Ex Parte Danninger

Patent Trial and Appeal Board

Feb 28, 2017

13606653 (P.T.A.B. Feb. 28, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14291-126-999 2482
EXAMINER
DWIVEDI, MAHESH H
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
13/606,653 09/07/2012
140285 7590
Jones Day For SAP
250 Vesey Street
New York, NY 10281-1047
Michael DANNINGER
02/28/2017 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
Ex parte MICHAEL DANNINGER
Appeal 2016-002825
Application 13/606,6531
Technology Center 2100
Before ST. JOHN COURTENAY III, JOYCE CRAIG, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21—47, which constitute all claims pending in
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as SAP SE. App. Br. 2.
Appeal 2016-002825
Application 13/606,653
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to customizing software services in a
computing system, such as customizing a plurality of user applications based
on a theme selected by the user. Spec. Tflf 2, 13. Claims 21,31, and 41 are
independent. Claim 21 is illustrative of the invention and the subject matter
of the appeal, and reads as follows:
21. A method, comprising:
separately executing a plurality of different applications,
each application executing a corresponding query to at least one
database;
separately storing, for each application, a corresponding
plurality of service parameters that control a makeup of a
corresponding navigation sequence provided to the user to
execute the corresponding query; and
receiving a selection of one of a plurality of navigation
themes by the user, wherein the selection of each navigation
theme sets the value of at least one of the stored service
parameters for each of the plurality of applications to at least one
value corresponding to the selected navigation theme, resulting
in setting a number of sequential user interface states of the
corresponding navigation sequence required to execute the
corresponding database query for each of the plurality of
applications,
wherein the plurality of navigation themes provide for
setting the number of sequential user interface states of the
corresponding navigation sequence to a plurality of different
predetermined values for each of the plurality of applications.
App. Br. 16 (Claims App.).
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Application 13/606,653
The Rejections on Appeal
Claims 21—26, 31—36, and 41—47 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Sinclair II et al. (US 2006/0139312
Al; June 29, 2006) (“Sinclair”), Horvitz et al. (US 6,262,730 Bl; July 17,
2001) (“Horvitz”), Cutrell et al. (US 2007/0005576 Al; Jan. 4, 2007)
(“Cutrell”), and Marmaros (US 2006/0224967 Al; Oct. 5, 2006). Final Act.
3-38.
Claims 27 and 37 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Sinclair, Horvitz, Cutrell, Marmaros, and Sattler et al. (US
2006/0010051 Al; Jan. 12, 2006) (“Sattler”). Final Act. 38-39.
Claims 28 and 38 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Sinclair, Horvitz, Cutrell, Marmaros, and Woods (US
2006/0253586 Al; Nov. 9, 2006). Final Act. 39-41.
Claims 29, 30, 39, and 40 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Sinclair, Horvitz, Cutrell,
Marmaros, and Anderson et al. (US 2005/0085272 Al; Apr. 21, 2005)
(“Anderson”). Final Act. 41—45.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41,37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
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Appeal 2016-002825
Application 13/606,653
Obviousness Rejection of Claims 21—26, 31—36, and 41—47
Appellant argues the independent claims 21,31, and 41 as a group,
App. Br. 10-13, and we choose claim 21 as representative of the group. See
37 C.F.R. § 41.37(c)(l)(iv). Appellant contends the Examiner erred in
finding the prior art teaches the following claim limitations: “separately
storing, for each application, a corresponding plurality of service parameters
that control a makeup of a corresponding navigation sequence . .
“receiving a selection of one of a plurality of navigation themes . . and
“the plurality of navigation themes provide for setting the number of
sequential user interface states . . . App. Br. 6—11. Appellant further
contends the Examiner erred in finding a rationale to combine the
references. App. Br. 11—12. We are not persuaded of error.
Appellant’s argument in the briefs consists of describing each
reference individually, one by one, and alleging why each reference, when
considered in isolation, does not teach any of the claim limitations. App.
Br. 6—11; Reply Br. 2—8. Nonobviousness, however, “cannot be established
by attacking references individually where,” as here, “the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); Ans. 3-56; Final Act. 3-38.
The Examiner, for example, finds Sinclair teaches “multiple
applications” having “service parameters” that are affected when setting a
global service flag, such as disabling animation icons or setting pop-up
settings. Ans. 3^4 (citing Sinclair 1248). Horvitz is cited for its teaching of
“navigation sequences” and ability to change navigation “theme” (e.g.,
changing a user’s skill level from expert to novice). Ans. 4 (citing Horvitz
Figs. 18, 22, col. 11,11. 15—31, col. 23,11. 17—30). Cutrell teaches
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Application 13/606,653
“applications that can query databases,” Ans. 6 (citing Cutrell 62, 92;
emphasis added) and Marmaros “teaches the concept of separately storing
service parameters for each application,” Ans. 6 (citing Marmaros 12,
