Ex Parte 7155439 et al

Patent Trial and Appeal Board

Sep 30, 2013

95001391 (P.T.A.B. Sep. 30, 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.
95/001,391 07/07/2010 7155439 6115-0103L 3547
7590 09/30/2013
Wellogix Technology Licensing, LLC
440 Louisiana, Suite 2100
C/O Bailey Perrin & Bailey, Attn: Joby A Hughs
Houston, TX 77019
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/30/2013 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
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAP AMERICA, INC.
Requester

v.

WELLOGIX TECHNOLOGY LICENSING LLC
Patent Owner
____________

Appeal 2013-005115
Reexamination Control No. 95/001,391
Patent 7,155,439 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, DENISE M. POTHIER, and
STANLEY M. WEINBERG, Administrative Patent Judges.

SIU, Administrative Patent Judge
Opinion Concurring-In-Part filed by POTHIER, Administrative Patent
Judge.

DECISION ON APPEAL
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Reexamination Control No. 95/001,391
Patent No. 7,155,439 B2

2
Patent Owner Wellogix Technology Licensing LLC appeals under 35
U.S.C. §§ 134 and 315 (2002) the Examiner’s decision to reject claims 1-20
under certain grounds as discussed below. Requester SAP America, Inc.
appeals under U.S.C. §§ 134 and 315 (2002) the Examiner’s decision not to
reject claims 1-20 under certain other grounds as discussed below. We have
jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). An oral hearing was
conducted on May 15, 2013. The transcript of the oral hearing will be made
of record in the future.

STATEMENT OF THE CASE
This proceeding arose from a request by SAP America, Inc. for an
inter partes reexamination of U.S. Patent 7,155,439 B2, titled “Modular and
Customizable Process and System for Capturing Field Documentation Data
in a Complex Project Workflow System,” and issued to Warren Scott Cope
on December 26, 2006 (the ’439 patent).
The ’439 patent describes business processes and systems (col. 1,
l. 41).
Claim 1 on appeal reads as follows:
1. A modular data structure for storing a compilation
of actual data input to a processing system via a field document
that documents the performance of at least one component of a
complex project, the modular data structure stored in a memory
in the processing system for access and use by a workflow
process controlled by the processing system, the workflow
process designed to facilitate the preparation for and
performance of the complex project conducted between parties,
wherein the parties are connected to the processing system via a
communication network, the field document submitted to the
workflow process via the communication network by at least
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one of the parties, the modular, customizable data structure
comprising:
a standard data array module correlating to a standard
data input interface of the field document, the standard data
input interface for receiving input of standard actual data,
thereby populating the standard data array module; and
at least one optional data array module correlating to a
respective optional data input interface of the field document,
the respective optional data input interface for receiving input
of optional data thereby populating the at least one optional
data array module; wherein
the at least one optional data array module and the
correlative optional data input interface are added to the
workflow process as a conjunct to the standard data array and
correlative standard data input interface; wherein
the standard data array module and the correlative
standard data input interface are preexisting in the workflow
process;
the at least one optional data array module and the
correlative respective data input interface are selected and
activated by at least one of the parties from a set of optional
data array modules and correlative optional data input interfaces
for conjunctive addition to the standard data array module and
the correlative standard data input interface to form the field
document.

Requester proposes rejections of the claims over the following prior
art references:
Livesay WO 01/67354 A1 Sept. 13, 2001

Elaine Mormel, “Microsoft Project 2000 Bible,” IDG Books Worldwide,
Inc., 2000 (“Project”).

“Microsoft Access 2000 Bible,” IDG Books Worldwide, Inc., 1999
(“Access”).

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Grady Booch, “Object-Oriented Analysis and Design With Applications,”
Second Edition, 1994 (“Booch”).

Patent Owner appeals the Examiner’s rejection of the following
claims over the following rejections:
Claims 1-20 under 35 U.S.C. § 102(b) as being anticipated by any one
of Project or Access.
Claim 1 under 35 U.S.C. § 102(b) as being anticipated by Booch.
Claim 4 under 35 U.S.C. § 103(a) as being unpatentable over any one
of Project or Access.
Claims 4-20 under 35 U.S.C. § 103(a) as being unpatentable over
Livesay and any one of Project or Access.
Claims 2-4 under 35 U.S.C. § 103(a) as being unpatentable over
Booch and Project.
Claims 5-20 under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement.
1

Claims 6, 8, and 10-20 under 35 U.S.C. § 112, second paragraph.

