Ex Parte Kim et al

Board of Patent Appeals and Interferences

Jun 6, 2009

09725933 (B.P.A.I. Jun. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte KYU DONG KIM, 8
YOUNG HOON KIM, BYUNG KWON KWAK, 9
and GAB YOUL LIM 10
___________ 11
12
Appeal 2008-002704 13
Application 09/725,933 14
Technology Center 3600 15
___________ 16
17
Decided:1 June 8, 2009 18
___________ 19
20
Before HUBERT C. LORIN, LINDA E. HORNER, and 21
ANTON W. FETTING, Administrative Patent Judges. 22
23
FETTING, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE 1
Kyu Dong Kim, Young Hoon Kim, Byung Kwon Kwak, and Gab 2
Youl Lim (Appellants) seek review under 35 U.S.C. § 134 of a final 3
rejection of claims 1-17 and 19-43, the only claims pending in the 4
application on appeal. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
We REVERSE. 8
The Appellants invented a system that comprises a host computer, an 9
administrator, a web client, a process designer, and a form designer. The 10
administrator controls the whole aspect of the system and the web client is a 11
tool with which the general user works on the system. The process designer 12
defines each process that could be a component of the business procedure. 13
The process designer may define a sub-process, a mail, an agent, SQL query 14
and so on. These activities are basic components of the business procedure. 15
The form designer generates a form that can be used in the business 16
procedure. By using basic templates and modifying them, a user can easily 17
generate a form that he or she wants. The generated form can also embed in 18
the cells such functions as conditional branches, scripts, data exchanges, 19
and/or computations. (Specification 3:1-12). 20
An understanding of the invention can be derived from a reading of 21
exemplary claims 1 and 32, which are reproduced below [bracketed matter 22
and some paragraphing added]. 23
1. A workflow management system for automating a business 24
process, comprising: 25
[1] a computer; 26
[2] an administrator executable by the computer, 27
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wherein the administrator manages automating the 1
business process and comprises 2
an organization manager, 3
a role/group manager, 4
an authority manager, 5
a process manager, and 6
a folder manager; 7
[3] a process designer executable by the computer, 8
wherein the process designer 9
determines flows and properties of the business 10
process and 11
defines an activity that is performed in the business 12
process; 13
[4] a database accessible by both the administrator and the 14
process designer, 15
wherein the database stores 16
organization information, 17
authority information, and 18
folder information 19
relating to the business process; 20
[5] a process engine executable by the computer, 21
wherein the process engine 22
executes the business process and allocates the 23
activity to the participant, 24
monitors a start and end of the activity, 25
facilitates storing a result of the activity, and/or 26
interfaces with 27
the database, 28
another workflow engine, and/or 29
a business application program; 30
[6] a web client, that interfaces with 31
the process engine, 32
the another workflow engine, and/or 33
the business application program, and 34
wherein the web client permits a user to interact with the 35
system; and 36
[7] a form generator executable by the computer, 37
wherein the form generator designs and operates an 38
electronic form related to the business process, and 39
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wherein the form generator interfaces with 1
the database, 2
the process designer, 3
the process engine, the web client, and/or 4
the business application program. 5
32. A method for automating a business process, the method 6
comprising steps of: 7
[1] modeling the business process, 8
wherein the step of modeling includes generating an 9
organization chart; 10
[2] defining an activity that is performed in the business 11
process; 12
[3] accessing, from a database, 13
organization information, 14
authority information, and/or 15
folder information 16
relating to the business process; 17
[4] executing the business process, 18
wherein the step of executing the business process 19
includes 20
allocating the activity to a participant, and 21
designing and 22
creating an electronic form related to the business 23
process; and 24
[5] monitoring the business process, 25
wherein the step of monitoring the business process 26
comprises 27
monitoring a start and end of the activity, 28
facilitating storing a result of the activity, and/or 29
interfacing with a workflow program and/or 30
business application program. 31
This appeal arises from the Examiner’s Final Rejection, mailed June 32
27, 2006. The Appellants filed an Appeal Brief in support of the appeal on 33
December 27, 2006. An Examiner’s Answer to the Appeal Brief was mailed 34
on July 17, 2007. A Reply Brief was filed on September 17, 2007. An oral 35
argument was presented on May 14, 2009. 36
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PRIOR ART 1
The Examiner relies upon the following prior art: 2
Berg US 5,999,911 Dec. 7, 1999 3
Bacon US 6,430,538 B1 Aug. 6, 2002 4
5
6
REJECTIONS 7
Claims 1-13, 19-20, 24, 26, and 28-31 stand rejected under 35 U.S.C. 8
§ 102(e) as anticipated by Bacon. 9
Claims 14, 16, 17, 25, 27, and 32-43 stand rejected under 35 U.S.C. § 10
103(a) as unpatentable over Bacon.2 11
Claims 15 and 21-23 stand rejected under 35 U.S.C. § 103(a) as 12
unpatentable over Bacon and Berg. 13
14
ISSUES 15
The issue of whether the Appellants have sustained their burden of 16
showing that the Examiner erred in rejecting claims 1-13, 19-20, 24, 26, and 17
28-31 under 35 U.S.C. § 102(e) as anticipated by Bacon turns primarily on 18
whether Bacon describes a form generator that designs and operates an 19
