Ex Parte Stuhec

Patent Trial and Appeal Board

Jul 14, 2017

10686642 (P.T.A.B. Jul. 14, 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.
10/686,642 10/17/2003 Gunther Stuhec 2002P10104US 8997
62730 7590
SAP SE
3410 HILLVIEW AVENUE
PALO ALTO, CA 94304
EXAMINER
CHONG CRUZ, NADJA N
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/18/2017 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 GUNTHER STUHEC
Appeal 2015-003951
Application 10/686,6421
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—35. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellant identifies SAP AG as the real party in interest. Appeal
Br. 3.
Appeal 2015-003951
Application 10/686,642
ILLUSTRATIVE CLAIM
1. A non-transitory computer-readable storage medium
comprising instructions, which, when executed on a processor
of a first computer, cause the processor to perform a method,
comprising:
predefining a sequence of business transactions;
creating a business schema by combining the
predefined sequence with at least one document assigned
to the sequence of business transactions, the at least one
document being selected according to a received context
selection for identifying the at least one document;
storing the business schema in a central repository;
supporting communication between the first
computer having a processor and a second computer
having a processor via a communication module;
loading the business schema from the central
repository via the processor in the first computer, and a
schema module, wherein the business schema provides a
communication format applied to the document assigned
to one of the business transactions, wherein the
communication format enables the first computer to
participate in electronic business with the second
computer;
modifying the predefined sequence based on an
input from a user of the first computer;
executing the sequence of business transactions
between the first computer and the second computer; and
storing at least one document assigned in the
business schema.
CITED REFERENCES
The Examiner relies upon the following references:
Ferrel et al. US 6,199,082 B1 Mar. 6, 2001
(hereinafter “Ferrel”)
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Application 10/686,642
Dhar et al. US 2002/0040312 A1 Apr. 4, 2002
(hereinafter “Dhar”)
Soren P. Nielsen et al., B2B Collaborative Commerce with Sametime,
QuickPlace and WebSphere Commerce Suite, International Business
Machine Corporation, International Technical Support Organization,,
ibm.com/redbooks, (August 2001) (hereinafter “Nielsen”)
Jean-Jacques Dubray, OAGISImplementation Using the ebXML CPP,
CPA and BPSS specifications vl.0, eXcelon Corp. (Oct. 4, 2001)
(hereinafter “Dubray”)
Enabling A Global Electronic Market, United Nations and OASIS
Join Forces to Produce Global XML Framework for Electronic
Business, www.ebxml.org, News and Articles (Sept. 15, 1999)
(hereinafter “ebXML”)
REJECTIONS
I. Claims 1—35 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.2
II. Claims 1—8, 10, 11, 13—18, 20, 21, and 23—32 are rejected under
35 U.S.C. § 103(a) as unpatentable over Nielsen, Dubray, and Dhar.
III. Claims 9, 19, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nielsen, Dubray, Dhar, and ebXML.
IV. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Nielsen, Dubray, Dhar, and Official Notice.
V. Claims 33—35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nielsen, Dubray, Dhar, and Ferrel.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
2 The rejection under 35 U.S.C. § 101 is presented as a New Ground of
Rejection in the Answer (pages 2 4).
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ANALYSIS
Patent-Ineligible Subject Matter
The Examiner maintains that claims 1—35 are directed to the abstract
idea of “organizing human activities of doing electronic business by
predefining business transaction and creating business schemas (series of
business steps) with documents.” Answer 2. According to the Examiner,
the additional elements of the claims — considered alone or in combination
— amount to no more than instructions to implement the abstract idea on a
generic computer performing generic functions that are well-understood,
routine, conventional, and previously known to the relevant industry, which
do not render the claims patent-eligible. Id. at 2—3 (citing Spec. Tflf 73, 74,
78, 80, and 81).
In response, and as an initial matter, the Appellant argues that the
claims should be deemed patent-eligible because they would not prevent
others from practicing the purported abstract idea of “doing electronic
business.” Reply Br. 3. This argument is not persuasive because “the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). In any event, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter . . ., preemption concerns are fully addressed
and made moot.” Id.
In regard to the first analytical step of Alice Corp. Pty. Ltd. v. CIS
Bank International, 134 S. Ct. 2347, 2355 (2014), the Appellant contends
that the Examiner erroneously determined that the claims are directed to an
abstract idea, by failing to explain “where the alleged abstract idea of
‘conducting electronic business’ is recited in any of the claims,” pointing out
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that the claims do not mention “conducting electronic business.” Reply
Br. 3. This argument is unpersuasive, because the Appellant has not
presented any reason why the exact wording of an abstract idea must appear
in the claim language. Indeed, “[a]n abstract idea can generally be described
at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016). Moreover, claim 1 (which the Appellant treats
