Ex Parte Freire et al

Patent Trial and Appeal Board

Aug 22, 2018

11697926 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/697,926 04/09/2007
96227 7590 08/24/2018
Bell & Manning, LLC
2801 West Beltline Highway
Ste. 210
Madison, WI 53713
FIRST NAMED INVENTOR
Juliana Freire
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
00800-0013 7305
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
docketing@bellmanning.com
mmanning@bellmanning.com
pporembski@bellmanning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIANA FREIRE, CLAUDIO T. SILVA,
STEVEN P. CALLAHAN, EMANUELE SANTOS,
CARLOS E. SCHEIDEGGER, and HUY T. VO
Appeal2017-001670
Application 11/697,926 1
Technology Center 3600
Before MURIEL E. CRAWFORD, ROBERT L. KINDER, and
CARLL. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 4--23, which constitute all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
1 Appellants state that the real party in interest is The University of Utah
Research Foundation. App. Br. 4.
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Application 11/697 ,926
The invention relates to managing workflows. Abstract; Spec., ,r,r 2,
5, 7. Claim 20, reproduced below, is exemplary of the subject matter on
appeal ( emphasis added):
20. A non-transitory computer-readable medium having
stored thereon computer-readable instructions that when executed by a
computing device cause the computing device to:
receive a modified workflow process, the modified workflow
process created by modifying an evolutionary workflow process,
wherein modifying the evolutionary workflow process includes
performing a modify action to modify the evolutionary workflow
process, wherein the evolutionary workflow process includes one or
more existing actions;
identify a unique identifier of the modify action;
identify a plurality of action parameter values associated with the
unique identifier;
compare the identified unique identifier to unique identifiers of
the one or more existing actions included in the evolutionary worliflow
process;
when the identified unique identifier matches one of the unique
identifiers of the one or more existing actions included in the
evolutionary worliflow process, define a second unique identifier for
the modify action, wherein the second unique identifier is unique to the
evolutionary worliflow process;
add the identified plurality of action parameter values in
association with the defined second unique identifier to the
evolutionary worliflow process; and
store a map associating the unique identifier with the defined
second unique identifier.
App. Br. 46 (Claims App.).
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Rejections2
Claims 4--23 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 8-11.
Claims 5-10 and 12-23 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Etchemendy (US 5,999,182, iss. Dec. 7, 1999)
("Etchemendy") in view ofKupkova (US 2004/0103124 Al; pub. May 27,
2004 Al) ("Kupkova"). Final Act. 11-20.
Claim 4 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Etchemendy, Kupkova, and Buch (US 2005/0119988 Al;
pub. June 2, 2005) ("Buch"). Final Act. 20-21.
Claim 11 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Etchemendy, Kupkova, and Kogan (US 2005/0132048
Al; pub. June 16, 2005) ("Kogan"). Final Act. 21-22.
ANALYSIS
Rejection of Claims 4-23 Under
35 us.c. § 101
Appellants argue the Examiner errs in finding the claims are directed
to an abstract idea and failing to find "the present claims are necessarily
rooted in computer technology." App. Br. 20-31; Reply Br. 22-37.
According to Appellants, "the purpose of the claims is to provide a
2 The 35 U.S.C. § 112 rejection of claims 12, 14, 19 was withdrawn in the
Final Office Action. Final Act. 2.
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collaborative workflow development environment that merges a plurality of
workflows created at different computing devices" and "[ e ]ven if providing
a collaborative workflow development environment that includes a plurality
of workflows is properly considered an abstract idea, independent3 Claims 4-
23 recite limitations that add significantly more to the abstract idea and are
more than a mere computer implementation of the abstract idea." App. Br.
at 20-21.
Appellants argue the Examiner provides inadequate support that the
claims are directed to a fundamental economic practice because the claims
do not "describe concepts relating to the economy and commerce, such as
agreements between people in the form of contracts, legal obligations, and
business relations" at all and certainly not any that are
"foundational or basic." Id. (citing July 2015 Update: Subject Matter
Eligibility, 4 (2015). Appellants further argue the Examiner errs in finding
the claims are directed to "the comparison of new and stored information"
and "using rules to identify options." Id. at 22-25. According to
Appellants, cited cases and the USPTO guidelines do not support the
Examiner. Id.
Appellants argue
the present claims are not merely directed to steps that can
be performed without a computer as in the claims evaluated
in SmartGene or to mental steps previously routinely
performed. The current claims are directed to a system that
captures workflow processes used to derive data products
in a collaborative environment. The recited operations
were not previously performable using mental steps or pen
and paper.
