XML interchange format,
which may enable data to be gathered from any source and
transformed into XCDL. The adapter framework may behave as a
request broker by handling requests for data (e.g., a request may
be channeled to an appropriate application or system, and data or
other results may be returned to a requesting application or
system). As such, the integration layer may be used to capture
and exchange data without regard to intra-organizational or cross-
organizational boundaries. Once data has been imported by the
integration layer and formatted into XCDL, the formatted data
may be published to the foundation services layer for further
processing. Cobb para. 10.
ANALYSIS
Each independent claim recites using an extraction table to define the
contents extracted from a document, then using an extracted content table to
determine from those extracted contents what business processes defined in
a business process table to choose. Each such claim then uses a process
steps sequence table to determine the sequence of steps defined in a process
steps table for those business processes, then uses a control process flow
table to ascertain the prerequisites for each step and implements the process.
The Examiner finds that Donahue describes extracting data from a
document and from that data choosing processes to perform, and then the
steps and step sequences and prerequisites. Final Act. 2---6. We agree. The
problem for the Examiner is that these claims not only recite doing so, but
also recite a particular implementation for how to determine what to extract,
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what processes to select, and what steps and sequence to use to make up
those processes. We are persuaded by Appellants' argument that Donahue
fails to describe the recited implementation using tables. App. Br. 6-14. As
Appellants argue, Donahue never mentions the use of a table per se or any
other data structure that could plausibly be construed as a table.
The Examiner instead finds that an
"extraction table" is nothing more than a data structure that
instructs the system as to how the extraction process is carried
out. The Examiner asserts that the process performed by
Donahue is based on data structure that instructs the system as
to how the extraction process should be performed for each
document. It is asserted that one of ordinary skill in the art
would have found these two concepts to be equivalent to one
another and not using the same terminology that is disclosed in
the claimed invention is insufficient to differentiate the claimed
invention from the prior art in terms of patentability.
Ans. 3. The Examiner relies on similar reasoning as to the remaining tables.
The Examiner is conflating the function the table provides with the use of a
table as the particular implementation mechanism. In finding equivalence
between the two, the Examiner is essentially finding that any
implementation is equivalent to any other implementation based on the
function performed. The Examiner provides no evidence that all such
implementations are insubstantially structurally different, which is
unsurprising as the various implementations are distinguished based on the
underlying structures, and each such structure has known strengths and
weaknesses. Absent an analysis as to why one of ordinary skill would have
selected the recited implementation in particular, the Examiner has failed to
present a prima facie case.
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CONCLUSIONS OF LAW
The rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable
over Donahue and Cobb is improper.
DECISION
The rejection of claims 1-20 is reversed.
REVERSED
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