Ex Parte Soumokil

Patent Trial and Appeal Board

Dec 12, 2016

10573031 (P.T.A.B. Dec. 12, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/573,031 01/30/2007 Mike Soumokil 2003P00797WOUS 4433
62730 7590
SAP SE
3410 HILLVIEW AVENUE
PALO ALTO, CA 94304
12/14/2016 EXAMINER
ANDERSON, JOHN A
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/14/2016 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 MIKE SOUMOKIL
Appeal 2014-0066591
Application 10/573,0312
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 30, 31, 36, 38, 40, 41, 45, and 49-55. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Jan. 29, 2014), Reply Brief (“Reply Br.,” filed May 22,
2014), and Specification (“Spec.,” filed Mar. 22, 2006), and to the
Examiner’s Answer (“Ans.,” mailed Apr. 9, 2014) and Final Action (“Final
Act.,” mailed May 29, 2013).
2 According to the Appellant, the real party in interest is SAP AG. Appeal
Br. 3.
Appeal 2014-006659
Application 10/573,031
STATEMENT OF THE CASE
The Appellant’s invention is directed to “computerized processing of
invoices which a company has presented to, for example, two or more
customers.” Spec. 2.
Claims 30, 53, and 54 are the independent claims on appeal. Claim 30
is illustrative of the subject matter on appeal and is reproduced below
(bracketing added for reference):
30. A method for processing invoices, the method being
performed by a computer and comprising:
[(a)] selecting, from a plurality of electronic-invoice
records, by using a processor of the computer, invoices which are
due within a pre-selectable time or on a pre-selectable date;
[(b)] assigning a first state to the selected invoices,
wherein the assigned first state includes a first set of characters
that are stored in a data field of each selected electronic-invoice
record;
[(c)] selecting, from the plurality of electronic-invoice
records, invoices that satisfy a specified condition;
[(d)] assigning a second state to said selected invoices that
satisfy the condition, wherein the second assigned state includes
a second set of characters that are stored with the first set of
characters in the data field of each selected electronic-invoice
record;
[(e)] assigning a first priority to a first invoice included in
the selected invoices, wherein the first invoice is associated with
a first due date;
[(f)] assigning a second priority to a second invoice
included in the selected invoices, wherein the second invoice is
associated with a second due date and the second priority is a
higher priority than the first priority;
[(g)] using the first state and the second state to control
processing of the invoices, wherein, based on the first priority
and the second priority, the second invoice is processed before
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Application 10/573,031
the first invoice even if the second due date identifies a date that
occurs after a date identified by the first due date; and
[(h)] sending a message including description information
corresponding to one of the selected invoices, the message
including location information identifying a path for accessing
the one selected invoice.
Appeal Br., Claims App.
REJECTIONS
Claims 30, 54, and 55 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2.
Claims 30, 31, 40, and 51—55 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Brown (US 2010/0023452 Al, pub. Jan. 28,
2010) and Lam (US 2003/0220875 Al, pub. Nov. 27, 2003). Id. at 4.
Claims 36 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Lam, and Neely (US 6,044,362, iss. Mar. 28,
2000). Id. at 7.
Claims 41, 45, 49, and 50 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brown, Lam, Neely, and Kriplani
(US 7,353,203 Bl, iss. Apr. 1, 2008). Id. at 8.
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Application 10/573,031
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.3
ANALYSIS
Written Description - § 112, first paragraph
The Examiner rejects claims 30, 54, and 55 under § 112 finding that
the Specification does not provide a written description of limitations (f) and
(g) of assigning a second priority and processing based on the second
priority such as to reasonably convey to one skilled in the art that the
inventor had possession at the time the invention was filed. See Final Act. 3;
Ans. 12—13. Specifically, the Examiner finds that although the Specification
mentions high, medium, and low priorities, it “does not explain or define the
application of higher priority as applied in the limitations of claims 30, 54 or
55,” such as how invoices would be processed if they had the same due date
or if the first invoice had a high priority. Ans. 12—13.