electronic form related to the business process as in limitation [7] of claim 1. 20
The issue of whether the Appellants have sustained their burden of 21
showing that the Examiner erred in rejecting claims 14, 16, 17, 25, 27, and 22
32-43 under 35 U.S.C. § 103(a) as unpatentable over Bacon turns primarily 23
on whether Bacon describes designing and creating an electronic form 24
related to a business process as in limitation [4] of claim 32. 25
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The issue of whether the Appellants have sustained their burden of 1
showing that the Examiner erred in rejecting claims 15 and 21-23 under 35 2
U.S.C. § 103(a) as unpatentable over Bacon and Berg turns primarily on the 3
above rejection under 35 U.S.C. § 103 over Bacon. 4
5
FACTS PERTINENT TO THE ISSUES 6
The following enumerated Findings of Fact (FF) are believed to be 7
supported by a preponderance of the evidence. 8
Bacon 9
01. Bacon is directed to a workflow management system that 10
provides personal subflow processing. A personal subflow 11
definition is not bound to an explicit set of actors and thus 12
improves re-usability (Bacon 4:5-9). 13
02. The primary components are a process definition tool, server, 14
agents, database, and client and may further include an 15
administration interface, LDAP (Lightweight Directory Access 16
Protocol) services, certificate services, and an HTTP server 17
(Bacon 4:15-20). 18
03. The server, the engines, and certain aspects of the client are 19
implemented with the Java programming language. Likewise, 20
though it is agent implementation-specific, the agents may be 21
implemented in Java. The flow engine and server interact with the 22
database, implemented as an Object Database Management 23

2 The statement of the statutory basis for the rejection (Answer 14) does not
include claim 32-43, but the analysis of the rejection does include these
claims (Answer 20-28).
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Group-compliant (ODMG-compliant), object-oriented database, 1
that is a multi-transaction and multi-threaded database that, among 2
other things, provides Java bindings to facilitate persistence of the 3
Java objects used in implementing the server and engines. Work 4
items are similarly implemented using Java, but extended to 5
improve persistence via the database (Bacon 5:23-51). 6
04. In defining the activities that constitute a personal subflow, the 7
developer specifies the activities to be performed and associates 8
predefined HTML pages with the activities analogously to that 9
described in section 2 above. The HTML pages effectively 10
display forms that display some or all of the work item contents to 11
the participant and that are used to receive participant-entered data 12
(Bacon 9:20-26). 13
Facts Related To The Level Of Skill In The Art 14
05. Neither the Examiner nor the Appellants has addressed the level 15
of ordinary skill in the pertinent arts of systems analysis and 16
programming, management control systems, and database 17
management. We will therefore consider the cited prior art as 18
representative of the level of ordinary skill in the art. See Okajima 19
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 20
absence of specific findings on the level of skill in the art does not 21
give rise to reversible error ‘where the prior art itself reflects an 22
appropriate level and a need for testimony is not shown’”) 23
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 24
F.2d 158, 163 (Fed. Cir. 1985)). 25
Facts Related To Secondary Considerations 26
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06. There is no evidence on record of secondary considerations of 1
non-obviousness for our consideration. 2
3
PRINCIPLES OF LAW 4
Anticipation 5
"A claim is anticipated only if each and every element as set forth in 6
the claim is found, either expressly or inherently described, in a single prior 7
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 8
628, 631 (Fed. Cir. 1987). "When a claim covers several structures or 9
compositions, either generically or as alternatives, the claim is deemed 10
anticipated if any of the structures or compositions within the scope of the 11
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 12
Cir. 2001). "The identical invention must be shown in as complete detail as 13
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 14
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 15
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 16
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 17
Obviousness 18
A claimed invention is unpatentable if the differences between it and 19
the prior art are “such that the subject matter as a whole would have been 20
obvious at the time the invention was made to a person having ordinary skill 21
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 22
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 23
In Graham, the Court held that the obviousness analysis is bottomed 24
on several basic factual inquiries: “[(1)] the scope and content of the prior art 25
are to be determined; [(2)] differences between the prior art and the claims at 26
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issue are to be ascertained; and [(3)] the level of ordinary skill in the 1
pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 2
406. “The combination of familiar elements according to known methods is 3
likely to be obvious when it does no more than yield predictable results.” Id. 4
at 416. 5
“When a work is available in one field of endeavor, design incentives 6
and other market forces can prompt variations of it, either in the same field 7
or a different one. If a person of ordinary skill can implement a predictable 8
variation, § 103 likely bars its patentability.” Id. at 417. 9
“For the same reason, if a technique has been used to improve one 10