as exemplary of the independent claims (see Appeal Br. 3, 6)) contains the
phrase “participate in electronic business” — a characterization similar to
that used in the rejection (“conducting electronic business” (Answer 2)).
The Appellant also likens claim 1 to “Representative Claim” 19 (“E-
commerce Outsourcing System/Generating a Composite Web Page”) — a
patent claim that we understand was determined not to be directed to an
abstract idea in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(2014). Reply Br. 4.3 The Appellant contends that, like the Representative
Claim, claim 1 in the present Appeal overcomes a problem arising
specifically in the realm of computer networks. Id. This argument is
unpersuasive because the Appellants do not explain what problem claim 1
supposedly overcomes or how it might do so.
Turning to the second Alice step, the Appellant disputes the
Examiner’s determination that the elements of the claims do not amount to
“‘significantly more’ than the abstract idea itself.” Reply Br. 4—5 (quoting
Answer 4). The Appellant asserts that the rejection does not analyze “even a
3 The Appellant (Reply Br. 4) appears to be referring to the “Examples:
Abstract Ideas” designed to be used in conjunction with the USPTO 2014
Interim Eligibility Guidance regarding 35 U.S.C. § 101 (available at
https://www.uspto.gov/sites/default/files/documents/abstract_idea_examples
.pdf), on pages 4—6.
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single element” of representative claim 1 and that elements of claim 1, 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—6. This
argument is not persuasive, because the Appellant does not explain why the
selected claim elements — encompassing the entirety of claim 1, except for
the preamble, and the “supporting” and “modifying” steps {id.) — entail the
special qualities referenced or, if so, how this would amount to “significantly
more than a patent upon the [ineligible concept] itself.” Alice, 134 S. Ct.
at 2355 (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)) (internal quotation
marks omitted). Further, the generic and conventional functionality
addressed in the rejection relate to the computer equipment identified in the
Appellant’s Specification (see Answer 2—3 (citing Spec. 73, 74, 78, 80,
and 81)), not the “pen and paper” referenced by the Appellant (Reply Br. 6).
The Appellant relies upon these same arguments with regard to
claims 2—35. Id. Accordingly, we sustain the rejection of claims 1—35 under
35U.S.C. § 101.
Obviousness
The Appellant contends that the rejection lacks a sufficient
“motivation] ... to modify the teachings of the prior art to achieve the
claimed combination” of independent claim 1. Appeal Br. 15.
In this regard, as to claim 1, the Final Office Action states the
following:
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[I]t would have been obvious to one of ordinary skill in the art
to modify Nielsen to include the teaching of Dubray because
the claimed invention is merely a combination of old elements,
and in the combination each element merely would have
performed the same function as it did separately, and one of
ordinary skill in the art would have recognized that the results
of the combination were predictable.
Final Action 7—8. The Answer alters the reasoning of the rejection, stating
that Nielsen and Dubray are “analogous references” (because they both
relate to “Business-to-Business (B2B) Collaboration”), and that one of
ordinary skill in the art would have recognized that “applying the known
technique of Dubray would have yielded predictable results and resulted in
an improved system.” Answer 10—11.
According to the Supreme Court, “because inventions in most, if not
all, instances rely upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in some sense,
is already known,” “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418—19 (2007). “[Rejections on obviousness
cannot be sustained with mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006); see also KSR, 550 U.S. at 418 (quoting Kahn with approval); MPEP
§ 2143 (“The key to supporting any rejection under 35 U.S.C. 103 is the
clear articulation of the reason(s) why the claimed invention would have
been obvious. The Supreme Court in KSR noted that the analysis supporting
a rejection under 35 U.S.C. 103 should be made explicit.”)
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Yet, the rejection (even as recast in the Answer) does not articulate a
sufficient reason for combining or modifying Nielsen and Dubray in the
manner set forth in the rejection. For example, the Examiner does not
adequately identify the purported improvement flowing from the
combination or application of Dubray’s elements with Nielsen’s elements.
Nor does the Examiner provide an adequate explanation of what predictable
results a person of ordinary skill in the art would have understood to have
ensued from applying the technique of Dubray with the method of Nielsen.
See Answer 10-11.
Accordingly, we are persuaded that the Examiner erred in rejecting
claim 1. Because the rejections of independent claims 21, 23, and 25 are
similarly affected (Final Action 9, 20, and 26; see also Appeal Br. 15), and
such deficiency is not otherwise cured in the rejection of any dependent
claims, we do not sustain the rejection of claims 1—35 under 35 U.S.C.
§ 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—35 under
35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1—35 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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