3 Only claims 20-22 are independent. See Claims App. 46-48.
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Id. at 25.
Appellants argue that claims 4--23 are analogous to those considered
in DDR because:
The present claims 4-23 are necessarily rooted in
computer technology to overcome the problem arising in co-
development of an evolutionary workflow process. The claimed
subject matter is an improvement to the functioning of a
computer in allowing multiple users to simultaneously
collaborate in the development of one or more analytic data
products that provide insight to and an understanding of digital
data generated to solve real world problems while maintaining a
single provenance associated with the various workflows
examined to create the data product. Previously, multiple users
have not been able to simultaneously experiment with different
workflows to create an analytic data product. The claimed
invention solves a real-world problem that arises as a result of
the use of computers to create analytic data products from digital
data. For example, the present specification describes the
significant scientific and engineering challenge associated with
the ability to effectively understand and leverage the growing
wealth of digital data that is being generated by numerous diverse
sources such as sensors.
Id. at 27
Appellants also argue the claims are analogous to claims found
eligible in Research Corporation Technologies Inc. v. Microsoft Corp., 627
F.3d 859 (Fed. Cir. 2010) because the claims go beyond simply retrieving
and combining data using a computer. Id. at 29--30. In particular, the claims
recite the processing of unique identifiers. Id. Appellants argue claims 4--23
further tie the claimed subject matter to a collaborative workflow
development environment involving multiple users and multiple computing
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devices (i.e., claims 7, 11, 13, 15, and 17) and execution of a workflow to
create a data product (i.e., claim 8). Id. at 31.
The Examiner determines independent claim 20 is directed to two
abstract ideas: (1) a fundamental economic practice and (2) comparing new
and stored information and using rules to identify options. Ans. 2-3. The
Examiner states that Appellants' argument that the claims are directed to "a
collaborative workflow process that includes a plurality of workflow" "is
similarly abstract because the practice collaborative workflow processes are
in fact longstanding commercial practices, and moreover, this concept is so
broad and abstract that it fully envelopes the abstract idea noted in Alice."
Id. at 3. Specifically, the Examiner observes that the concept of Alice was
deemed abstract by the U.S. Supreme Court. Notably, the abstract idea of
"intermediated settlement" is a specific type or species of "collaborative
workflow process" since the intermediated settlement concept discussed
in Alice clearly requires collaboration between two parties and an
intermediary, along with a worliflow in the form a defined sequence of
exchanges/activities to process a transaction between two parties. Id.
The Examiner finds Appellants have not shown a technological
improvement and Appellants acknowledge a general purpose computer is
employed to implement the claims such that, at most, "a computer is relied
upon to improve/modify a workflow, which cannot be equated with an
improvement to the actual computer." Id. at 4. In particular, the computer
performs the basic functions for which it is intended: receiving input/data,
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processing the data, outputting/storing data but without making any
improvement to the computing device. Id. at 5.
The Examiner finds, in contrast to DDR, the claims before us require
only a general purpose computer. Id.; see Spec. ,r 40). Moreover, the
Examiner observes
Id. at 5.
neither the concept of receiving and storing modified
workflow data, nor the concept of "a collaborative
workflow process that includes a plurality of workflows,"
as described by Appellant, can be reasonably understood
as being rooted in, or providing a solution for, a problem
specific to computer technology given that problems and
solutions related to collaborative workflow processes are
found throughout antiquity
Regarding Appellants' arguments directed to collaboration employing
computers, the Examiner finds networked computers are simply performing
conventional functions for which they are intended and there is no showing
that the claimed invention improves the networked computer technology for
facilitating collaboration. Id. at 6. The Examiner further notes much of
Appellants' arguments describing features and fields of use are not recited in
the claim and do not refute the finding that the claim is directed to an
abstract idea. Id.
The Examiner disputes Appellants' argument that "the claims 'can be
analogized to example 3 (Research Corporation Technologies v. Microsoft
Corp., 627, F.3d 859 (Fed. Cir. 2010) (RCT)) of the §101 analysis
examples."' Id. at 7. In particular, the claims before us recite modifying
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workflows at high level, in contrast to Research Corp 's digital image
halftoning improvement. Id.
In the Reply Brief, Appellants argue McRO, Enfzsh, and DDR support
the eligibility of the claims. Reply Br. 2 8-3 7.
As discussed below, we are not persuaded by Appellants' arguments
and agree with the Examiner's conclusion that the claims are patent
ineligible.
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.