17). The Examiner combines the foregoing teachings to find the claim
limitation “separately storing, for each application, a corresponding plurality
of service parameters that control a makeup of a corresponding navigation
sequence provided to the user to execute the corresponding query.” Ans. 2—
8. Appellant, therefore, does not demonstrate error by arguing that Sinclair,
for example, “is also silent with respect to a system flag controlling the . . .
navigation sequences for database queries.” App. Br. 6. Nor do Appellant’s
other arguments regarding alleged shortcomings of each reference
individually demonstrate error, App. Br. 6—11. See Merck, 800 F.2d at 1097.
Appellant also argues one of ordinary skill would “not have
understood” or “been motivated” to combine or modify the references as the
Examiner finds. App. Br. 11. Specifically, Appellant argues none of the
references provide an explicit description of the “mechanism” by which
Cutrell’s search engine interface (database queries) could be integrated with
Sinclair’s accommodations for user disabilities, or how Horvitz could be
“operatively applied” to Cutrell’s search engine. Id. at 11—12.
A person of ordinary skill in the art, however, is “a person of ordinary
creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). Appellant points to no evidence of record that combining the
respective teachings of the cited references, in the manner proffered by the
Examiner (Final Act. 14, 16, 18) would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or “represented an unobvious
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Application 13/606,653
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Moreover, Appellant does not argue that the individual elements at
issue (such as search engine queries in Cutrell, personalization of user
options in Sinclair, and managing web browser data in Marmaros) would
have been unfamiliar to one of ordinary skill, or that unexpected results
would derive from their combination. See KSR, 550 U.S. at 416 (the
“combination of familiar elements according to known methods is likely to
be obvious when it does no more than yield predictable results”). On this
record, we find the Examiner provided sufficient “articulated reasoning with
some rational underpinning” to support a prima facie case of obviousness,
see, e.g., Final Act. 14, 16, 18, 21, and Appellant has not made sufficient
argument or presented evidence to persuade us of error. See, e.g., In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent representative claim 21 (nor independent claims 31
and 41 grouped therewith).
Appellant argues the group of dependent claims 43, 45, and 47
separately, contending the Examiner erred for the additional reason that none
of the references “disclose that the sequential user interface states of the
corresponding navigation sequence contain user interface elements to
receive input from the user to the corresponding database query for each of
the plurality of applications, as is required by these claims.” App. Br. 12
(emphasis omitted). Similar to the argument advanced regarding claim 21,
discussed above, Appellant argues that “none of the references” individually
teaches the disputed limitation, id., which is not persuasive of error in the
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Application 13/606,653
combination relied upon by the Examiner. See In re Merck & Co., Inc., 800
F.2d at 1097. Appellant further asserts the combination would “at best”
result in a “search engine user interface” as in Marmaros or a “pop-up
window” as in Horvitz, App. Br. 12, but this argument ignores the
contributions of the other two references, including Cutrell’s teaching of a
database query. Ans. 58—59 (“the secondary reference of Cutrell is used to
teach the claimed database user query elements, and not the secondary
reference of Marmaros as the [A]ppellant[] erroneously assertfs]”).
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 43, 45, and 47.
Appellant does not argue the remaining dependent claims 22—26, 32—
36, and 42, 44, and 46 separately. App. Br. 12. We, therefore, sustain the
first-stated rejection of claims 21—26, 31—36, and 41—47, as being obvious
over combined teachings and suggestions of Sinclair, Horvitz, Cutrell, and
Marmaros.2
Obviousness Rejections of the Remaining Claims
For each of the remaining claims, all of which are dependent,
Appellant argues the additional references cited by the Examiner do “not
cure the deficiencies of Sinclair, Horvitz, Cutrell and Marmaros with respect
to the rejection of these independent claims.” App. Br. 13—14. Because we
were not persuaded the Examiner erred in rejecting the independent claims,
2 “[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807—808 (Fed. Cir. 1989) (emphasis
added).
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see supra, this argument does not persuade us of error regarding the
dependent claims.
Accordingly, we sustain the rejection of claims 27 and 37 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Sinclair, Horvitz, Cutrell,
Marmaros, and Sattler; we sustain the rejection of claims 28 and 38 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sinclair, Horvitz, Cutrell,
Marmaros, and Woods; and we sustain the rejection of claims 29, 30, 39,
and 40 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Sinclair, Horvitz, Cutrell, Marmaros, and Anderson.
DECISION
We affirm the Examiner’s rejections of claims 21—47.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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