Because Requester is not sure whether or not the Examiner has
rejected claims 5-20 under 35 U.S.C. § 112, second paragraph, Requester

1
The Examiner also rejects claims 5, 6, 8, 10, 11, 15, and 18-20 under 35
U.S.C. § 112, first paragraph as failing to comply with the enablement
requirement (see, e.g., RAN 25). Patent Owner does not provide arguments
in opposition of this rejection.
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appeals what Requester views as the Examiner’s possible confirmation of
claims 5-20 under 35 U.S.C. § 112, second paragraph.
2
3PR App. Br. 11-12.
ISSUE
Did the Examiner err in rejecting claims 1-20?

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

2
As Requester indicates (3PR App. Br. 11), the Examiner appears to
maintain the rejection of claims 5-20 under 35 U.S.C. § 112, second
paragraph. For example, the Examiner states that “[t]he rejection of new
claims under 35 USC 112 is proper” (RAN 19) and that “[t]he new claims
appear to improperly mix apparatus and method claims” (RAN 29).
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ANALYSIS

Claims 5-20 – Written Description (Patent Owner’s appeal)
Claim 5
The Examiner states that the ‘449 Specification fails to disclose a user
that is remote from the processing system, as recited in claim 5 (RAN 19).
Patent Owner argues that the ‘449 Specification discloses a service provider
submitting a field document and resubmitting the field document with
modifications (PO App. Br. 33). However, even assuming Patent Owner’s
contention to be true that the ‘449 Specification discloses submitting and
resubmitting a field document, Patent Owner does not persuasively
demonstrate that the ‘449 Specification also discloses a user that is remote
from the processing system.
We agree with the Examiner that the Specification does not disclose a
user that is remote from the processing system.

Claims 6-9
The Examiner states that the ‘449 Specification fails to disclose an
interface that displays a means to enter and record data (RAN 20-22). Patent
Owner argues that “column 53, lines 60-62 refer to Fig. 31A and B which
illustrate interfaces” (PO App. Br. 33). The Specification discloses “a
customization manager is shown in FIGS. 31A and 31B” and data “entry
into the customization manager . . . after the user has selected a company
type . . .” (col. 53, l. 67 – col. 54, l. 2). In other words, the Specification
discloses a user interface (i.e., a “customization manager”) through which a
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user enters a selection or data. We agree with Patent Owner that the
Specification discloses a user interface that includes a means to enter data, as
recited in claim 6.
Claims 7-9 recite an interface that displays data. The “customization
manager” as disclosed in the Specification appears to display data (e.g.,
Figs. 31A and 31B). Therefore, we agree with Patent Owner that the
Specification discloses an interface that displays data and a means to enter
data.

Claims 10-11
The Examiner states that the Patent Owner “fails to identify anything
in the ‘439 Patent’s description of the offline manager that describes the
claimed features” (RAN 22). The Specification discloses an “offline
manager that allows a user to work . . . offline . . . and once reconnected to
the network, the information added . . . may be uploaded to the actual web
site through a communications network” (col. 39, ll. 58-64).
We agree with Patent Owner that the Specification discloses the
features recited in claim 10 and 11.

Claims 12-15
The Examiner states that the Specification fails to disclose comparing
data with preexisting parameters of the workflow process, as recited in
claims 12-15, because the Specification allegedly does not disclose
preexisting parameters that is “a technical specification of a project that is
used to create a request for proposal, goods or the like” (RAN 22, citing
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Specification at Col. 3, ll. 16-19 and col. 4, l. 62 – col. 5, l. 8). We observe,
however, that claims 12-15 do not recite that the parameters must be “a
technical specification of a project that is used to create a request for
proposal, goods or the like” and the Specification does not appear to limit or
require the “parameters” to include such a limitation. Rather, the cited
portions of the Specification merely provide examples of possible
parameters.
We agree with Patent Owner that the Examiner and Requester have
not demonstrated that the Specification fails to disclose the recited
limitations of claims 12-15.