The Appellant contends the rejection is in error because there is clear
support in the Specification, citing page 9, lines 30—33, which state “[a]s an
example, invoices of high priority may be presented 10 days before their due
date, medium priority 7 days before their due date and low priority invoices
on the due date.” Appeal Br. 10. The Appellant further argues that the
Specification provides examples of how the different priorities would be
applied, and, thus, “reasonable clarity is present in the specification” to
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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convey to those skilled in the art that, as of the filing date sought, the
Appellant was in possession of the invention as claimed. Reply Br. 2.
We find the Appellant’s arguments persuasive. Claim 30 recites
assigning a first priority to a first invoice associated with a first due date,
assigning a second priority to a second invoice associated with a second due
date, processing the invoices, wherein based on the priorities, the second
invoice is processed before the first invoice even if the second due date
occurs after the first due date. The Specification discusses assigning priority
states based on the balance value and due date. See Spec. 23,1. 15 through
24,1. 10. As noted above, the Specification also discusses processing high,
medium, and low priority invoices a specific number of days before the due
date. As such, a low priority invoice, i.e., a first invoice with a lower
balance value, may have a due date of June 10 and would be processed on
that date, June 10, whereas a medium priority invoice, i.e., a second invoice
with a higher balance value, may have a due date of June 11 but would get
processed June 4. Thus, we find the Specification does provide adequate
description to reasonable convey to one of skill in the art that the Appellant
has possession of assigning a second (higher) priority that can be processed
before the first (lower) priority even if the due date is later.
In view of the foregoing, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 112.
Obviousness - § 103(a)
Each of independent claims 30, 54, and 55 recites the limitations of
assigning a second priority and processing the second invoice before the first
invoice, as recited in limitations (f) and (g) of claim 30.
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The Appellant contends the Examiner’s rejection of claim 30 is in
error because Lam, upon which the Examiner relies, does not teach or
suggest the features of limitations (f) and (g) of assigning a second priority
to a second invoice, the second priority being a higher priority than the first
priority of limitation (e), and controlling the processing of the invoices when
the second invoice with the higher priority is processed before the first
invoice with the lower priority even if the second invoice’s due date occurs
after the first invoice’s due date. Appeal Br. 11—12. Specifically, the
Appellant argues that Lam discloses the opposite of what is claimed in that
“a document with a closer due date or less time remaining is necessarily
given a higher priority.” Id.
Conversely, the Examiner finds Lam discloses the limitations at
paragraphs 37 and 39 by “prioritizing invoices based on due date and dollar
amount for the invoice in addition to the number of days left for payment.”
Ans. 13—14. The Examiner interprets “claim 30 [as] assigning a priority
based [on] due date and a second priority, with the second priority having a
higher priority.”4 Id. at 14.
Paragraph 37 of Lam discloses that invoices are automatically
approved if they meet particular rules that may be based on the supplier,
item, amount, frequency, dollar amount and/or number of days left for
payment. Paragraph 39 of Lam discloses that invoices may be prioritized
automatically based on the time remaining until they are due and on the due
4 The Examiner actually states “priority based due date,” but in the next
sentence states “prioritizing invoices based on due date and dollar amount.”
Ans. 14. Thus, we determine the Examiner’s omission of the word “on” an
inadvertent error.
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date, and may be presented to the user in the order of priority. Even
assuming arguendo that the Examiner’s finding that Lam discloses assigning
priorities based on due date and dollar amount, it is not clear that, and the
Examiner does not explain how, Lam discloses that processing of a higher
priority invoice occurs before a lower priority invoice even if the due date
for the higher priority invoice is after the due date with the lower priority
due date, as recited in limitation (g) of claim 30. In other words, it is not
clear that Lam assigns a higher priority to an invoice with more time
remaining until due or with a later due date than an invoice with a lower
priority.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 30, 54, and 55 under 35 U.S.C. § 103(a) as obvious over Brown
and Lam. For the same reasons, we also do not sustain the rejection of
dependent claims 31, 40, and 51—53. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“dependent claims are nonobvious if the independent
claims from which they depend are nonobvious”).
