Ex Parte Misovski

Patent Trial and Appeal Board

Aug 16, 2013

11434323 (P.T.A.B. Aug. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FILIP MISOVSKI
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Appeal 2011-003399
Application 11/434,323
Technology Center 2100
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Before DONALD E. ADAMS, ERIC GRIMES, and
ERICA A. FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1-4 and 6-24 (App.
Br. 4). Examiner entered rejections under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The claims are directed to a method of estimating a size of developing
a user interface for a predefined application development; a computer
program product tangibly embodied in an information carrier, the computer
program product including instructions that, when executed, cause a

1 The Real Party in Interest is SAP AG (App. Br. 2).
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processor to perform operations; and a computer system having a processor
and memory. Claims 1, 20, and 21 are representative and are reproduced in
the Claims Appendix of Appellant’s Brief.
Claims 1-4, 6-8, 10, and 12-24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Seetharaman2 and Eiche.3,4
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Seetharaman, Eiche, and Rauen.5
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Seetharaman, Eiche, and Gonos.6
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Seetharaman suggests “[a] system and method to perform planning
and control/estimation for software modules within an automated
development system” (Seetharaman, Abstract; see also id. at 1: ¶ [0003]).
FF 2. Seetharaman suggests an “approach for software size estimation”
that involves the consideration of user interface (UI)/data elements (id. at 5:
¶ [0060]).
FF 3. Eiche suggests the
[E]stimation of factors associated with the economic costs of
development of desired products by analysis of descriptions of
features of the product, such as the functional content of

2 Seetharaman et al., US 2005/0210442 A1, published September 22, 2005.
3 Eiche et al., US 6,715,130 B1, published March 30, 2004.
4 Examiner withdrew the rejection of cancelled claim 5 (Supp. Ans. 1).
5 Rauen, IV et al., US 2004/0015408 A1, published January 22, 2004.
6 Gonos, US 2004/0003369 A1, published January 1, 2004.
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software, and, more particularly, to a system and metric for
quantitative evaluation of customer requirements for a desired
product, especially a software application.
(Eiche, col. 1, ll. 7-13.)
FF 4. Appellant discloses that a “UI characteristic may relate to data
archiving. For example, the UI characteristic can indicate whether and to
what extent the development requires the solution to take into account the
retention of data needs” (Spec. 20: 3-5, emphasis added).
FF 5. Seetharaman fails to suggest “at least one weight point having a
weighing factor derived based on a UI characteristic indicating requirements
for retaining data” as required by Appellant’s claim 1 (Ans. 3; see also App.
Br. 11; Appellant’s Claim 1).
FF 6. Examiner finds that Eiche suggests “an analysis of supported
activities as requirements, where an example of the requirements is archival
of records” (Ans. 12 (emphasis removed); Cf. FF 4).
FF 7. Appellant discloses that a “UI characteristic may relate to
configuration of a business solution … such as to implement and upgrade an
existing solution at a customer’s site, or to define and parameterize the
technical and business process flow at a customer’s site” (Spec. 19: 18-22).
FF 8. Seetharaman fails to suggest “at least one weight point having a
weighting factor derived based on a UI characteristic indicating that the UI
requires configuration of a business solution” as required by Appellant’s
claim 20 (Ans. 7; see also App. Br. 12; Appellant’s Claim 20).
FF 9. Examiner finds that Eiche suggests “estimating the development
effort, cost, staffing, schedule, and the like associated with the development
of the software system …, where cost, staffing and scheduling are aspects
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related to the generally termed ‘configuration of a business solution’” (Ans.
13; Cf. FF 7).
FF 10. Appellant discloses that a “UI characteristic may relate to
performance and scalability. For example, the UI characteristic can indicate
whether and to what extent the buyer or user has required a specific response
time or throughput, or whether there are scalability requirements that need to
be considered in the development. This may correlate to[, inter alia,]
‘transaction rate’” (Spec. 21: 9-14).
FF 11. Seetharaman suggests “at least one weight point having a weighting
factor derived based on a UI characteristic indicating that the UI is subject to
a performance requirement including a transaction rate” as required by
Appellant’s claim 21 (Ans. 8; Seetharaman 1: ¶ [0008]; see also App. Br.
13-14; Appellant’s Claim 21).
FF 12. Examiner relies on Rauen to suggest “developing an application that
supports internationalization and localization for user interfaces” (Ans. 10).
FF 13. Examiner relies on Gonos to suggest “estimating a level of effort
based on security requirements” (Ans. 11).
ANALYSIS
Based on the combination of Seetharaman and Eiche, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to modify the weight points for the UI as suggested
by Eiche.

Claim 1:
Appellant contends that Seetharaman fails to suggest “a characteristic
of a user interface (UI) indicating a requirement for retaining or storing data,
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in the context of estimating a size of developing a user interface” (App. Br.
12). We are not persuaded. Examiner relies on Eiche to suggest this
element of Appellant’s claim 1 (FF 6). Appellant failed to explain why
Examiner’s combination of Seetharaman and Eiche fails to suggest the
subject matter of Appellant’s claim 1.

Claim 20:
Appellant contends that Seetharaman fails to suggest “a weight point
being derived based on a UI characteristic indicating that the UI requires
configuration of a business solution” (App. Br. 13). We are not persuaded.
Examiner relies on Eiche to suggest this element of Appellant’s claim 20
(FF 9). Appellant failed to explain why Examiner’s combination of
Seetharaman and Eiche fails to suggest the subject matter of Appellant’s
claim 20.

Claim 21:
Appellant contends that “[p]aragraph [0054] of Seetharaman … does
not describe or suggest a ‘UI characteristic indicat[ing] that the UI is subject
to a performance requirement including a transaction rate,’ as is claimed in
claim 21” (App. Br. 14 (alteration and emphasis original)). We are not
persuaded (see FF 11). Appellant failed to explain why Examiner’s
combination of Seetharaman and Eiche fails to suggest the subject matter of
Appellant’s claim 21.

Claims 9 and 11:
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Having found no error in Examiner’s combination of Seetharaman
and Eiche, we are not persuaded by Appellant’s contention that Rauen or
Gonos fail to make up for the alleged deficiencies in the combination of
Seetharaman and Eiche (see App. Br. 14-15; see generally FF 12-13).

CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 1, 20, and 21 under 35
U.S.C. § 103(a) as unpatentable over the combination of Seetharaman and
Eiche is affirmed. Claims 2-4, 6-8, 10, and 12-19 fall with claim 1. Claims
22-24 fall with claim 21.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Seetharaman, Eiche, and Rauen is affirmed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Seetharaman, Eiche, and Gonos is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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