Ex Parte Kalthoff et al

Patent Trial and Appeal Board

Feb 11, 2016

13370188 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/370, 188 02/09/2012
50400 7590 02/16/2016
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Wolfgang Kalthoff
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.
2058.215US3 1133
EXAMINER
AL HASHEM!, SANA A
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
02/16/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WOLFGANG KALTHOFF, THOMAS VOGT,
GUENTER HUBER, and GUIDO HOECKELE
Appeal2014-003052
Application 13/370, 188
Technology Center 2100
Before JOHN A. EVANS, CATHERINE SHIANG, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5-13, and 15-20. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The present invention relates to data processing. See generally Spec.
1. Claim 1 is exemplary:
1. A system to manage external data in a product creation
process, the system comprising:
a data storage system; and
Appeal2014-003052
Application 13/370,188
a processor configured to:
receive a first product structure from a central module;
store the first product structure in the data storage
system;
perform evaluations on the first product structure;
specify changes to the first product structure to be made
by the central module;
store results of the evaluations in the data storage system;
and
transmit the changes and the results of the evaluations to
a central module.
References and Rejections
Claims 1-3, 5, 6, 8-13, 15, 16, and 18-20 are rejected under
35 U.S.C. § 102(e) as being anticipated by Willems (US 2002/0072956 Al
June 13, 2002 (filed Oct. 5, 2001)).
Claims 7 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Willems and Vig (US 2005/0060271 Al, Mar. 17, 2005
(filed Sept. 23, 2004, priority date Sept. 12, 1995)).
ANALYSIS
The Anticipation Rejection
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellants'
arguments. We concur with Appellants' conclusion that the Examiner erred
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Appeal2014-003052
Application 13/370,188
in finding Willems discloses "specify changes to the first product structure
to be made by the central module," as recited in independent claim 1. 1
The Examiner initially cites Willems' paragraphs 444, 379, and 562
for the disputed claim limitation. See Ans. 3. Appellants analyze those
paragraphs and contend, and we agree, they do not disclose the disputed
claim limitation. See App. Br. 8-9.
In response, the Examiner cites Willems' paragraphs 415, 562, 447,
372, and 470. See Ans. 5. However, similar to the initial findings (Ans. 3),
the Examiner's findings still do not address the claim element "to be made
by the central module." See Ans. 5. Further, the Examiner's mapping does
not clarify what constitutes the claimed "first product structure" and "central
module" in Willems, as the Examiner cites paragraphs involving different
teachings from Willems. See Ans. 3, 5. We have examined the cited
Willems paragraphs, and absent further explanation from the Examiner, we
do not see how the cited portions disclose "specify changes to the first
product structure to be made by the central module," as required by claim 1.
Because the Examiner fails to provide sufficient evidence to support
the anticipation rejection, we are constrained by the record to reverse the
Examiner's rejection of claim 1, and the anticipation rejection of
corresponding dependent claims.
For similar reasons, we do not sustain the Examiner's rejection of
independent claims 10 and 11, and the anticipation rejection of
corresponding dependent claims.
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal2014-003052
Application 13/370,188
The Obviousness Rejection
The Examiner cites an additional reference for the obviousness
rejection of dependent claims 7 and 17. The Examiner relies on Willems in
the same manner discussed above in the context of claim 1, and does not rely
on the additional references in any manner that remedies the deficiencies of
the underlying anticipation rejection. See Ans. 4.
Accordingly, we reverse the Examiner's obviousness rejection of
claims 7 and 1 7.
DECISION
The Examiner's decision rejecting claims 1-3, 5-13, and 15-20 is
reversed.
REVERSED
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