Ex Parte Koller et al

Patent Trial and Appeal Board

Jun 16, 2016

12461955 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/461,955 08/28/2009
62730 7590 06/20/2016
SAP SE
3410 HILL VIEW A VENUE
PALO ALTO, CA 94304
FIRST NAMED INVENTOR
Walter Koller
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.
2002P00050US01 7735
EXAMINER
ULLAH MASUD, MOHAMMAD R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
APRIL.MENG@SAP.COM
GIPinhouse@sap.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WALTER KOLLER,
MATTHIAS RICHTER, and HEIKE BERGER
Appeal2013-010546
Application 12/461,955 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, SHEILA F. Mc SHANE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 5-8, 10-13, and 19. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is SAP AG. Appeal
Brief, hereafter "App. Br." 1, filed April 23, 2013.
Appeal2013-010546
Application 12/461,955
BACKGROTJND
The invention relates to computer-implemented prospective planning
of personnel costs for an enterprise. Abstract, Specification, hereafter
"Spec.," 4:4--5. The prospective planning can include conducting planning
relating to personnel costs. Id.
Representative claim 19 is reproduced from pages 14 and 15 of
Claims Appendix of the Appeal Brief (App'x) as follows, with emphasis
added to relevant claim limitations:
19. A computer-implemented method of prospectively
planning personnel costs for an enterprise, the computer
including a processor and memory, and the method comprising
steps performed by the computer of:
conducting planning preparation, by the processor, to
plan the personnel costs,
wherein the planning preparation comprises creating
more than one scenario for the enterprise and setting
different scenario parameters for each of the more than
one scenario, wherein the different scenario parameters
include a standard case scenario and a worst case
scenario;
specifying, by the processor, a limit for each of the more
than one scenario;
modifying, by the processor, the limit during the planning
preparation when the personnel costs change;
collecting data, by the processor and based on the limit
and in a decentralized manner, including direct cost items
and dependent cost items that relate to the personnel costs,
using a computer;
performing, by the processor, a cost planning run using
the computer, wherein peiforming the cost planning run
comprises valuating the collected cost items based on the
more than one scenario and the different scenario
parameters;
valuating, by the processor, the direct cost items and the
dependent cost items,
2
Appeal2013-010546
Application 12/461,955
wherein the direct cost items are valuated before the
dependent cost items;
conducting, by the processor, a detailed analysis of
results of the cost planning run;
revising, by the processor, the collected data to produce
updated results based on the detailed analysis;
customizing the planning of the personnel costs for an
enterprise, wherein customizing comprises specifying one or
more of (1) cost items and their assignment to symbolic
accounts, statistical key figures, and cost types; (2) planning
contexts; (3) planning scenario definitions; (4) settings for
generating dependent and additional cost items during a
planning run; ( 5) settings for the valuation and limitation of
individual cost items according to an object's organizational
attributes; ( 6) individual methods for collecting data on
employees, organizational units, jobs, and positions; and (7)
evaluation paths for planning runs; and
reporting, by the processor, the updated results,
wherein the direct cost items are written to a cost object
and the dependent cost items are generated according to a
customizing module and a planning preparation module.
The Examiner rejects claims 5-7, 10-13, and 19 under 35 U.S.C.
§ 102(e) 2 as anticipated byNourbakhsh3. Claim 8 is rejected under 35
U.S.C. § 103(a) over Nourbakhsh and Davison4 . Final Action, hereafter
"Final Act.," 2-7, mailed June 6, 2012; Answer, hereafter "Ans." 2-5,
mailed July 11, 2013.
2 The current application was filed prior to the effective date of the AIA
(America Invents Act), so the citations to 35 U.S.C. §§ 102 and 103 are to
the pre-AIA versions.
3 US Patent 7,478,051 B2, issued January 13, 2009.
4 US Publication 2003/0101238 Al, published May 29, 2003.
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Appeal2013-010546
Application 12/461,955
DISCUSSION
Given our disposition of this Appeal, as discussed below, we need
only address certain of the Appellants' arguments. More specifically, the
Appellants argue that N ourbakhsh fails to disclose several of the claim
limitations, i.e., the "conducting," "collecting," and "performing" steps,
however, we will only address the alleged deficiencies of the prior art related
to the "conducting planning preparation, by the processor, to plan the
personnel costs ... wherein the planning preparation comprises creating
more than one scenario ... and setting different scenario parameters ...
wherein the different scenario parameters include a standard case scenario
and a worst case scenario" step. See App. Br. 6-11.
As to the "conducting" step, the Examiner relies upon this portion of
Nourbakhsh for the disclosure of the claim limitation:
The automated headcount and training forward
calculator allows the user to instantly view the
consequences of their hiring, training and transfer
decisions on future head count. In one
embodiment, the implementation is Java code that
is triggered whenever the user makes changes to
any of the following parameters of a long-range
plan: the number of agents to be hired in a month;
the attrition rate for one or more months; the
number of agents that will transfer into or out of a
profile; the initial headcount forecast going into
the plan; and the amount of training time required
to convert a newly hired or trained individual into
a productive agent.
4
Appeal2013-010546
Application 12/461,955
See Advisory Action ("Advisory Act.") 2, mailed October 15, 2012; Ans. 3
(citing Nourbakhsh 8:32--43). 5
The Appellants argue that N ourbakhsh addresses "head count" and
does not address planning of personnel costs, and also does not create more
than one scenario, i.e., a "standard" and a "worst case" scenario, as required
by claim 19. App. Br. 7-8; Reply Br. 2-3.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Based on the record before us, we find that the
preponderance of the evidence does not support the Examiner's finding that
Nourbakhsh discloses all the elements of claim 19, and in particular,
discloses the "conducting" step. Although the "initial headcount forecast" of
Nourbakhsh could arguably be related to a "standard case scenario,"
Nourbakhsh appears to be devoid of any disclosure that describes a "worst
case scenario." Additionally, the disclosure of calculation of a "future head
count" may be related to the planning of personnel costs, but that is not
necessarily the case. As such, we cannot sustain the Examiner's rejection of
claim 19, or claims 5-7 and 10---13 which depend therefrom, under 35 U.S.C.
§ 102(e).
5 In the Final Action, the Examiner also refers to another portion of
Nourbakhsh for its disclosure related to the "conducting" limitation, but then
does not subsequently discuss this referenced portion. Compare Final Act. 3
(citing N ourbakhsh 11: 61-12: 11, Fig. 21) with Advisory Act. 2; Ans. 3. In
any event, we do not view this disclosure as relevant to the "conducting"
claim limitation as it addresses a portion of a "Wizard" that relates to
improvements in service performance only.
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Appeal2013-010546
Application 12/461,955
In the obviousness rejection of claim 8, which depends from
independent claim 19, the Examiner relies upon Davison for its teaching
related to the additional limitation where data is collected "using a Web-
based interface." Final Act. 5---6. The Examiner, however, relies only upon
Nourbakhsh's disclosures for the teachings of the remainder of the
limitations. We therefore cannot sustain the rejection of claim 8 for the
reasons discussed above.
SUMMARY
The rejection of claims 5-7, 10-13, and 19 under 35 U.S.C. § 102(e)
is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) is reversed.
REVERSED
6