Ex Parte Sayal et al

Board of Patent Appeals and Interferences

Jul 19, 2010

09943223 (B.P.A.I. Jul. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MEHMET SAYAL, FABIO CASATI, and MING-CHIEN SHAN
____________

Appeal 2009-004430
Application 09/943,223
Technology Center 2100
____________

Before LEE E. BARRETT, JOSEPH L. DIXON, and LANCE LEONARD
BARRY, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellants appeal under 35 U.S.C. § 134(a) from a Final rejection
of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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We REVERSE.

I. STATEMENT OF THE CASE
The Invention
The invention at issue on appeal relates to a method and system for
integrating workflow management systems with external business-to-
business (B2B) standards (Spec. 8).

The Illustrative Claim
Claim 1, an illustrative claim, reads as follows:
1. A method for supporting workflow design comprising the
steps of:

a) receiving a description of a business-to-business interaction
standard;

b) converting the description of business-to-business interaction
standard to a structured representation of the business-to-
business interaction standard;

c) automatically generating at least one process template based
on the structured representation of the business-to-business
interaction standard; and

d) using the process template to design a workflow.

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The References
The Examiner relies on the following references as evidence:
Workflow Management Coalition, A Common Object Model
Discussion Paper, Document Number WfMC-TC-1022, 1-16 (1998),
(hereafter ACOMDP).

Anderson et al., Workflow Interoperability – Enabling E-Commerce,
www.wfmc.org, 1-11 (1999), (hereafter Anderson).

The Rejections
The following rejections are before us for review:
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of ACOMDP and Anderson.

II. ISSUE
Has the Examiner erred in finding that the combination of ACOMDP
and Anderson teaches or fairly suggests “converting the description of
business-to-business interaction standard to a structured representation of the
business-to-business interaction standard,” as recited in independent claim
1?

III. PRINCIPLES OF LAW
Obviousness
“Obviousness is a question of law based on underlying findings of
fact.” In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). The underlying
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factual inquiries are: (1) the scope and content of the prior art, (2) the
differences between the prior art and the claims at issue, (3) the level of
ordinary skill in the pertinent art, and (4) secondary considerations of
nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)
(citation omitted).

IV. FINDINGS OF FACT
The following findings of fact (FFs) are supported by a preponderance
of the evidence.
Anderson
1. Anderson discloses:
The WfMC Interoperability Standards are designed to allow
users of workflow products to implement processes that flow
across organizational and technological barriers. . . .
Recognising [sic] the need to be able to assess the meaning of
conformance statements that might be made by vendors, the
WfMC Working Group 4 (Workflow Engine interoperability)
produced an Interoperability Proving Framework document.
This work was done against a background of so-called
conformance claims made by a number of companies that are
not members of the Coalition. The document sets out a
comprehensive series of tests designed to show the behaviour
and ability to interoperate of two workflow engines that have
implemented the MIME Binding specification.
(page 7).

