Ex Parte Brunswig et alDownload PDFPatent Trial and Appeal BoardMar 4, 201411442297 (P.T.A.B. Mar. 4, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANK BRUNSWIG, WOLFGANG M. KOCH, and OLAF MEINCKE ____________ Appeal 2011-009722 Application 11/442,297 Technology Center 2100 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1-20 (App. Br. 4; Ans. 2). Examiner entered a rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The claims are directed to a method executable on at least one processor, a system, and a computer-readable storage medium. Independent 1 The Real Party in Interest is SAP AG of Walldorf, Germany (App. Br. 2). Appeal 2011-009722 Application 11/442,297 2 claims 1, 8, and 15 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Jamshidi2 and Begun.3 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Examiner finds that Jamshidi suggests Appellants’ claimed invention with the exception of, inter alia, “the service traversing nodes of the template manager business object to obtain the schema from the form template data node” (Ans. 5; Appellants’ Claim 1; see also independent Claims 8 and 15 (requiring retrieval, “by the service from the form template manager business object, the schema defining one or more data elements”). FF 2. Examiner relies on Begun to suggest that a “schema for [a] data tree . . . can have a node n . . ., where the node n can correspond to [(1)] many nodes in the actual data for [the] data tree, . . . as well as [(2)] many nodes in a form template . . . displayed on the visual surface” (Begun, col. 2, ll. 54- 58; Ans. 7; see generally Ans. 6). ANALYSIS Based on the combination of Jamshidi and Begun, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to “combine the teachings of Jamshidi with the feature of Begun” (Ans. 7). We are not persuaded. 2 Jamshidi et al., US 6,631,497 B1, issued October 7, 2003. 3 Begun et al., US 7,281,018 B1, issued October 9, 2007. Appeal 2011-009722 Application 11/442,297 3 The method of Appellants’ claim 1 requires, inter alia, retrieval, “by the service, the schema defining one or more data elements, the service transversing nodes of the template manager business object to obtain the schema from the form template data node” (Appellants’ Claim 1 (emphasis added); FF 1). Examiner concedes that Jamshidi fails to suggest this element of Appellants’ claimed invention (FF 1). Examiner relies on Begun to make up for the foregoing deficiency in Jamshidi, finding that Begun suggests that a schema can have a node that corresponds to: (1) nodes in the actual data for the data tree and (2) nodes in a form template (FF 2). Appellants contend, inter alia, that Begun’s suggestion of “a schema include[ing] nodes corresponding to a node in a form template differs from obtaining a schema from a form template node,” as is required by Appellants’ claimed invention (App. Br. 17 (emphasis added)). We agree. While Examiner recognizes that Appellants’ claimed invention recites the specific limitation in dispute, Examiner asserts that Appellants’ contention is based on an interpretation of the requirements of the claim (Ans. 15). We are not persuaded by Examiner’s assertion that a recitation of a specific limitation found in Appellants’ claimed invention is “interpretative” (see Ans. 15; Cf. FF 1). Nevertheless, rather than explaining how Begun suggests the limitation required by Appellants’ claimed invention, Examiner simply restates the portion of Begun relied upon, intimating that Begun suggests the disputed element of Appellants’ claimed invention (Ans. 15). We are not persuaded for the reasons set forth by Appellants (App. Br. 17). Appeal 2011-009722 Application 11/442,297 4 CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claim 1-20 under 35 U.S.C. § 103(a) as unpatentable over the combination of Jamshidi and Begun is reversed. REVERSED cdc Copy with citationCopy as parenthetical citation