Claims 16-20
The Examiner states that the Specification fails to disclose the
limitations recited in claims 16-20 (RAN 23-24). Patent Owner argues that
the Specification discloses the limitations recited in claims 16-20 “at least by
columns 23, 35, and 36 and Figs. 14A-B” and that “Fig. 1 provides an
overview of the workflow process that helps provide context for the other
cited passages” (PO App. Br. 34). While Patent Owner generally cites
three columns and three figures of the Specification (i.e., Fig. 1 and
“columns 23, 35, and 36 and Figs. 14A-B”) that supposedly disclose the
recited features of claim 16, Patent Owner does not point out where in any of
the cited passages or figures the specific claim features of claim 16 are
disclosed. We do not independently identify each claim feature in the cited
columns and figures of the Specification. See 37 CFR § 41.67(c)1)(vii)
(“Any arguments or authorities not included in the brief permitted under this
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section . . . will be refused consideration by the Board, unless good cause is
shown.”)
We agree with the Examiner that the Specification fails to provide
written description support for claim 16, and claims 17-20, which depend
therefrom.
In summary, we affirm the Examiner’s rejection of claims 5 and 16-20
but reverse the Examiner’s rejection of claims 6-15 over 35 U.S.C. § 112,
1
st
paragraph as failing the written description requirement.

Claims 5, 6, 8, 10, 11, 15, and 18-20 – Enablement
As noted above, the Examiner rejects claims 5, 6, 8, 10, 11, 15, and
18-20 under 35 U.S.C. § 112, first paragraph as failing the enablement
requirement (RAN 25). Patent Owner does not contest this rejection.
Therefore, we affirm the Examiner’s rejection of claims 5, 6, 8, 10, 11, 15,
and 18-20 under 35 U.S.C. § 112, first paragraph as failing the enablement
requirement.

Claims 5-20 – 35 U.S.C. 112, 2
nd
paragraph
Claims 5-20 (Requester’s protective appeal and Patent Owner’s
appeal)
Requester argues that claims 5-20 are indefinite under 35 U.S.C.
§ 112, 2
nd
paragraph because “they are impermissible mixed claims” (3PR
App. Br. 20-23). The Examiner states that “[t]he examiner agrees with
requester. The new claims appear to improperly mix apparatus and method
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claims” (RAN 29).
3
We therefore conclude that the Examiner did, in fact,
reject these claims as indefinite under 35 U.S.C. § 112, second paragraph
because they recite mixed claims.
Claim 1 recites a product, namely, a “modular data structure.” Claims
5-20, each of which depends from claim 1, recite method steps of using the
product. Therefore, each of claims 5-20 recite both a product (or apparatus)
and the method steps of using the product or apparatus. Patent Owner
contends that these claims are not impermissible mixed claims because
“claims 5-20 do not mix statutory classes of invention” (PO Resp. Br. 10).
We agree that claims 5-20 are indefinite under 35 U.S.C. § 112, 2
nd

paragraph for at least the reasons set forth by Requester (3PR App. Br. 20-
23) and therefore conclude that the Examiner did not err in rejecting claims
5-20 as indefinite under 35 U.S.C. § 112 2
nd
paragraph.
Affirmance of the rejection for claims 5-20 under 35 U.S.C. § 112,
2
nd
paragraph because they recite mixed claims renders it unnecessary to
reach the propriety of the Examiner’s decision to reject those claims under
35 U.S.C. § 112 2
nd
paragraph on a different basis. Cf. In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009).