Ct. 2347 (2014) reiterated the framework set out in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) for
"distinguishing patents that claim ... abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in the analysis is to determine if the claim is directed toward a
patent-ineligible concept and, if so, the second step is to determine whether
there are additional elements that transform the nature of the claim into a
patent eligible application. Id. (citing Mayo, 566 U.S. at 79, 78). The
second step searches for an inventive concept that is sufficient to ensure that
the patent amounts to significantly more than a patent on the patent-
ineligible concept. Id. (citing Mayo, 566 U.S. at 72-73).
The question is not whether claims mention a computing environment
but what they are "directed to." The "directed to" inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376,
(Fed. Cir. 2016) (inquiring into "[t]he focus of the claimed advance over the
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prior art"); Enfzsh, 822 F.3d at 1335. "The 'abstract idea' step of the inquiry
calls upon us to look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In determining the eligibility of
respondents' claimed process for patent protection under § 101, their claims
must be considered as a whole." Diamond v. Diehr, 450 U.S. 175, 188
(1981).
We conclude each of Appellants' claims on appeal is distinguishable
from the type of claim considered by the court in Enfish and DDR. We
conclude none of Appellants' claims is "directed to an improvement in the
functioning of a computer," as was found by the court regarding the subject
claim in Enfzsh, 822 F.3d at 1338. To the extent that the recited steps or acts
may be performed faster or more efficiently using a computer, our reviewing
court provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the
speed increase comes from the capabilities of a general-
purpose computer, rather than the patented method itself
See Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he
fact that the required calculations could be performed
more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.").
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphasis added). See also Electric Power Grp., 830 F.3d 1350 (Fed.
Cir. 2016), to the extent that Appellants' claims similarly collect
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information, analyze it in some fashion, and present or communicate the
result.
Applying this reasoning to Appellants' claims on appeal, we similarly
find any purported faster or more efficient performance of the claimed steps
or acts merely comes from the capabilities of a general-purpose computer
and/ or computer related elements, rather than from Appellants' claimed
steps or functions. We note, despite Appellants highlighting the
collaborative nature of the invention, the term "collaborative" appears only
in claim 22. Moreover, there is no showing that the term requires a
magnitude of collaboration that would require a computer for
implementation - something "collaborative" may be produced by two or
more parties working together.
Appellants' reliance on DDR is unpersuasive because the claims
provide no improvement of the operation of a computer system
commensurate with improvement to computer technology, and there is no
ordered arrangement set forth which is non-conventional. The Specification
supports the view that the elements recited in the claims are conventional.
See, e.g., Spec. ,r,r 40, and 91, "[t]he components of evolutionary workflow
processing system 100 may be implemented using one or more computing
devices, which may be a computer of any form factor such as a laptop, a
desktop, a server, etc.;" "[t]he exemplary embodiments may be
implemented as a method, apparatus, or article of manufacture using
standard programming and/or engineering techniques to produce software,
firmware, hardware, or any combination thereof to control a computer to
implement the disclosed embodiments."
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In DDR, the claims at issue involved, inter alia, "web page[] displays
[with] at least one active link associated with a commerce object associated
with a buying opportunity of a selected one of a plurality of merchants."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1249 (Fed. Cir.
2014) (claim 18 of US 7,818,399). The Federal Circuit found the claims in
DDR to be patent eligible under step two of the Mayo/Alice test because "the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
Id. at 1257. Specifically, the Federal Circuit found the claims addressed the
"challenge of retaining control over the attention of the customer in the
context of the Internet." Id. at 1258. The rejected claims are dissimilar to
DDR's web page with an active link, and the Specification does not support
the view that the computer related claim elements are unconventional, supra.
The claims before us are dissimilar to McRO 's technical improvement
because, in contrast to McRO, these claims cover a process that was
previously performed in the same way by humans. McRO, Inc. v. Bandai
Namco Games Am. Inc., 23 F. Supp. 3d (Fed. Cir. 2013).
We additionally conclude Appellants' claims are analogous to the
method claim considered by the court in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), at least to the extent that
Appellants' claims are similarly directed to "merely selecting information,
by content or source, for collection, analysis, and display [which] does
nothing significant to differentiate a process from ordinary mental
processes." Id. at 1355. The claims do not require any nonconventional
computer or network components, or even a "non-conventional and non-
generic arrangement of known, conventional pieces," but merely call for
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performance of the claimed information collection, analysis, and display
functions on generic computer components and display devices. Id.
Applying the first step of Alice, we agree with the Examiner that the
claims are directed to the identified abstract ideas. In addition, we agree the
Examiner has considered the abstract ideas in the aggregate. Accordingly,
we find that the claims are directed to a patent-ineligible concept.
