Ex Parte Schnoerer et al

Patent Trial and Appeal Board

Apr 12, 2013

10739131 (P.T.A.B. Apr. 12, 2013)

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.
10/739,131 12/19/2003 Horst Schnoerer 11884/406901 9037
53000 7590 04/12/2013
KENYON & KENYON LLP
1500 K STREET N.W.
WASHINGTON, DC 20005
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
04/12/2013 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 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte HORST SCHNOERER, CHRISTIAN METZ, 7
ANDREAS SCHAEFER, and JUERGEN HOLLBERG 8
___________ 9
10
Appeal 2011-006463 11
Application 10/739,131 12
Technology Center 3600 13
___________ 14
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Before ANTON W. FETTING, BIBHU R. MOHANTY, and 17
PHILIP J. HOFFMANN, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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Application 10/739,131

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 16, 2010) and Reply Brief (“Reply Br.,” filed December
23, 2010), and the Examiner’s Answer (“Ans.,” mailed October 26, 2010).
Horst Schnoerer, Christian Metz, Andreas Schaefer, and Juergen 2
Hollberg (Appellants) seek review under 35 U.S.C. § 134 of a non-final 3
rejection of claims 1-6 and 23-30, the only claims pending in the application 4
on appeal. We have jurisdiction over the appeal pursuant to 5
35 U.S.C. § 6(b). 6
Appellants invented an implementation of multiple parallel AVC 7
(Availability Control) rules (Spec., para. [3]). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. An availability control feature in a financial management 12
system, comprising: 13
[1] a budget data structure having budget nodes, 14
the budget nodes storing data 15
representing available budget and expenditure 16
items 17
admitted to the financial management 18
system, 19
[2] a rule array consisting of one or more than one independent 20
rule sets, 21
each rule set having a plurality of control objects that 22
include 23
an address field pointing to one or more nodes of 24
the budget data structure, 25
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a test field defining a relationship that is to be 1
maintained between 2
budget items 3
and 4
expenditure items 5
and 6
a response field, 7
and 8
[3] an AVC manager, 9
responsive to a new transaction 10
that proposes 11
to add a new expenditure value to at least one 12
budget node, 13
to execute all rules of the rule array that are related 14
to the budget nodes of the new transaction 15
and 16
to block the transaction if at least one rule 17
generates an error. 18
The Examiner relies upon the following prior art: 19
Praisner US 2002/0174030 A1 Nov. 21, 2002
Zawadzki US 7,107,268 B1 Sep. 12, 2006
Hallberg et al., Using Microsoft Excel 97, Special Edition, Indiana: 20
Que, 204, 216, 460-465,467-469 (1997) (hereafter “Hallberg”). 21
Claims 1-6 stand rejected under 35 U.S.C. § 112, second paragraph, as 22
failing to particularly point out and distinctly claim the invention. 23
Claims 1-6 stand rejected under the non-statutory doctrine of 24
obviousness double patenting. 25
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Claims 1-6 and 23-30 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Zawadzki, Hallberg, and Praisner. 2
ISSUES 3
The issues of indefiniteness turn on whether one would understand 4
which of the enumerated categories of invention a “feature” is. There is no 5
issue as to the provisional rejection of obviousness type double patenting. 6
The issues of obviousness turn primarily on the breadth and patentable 7
weight afforded the phrase “expenditure values.” 8
FACTS PERTINENT TO THE ISSUES 9
The following enumerated Findings of Fact (FF) are believed to be 10
supported by a preponderance of the evidence. 11
Facts Related to Claim Construction 12
01. The disclosure contains no lexicographic definition of 13
“expenditure.” 14
Facts Related to the Prior Art 15
Zawadzki 16
02. Zawadzki is directed to managing, tracking and reporting 17
enterprise operations. Zawadzki 1:19-22. 18
03. Zawadzki describes a budgeting tree. Zawadzki 40:21-26. A 19
tree is a data structure containing nodes. 20
04. Zawadzki describes applying allocations, which are rules 21
regarding amounts allocated to individual budget nodes. 22
Zawadzki 40:34-47. 23
05. Users are prevented from over-budgeting. For instance, if a 24
user’s main Project has a budget of $10,000 and the user creates 25
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three sub-Projects underneath, the sum of the budgets for the sub-1
Projects must be less than or equal to $10,000. If a user tries to 2
assign more money than is available, the system will not allow the 3
user to complete that step. The user can however, go back and 4
edit the main Project budget if necessary. Zawadzki 41:52-60. 5
ANALYSIS 6
Claims 1-6 rejected under 35 U.S.C. § 112, second paragraph, as failing to 7
particularly point out and distinctly claim the invention. 8
We are not persuaded by Appellants’ argument that a feature per se is 9
among the enumerated categories of invention. The recited “feature” is 10
analogous to the “paradigm” in Ferguson: 11