3
Since the Examiner states that the “new claims” are indefinite and
claims 5-20 were newly added, we assume the “new claims” to which the
Examiner refers are claims 5-20. Therefore, we assume the Examiner rejects
claims 5-20 under 35 U.S.C. § 112, 2
nd
paragraph as being indefinite for
“improperly mix[ing] apparatus and method claims” (RAN 29).
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Claims 1-3 and 5-20 – Project Reference – Anticipation
Patent Owner argues that Project fails to disclose “that a ‘project file’
is a database” or that “the .mpp file ‘is a database’” (PO App. Br. 10).
Hence, Patent Owner argues that Project fails to disclose a database.
However, as the Examiner (RAN 5) and Requester (3PR Resp. Br. 3-4) point
out, claim 1 does not recite a “database.” In any event, claim 1 recites a
modular data structure as an entity “for storing data.” Patent Owner does
not persuasively demonstrate that Project fails to disclose an entity for
storing data and therefore has not demonstrated a difference between Project
and the “modular data structure” as recited in claim 1.
Patent Owner argues that Project discloses “that a view may contain a
table” but that the “table” of Project is “not [a] ‘database table’ [or] . . . ‘data
array modules’” (PO App. Br. 11). Hence, Appellant argues that Project
fails to disclose a “database table” or a “data array module.” First, we note
that claim 1 does not recite “database table.” In any event, we agree with the
Examiner (RAN 6) and Requester (3PR Resp. Br. 4) that Project discloses a
data structure (e.g., “tables”) that contain data. Patent Owner cites various
passages from the Project reference (PO App. Br. 11, citing Project at
pp. 133-135 ,179, 182, 183) but does not persuasively demonstrate a
difference between the data structures of Project and data structures recited
in claim 1, for example.
Patent Owner argues that Project fails to disclose a field document (p.
11-12). Claim 1 recites data input via a field document that documents the
performance of at least one component of a complex project. For at least the
reasons set forth by the Examiner (RAN 6) and Requester (3PR Resp. Br. 4-
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7), we agree that Project discloses the field document as recited in claim 1,
for example.
Patent Owner argues that claim 1 requires “that the field document is
not initially included in the workflow process to which the field document is
submitted” and “that the location of the workflow process is physically
distinct from that of the parties who submit the field document” (PO App.
Br. 12) but does not demonstrate that claim 1, in fact, recites such disputed
limitations. Therefore, we need not consider whether Project discloses an
entity that is “not initially included in the workflow process” or that “the
workflow process is physically distinct from . . . the parties who submit the
field document.”
Patent Owner argues that an “‘e-mail’ [of Project] is not . . . [a] field
document” (PO App. Br. 13) because an e-mail, according to Patent Owner,
does not include “a standard data input interface” (id.) and that a “form” as
disclosed by Project is not a field document because, according to Patent
Owner, a “form described by Project lacks many features of the claimed
‘field document’” (PO App. Br. 13). We disagree with Patent Owner for at
least the reasons set forth by the Requester (3PR Resp. Br. 6-7). One of
ordinary skill in the art would have understood, for example, that an e-mail
contains an interface to input data (e.g., content of the e-mail). Without such
an interface, a user would be unable to input data into the e-mail and would
therefore be unable to create the e-mail.
Patent Owner argues that Project fails to disclose claims 12-20 (PO
App. Br. 16). Requester states that “those claims add no language that is
entitled to patentable weight” (3PR Resp. Br. 7).
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Our reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that otherwise would have
been unpatentable over the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed.
Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). The Examiner need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1582-83 (Fed. Cir. 1994).
In the present case, claim 12 recites data related to an oil or gas well.
Claim 13 recites parameters are estimations of goods and services associated
with the oil or gas well. Claim 14 recites data including cost information for
goods or services related to the oil or gas well. Claim 15 recites purchase
orders, field actuals, and final invoices. In each of these claims, descriptive
material is recited without a specific functional relationship to the
“substrate” – e.g., the modular data structure. For example, while claim 13
recites that the parameters estimate one of conditions, amounts of goods and
services, and costs of goods and services associated with the oil or gas well,
claim 13 does not recite a specific functional relationship between the type
of recited parameters and the modular data structure itself. Instead, the
modular data structure of claim 13 would exhibit no functional difference if
the type of parameters were to include other types of parameters since claim
13 does not require any specific function of the specific type of parameters.
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Hence, we agree with Requester (3PR App. Br. 15-20) that claims 12-
15 recite non-functional descriptive material that is not accorded patentable
weight. As such, we agree with Requester that Project discloses claims 12-
15.
Claim 16 (or dependent claims 17-20) recites steps in a process
including specifying parameters, inputting data into the field document,
approving the field document, revising the field document, and resubmitting
the revised field document. We disagree with Requester that claim 16
recites only non-functional descriptive material because claim 16 recites
specific steps in a process. As described above, Patent Owner states that
Requester has not demonstrated that Project discloses the limitations recited
in claim 16 (and dependent claims 17-20) while Requester argues that the
limitations recited in claim 16 are non-functional descriptive material and
should not be accorded patentable weight. Because Requester has failed to
demonstrate that Project discloses each feature of claim 16 and we disagree
with Requester that claim 16 recites only non-functional descriptive
material, we cannot agree with Requester that Project discloses each feature
of claim 16.
Patent Owner does not provide additional arguments in support of
claims 2, 3, or 5-15 with respect to the Project reference. We affirm the
Examiner’s rejection of claims 1-3 and 5-15 as anticipated by Project but
reverse the Examiner’s rejection of claims 16-20 as anticipated by Project.
Affirmance of the rejection for the above-referenced claims 1-3 and 5-
15 based on the Project reference renders it unnecessary to reach the
propriety of the Examiner’s decision to reject those claims on a different
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basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we
need not reach the propriety of the rejection of those claims over Access,
Booch, or Livesay.