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2. Anderson also discloses:
The WfMC Interoperability Specification is an Industry
Standard agreed by all the major workflow vendors. The
MIME Binding to the Interoperability Standard provides the
basis for all conforming products to communicate via e-mail
that can be received by another workflow engine and used to
initiate a new business process. The interoperability is bi-
directional. All conforming products are expected to be able to
send, receive and respond to these e-mails.
The Interoperability Standard enables provision of automated
business processes that span many organisations [sic] to operate
integrated supply chain. It is cheaper to operate commercial
transactions automatically, and this is Why EDI has been so
popular.
(page 9).
3. Anderson further discloses:
For all of this to be possible, there will need to be a commercial
agreement in place between each pair of companies that inter-
trade in the value chain. The companies will also have
established a technical agreement (an interoperability contract)
describing the way in which interoperability is to be effected
[sic].
(page 5).
V. ANALYSIS
The Appellants have the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
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position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
The Examiner sets forth a detailed explanation of a reasoned
conclusion of unpatentability in the Examiner’s Answer. Therefore, we look
to the Appellants’ Brief to show error in the proffered reasoned conclusion.
Id.
The Common Feature in Claims
Independent claim 1, recites, inter alia, “converting the description of
business-to-business interaction standard to a structured representation of the
business-to-business interaction standard.” Independent claims 11 and 17,
with different wording, contain similar limitations.
35 U.S.C. § 103(a) rejections
With respect to independent claim 1, the Appellants contend that
ACOMDP fails to disclose the argued limitation because “a model provided
for communication between software applications (e.g., a standard API
model) is not equivalent to converting the description of a business-to-
business interaction standard to a structured representation of the business-
to-business interaction standard.” (App. Br. 9). According to the Appellants,
the API model in ACOMDP is merely provided for communication between
components, but provided for converting a B2B interaction standard. Id.
The Appellants further contend that ACOMDP merely discloses that a
particular interoperability standard is agreed to as an industry standard, and
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Anderson merely teaches a contract that describes workflow definition.
However, none of them is equivalent to converting the description of a
business-to-business interaction standard to a structured representation of the
business-to-business (B2B) interaction standard (Reply Br. 3).
We agree with the Appellants. We find that the paragraphs of the
Anderson2 reference relied upon by the Examiner do not support the
proffered rejection on the argued limitation. First, we find Anderson only
mentions that the WfMC Interoperability Standard is designed to allow users
to implement processes that flow across different organizations that may use
different technologies (FF 1), but we do not find any teaching of converting
one B2B standard to a structured standard mentions in the cited paragraph.
Furthermore, we find Anderson mentions that the WfMC Interoperability
Standard is an industry standard agreed by all major workflow vendors and
all conforming products are expected to be able to send, receive, and
respond to these e-mails for making the commercial traction automatically
(FF 2). However, agreeing on the industry standard does not render the
process of converting a B2B standard to a structured B2B standard as
required by the claim 1. Finally, Anderson mentions the need for the
companies to have a commercial agreement in place for a commercial
transaction (FF 3). However, this commercial agreement is also not read on

2 It appears that the Examiner mis-identifies Anderson as ACOMDP in Ans.
3 and Ans. 13 for citing section Assessing interoperability, and similarly, in
Ans. 9 for citing section Summary.
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the argued limitation of claim 1 as the Examiner states. We, therefore, find
the Examiner’s position is untenable.
Because we agree with at least one of the Appellants’ contentions, we
find that the Examiner has not made a requisite showing of obviousness as
required to teach or fairly suggest the invention as recited in claim 1 by the
combined teachings of ACOMDP and Anderson. The rejection of the
dependent claims 2-10 contains the same deficiency. The Appellants, thus,
have demonstrated error in the Examiner’s proffered case for obviousness of
the subject matter of claims 1-10.
The independent claims 11 and 17 contain the similar limitations to
those found in independent claim 1. The Appellants present similar
arguments as set forth with respect to independent claim 1 in response to the
rejections of independent claims 11 and 17 (App. Br. 3-4).
As we found above in our discussion with respect to independent
claim 1, we similarly find that the Appellants have demonstrated error in the
Examiner’s conclusion for obviousness of the subject matter of independent
claims 11 and 17. The rejection of dependent claims 12-16 and 18 also
contains the same deficiency. Hence, the Appellants’ argument persuades us
that the Examiner erred in rejecting claims 1-18.
We, therefore, cannot sustain the rejection of claims 1-18 under
35 U.S.C. § 103.
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VI. CONCLUSION
We conclude that the Examiner has erred in finding that the
combination of ACOMDP and Anderson teaches or fairly suggests
“converting the description of business-to-business interaction standard to a
structured representation of the business-to-business interaction standard,”
as recited in independent claim 1.

VII. ORDER
We reverse the obviousness rejections of claims 1-18 under 35 U.S.C.
§ 103(a).

REVERSED

rwk

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