Andreas Wiegenstein et al.

Patent Trials and Appeals Board

Jul 31, 2019

13921834 - (D) (P.T.A.B. Jul. 31, 2019)

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.
13/921,834 06/19/2013 Andreas Wiegenstein S2232/20005 1252
3000 7590 07/31/2019
CAESAR RIVISE, PC
7 Penn Center, 12th Floor
1635 Market Street
Philadelphia, PA 19103-2212
EXAMINER
SKHOUN, HICHAM
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
patents@crbcp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREAS WIEGENSTEIN, JOACHIM RITTER,
THOMAS KASTNER, and MARKUS SCHUMACHER
____________

Appeal 2018-007792
Application 13/921,834
Technology Center 2100
____________

Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
all pending claims, namely, claims 1–27. App. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Virtual Forge GmbH as the real party in interest.
App. Br. 2.
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Application 13/921,834

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STATEMENT OF THE CASE
The Claimed Invention
Appellants’ invention generally relates to “dynamic and automatic
correction of a configuration of a distributed database system in order to
identify quality risks and to automatically generate recovery procedures in
order to mitigate these risks.” Spec. 1:7–9.
In an exemplary embodiment, Appellants’ disclosed method generally
includes measuring a plurality of configuration parameters on at least one
satellite (or remote) computer system; analyzing the measured configuration
parameters with respect to received test data in order to identify and rank
any configuration quality defects; and if any such defects are identified,
automatically generating correction instructions for correcting such defective
configuration parameters and transmitting those instructions to the
respective satellite computer system for execution. See Spec. 2:26–3:8.
In short, in Appellants’ invention, “the configuration state on the satellite
systems is detected, analyzed and corrected.” Spec. 3:11–12.
According to Appellants, “[o]ne major aspect of the present invention
is the automatic correction of wrong, risky or missing configurations in a
database.” Spec. 3:10–11.
Claim 3, reproduced below, is representative of the claimed subject
matter on appeal:
3. In an enterprise resource planning (ERP) system, a
computer implemented method for transforming a plurality of
database systems each included with a respective one of a
plurality of satellite systems, said method comprising the steps
of:
- detecting configuration parameters that configure at least
one of the satellite systems, wherein the configuration
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parameters specify how at least one of said plurality of database
systems on said at least one of said satellite systems are
configured
- receiving said detected configuration parameters from said
at least one of the satellite systems, prior to identifying that an
error is included in said configuration parameters;
- receiving test data associated with at least one of the
satellite systems,
- analyzing the received configuration parameters from said
at least one of the satellite systems with respect to the received
test data to determine if any of said configuration parameters
includes said error;
- generating correction instructions for correcting said error
if said analyzing identifies said error in said configuration
parameters;
○ transferring the correction instructions from said
central server in order to correct said error.

App. Br. 8–9 (Claims Appendix).

The Applied References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Kloeffer US 2007/0168874 A1 July 19, 2007
Wan US 2010/0031076 A1 Feb. 4, 2010
Nunez Di Croce US 2013/0174263 A1 July 4, 2013

The Examiner’s Rejections
The Examiner made the following rejections of the claims on appeal:
Claims 1–22 and 25–27 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kloeffer and Wan. Final Act. 2–13.
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Application 13/921,834

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Claims 23 and 24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kloeffer, Wan, and Nunez Di Croce. Final Act. 13–14.

ANALYSIS2
Appellants argue the Examiner failed to articulate any coherent reason
with rational underpinning for combining Kloeffer and Wan to arrive at the
invention of independent claim 3. See App. Br. 2–4. In particular,
Appellants argue the following reason given by the Examiner for combining
Kloeffer and Wan is “not understandable” (App. Br. 4):
It would have been obvious . . . to incorporate the concept of
teachings suggested in Wan’s system into Kloeffer system and
by incorporating Wan into Kloeffer system because all system
are related to monitoring system would analyzing configuration
parameters of multiple intelligent electronic devices in an
electrical system and determining from that analysis any
anomalous configuration parameters with minimal or no user
interaction (Wan, [0003]).
Final Act. 6.
In response, the Examiner states:
Both systems Kloeffer and Wan are related to a monitoring
system and configuration management, Therefore it would have
been obvious . . . to incorporate the concept of receiving said
detected configuration parameters from said at least one of the
satellite systems, prior to identifying that an error is included in
said configuration parameters suggested in Wan’s system into
Kloeffer system and by incorporating Wan into Kloeffer system
would analyzing configuration parameters of multiple intelligent

2 Throughout this Decision, we have considered Appellants’ Appeal Brief
filed May 26, 2017 (“App. Br.”); Appellants’ Reply Brief filed July 25, 2018
(“Reply Br.”); the Examiner’s Answer mailed June 12, 2018 (“Ans.”); the
Final Office Action mailed January 13, 2017 (“Final Act.”); and Appellants’
Specification filed June 19, 2013 (“Spec.”).
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Application 13/921,834

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electronic devices in an electrical system and determining from
that analysis any anomalous configuration parameters with
minimal or no user interaction (Wan, [0003]).

Ans. 7–8 (emphases omitted). Appellants argue this “is still not a proper
statement of motivation to combine that is required for a 103 rejection.”
Reply Br. 2. Appellants also argue that the “Examiner’s Answer is
describing a combination of references to obtain parameters relating to ‘an
electrical system’ that has nothing to do with Appellant[s’] claims,” and that
“[n]o such statement appears on the Official Record” as to “why it would be
obvious to combine . . . [Kloeffer and Wan] to obtain Appellant[s’] claimed
invention.” Reply Br. 3.
Our reviewing court has held the relevant inquiry in an obviousness
analysis is whether the Examiner has set forth “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) (cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Here,
we agree with Appellants, and find that the Examiner’s above-quoted
reasons for combining Kloeffer and Wan lack both coherence and rational
underpinning or basis for why the skilled artisan would have combined the
teachings of Kloeffer and Wan to achieve the invention recited in claim 3.
Moreover, the Examiner does not sufficiently explain how the applied prior
art as a whole suggests the desirability of the Kloeffer-Wan combination,
absent guidance from Appellants’ disclosure. See Lindemann
Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1462
(Fed. Cir. 1984) (“The claimed invention must be considered as a whole, and
the question is whether there is something in the prior art as a whole to
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suggest the desirability, and thus the obviousness, of making the
combination.”) (citation omitted); see also KSR, 550 U.S. at 421 (“A
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”)
(citation omitted). Because we find this issue dispositive here, we do not
address Appellants’ other arguments.
Accordingly, constrained by the record before us, we do not sustain
the Examiner’s rejection under 35 U.S.C. § 103 of independent claim 3.
Because the Examiner relies on the same stated motivation to combine
Kloeffer and Wan in rejecting independent claims 1 and 2 as in rejecting
claim 3 (see Final Act. 2), for the same reasons discussed above regarding
claim 3, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103 of
independent claims 1 and 2. In addition, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 103 of claims 4–27, which depend directly or
indirectly from one of independent claims 1, 2, and 3.

DECISION
We reverse the Examiner’s obviousness rejections of claims 1–27.

REVERSED