Ex Parte Graf

Board of Patent Appeals and Interferences

Jul 17, 2012

11192939 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/192,939 07/29/2005 Arnd Peter Graf 2005P00031US 8419
52025 7590 07/18/2012
SAP AG c/o BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
FLEURANTIN, JEAN B
ART UNIT PAPER NUMBER
2162
MAIL DATE DELIVERY MODE
07/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARND PETER GRAF
____________________

Appeal 2009-014311
Application 11/192,939
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and
ERIC B. CHEN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014311
Application 11/192,939

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
5, 7-10, and 14-16. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse and enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b).
Exemplary Claims
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method for interfacing an information provider with a
business information system, the method comprising:
identifying a provider interface, the provider interface
configured to map data items from a provider data model to a system
data model;
identifying a set of capabilities of the provider data model;
receiving result set data from the information provider through
the provider interface;
identifying a missing capability of the result set data based on
the set of capabilities of the provider data model;
supplementing the result set data with at least a portion of the
missing capability; and
providing the supplemented result set data to the business
information system.

Rejection on Appeal
The Examiner rejected claims 1, 5, 7-10, and 14-16 under 35 U.S.C.
§ 102(b) as being anticipated by Harper (US 5,717,925).
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Appellant’s Contention
Appellant contends that the Examiner erred in rejecting claims 1, 5,
7-10, and 14-16 under 35 U.S.C. § 102 because:
Harper et al. do not teach or suggest receiving result set data
from the information provider through the provider interface;
identifying a missing capability of the result set data based on
the set of capabilities of the provider data model; supplementing
the result set data with at least a portion of the missing
capability; and providing the supplemented result set data to the
business information system.
(App. Br. 5)(emphasis added).
Issues on Appeal
Whether the Examiner has erred in rejecting claims 1, 5, 7-10, and
14-16 as being anticipated?

ANALYSIS
We agree with the Appellant’s above contention. The Examiner’s
analysis does not establish that the prior art describes “supplementing the
result set data with at least a portion of the missing capability.”

NEW GROUND OF REJECTION
Principles of Law - Possession
[T]he level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant
technology. For generic claims, we have set forth a number of
factors for evaluating the adequacy of the disclosure, including
“the existing knowledge in the particular field, the extent and
content of the prior art, the maturity of the science or
technology, [and] the predictability of the aspect at issue.”
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Application 11/192,939

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Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F. 3d 1336, 1351 (Fed. Cir.
2010) (en banc) (citation omitted).
[W]e have repeatedly stated that actual “possession” or
reduction to practice outside of the specification is not enough.
Rather, as stated above, it is the specification itself that must
demonstrate possession. And while the description requirement
does not demand any particular form of disclosure, or that the
specification recite the claimed invention in haec verba, a
description that merely renders the invention obvious does not
satisfy the requirement.
Ariad, 598 F.3d at 1352 (citations omitted).
[T]his court has repeatedly stated, the purpose of the written
description requirement is to “ensure that the scope of the right
to exclude, as set forth in the claims, does not overreach the
scope of the inventor's contribution to the field of art as
described in the patent specification.”
Ariad, 598 F.3d at 1353-54 (citations omitted).

Analysis
We enter a new ground of rejection under 35 U.S.C. § 112, first
paragraph, for claims 1, 5, 7-10, and 14-16 as failing to satisfy the written
description requirement. Appellant’s disclosure, as originally filed, does not
convey to an ordinarily skilled artisan that Appellant had possession of the
now claimed invention.
By Appellant’s own admission the relevant technology of the
invention is a business intelligence online analytical processing (OLAP)
provider model and architecture. (Appellant’s Spec. 1). We find this to be a
highly complex technology. Further, by Appellant’s admission this
technology is not predictable and that the existing knowledge in this
technology is lacking (Spec. 2-3)(emphasis added):
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In existing systems, a query is generally executed by a
query application (the "called application") which is called by
another application (the "calling application") that will analyze
the retrieved query data and add client applications on top of
the retrieved query data. The query view is generally defined in
a format native to the calling application rather than to the
called application. As such, the calling application must include
a translator to convert the query view into a format native to the
called application. However, such an approach can become
cumbersome, particularly when there are several different
applications in a business information system that include query
views, since each application has to have its own translator. In
this case, a developer must know how to translate query views
from each application's format to the format of the called
application and then create all the translators. This is costly and
time-consuming.
Some systems use Microsoft® XMLA for data retrieval.
However XMLA/MDX only describes the data retrieval part in
a structured query language (SQL) like manner. Therefore
calling applications typically have their own model on top of it
and generate XMLA/MDX for data access based on their
model. The generation of XMLA/MDX is quite complicated,
because XMLA/MDX is generic and geared toward academia
and many business questions result in very complex MDX code
(where MDX is the query language of XMLA/ODBO).
Concepts like traffic light reporting, currency translation,
complex currency and unit handling or inactive parts of the
definition are missing completely. These features have to be
enhanced (if possible) by the calling application.
Other systems use JOlap: a Java based online analytical
processing (OLAP) API that provides an OLAP model that is
powerful and complex. Again, the API only treats the data
retrival [sic] itself and it is difficult and time-consuming to
translate the query views from an application's format to the
API.
Other existing APls do not provide concepts such as
traffic light reporting (exception calculation) and list
calculation, and therefore put this load on the calling
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applications, reducing the accuracy and effectiveness of the
API in a business information system.
We have reviewed Appellant’s Specification and we conclude that the
specification does not demonstrate Appellant’s possession of the claimed
“supplementing the result set data with at least a portion of the missing
capability” (or system or medium for performing such function). Beyond
generic (or conclusory) desired results statements at page 8, lines 20-23;
page 11, lines 6-10; page 14, line 15-17; page 14, lines 24-28; page 17, lines
14-24; and page 18, lines 25-28; the Specification is essentially silent as to
the implementation of this claimed function.
Given the admitted complexity of the technology, unpredictability of
the technology, and lack of knowledge in the technology, Appellant’s
generic or conclusory desired results statements do not demonstrate
possession. Cf. Ariad, 598 F.3d at 1353 (citing University of Rochester v.
G.D. Searle & Co., Inc., 358 F.3d 916 (Fed.Cir.2004)) (“We reasoned that
because the specification did not describe any specific compound capable of
performing the claimed method and the skilled artisan would not be able to
identify any such compound based on the specification’s function
description, the specification did not provide an adequate written description
of the claimed invention.”).
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

CONCLUSIONS
Appellant has established that the Examiner erred in rejecting claims
1, 5, 7-10, and 14-16 under 35 U.S.C. § 102(b) as being anticipated.

DECISION
The Examiner’s rejection of claims 1, 5, 7-10, and 14-16 are reversed.

Claims 1, 5, 7-10, and 14-16 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to satisfy the written description requirement.

REVERSED
37 C.F.R. § 41.50(b)

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