Ex Parte Hirth

Patent Trial and Appeal Board

Aug 14, 2015

11166464 (P.T.A.B. Aug. 14, 2015)

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.
11/166,464 06/23/2005 Gerhard A. Hirth 247-025US 5232
131475 7590 08/14/2015
Dilworth IP - SAP
2 Corporate Drive, Suite 206
Trumbull, CT 06611
EXAMINER
ABEL JALIL, NEVEEN
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
08/14/2015 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 GERHARD A. HIRTH
____________

Appeal 2012-000779
Application 11/166,4641
Technology Center 2100
____________

Before JEAN R. HOMERE, JOHN A. EVANS, and
LINZY T. McCARTNEY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

INTRODUCTION
Request
In the Request for Rehearing filed August 28, 2014 (“Request”),
Appellant requests rehearing of the Patent Trial and Appeal Board’s
(“Board”) Decision mailed June 27, 2014 (“Decision”), which affirmed the
rejections of Claims 1–15 under 35 U.S.C. § 103(a) as being obvious over
Wilson (US 2002/0133387 A1, pub. Sept. 19, 2002), Horvitz (US
2004/0153445 A1, pub. Aug. 5, 2004), and Joerg-Michael Friedrich &
Jochen Speyerer, XML-based Available-to-Promise Logic for Small and

1 The real party in interest is SAP AG. App. Br. 3.
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2
Medium Size Enterprises, Proceedings of the 35th Hawaiian International
Conference on System Sciences, 1–10 (2002) (“Friedrich”).

ANALYSIS
Claims 1, 6, and 11
Appellant acknowledges the Board considered “the same parts of the
references cited by the Examiner,” but contends the Board “interprets the
references in a different manner than any articulation previously provided.”
Request 1. Appellant contends the Board’s Decision therefore comprises a
new ground of rejection. Request 1–2.
We disagree. First, Appellant’s conclusory argument does not specify
where or how the Board interpreted the cited art in a different manner than
the Examiner. See Request 1–2. Second, Appellant posits an ipsissimis
verbis test where none exists. The Board need not use identical language to
that of the Examiner to avoid triggering a new ground of rejection. It is not
a new ground of rejection, for example, to provide additional explanation or
to restate the reasoning of the rejection in a different way, so long as the
“basic thrust of the rejection” is the same. In re Kronig, 539 F.2d 1300,
1303 (CCPA 1976); In re Jung, 637 F.3d 1356, 1364–65 (Fed. Cir. 2001)
(concluding the Board’s additional explanation “did not change the
rejection”). See also In re Noznick, 391 F.2d 946, 949 (CCPA 1968)
(concluding the Board did not make a new ground of rejection when
“explaining to appellants why their arguments were ineffective to overcome
the rejection made by the examiner”); In re Krammes, 314 F.2d 813, 817
(CCPA 1963) (“It is well established that mere difference in form of
expression of the reasons for finding claims unpatentable or unobvious over
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the references does not amount to reliance on a different ground of
rejection” (internal citations omitted)); In re Cowles, 156 F.2d 551, 555
(CCPA 1946) (holding that the use of “different language” does not
necessarily trigger a new ground of rejection).
Here, Appellant admits the Board considered “the same parts of the
references cited by the Examiner.” Request 1. Appellant does not explain
how the Board’s articulation differs from the Examiner’s, much less make
any showing that the Board’s articulation altered the “basic thrust of the
rejection.” Kronig, 539 F.2d at 1303. We therefore decline to disturb the
Decision on this ground.
Claims 2, 7, and 12
Appellant asserts the Board “articulated that . . . [because] certain
things can constitute attributes and Wilson discloses display of some of
those things . . . [Wilson] satisfies the identification of an attribute exerting
an effect” required by claim 2. Request 2. Appellant contends this
conclusion is erroneous, as “it is impossible to discern which, if any, of these
attributes exerts an effect on at least one result.” Id. at 2–3.
We disagree. The Examiner found Wilson’s “promising engine”
returns result data that satisfies the requirements of claim 2. See Final Rej.
6; Ans. 21. The cited portions of Wilson disclose that customers can submit
“requests for promise” and “requests for order” that contain information
about the promise or order, including, among other things, delivery date,
item quantity, and a flag indicating the type of request (e.g., promise or
order). See Wilson ¶ 37; Ans. 21. Wilson also discloses the promising
engine is responsible for determining “product availability,” i.e., whether the
requested item is in inventory and can be delivered at the promised date and
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time. Ans. 20 (citing Wilson, ¶ 35). In response, the promising engine
returns a “promise” or “confirmation” that is displayed at the client,
presumably promising or confirming, as appropriate, that the terms specified
in the request for promise or confirmation can be met. See, e.g., Wilson ¶39;
Fig. 3. By transmitting (and subsequently displaying) a promise or
confirmation that the specified terms can be met, Wilson’s system identifies
result data that includes at least one attribute (e.g., delivery date, item
quantity, product availability, etc.) that exerts an effect on the at least one
result. The attributes “exert an effect” because the attributes limit the results
returned and are “identified” in the sense that they are transmitted and
displayed instead of other options related to the request.
This is consistent with Appellant’s Specification. Appellant fails to
explicitly define what is meant by the claimed “attribute that exerts an
effect.” See App. Br. 10; Reply Br. 6; Request 3. The portions of the
Specification cited by Appellant simply explain that “[v]arious attributes
exerting an effect on the results of the availability check can be identified in
the display 500 [of Figure 3].” Spec. ¶ 38; App. Br. 4 (citing Spec. 6:22–
27). Similar to the cited portions of Wilson, Appellant’s Figure 3 depicts a
display of a result overview that includes attributes such as “delivery date”
and “product availability” Spec., ¶¶ 36, 39. Appellant’s Specification also
indicates that the effects exerted by the attribute include “a constraining
effect” and “visualiz[ation],” particularly by color or number. See Spec. ¶¶
12–14. As explained above, Wilson’s attributes limit (i.e., constrain) the
result data shown and include numeric information such as item quantity.
Moreover, Wilson indicates these attributes may otherwise affect how result
data are visualized, as Wilson’s flag distinguishes between requests for
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promise and requests for order. One of skill in the art would recognize that
different types of requests would result in different information being
transmitted and displayed at the client.
Appellant also again relies on an ipsissimis verbis test. Specifically,
Appellant contends “the Board is bound by the language elected by the
Appellant and must find that language (as opposed to language of its own
devise) suggested by the reference.” Request 3 (emphasis added).
We disagree that the prior art must provide teachings in “the language
elected by the Appellant.” See In re Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011) (subject matter does not change as a function of how one chooses to
describe it). Additionally, Appellant fails to persuade us of error because for
each of the claims, although the cited text does not repeat the recited claim
limitation verbatim, one skilled in the art would understand the recited claim
limitation encompasses the disclosure cited by the Examiner. See In re
Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether a reference teaches a
claim limitation “is not an ‘ipsissimis verbis’ test”).

DECISION
Accordingly, we have granted Appellant’s Request to the extent that
we have reconsidered the original Decision, but have DENIED it with
respect to making any changes to the Decision.
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)(iv).

DENIED
hh