Ex Parte Esau et al

Patent Trial and Appeal Board

Apr 12, 2017

11595849 (P.T.A.B. Apr. 12, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/595,849 11/13/2006 Andreas Esau 2005P00446US 8589
62730 7590
SAP SE
3410 HILLVIEW AVENUE
PALO ALTO, CA 94304
EXAMINER
WALKER III, GEORGE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
04/14/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
APRIL.MENG@SAP.COM
GIPinhouse@sap.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS ESAU, HANS-ULRICH VON HELMOLT,
GERHARD HIRTH, and THOMAS MAYER
Appeal 2015-0051691
Application 11/595,8492
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4—7, 9, 10, 12—15, 17, 18, 20-23, and 25—28. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
September 16, 2014) and Reply Brief (“Reply Br.,” filed April 9, 2015), and
the Examiner’s Answer (“Ans.,” mailed February 11, 2015) and Final Office
Action (“Final Act.,” mailed December 18, 2013).
2 Appellants identify SAP AG, as the real party in interest. App. Br. 3.
Appeal 2015-005169
Application 11/595,849
CLAIMED INVENTION
Appellants’ claimed invention “generally relates to the field of data
processing and, more particularly, to computerized systems and methods for
automatically providing one or more event driven global available to
promise services in a supply chain” (Spec. 11).
Claims 1, 9, and 17 are the independent claims on appeal. Claims 1
and 9 reproduced below, are illustrative of the claimed subject matter:
1. A system, comprising:
an inbound interface for interfacing with a plurality of data
storage devices, in at least one of which at least one document is
stored as data, wherein the at least one document corresponds to
an activity;
an execution memory operable to hold a software system;
and
a processor coupled to the inbound interface and the
execution memory, the processor being configured to execute the
software system such that the software system operates to:
link an activity to a follow-up process based on a
plurality of individual process categories associated with
the activity, the activity comprising at least one of a
change in stock, a confirmation of a high priority sales
order, or a quantity release in a sales order;
define one or more conditions for triggering the
follow-up process, the triggering conditions being
associated with delays in performing the follow-up
process, and the delays being specified by parameter
values within a parameter catalogue;
trigger the linked follow-up process in accordance
with at least one of the triggering conditions; and
automatically perform the triggered follow-up
process, the triggered follow-up process being performed
at a time defined by the delay associated with the at least
one triggering condition.
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9. A computer-implemented method, comprising:
interfacing an inbound interface with a plurality of data
storage devices, in at least one of which at least one document is
stored as data, wherein the at least one document corresponds to
an activity;
holding a software system in an execution memory; and
coupling a processor to the inbound interface and the
execution memory, the processor being configured to execute the
software system such that the software system operates to:
link an activity to a follow-up process based on a
plurality of individual process categories associated with
the activity, the activity comprising at least one of a
change in stock, a confirmation of a high priority sales
order, or a quantity release in a sales order;
define one or more conditions for triggering the
follow-up process, the triggering conditions being
associated with delays in performing the follow-up
process, and the delays being specified by parameter
values within a parameter catalogue;
trigger the linked follow-up process in accordance
with at least one of the triggering conditions; and
automatically perform the triggered follow-up
process, the triggered follow-up process being performed
at a time defined by the delay associated with the at least
one triggering condition.
REJECTIONS
Claims 1, 2, 4—7, 9, 10, 12—15, 17, 18, 20—23, and 25—28 are rejected
under 35U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1, 2, 4, 6, 7, 9, 10, 12, 14, 15, 17, 18, 20, 22, 23, and 25-28 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Wilson et al (US
2002/0133387 Al, pub. Sept. 19, 2002) (hereinafter “Wilson”) and
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Abo-Hasna et al. (US 2005/0197921 Al, pub. Sept. 8, 2005) (hereinafter
“Abo-Hasna”).3
Claims 5,13, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilson, Abo-Hasna, and Kennedy et al.
(US 6,188,989 Bl, iss. Feb. 13, 2001) (hereinafter “Kennedy”).
ANALYSIS
Non-Statutory Subject Matter
In rejecting independent claim 1 (and claims 2, 4—7, 25, and 26, which
depend therefrom) under § 101, the Examiner finds that the claims recite
“not only a method of organizing human activities, i.e. automating
processes, but also comparing new and stored information and using rules to
identify options, i.e.[,] comparing new delay parameter values with the
stored parameter catalogue and defining the triggering condition from the
comparison, and thus an abstract idea”; that the additional elements recited
in the claims, i.e., an inbound interface, an execution memory, and a
processor, comprise “generically recited computer elements that do not add a
meaningful limitation to the abstract idea because they would be routine in
any computer implementation”; and that the claimed invention does not
“constitute an improvement in another technology or in the computer itself,
does not transform an article into another state or thing, nor are there any
3 We treat the Examiner’s failure to list claims 25—28 among the claims
rejected under 35 U.S.C. § 103(a) as inadvertent inasmuch as the Examiner
indicates that claims 25—28 remain pending and specifically addresses these
claims in the Final Office Action (see Final Act. 3; see also id. at 2 and 7—8).