Claims 36, 38, 41, 45, 49, and 50 depend, directly or indirectly, from
independent claim 30. The Examiner’s rejections of these dependent claims
do not cure the deficiency in the Examiner’s rejection of claim 30.
Therefore, we do not sustain the Examiner’s rejections of claims 36, 38. 41,
45, 49, and 50 under 35 U.S.C. § 103(a) for the same reasons set forth above
with respect to claim 30.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
30, 31, 36, 38, 40, 41, 45, and 49-55 under 35 U.S.C. § 101 as being
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directed to non-statutory subject matter. We find the claims are ineligible
for patent protection because they are directed to an abstract idea.
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347 (2014) identified a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§101. We analyze the claims using the two part analysis: 1) determine
whether the claims are directed to an abstract idea; and 2) if an abstract idea
is present in the claims, determine whether any element, or combination of
elements, in the claims is sufficient to ensure the claims amount to
significantly more than the abstract idea itself to transform the claims into a
patent-eligible invention. See id. at 2355.
Taking claim 30 as representative of the claims on appeal, the claimed
subject matter is directed to the concept of processing invoices. See Spec. 1,
11. 5—9. The Supreme Court has held certain fundamental economic and
conventional business practices, like intermediated settlement (see Alice,
134 S. Ct. at 2356—57), and budgeting (see Intellectual Ventures ILLC v.
Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)), as being
abstract ideas. The processing of invoices of claim 30 is similar to these
abstract ideas, and, thus claim 30 is directed to an abstract idea.
Under the second step of the analysis, we find neither independent
claims 30, 54, and 55, nor dependent claims 31, 36, 38, 40, 41, 45, and
49—53 have any additional elements that amount to significantly more to
transform the abstract idea of processing invoices. Independent claim 30
and dependent claims 31, 36, 38, 40, 41, 45, and 49—53 recite a method of
selecting invoices, assigning states to invoices, assigning priorities to
invoices, controlling the processing of invoices, and sending a message
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Application 10/573,031
corresponding to the invoices. Although the steps are performed by a
computer and comprise electronic records, any general purpose computer
available at the time the application was filed would have been able to
perform these functions. The Specification supports that view. See Spec. 6,
11. 7—12, 22,11. 9—20, and Fig. 1. Independent apparatus claims 54 and 55
recite a system comprising a memory, devices, storage component, and
processor, i.e., a general computer, or a storage medium storing a computer
program to perform the functions of the claims. The introduction of a
computer to implement an abstract idea is not a patentable application of the
abstract idea. Alice, 134 S. Ct. at 2357—58. The computer implementation
here is purely conventional and performs basic functions. See id. at 2359-
60. The claims do not purport to improve the functioning of the computer
itself, nor do they effect an improvement in any other technology or
technical field. See id. at 2359.
Thus, under the two-part analysis, we find that claim 30 is directed to
subject matter that is judicially excepted from patent eligibility under §101.
The other independent claims — system claim 54 and program product
claim 55 parallel claim 1 — similarly are directed to claimed subject matter
that is judicially excepted from patent eligibility under § 101. See id. at
2360. The dependent claims describe various versions of selecting and
assigning invoices that do little to patentably transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 30, 31, 36,
38, 40, 41, 45, and 49-55 under 35 U.S.C. § 101.
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DECISION
The Examiner’s rejection of claims 30, 54, and 55 under 35 U.S.C.
§ 112 is REVERSED.
The Examiner’s rejections of claims 30, 31, 36, 38, 40, 41, 45, and
49-55 under 35 U.S.C. § 103(a) are REVERSED.
A NEW GROUND OF REJECTION has been entered for claims 30,
31, 36, 38, 40, 41, 45, and 49-55 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant(s), WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
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