Applicants’ paradigm claims force us to consider whether the 12
claimed subject matter fits into any of the four enumerated 13
categories of statutory subject matter. Although we need not 14
resolve the particular class of statutory subject matter into 15
which Applicants’ paradigm claims fall, the claims must satisfy 16
at least one category. 17
In re Ferguson, 558 F.3d 1359, 1365 (Fed Cir 2009). Appellants do not 18
argue that the recited feature is any of the four enumerated categories of 19
invention. Although the decision in Ferguson led to the conclusion the 20
paradigm was non-statutory subject matter, the same reasoning would lead 21
to the conclusion the instant claims are indefinite as one cannot ascertain 22
which of the enumerated categories the claimed “feature” recites. 23
While the three limitations in the body of the claim appear to be 24
structural elements, Appellants’ failure to state that a feature is a structural 25
entity leaves the claim indefinite as to whether the three limitations in the 26
body are physical components of the recited feature or simply structural 27
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characteristics that allow one to infer the existence of some non-structural 1
entity Appellants refer to as a feature. 2
Claims 1-6 rejected under the non-statutory doctrine of obviousness double 3
patenting. 4
Appellants have stated a preparedness to file a terminal disclaimer and 5
thus this rejection does not present an issue for appeal. App. Br. 2. 6
Claims 1-6 and 23-30 rejected under 35 U.S.C. § 103(a) as unpatentable 7
over Zawadzki, Hallberg, and Praisner. 8
We are not persuaded by the Appellants’ argument that Zawadzki fails to 9
describe the claimed 10
AVC manager, responsive to a new transaction that proposes to 11
add a new expenditure value to at least one budget node, to 12
execute all rules of the rule array that are related to the budget 13
nodes of the new transaction and to block the transaction if at 14
least one rule generates an error. 15
Appeal Br. 5-6. Appellants argue that Zawadzki only compares budget and 16
sub-budget items. Id. at 6. Zawadzki adds sub-Projects which are markers 17
for prospective expenditures, and compares them to total budgets to block 18
adding that sub-account amount if the Project budget is exceeded. 19
It is unclear why we ought to give patentable weight to the 20
characterization of data as being an expenditure value, as such data is simply 21
arbitrary binary data that represents some number that has been entered. The 22
claimed feature operates the same way irrespective of the origin or 23
interpretation of the data. Thus the data interpretation is non-functional, 24
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although the data itself, the arbitrary pattern of bits, does function as a rule 1
input. 2
Further, what is claimed is a value that is in some manner characterized 3
as being related to an expenditure. As we already found, a sub-account 4
budget is a prospective expenditure. 5
As to Appellants’ arguments that Zawadzki fails to describe “each rule 6
set having a plurality of control objects that include an address field pointing 7
to one or more nodes of the budget data structure,” we find that Zawadzki’s 8
budget tree nodes used to control the budget inherently contain addresses 9
pointing to subsequent nodes as that is the very definition of a tree data 10
object. 11
As to Appellants’ motivation to combine argument, we find the 12
Appellants argue that the very reason provided by Praisner for combining is 13
insufficient. We disagree, as this is the very epitome of finding the reason to 14
combine in the prior art itself. 15
As to claims 23-27, Appellants argue the Examiner failed to make 16
findings as to the recited “processor configured to receive user input and 17
modify one or more of the rules during runtime based on the user input.” 18
We agree that the Examiner failed to do so and so failed to present a prima 19
facie case as to those claims. 20
As to claims 28-30, Appellants argue the Examiner failed to make 21
findings as to the recited data structure and execution flow. Here we 22
disagree, as both of these limitations do no more than recite the structure and 23
implied manner of processing nodes in a tree such as that used by Zawadzki. 24
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CONCLUSIONS OF LAW 1
The rejection of claims 1-6 under 35 U.S.C. § 112, second paragraph, as 2
failing to particularly point out and distinctly claim the invention is proper. 3
The rejection of claims 1-6 under the non-statutory doctrine of 4
obviousness double patenting is proper. Appellants have stated a 5
preparedness to file a terminal disclaimer. 6
The rejection of claims 1-6 and 23-30 under 35 U.S.C. § 103(a) as 7
unpatentable over Zawadzki, Hallberg, and Praisner is proper. 8
DECISION 9
The rejection of claims 1-6 and 23-30 is affirmed. 10
No time period for taking any subsequent action in connection with this 11
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 12
§ 1.136(a)(1)(iv) (2011). 13
AFFIRMED 14
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