Ex Parte Putten

Patent Trial and Appeal Board

Jun 2, 2016

13484237 (P.T.A.B. Jun. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/484,237 05/30/2012
62730 7590 06/06/2016
SAP SE
3410 HILL VIEW A VENUE
PALO ALTO, CA 94304
FIRST NAMED INVENTOR
BART-JAN VANPUTTEN
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.
2012P00078US 1672
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/06/2016 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 BART-JAN VAN PUTTEN
Appeal2014-003950
Application 13/484,237 1
Technology Center 3600
Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1-20 under 35 U.S.C. § 103(a) as being
obvious over Bonissone (US Pat. Appl. No. 2003/0187696 Al, pub. Oct. 2,
2003) and Abraham (US Pat. Appl. No. 2008/0114788 Al, pub. May 15,
2008). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies SAP, AG as the real party in interest. Br. 3.
Appeal2014-003950
Application 13/484,237
CLAIMED SUBJECT MATTER
Claims 1, 9, and 19 are independent. Claim 1 is illustrative of the
claims on appeal, and is reproduced below:
1. A computer implemented method in a Business Case
development system, the method comprising:
receiving a sample criterion for developing a new business
case;
accessing a database of business cases formed by criteria
that are hierarchically structured according to a common data
model;
identifying, by the computer, one or more business cases
in the database that have a criterion matching the sample
criterion;
determining, by the computer, a position of the matching
criterion in the hierarchical structure associated with the
identified one or more business cases;
scoring, by the computer, one or more other criteria
associated with the matching criterion, in the hierarchical
structure; based on a relative position with the matching
criterion;
ranking the one or more other criteria based on the scoring;
and
presenting a set of the one or more other criteria as
additional criteria for the new business case, based on the
ranking.
OPINION
The independent claims are directed to "[a] computer implemented
method in a Business Case development system" (claim 1 ), as well as a
corresponding "article of manufacture" (claim 9) and "system" (claim 19).
Although the independent claims do not include identical limitations, the
Examiner specifically addresses only claim 1 (Final Act. 7-10) and indicates
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Application 13/484,237
that "[ c ]laims 9 and 19 ... perform[] substantially similar limitations to
those set forth in claim 1 and discussed above ... and claims 9/19 are
therefore rejected using the same art and for substantially the same reasons
as set forth above" (id. at 10). The Examiner does not address any
differences in the features recited in claims 9 and 19 relative to claim 1.
In the rejection, the Examiner relies on a finding that Bonissone
teaches "determining, by the computer, a position of the matching criterion
in the structure ... associated with the identified one or more business
cases." Id. at 8. The Examiner explains that
in accordance with a broadest reasonabl[ e] interpretation, the
term "position" is encompassed by Bonissone' s scheme for
determining a match between criterion associated with a case
under consideration and the criterion from prior
cases/applications for which the quality of match is determined,
thus conveying a position between the criteria via the indication
of the quality, degree, closeness, similarity, etc. of the match.
Id. at 4. In the Examiner's Answer, the Examiner offers an explicit
construction of the term "position," asserting that "'position' is reasonably
interpreted as meaning 'an abstraction belonging to or characteristic of two
entities or parts together'." Ans. 3 (citing "exemplary definition retrieved
from https://www.vocabulary.com/dictionary/position").
Similar to the Examiner's treatment of claims 1, 9, and 19 in the
rejection, Appellant additionally acknowledges that "[i]ndependent claims 9
and 19 recite similar subject matter" as that recited in claim 1. Br. 13.
Nevertheless, Appellant disputes the Examiner's finding that Bonissone
teaches determining a position of a matching criterion. Id. at 13-14. In
particular, Appellant contends that "Bonissone 's determining a similarity . .
. cannot be equated to ... determining a position of a matching criterion"
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Appeal2014-003950
Application 13/484,237
because "Bonissone merely discloses retrieving relevant insurance
applications based on a similarity between an application component and a
corresponding application component in the retrieved insurance
application." Id. at 13.
The plain meaning of "position" is "[a] place or location." THE
AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (2011)
(http://search.credoreference.com/ content/ entry /hmdictenglang/position/O)
(last accessed June 1, 2016). When discussing the term "position," the
Specification also addresses location (i.e., location in a hierarchy),
explaining that "[a] position of the matching criterion in the hierarchical
structure is defined by the order and the level at which the matching criterion
appears in the hierarchy." Spec. i-f 25. Accordingly, we determine that a
"position" is not merely a "quality, degree, closeness, similarity, etc. of the
match" or "an abstraction belonging to or characteristic of two entities or
parts together," as the Examiner indicates supra. Rather, the term
"position," as used in the Specification, requires some indication of location.
Because the Examiner's rejection of claims 1, 9, and 19 is premised
on Bonissone teaching determining a position of matching criterion, but fails
to address how the cited teachings indicate a location of the matching
criterion, the Examiner has failed to establish that Bonissone provides the
teaching relied on for the rejection. Claims 2-8 depend from claim 1, claims
10-18 depend from claim 9, and claim 20 depends from claim 19. The
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Appeal2014-003950
Application 13/484,237
stated bases for the rejections of those dependent claims do not cure the
deficiency in the rejection of claims 1, 9, and 19.
For these reasons, we do not sustain the Examiner's decision to reject
claims 1-2 0.
DECISION
We REVERSE the Examiner's decision to reject claims 1-20.
REVERSED
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