We also treat the Examiner’s listing of claims 16 and 24 among the claims
rejected under 35 U.S.C. § 103(a) as a typographical error; claims 16 and 24
are cancelled (see id. at 2).
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unconventional steps” (Ans. 2—3). The Examiner makes substantially
similar findings with respect to independent claims 9 and 17 and their
respective dependent claims (id. at 3—6). In addition, the Examiner finds
that independent 17 and, therefore, dependent claims 18 and 20—23, when
given their broadest reasonable interpretation, cover a signal per se, which is
non-statutory subject matter under § 101 (id. at 6—7 (citing In re Nuijten,
500 F.3d 1346, 1356-57 (Fed. Cir. 2007))).
Appellants argue that the rejection under § 101 cannot be sustained at
least because “the Examiner’s Answer does not apply the subject-matter
eligibility test set forth in the USPTO’s 2014 Interim Guidance on Patent
Subject Matter Eligibility. See 79 Fed. Reg. 74618-33 (Dec. 16, 2014)
(‘USPTO Guidance’)” (Reply Br. 2). We disagree.
The USPTO Guidance sets forth the Alice/Mayo two-part framework
for determining subject matter eligibility.4 Part 1 of that analysis
(“Step 2A”) directs examiners to determine whether the claim at issue is
directed to a judicial exception, e.g., an abstract idea (see 2014 Interim
4 The Supreme Court, in Alice Corp. Pty Ltd. v. CLS BankInt 7, 134 S. Ct.
2347, 2354 (2014), reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289,
1300 (2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice Corp., 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” id., e.g., to an abstract idea. If
the claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297).
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Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. at 74622); if so,
the examiner is directed to “identify the exception by referring to where it is
recited (i.e., set forth or described) in the claim and explain why it is
considered an exception” (see 2014 Interim Guidance on Patent Subject
Matter Eligibility, 79 Fed. Reg. at 74624).
Part 2 of the analysis (“Step 2B”) is invoked only if the claim is
directed to a judicial exception, and requires determining whether any
element, or combination of elements, in the claim is sufficient to ensure that
the claim amounts to significantly more than the judicial exception (see id.).
If the claim as a whole does recite significantly more than the judicial
exception itself, the claim is eligible, and the analysis is complete;
otherwise, if the claim includes additional elements, the examiner is directed
to “identify the elements in the rejection and explain why they do not add
significantly more to the exception” (id. ).
Appellants maintain here that “the Examiner’s Answer does not refer
to where the alleged abstract idea is recited in any of the claims,” as required
by the USPTO Guidance (Reply Br. 3 (citing 2014 Interim Guidance on
Patent Subject Matter Eligibility, 79 Fed. Reg. at 74624)). Yet the Examiner
clearly quotes the language of independent claims 1, 9, and 17, and explains
that the claimed method steps amount to automating processes, which the
Examiner determines is a method of organizing human activities and,
therefore, an abstract idea (Ans. 3—6). The Examiner’s Answer, thus, fully
complies with the USPTO Guidance, specifically including Step 2 A of the
Alice/Mayo analysis.
Appellants further assert that the claims are directed to “a particular
method for Tink[ing] an activity to a follow-up process based on a plurality
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of individual process categories associated with the activity,’ as recited in
claim 9” and that the claims “solve a challenge associated with ‘interfacing
an inbound interface with a plurality of data storage devices’” (Reply Br. 3—
4). But Appellants do not identify the particular challenge that the claims
solve. Nor do Appellants otherwise explain why the claims are not directed
to an abstract idea.
Turning to Step 2B, Appellants argue that the claims are directed to
“an ‘inventive concept’ for a specific problem of Tink[ing] an activity to a
follow-up process based on a plurality of individual process categories
associated with the activity’” (Reply Br. 4—5). Appellants assert that the
“link[ing],” “defining],” “triggering],” and “performing]” steps, recited in
independent claim 9 (and similarly recited in independent claims 1 and 17),
when taken in combination, “embody a level of detail beyond any alleged
abstract idea, and require special design and programming, rather than use of
conventional tools (e.g., pen and paper) and/or a mental process” (id. at 5).