Having determined that the claims are directed to a patent-ineligible
concept, step 2 of the analysis considers whether the claims contain an
inventive concept such as additional limitations that add significantly more
to the claim so that it does not fully cover the abstract idea itself. See Alice,
134 S. Ct. at 2357. Here, we agree with the Examiner that no inventive
concept is present. Moreover, the hardware features are the type of generic
element that has been determined to be insufficient by the Supreme Court to
transform a patent-ineligible claim into one that is patent-eligible. See Alice,
134 S. Ct. at 2358. The claims include no limitations that prevent it from
covering the abstract idea itself. Therefore, we are unpersuaded by
Appellants' argument that the claims constitute an inventive concept that is
significantly more than a patent on the patent-ineligible concept.
Regarding preemption, "[ w ]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility .... Where a patent's claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d
13 59, 13 62---63 ("that the claims do not preempt all price optimization or
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may be limited to price optimization in the e-commerce setting do not make
them any less abstract").
In view of the above, we sustain the rejection of independent claim
20, and independent claims 21 and 22 which are argued together claim 20
and which Appellants state recite "similar features." App. Br. 24. We also
sustain the rejection of dependents claims 5, 9, 10, 12, 14, 16, 18, 19, and 23
as these claims are not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue dependent claims 7, 8, 11, 13, 15, and 17, "further
tie the claimed subject matter to a collaborative workflow development
environment involving multiple users and multiple computing
devices (i.e., claims 7, 11, 13, 15, and 17) and execution of a workflow to
create a data product (i.e., claim 8)." App. Br. 31; Reply Br. 36 In
particular, these dependent claims add detail to the collaborative
development performed by multiple users employing multiple computing
devices. The Examiner provides no rebuttal.
Therefore, we do not sustain the rejection of claims 7, 8, 11, 13, 15,
and 17.
Rejections of Claims 4-23
Under
35 us.c. § 103
Appellants argue, inter alia, the Examiner errs in finding Kupkova
teaches the claim 20 limitations
compare the identified unique identifier to unique identifiers of
the one or more existing actions included in the evolutionary worliflow
process;
when the identified unique identifier matches one of the unique
identifiers of the one or more existing actions included in the
evolutionary worliflow process, define a second unique identifier for
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the modify action, wherein the second unique identifier is unique to the
evolutionary worliflow process;
add the identified plurality of action parameter values in
association with the defined second unique identifier to the
evolutionary worliflow process; and
store a map associating the unique identifier with the defined second
unique identifier.
App. Br. 38.
According to Appellants, Kupkova teaches comparing documents by
identifying the differences and producing a differential document that
indicates the differences in a single list of differences indicated by "change",
"add", or "remove." Reply Br. 39-41 (citing Kupkova ,r,r 23, 28-30).
Appellants argue that the differential document does not include a unique
name and is not associated with any claim element. Id. at 41. According to
Appellants, Kupkova does not teach "compare ... " because "even though
the differential document may include a list of differences between the
source and target versions of a document, there is only one differential
document, and its content is not compared to anything even if the differential
document included an identifier." Id. at 41--42. Appellants argue "[t]here
are further no unique identifiers taught by Kupkova" and "[t]here is no need
because there are not two sets of changes to integrate." Id. According to
Appellants, "[ t ]here is one list of changes so there is no need to compare it to
another list of changes or to give it a name or a new name if the name
matches." Id.
Appellants further argue Kupkova does not teach a map nor is there
any need to do so because there is a single list of actions captured in the
differential document. Id. at 45.
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The Examiner finds the combination of Etchemendy and Kupkova
teaches the claim 20 limitations and relies on Kupkova for the limitation
"compare the identified unique identifier to unique identifiers of the one or
more existing actions included in the evolutionary workflow process;" and
the following limitations ("when the identified unique identifier matches ... ;
add the identified plurality of action parameter values ... ; and store a map ..
" Final Act. 11-15. As set forth in the Final Office Action:
The Examiner notes that following limitations are only
operative TydenKylaAliya2 "when the identified unique
identifier matches one of the unique identifiers of the one
or more existing actions, " such that the claim, in
accordance with a broadest reasonable interpretation, fully
encompasses an embodiment where the method terminates
if the unique identifier does not match one of the unique
identifiers of the one or more existing actions. See In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); See
also, In re Zietz, 893 F.2d 319,321, 13 USP02d 1320,
1322 (Fed. Cir. 1989) ("During patent examination the
pending claims must be interpreted as broadly as their
terms reasonably allow.")
Final Act. 13.