Claim 4 – Project Reference – obviousness
Patent Owner argues that Project fails to disclose “the need to provide
one form for one party, and yet another form for another party” (pp. 15-16).
Claim 4 recites data that is used by a first and a second party and data that is
used by the first and a third party. We disagree with Patent Owner for at
least the reasons set forth by the Requester (3PR Resp. Br. 7, 12).

Claims 16-20 – Project and Livesay – obviousness
Patent Owner argues that “[t]he Request does not address (newly
added) claims [16-20]” (PO App. Br. 31). Requester does not appear to
refute Patent Owner’s contention that the Request does not address claims 5-
20 (or claims 16-20) but argues that “Project anticipates claim 1 and there
are no ‘defects’ for Livesay to remedy” (3PR Resp. Br. 13). However, even
if Requester is correct that Project anticipates claim 1, Requester does not
persuasively demonstrate that Project also anticipates claim 16, which
depends from claim 1 and recites additional features not recited in claim 1
(id.). We therefore conclude that Requester has not sufficiently
demonstrated that claim 16, or claims 17-20 which depend therefrom, would
have been obvious to one of ordinary skill in the art given the combination
of Project and Livesay.

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Claims 16-20 – Access Reference (Anticipation); Access and Livesay
(Obviousness)

Patent Owner argues that Access fails to disclose claims 16-20 (PO
App. Br. 21). Requester argues that the “rejection of claims [16-20] as
anticipated by Access is proper because those claims add no language that is
entitled to patentable weight” (3PR Resp. Br. 9). For at least the previously
stated reasons, we disagree with Requester.
Patent Owner argues that the combination of Access and Livesay fails
to disclose or suggest the features recited in claims 16-20 (PO App. Br. 31).
Requester argues that “Access anticipates claim 1” (3PR Resp. Br. 14) but
fails to persuasively demonstrate that Access teaches or suggests every
feature of claim 16, which depends from claim 1 and recites additional
features not recited in claim 1. Nor does Requester demonstrate or assert that
Livesay cures any possible deficits of the Access reference.
We therefore cannot agree with Requester that the combination of
Access and Livesay discloses or suggests claims 16-20.

CONCLUSION
The Examiner did not err in rejecting claims 1-20.
DECISION
We affirm the Examiner’s decision to maintain the rejection of
claims 1-3 and 5-15 under 35 U.S.C. § 102(b) as being anticipated by
Project; claim 4 under 35 U.S.C. § 103(a) as being unpatentable over
Project; claims 5, 6, 8, 10, 11, 15, and 16-20 under 35 U.S.C. § 112, first
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paragraph (written description and/or enablement); and claims 5-20 under 35
U.S.C. § 112, second paragraph.
We reverse the Examiner’s decision to reject claims 7, 9, and 12-14
under 35 U.S.C. § 112, first paragraph (written description); claims 16-20 as
anticipated by either Project or Access; and claims 16-20 as obvious over
Livesay and any one of Project or Access.

AFFIRMED

ak

Birch Stewart Kolasch & Birch
P.O. Box 747
Falls Church, VA 22040-0747

Third Party Requester:

One World Trade Center
121 S.W. Salmon Street
Portland, OR 97204
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POTHIER, Administrative Patent Judge, CONCURRING-IN-PART.
I agree with the Majority’s decision. I write separately concerning the
rejection of claims 5-20 under 35 U.S.C. § 112, second paragraph, for which
I concur only in result.

DMP