Ex Parte Rangadass

Patent Trial and Appeal Board

Jun 14, 2013

10847422 (P.T.A.B. Jun. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VASUDEV RANGADASS1
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Appeal 2010-007077
Application 10/847,422
Technology Center 2100
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Before JEAN R. HOMERE, JASON V. MORGAN, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The Real Party in Interest is i2 Technologies US, Inc. (App. Br. 2.)
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STATEMENT OF THE CASE2
Appellant filed a timely Request under 37 C.F.R. § 41.52 asking that
we reconsider our Decision in which we affirmed the Examiner’s rejection
of claims 1-34 under §§ 102 and 103. Decision 10.
We have reconsidered our decision in light of Appellant’s arguments
in the Request, and Appellant has not persuaded us that we misapprehended
or overlooked any points in rendering our Decision. We decline to change
our prior Decision for reasons discussed infra.
ANALYSIS
In the Request, Appellant alleges (Request 2) that the Board erred in
four ways:
(1) The Board misapprehended or overlooked appropriate standards
of claim construction by not construing claims 1, 2, 5-13, 16-24, and 27-34
in light of the specification;
(2) The Decision raised undesignated new grounds of rejection by
asserting that “core enterprise reference data” constitutes non-functional
descriptive material;

2 This Decision on Request for Rehearing refers to Appellants’ Request for
Rehearing (“Request”, filed May 28, 2013); the Patent Trial and Appeal
Board Decision on Appeal (“Decision”, mailed Mar. 25, 2013); Appeal Brief
(“App. Br.,” filed Nov. 9, 2009); Reply Brief (“Reply Br.,” filed Mar. 22,
2010); Examiner’s Answer (“Ans.,” mailed Jan. 22, 2010); Final Office
Action (“FOA,” mailed May 29, 2009); and the original Specification
(“Spec.,” filed May 17, 2004).
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(3) The Board misapprehended or overlooked appropriate standards
of claim construction by not construing claims 3-4, 14-15, and 25-26 in light
of the specification; and
(4) The Decision raised undesignated new grounds of rejection by
asserting that claim 3 inherits the deficiencies of claim 1.”
We note that these four issues all turn on the issue of claim
construction, particularly the patentable weight, if any, which should be
accorded to the phrase “core enterprise reference data.”
Claim Construction
Appellant argues that the Board failed to properly construe the
language of claim 1 by overlooking the Examiner’s alleged misreading and
misquoting of the cited art, i.e., Zargham, and by the Board’s alleged
misapprehension of the teachings of the prior art. Appellant also contends
that the Board overlooked language in Appellant’s specification that
distinguishes between the types of data disclosed in Zargham and that
claimed by Appellant. Request 2.
In particular, Appellant contends that the Board erred by interpreting
the disputed “core enterprise reference data” to include operational data
which allegedly contradicts Appellant’s Specification, and that even
assuming, arguendo, that Zargham discloses “core enterprise reference data”
and a “centralized master repository,” Zargham does not disclose “a
centralized master repository” that comprises “core enterprise reference
data.” Request 3. Further, Appellant contends that Zargham only discloses
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operational data, and not the disputed “core enterprise reference data.”
Request 4.
We point out that our Decision started by first adopting the
Examiner’s findings. Decision 4. The Examiner’s analysis, and thus our
own, started out by first considering the scope and meaning of the claim
limitation “core enterprise reference data,” which must be given the broadest
reasonable interpretation consistent with Appellant’s disclosure, as
explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted
as broadly as their terms reasonably allow.”). Our reviewing court further
states, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary
artisan after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en banc). “Moreover, limitations are not to be
read into the claims from the specification.” In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d at 321).
We note Appellant’s sole definition of “core enterprise reference
data” is merely data that “describes the structure and characteristics of the
enterprise and its entities and is not transient or transactional in nature . . .
[and which] may be associated with enterprise data masters and . . . stored in
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a core reference data repository, although such data is not restricted to the
type of data associated with traditional enterprise data masters.” Spec. 2,
ll. 4-9. As cited by the Examiner (Ans. 13), Appellant’s Specification