device, and a person of ordinary skill in the art would recognize that it would 11
improve similar devices in the same way, using the technique is obvious 12
unless its actual application is beyond his or her skill.” Id. 13
“Under the correct analysis, any need or problem known in the field 14
of endeavor at the time of invention and addressed by the patent can provide 15
a reason for combining the elements in the manner claimed.” Id. at 420. 16
17
ANALYSIS 18
Claims 1-13, 19-20, 24, 26, and 28-31 rejected under 35 U.S.C. § 102(e) as 19
anticipated by Bacon. 20
Claim 1 is the sole independent claim in this rejection. The Examiner 21
found that Bacon anticipated claim 1. The Appellants contend that Bacon 22
fails to describe an executable administrator as in limitation [2] or a form 23
generator that designs forms as in limitation [7]. 24
We agree with the Appellants as to the absence of a form generator. 25
The Examiner found that Bacon described a Java applet and further found 26
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that the Java applet is a form generator (Answer 5-6). The Examiner 1
premised this on the finding that a form generator supports the various kinds 2
of graphic objects, data input cells, graphic signatures, automatic 3
calculations, database access and programming scripts based on the 4
Specification at page 16 (Answer 33). 5
This is simply erroneous logic. It is premised on the assertion that if 6
A implies B and B is true, then A is true. This is incorrect. The truth table 7
for such an implication is that either A is false or B is true. Such implication 8
does not show that A is true. Thus, the fact that a form generator supports 9
various kinds of graphic objects and Bacon’s Java applet also supports 10
similar various kinds of graphic objects (FF 03) does not imply that Bacon’s 11
Java applet is a form generator. 12
The Examiner also cites Bacon 7:1-3 for an explicit recitation of a 13
form generator (Answer 33). This portion recites a participant selecting an 14
iconic “representation of a work item in the client's task manager window. 15
The selection causes a selection message to be sent to the server 110 16
indicating that a given work item has been selected.” The Examiner does 17
not explain how this recitation describes a form generator that designs 18
forms, and we do not find that it does describe such a form generator. 19
We do not find any description separate from that found by Examiner 20
of such a form generator that designs forms in Bacon. The only form 21
explicitly described by Bacon is a predefined HTML form (FF 04). Since it 22
is predefined, by definition it is not designed by the generator. 23
Thus, the Examiner erred in finding that Bacon describes the form 24
generator that designs forms. Since this finding is sufficient to show 25
reversible error of the Examiner’s rejection, we need not reach the question 26
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of whether an executable administrator is described. The remaining claims 1
depend from claim 1 and incorporate the same form generator limitation. 2
3
Claims 14, 16, 17, 25, 27, and 32-43 rejected under 35 U.S.C. § 103(a) as 4
unpatentable over Bacon. 5
Claim 32 is the sole independent claim in this group. Claims 14, 16, 6
17, 25, and 27 depend from claim 1. 7
The Examiner found that Bacon described the limitations of claim 32 8
except for the organization chart of limitation [1] (Answer 20-21, referring 9
back to the analysis of claim 14 at Answer 15-16). The Appellants contend 10
that again no design of forms is described as in limitation [4] (Br. 12) and 11
also argue the absence of any motivation to modify Bacon (Br. 9-10). 12
We agree with the Appellants as to the absence of the designing of 13
forms for the same reasons we found supra. The Examiner provided no 14
additional findings as to the form design that would overcome the absence of 15
such a showing in the prior rejection under anticipation. The remaining 16
claims depend from either claim 1 or 32 and accordingly also contain the 17
limitation of forms design that is not found in Bacon. Since this finding is 18
sufficient to show reversible error of the Examiner’s rejection, we need not 19
reach the question of whether motivation to modify Bacon was properly 20
found. 21
22
Claims 15 and 21-23 rejected under 35 U.S.C. § 103(a) as unpatentable 23
over Bacon and Berg. 24
These claims depend from claim 1 and accordingly also contain the 25
limitation of a form generator that designs forms that is not found in Bacon. 26
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CONCLUSIONS OF LAW 1
The Appellants have sustained their burden of showing that the 2
Examiner erred in rejecting claims 1-13, 19-20, 24, 26, and 28-31 under 35 3
U.S.C. § 102(e) as anticipated by Bacon. 4
The Appellants have sustained their burden of showing that the 5
Examiner erred in rejecting claims 14, 16, 17, 25, 27, and 32-43 under 35 6
U.S.C. § 103(a) as unpatentable over Bacon. 7
The Appellants have sustained their burden of showing that the 8
Examiner erred in rejecting claims 15 and 21-23 under 35 U.S.C. § 103(a) as 9
unpatentable over Bacon and Berg. 10
11
DECISION 12
To summarize, our decision is as follows: 13
• The rejection of claims 1-13, 19-20, 24, 26, and 28-31 under 35 14
U.S.C. § 102(e) as anticipated by Bacon is not sustained. 15
• The rejection of claims 14, 16, 17, 25, 27, and 32-43 under 35 U.S.C. 16
§ 103(a) as unpatentable over Bacon is not sustained. 17
• The rejection of claims 15 and 21-23 under 35 U.S.C. § 103(a) as 18
unpatentable over Bacon and Berg is not sustained. 19
20
REVERSED 21
22
23
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hh 2
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H.C. PARK & ASSOCIATES, PLC 4
8500 LEESBURG PIKE 5
SUITE 7500 6
VIENNA, VA 22182 7