Ex Parte Watanabe

Patent Trial and Appeal Board

Nov 25, 2013

11931773 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YUTAKA WATANABE
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Appeal 2011-011595
Application 11/931,773
Technology Center 3600
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
JAMES A. TARTAL, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-011595
Application 11/931,773

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 5-12 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a database that is
useful for software development (Spec. [0002]). Claim 5, reproduced below
with the numbering in brackets added, is representative of the subject matter
on appeal.

5. An information processing system comprising:
[1] a business application section for executing a given
application for executing a plurality of business processes, ordered in
a defined sequence, to carry out a given business process workflow,
wherein each of the processes has a corresponding process code, and
the process codes determine the order in which the business processes
are executed in said defined sequence;
[2] a state transition data record section, separate from the
business application section, for recording the process codes and state
transition data describing said defined sequence;
[3] a process code management data store;
[4] a processing section for recording in the process code
management data store the process codes and the state transition data
based on the state transition data recorded in the state transition data
record section;
[5] wherein the process code management data store stores
information identifying each of the business processes, information
identifying starting conditions for each of the process codes,
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and information representing the state of each of the business
processes after said each of the business processes has been executed;
[6] wherein modifications to said business process workflow
and modifications to the order in which the business processes are
executed are carried out by changing said starting conditions
of the process codes in the process code management data store
without modifying said given application.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 5-12 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.1
2. Claims 5-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Flores (US 5,734,837, iss. Mar. 31, 1998), Akifuji (US
6,853,974 B1, iss. Feb. 8, 2005), and Shindo (JP 5-61662, pub. Mar. 12,
1993).

FINDINGS OF FACT
We find the findings of fact in the Analysis section below are
supported at least by a preponderance of the evidence.2

1 This rejection appears in the Final Rejection of August 5, 2010, but does
not appear in the “Grounds of Rejection” section of the Answer. As the
“Response to Argument” section of the Answer continues to set forth this
rejection under 35 U.S.C. § 101, this rejection is considered to still be of
record in the case.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/931,773

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ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 5 is improper because
the claim expressly sets forth four sections that are hardware (App. Br. 10-
11, Reply Br. 4-5). In contrast, the Examiner has determined that the
rejection is proper (Ans. 13-16).
We agree with the Appellant. In claim 5, claim limitation [1] requires
a “business application section for…executing a plurality of business
processes…to carry out a business process workflow, wherein each of the
processes has a corresponding process code.” Claim 5 also includes
limitations to a “state transition data record section” and a “process code
management data store.” Claim limitation [6] also states that modifications
to the business process workflow are carried out by changing the starting
conditions of the process codes in the process code management store
without modifying the given application.
Here, claim limitation [6] requires that the business process workflow
is modified by changing the starting conditions of the process codes in the
process code management data store, and this is sufficient to take the claim
away from being a mental process or abstract idea and rather to a hardware
information processing system of some kind.
For these reasons the rejection of claim 5 and its dependent claims 6-
12 under 35 U.S.C. § 101 is not sustained.

Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the prior art does not disclose or render
obvious the way in which “the process code management data store and the
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state transition data record section are used together to manage process
codes” (App. Br. 14). Specifically, the Appellant argues that claim
limitations [4] and [6] identified in claim 5 are not rendered obvious, and
that improper hindsight has been used (App. Br. 16). In contrast, the
Examiner has determined that the rejection of record is proper (Ans. 3-7).
We agree with the Examiner. The Appellant has acknowledged that
Flores discloses a procedure for building business applications, and that
Akifuji discloses a workflow system for executing a plurality of business
processes and that when a change occurs that meets a preset condition, the
user is notified to execute an application to execute the process (App. Br.
14). Akifuji also discloses the use of a business process definition
describing business processes and controls of orders of applications to be
started in the workflow management system (Akifuji, col. 12:48-58).
Shindo discloses that a specification change relating to the transition among
program parts can be executed by “changing only the starting condition
information of the program parts” (Shindo, p. 2).
The Appellant has not specifically argued that the prior art fails to
show a “state transition data record section” or “process code management
data store,” but rather that it would not have been obvious to have the
processing section record in the “process management data store” process
codes and data based on the “state transition data record section” (App. Br.
16). Here, it would have been obvious to have the processing of the stored
information be in either a single section or plural sections, if desired, as each
method would provide respective benefits. Recording the information at a
single location provides simplicity, while providing plural sections provides
enhanced data retention in case one location fails. The modification of
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Akifuji’s “business process definitions” to have a corresponding process
code would be an obvious modification to facilitate computer programming.
Here, the modification of the business process applications system of
Flores to include the notification of changes of Akifuji and changing the
starting condition of the program parts of Shindo, would have been an
obvious, predictable combination of familiar elements with known functions
for the advantage of having a system in which changing the starting
condition resulted in the desired change in the process. We agree with the
Examiners rationale for the combination found at pages 6-7 of the Answer.
For these reasons the rejection of claim 5 is sustained. No separate
arguments have been presented for claims 6-11 and the rejection of these
claims is sustained for these same reasons.
With regard to claim 12, the Appellant argues that the prior art does
not disclose the claim limitation that “the determination section informs the
business logic section on a next process state to be updated after completion
of the specified business process” and that “the business logic section
updates the business database including said next process state” (App. Br.
17). Flores at column 5, lines 1-4, however, discloses the use of a workflow
processor that embodies the logic of workflows and a workflow updater that
maintains and updates the workflow transaction database. Here, having the
process be modified to have the next process state updated would have been
an obvious, predictable modification to have those process states properly
updated as well. For this reason the rejection of claim 12 is sustained as
well.

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Application 11/931,773

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CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 5-12 are under 35 U.S.C. § 101 as directed to non-statutory
subject matter.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 5-12 under 35 U.S.C. § 103(a) as unpatentable over
Flores, Akifuji, and Shindo.

DECISION
The Examiner’s rejection of claims 5-12 is sustained.

AFFIRMED

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