Yet there is no indication in the record that any specialized processor or
computer hardware is required. To the contrary, the Specification explicitly
discloses that “the computational aspects described here can be implemented
in digital electronic circuitry, or in computer hardware, firmware, software,
or in combinations of them,” and that
“[w]here appropriate, aspects of these systems and techniques
can be implemented in a computer program product tangibly
embodied in a machine-readable storage device for execution by
a programmable processor, and method steps can be performed
by a programmable processor executing a program of
instructions to perform functions by operating on input data and
generating output.”
Spec. 137.
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As the Examiner observes, the claims “add” only an inbound
interface, an execution memory, and a processor, i.e., generic computer
components (see, e.g., Ans. 3) — which does not indicate an inventive
concept. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[AJfter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible. The bare fact that a computer exists in the physical rather
than purely conceptual realm is ‘beside the point.’” (citation omitted)).
We are not persuaded by Appellants’ arguments that the Examiner
erred in rejecting claims 1, 2, 4—7, 9, 10, 12—15, 17, 18, 20-23, and 25—28
under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.
Obviousness
Independent Claim 9 and Dependent Claims 10, 12, 14, 15, 27, and 28
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 9 under 35 U.S.C. § 103(a) because Wilson, on
which the Examiner relies, fails to disclose or suggest “link an activity to a
follow-up process based on a plurality of individual process categories
associated with the activity,” as recited in claim 9 (App. Br. 10—12; Reply
Br. 6-7).
Wilson is directed to a supply chain management system, and
discloses that customers place inquires and/or orders for items with a client,
which receives the customer request and generates an order for the requested
items to be shipped to the customer; the order includes item data and
location data corresponding to the customer’s geographical location (Wilson
| 8). A promising engine, in communication with the client and a plurality
of warehouses in the system, receives the client request and identifies, based
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on a set of rules, the warehouse that will fulfill the order, i.e., the warehouse
nearest the customer’s geographical location that can ship the item to the
customer within a specified period of time {id. H 8, 20). Wilson discloses
that there are four types of requests that may be made by clients for orders:
unbounded, bounded by date, bounded by service, and rush {id. 158). These
orders (i.e., requests) are identified by item data corresponding to one or
more requested items, shipping terms, or in additional data required to
process the request {id.). There also are unique “promising flow rules” for
each request type, which are maintained by the promising engine {id.; see
also id. ]Hf 78—88).
In rejecting claim 9 under 35 U.S.C. § 103(a), the Examiner equates
the requests for orders in Wilson to the claimed “activities”; the promising
flow rules to the claimed “link”; and the client request types, i.e.,
“unbounded, bounded by date, bounded by service, and rush” to the claimed
“follow-up processes]” (Final Act. 4—5 (citing Wilson || 58—62, 78—87);
see also Ans. 7—8). However, we agree with Appellants that the Examiner
incorrectly equates the “promising rules” to “link[ing] an activity to a
follow-up process,” as called for in claim 9 (Reply Br. 7). The “promising
flow rules,” referenced in paragraph 58 of Wilson, are “the rules by which
the promising engine determines which warehouse in the distribution system
[to] seek to fulfill a request” (Wilson 120; see also id. 149). The promising
rules are used by the promising engine in Wilson to determine whether a
warehouse can fulfill a client request and, as shown in the figures, return a
binary response, i.e., “YES” OR “NO” {id. Figs. 5A, 5B; see also id. 1 67
(disclosing that promising engine rules are used to determine whether a
warehouse can fulfill a client request). We find nothing in the cited portions
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of Wilson that discloses or suggests that these rules “link an activity to a
follow-up process,” as recited in claim 9.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 9 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 10, 12, 14, 15, 27, and
28. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent
claims are nonobvious if the independent claims from which they depend are
nonob vious”).
Independent Claims 1 and 17 and Dependent Claims 2, 4, 6, 7, 18, 20, 22,
23, 25, and 26
Independent claims 1 and 17 include language substantially similar to
the language of claim 9, and stand rejected based on the same rationale
applied with respect to claim 9 (Final Act. 6). Therefore, we do not sustain
the rejection under 35 U.S.C. § 103(a) of independent claims 1 and 17, and
claims 2, 4, 6, 7, 18, 20, 22, 23, 25, and 26, which depend therefrom, for the
same reasons set forth above with respect to claim 9.
Dependent Claims 5, 13, and 21
Claims 5, 13, and 21 ultimately depend from independent claims 1, 9,
and 17, respectively. The rejection of these dependent claims does not cure
the deficiency in the Examiner’s rejection of claims 1, 9, and 17. Therefore,
we do not sustain the Examiner’s rejection of claims 5, 13, and 21 for the
same reasons set forth above with respect to the independent claims.
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DECISION
The Examiner’s rejection of claims 1, 2, 4—7, 9, 10, 12—15, 17, 18,
20—23, and 25—28 under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1, 2, 4—7, 9, 10, 12—15, 17, 18,
20-23, and 25—28 under 35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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