Ex Parte Brunswig et al

Patent Trial and Appeal Board

Mar 4, 2014

11442297 (P.T.A.B. Mar. 4, 2014)

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