provides further elaboration by stating that “[s]ince MDM system 4 is
primarily concerned with structural data describing the enterprise . . . [i.e.,]
with data associated with entities within the business structure of the
enterprise, the focus of the MDM architecture is on the storage,
management, and retrieval of data associated with entities or with
relationships between entities” (Spec. 6, ll. 20-24), and “that stored
enterprise reference data includes attributes (such as item, location, and
time) associated with an entity.” Ans. 13 (citing Spec. 7, ll. 21-27).
Thus, based on Appellant’s Specification, cited supra, we find that the
definition of “core enterprise reference data” is enterprise-relevant data that
describes the enterprise’s structure and entity relationships, including
attributes such as item, location, and time, but that the data is not restricted
to traditional types of data associated with enterprise data masters. Thus, we
did not overlook language in Appellant’s Specification that purportedly
distinguishes the type of data being claimed.
The Examiner cited Zargham, and we agreed (Decision 6-7), as
teaching the disputed “core enterprise reference data.” Ans. 3-4 and 13
(citing Zargham ¶¶ [0059] and [0072]). As discussed by the Examiner,
Zargham teaches:
The [zero latency enterprise] ZLE framework routes
information across various enterprise applications using EAI
technologies, and aggregates data in an operational data store
(‘ODS’ or ‘data store’ in short) functioning as a central
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repository for enterprise-relevant information. The ZLE
framework assimilates many existing and new products, tools,
and services that work together to achieve a consolidated, up-
to-date view of state and data that is gleaned from the central
repository. Although it is not a real time data warehouse
system, the ZLE framework supports DSS (decision support
systems) and data mart operations. Thus the data store is also
a central repository and real-time data source for data mining
and analysis of enterprise business intelligence applications.
Additionally, with the data store capability and centralized
creation and management of rules and policies, the ZLE
framework allows consistent, real-time application of business
rules and policies across the enterprise including all its
products, services, and customer interaction channels.
Furthermore, the ZLE framework allows developing an
enterprise IT infrastructure toward reducing unwanted operation
latencies.
Zargham ¶ [0072] (emphasis added).
Comparing Appellant’s definition, supra, with Zargham’s disclosure
cited above, we find that the disclosed “enterprise-relevant information” and
“real-time application of business rules and policies across the enterprise
including all its products, services, and customer interactions” are concrete
examples of core enterprise reference data which do not contradict
Appellant’s definition, cited above, and which also are non-transactional in
nature.
Appellant further argues:
Appellant has specified the types of data that may constitute
“core enterprise reference data” such as, “(1) master data 22a;
(2) metadata 22b; (3) enterprise models 22c; (4) parameter data
22d; (5) attribute/trait data 22e; (6) event (calendar) data 22f;
(7) supply chain network data 22g; and (8) ABC [Activity
Based Costing] data 22h” . . . None of these terms appear
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anywhere in Zargham, and definitely do not appear in
¶¶ [0059] and [0072] on which the Decision relies.
Request 7 (citing Spec. 14, ll. 30-32 (“App. ¶ [0067]”)) (emphases in
original). We note that this is a new argument presented for the first time in
the Request, such that we need not consider it.
Appellant also argues for the first time that the Specification
“describes the necessity for maintaining the separation between core
enterprise reference data and operational data created by services (enterprise
solution components)” (Request 5 (citing Spec. ¶ [0020])); and that
“Zargham’s disclosure of an operational data store teaches away from
‘centralized repository comprising core enterprise reference data.’”
Request 7 (emphases in original).3
Appellant presents new arguments not raised in the Briefs before the
Board, because Appellant’s original argument addressed the claim limitation
“core enterprise reference data,” as recited in claim 1. App. Br. 12 et seq.
Such new arguments will not be considered. (“Arguments not raised in the
briefs before the Board and evidence not previously relied upon in the brief
and any reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.” 37 C.F.R.
§ 41.52(a)(1)). Appellant’s argument that a new ground of rejection was
raised is incorrect, as discussed, infra, and therefore has not identified a
proper reason for meeting one of these exceptions.

