Ex Parte Fiedler et al

Patent Trial and Appeal Board

Jun 17, 2013

10746963 (P.T.A.B. Jun. 17, 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.
10/746,963 12/23/2003 Thomas Fiedler 09700.0019-00 4608
60668 7590 06/18/2013
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
TIMBLIN, ROBERT M
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
06/18/2013 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
____________

Ex parte THOMAS FIEDLER and JUERGEN REMMEL
____________

Appeal 2012-000324
Application 10/746,963
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/746,963

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-4, 6-8, 11, 13-16, 18-20, 23, and 25-28. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

INVENTION
The invention is directed to “extending service-oriented business
frameworks” (Spec. 1:9). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-readable storage medium storing
computer-executable program instructions which, when
executed by a processor, cause the processor to perform a
method comprising:

providing a first definition of an object, the object
including first data elements and first attributes associated with
the first data elements;

providing first operations executable on the first data
elements;

extending the first definition of the object with a second
definition, the second definition comprising second attributes
for association with the first data elements and second
operations executable on the first data elements;

receiving from a client a request to execute an operation
from the first operations or the second operations, the request
having input parameters;

checking the request against the first definition and the
second definition;

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executing, with a set of parameters associated with the
input parameters, the operation on the first data elements, the
operation resulting in output parameters;

sending the output parameters to a customer extension
provider, the customer extension provider being associated with
the second definition;

receiving, from the customer extension provider,
modified parameters comprising the output parameters
modified by the customer extension provider; and

sending the modified output parameters to the client.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Evans

Harper

Johnson

Prasad

Mortensen
US 5,179,703

US 5,717,925

US 6,081,798

US 6,917,944 B1

US 7,124,400 B2
Jan. 12, 1993

Feb. 10, 1998

June 27, 2000

July 12, 2005
(filed Aug. 30, 2001)

Oct. 17, 2006
(filed Mar. 12, 2003)

REJECTIONS
Claims 1-4, 6-8, 11, 13-16, 18-20, 23, 25, and 27 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Harper, Evans, and
Mortensen.
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Claims 26 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harper, Evans, Mortensen, Johnson, and Prasad.

ANALYSIS
Regarding independent claim 1, the Examiner finds that Mortensen’s
customizer user interface 224 is a “customer extension provider” as claimed,
and that a user can modify an entity in Mortensen’s system by sending base
entity 280—the claimed “output parameters”—to the customer interface,
where the base entity is customized by adding extension properties, and
receiving the resulting extension entity 288—the claimed “modified
parameters” (Ans. 7-8, 24-25).
We agree with Appellants’ arguments (see App. Br. 12-15; Reply Br.
2-5) and find that Mortensen discloses neither sending output parameters to
a customer extension provider nor receiving modified parameters from the
customer extension provider, as recited in claim 1. Mortensen’s customizer
user interface 224 is used for interacting with a customization subsystem 222
of certain computer software to customize entities in the subsystem (see,
Mortensen, col. 6, ll. 31-41; col. 8, l. 35-col. 9, l. 20). However, the
Examiner has not shown that the entities themselves are sent to and received
from the customizer user interface when a user customizes an entity. Rather,
Mortensen simply discloses that “a customizer can begin adding extension
properties to the Customer entity 280 through a customizer user interface,
such as interface 224 shown in FIG. 3” (Mortensen, col. 9, ll. 17-20).
Mortensen does not disclose that adding properties to the entity requires
sending and receiving the entity itself over the customizer user interface.
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Further, each of Mortensen’s entities is an object (Mortensen, col. 6,
18-20), in contrast to the claimed “output parameters,” which are not
themselves objects, but the results of performing an operation on an object.
That is, claim 1 recites “executing . . . the operation on the first data
elements [of the object], the operation resulting in output parameters,” which
makes clear that the claimed “object” is different than the claimed “output
parameters.” Thus, the Examiner’s reliance on Mortensen’s base entity 280
and extension entity 288 as respective “output parameters” and “modified
parameters” (Ans. 24-25) is misplaced. Accordingly, even if Mortensen’s
entity customization system involved sending and receiving entities to and
from the customizer user interface, the system would not disclose sending
and receiving “output parameters” and “modified parameters,” as recited in
claim 1.
We are therefore constrained by the record to find that the Examiner
erred in rejecting independent claim 1, independent claim 13 which recites
commensurate limitations, and dependent claims 2-4, 6-8, 11, 14-16, 18-20,
23, and 25-28 for similar reasons.

CONCLUSION
The Examiner erred in rejecting claims 1-4, 6-8, 11, 13-16, 18-20, 23,
and 25-28 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner’s decision rejecting claims 1-4, 6-8, 11, 13-
16, 18-20, 23, and 25-28.

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REVERSED

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