The Examiner finds Kupkova "comparing first and second
documents," regardless of the use of a differential document, must uniquely
identify each respective document in order to facilitate the comparison and
output the results. Ans. 8 ( citing Kupkova ,r,r 2, 5, 23, 30; Figs. 2, 3). The
Examiner observes:
It is clear From Fig. 3 of Kupkova that a user enters input
into a computer that identifies a source version and target
version of a document, which in tum triggers the
computing device to execute a comparison of the
documents and, pursuant thereto, construct a differential
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Id.
document and report changes as between the source and
target versions. Therefore, receipt of the user input
identifying both the source version and target version of a
document evinces the use of unique identifiers for the
documents, whereas Kupkova's feature for reporting
changes/actions requires uniquely identifying the
changes/actions in order to describe such changes/actions
to a user.
Appellants disagree with the Examiner's claim construction that the
claim 20 limitations following the "compare ... " limitation are entitled to
no patentable weight. Reply Br. 39. According to Appellants, the claim
requires "the computer-readable instructions must be configured to cause
the computing device to perform the following limitations. Id. Appellants
argue "[i]f a prior art reference teaches only a method performed when the
unique identifier does not match one of the unique identifiers of the one or
more existing actions, it cannot teach the computer-readable instructions as
claimed that are embodied on a computer-readable medium nor can it teach
a computing device that performs the claimed actions." Id.
In the Reply Brief, Appellants argue the Examiner errs by "importing
unsubstantiated findings into his reading of Kupkova." Reply Br. 43.
According to Appellants, Kupkova teaches only one differential document
with a single list of differences between two versions of the document. Id.
at 42. Appellants further argue Kupkova doesn't teach the additional
limitations following "compare ... " because there are no unique identifiers
in Kupkova, noting changes between two documents does not require unique
identifiers, and Kupkova simply teaches creation of a single comparison
document. Id. at 43. According to Appellants, Kupkova does not teach
integrating changes. Id.
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We note the claim term "when" is conditional and, in a method claim,
is entitled to no patentable weight. Ex parte Schulhauser, Appeal No. 2013-
007847, at 9--10 (PTAB Apr. 28, 2016) (precedential) ("A conditional
limitation in a method claim [is] afford[ ed] ... no patentable weight.").
Here, claims 20-22 are not method claims and, therefore, we agree with
Appellants' construction that the limitations that follow "compare" are
entitled to patentable weight.
Initially we note, prior to "compare ... " the claim recites "identify a
unique identifier of the modify action. ( emphasis added). Although the term
"identified unique identifier" is not defined in the Specification, the
Specification provides guidance on its meaning. Claim terms in a patent
application are given the broadest reasonable interpretation consistent with
the Specification, as understood by one of ordinary skill in the art. In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). For example, the Specification
describes "[ w ]orkflows are uniquely identified by the 'time' element."
Spec. ,r 75. The Specification describes an evolutionary workflow process
in which first, second, and third users modify the workflow process and
timestamps (unique identifiers) that are associated with the modifications.
Spec. ,r 78, Fig. 16. In the synchronization of the users' modifications, the
Specification describes that, in the case of a third user adding time stamps 5
and 6, which are the same time stamps as the second user time stamps, the
timestamps 5 and 6 of the first user are re-labeled 7 and 8. Spec. ,r 78, Fig.
16.
We are persuaded by Appellants arguments that Kupkova does not
teach "compare the identified unique identifier to unique identifiers of the
one or more existing actions included in the evolutionary workflow process"
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because, even if each Kupkova document (source and target versions being
compared and a differential document) is considered "an identified unique
identifier," as offered by the Examiner, there is only one differential
document (modify action) that includes a list of differences between the
source and target versions of a document, and its content is not compared to
anything. As discussed supra, the unique identifier is recited as "a unique
identifier of the modify action" in a preceding limitation. Moreover, the
Examiners' findings regarding Kupkova are inconsistent with the
Specification. Crish, 393 F.3d 1256. Moreover, we are persuaded by
Appellants' arguments that Kupkova does not teach the limitations that
follow the compare limitation because, Kupkova does not teach the
compare limitation, and there would be no reason for one of ordinary skill in
the art to pursue the limitations that follow compare.
In view of the above, we do not sustain the rejection of independent
claim 20, and independent claims 21 and 22 as these claims are
commensurate in scope with claim 20. See App. Br. 32. We also do not
sustain the rejection of dependent claims 4--19 and 23. Cf In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious .... ").
DECISION
We affirm the Examiner's rejection of claims 5, 9, 10, 12, 14, 16, 18-
23 under 35 U.S.C. § 101.
We reverse the Examiner's rejection of claims 7, 8, 11, 13, 15, and 17
under 35 U.S.C. § 101.
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We reverse the Examiner's rejection of claims 4--23 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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