3 We note that “the question whether a reference ‘teaches away’ from the
invention is inapplicable to an anticipation analysis.’” Celeritas Techs., Ltd.
v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998).
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During examination, a claim must be given its broadest reasonable
interpretation consistent with the Specification as it would be interpreted by
one of ordinary skill in the art. Because the applicant has the opportunity to
amend claims during prosecution, giving a claim its broadest reasonable
interpretation will reduce the possibility that the claim, once issued, will be
interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984); In re Zletz, 893 F.2d at 321 (“During patent
examination the pending claims must be interpreted as broadly as their terms
reasonably allow.”).
We note that, even if we considered the new arguments, Appellant is
arguing their disclosure, and not the claim limitations which we construed in
our Decision. Thus, we did not misapprehend the teachings of Zargham as
disclosing and thus anticipating the storage of “core enterprise reference
data” in a “centralized master repository,” as recited in claim 1.
With regard to the rejection of claim 3, Appellant primarily relied
upon the argument that the Robinson reference teaches operational data, and
not “core enterprise reference data,” as recited in claim 1, from which
claim 3 depends. App. Br. 17-18. In particular, Appellant argues that
“Robinson merely relates to ‘document models of business processes’ or
clearly ‘operational’ data, in stark contrast to the ‘core enterprise reference
data’ of Appellant’s claims.” App. Br. 17. Thus, our Decision did not
misinterpret or misapprehend Appellant’s arguments and the Examiner’s
findings. Decision 9.
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Accordingly, we find Appellant’s allegation that we erred in our claim
construction by misapprehending or overlooking appropriate standards of
claim construction to be without merit.
Non-Functional Descriptive Material
Appellant argues that our Decision was in error because we found that
“core enterprise reference data” constitutes non-functional descriptive
material, and that such a determination constitutes an undesignated new
ground of rejection. Request 10. Appellant contends that our analysis of
“core enterprise reference data” as being non-functional descriptive material
was carried out in isolation without consideration of its alleged functional
relationship with the entirety of claim 1. Id.
Appellant argues:
The Decision changed the statutory basis for rejecting
Claim 1 from § 102, as argued by the Examiner, to § 103.
(“Nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).” Decision 7). See
also, In re Nuijten, 515 F.3d 1361, 1362 (Fed. Cir. 2008)
(dissenting opinion of Linn, J.) (asserting that “printed matter”
rejections are necessarily § 103 determinations).
Request 11. We disagree. We first note that we did not rely upon Nuijten,
and particularly did not rely upon non-binding dicta in Judge Linn’s
dissenting opinion in that case.
We further point out that Appellant ignores our additional citation
(Decision 7) to Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (“[N]onfunctional descriptive material cannot lend
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patentability to an invention that would have otherwise been anticipated by
the prior art.”), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006) (Rule 36), a
holding that supports our finding that the Examiner’s anticipation rejection
was not in error. Thus, non-functional descriptive material may be cited in a
rejection under either 35 U.S.C. § 102 or § 103.
We reached our finding regarding core reference enterprise data being
non-functional descriptive material as part of our claim construction
analysis. We review claim construction de novo. Our claim construction
analysis was driven by Appellant’s argument that their purported special
type of data, as claimed, distinguishes over data handled by the prior art
reference. Thus, our findings regarding the patentable weight to be accorded
to Appellant’s claimed data type (Decision 6-7) were in direct response to
Appellant’s arguments, and therefore do not constitute a new ground of
rejection.
Further, with respect to our finding that Appellant’s arguments
regarding claim 3 inherits the deficiencies of claim 1 (Decision 9), our
finding clearly established that the type of data, i.e., non-functional
descriptive material, as recited in the claim, is not to be given patentable
weight as in the analysis of claim 1. We further found that we were not
persuaded of any error by the Examiner with respect to the teachings of the
prior art. Id.
Therefore, we did not raise an undesignated new ground of rejection
in our Decision.
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DECISION
Accordingly, we have granted Appellant’s Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
REHEARING DENIED

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