Ex Parte Theiler

Board of Patent Appeals and Interferences

Sep 24, 2009

10689610 (B.P.A.I. Sep. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID THEILER
____________

Appeal 2009-004274
Application 10/689,610
Technology Center 3600
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Decided: September 24, 2009
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FISCHETTI, 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 rejection of claims 1-20 and 22. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). An Oral Hearing was held on September 9, 2009.

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SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellant claims a system and method for a computer based workflow
process management system relating to a development environment for
creating software based workflow process management tools. (Specification
2: para. [0002])
Claims 1 and 22, reproduced below, are representative of the subject
matter on appeal.

1. A method for creating a workflow process management
application suitable for an organization, comprising:
(a) creating, on a computer system, a plurality of
department objects, each of said department objects being
associated with a respective department of said organization;
(b) creating, on said computer system, a plurality of
resource objects, each resource object being associated with at
least one of said department objects and a production resource
of said organization;
(c) creating, on said computer system, a plurality of
activity objects, each activity object being associated with at
least one of said department objects and an activity of said
organization; and
(d) after steps (a), (b), and (c), and responsive to a
command, automatically generating, by said computer system,
said workflow process management application from said
department objects, resource objects, and activity objects;
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wherein said workflow process management application,
when executed by said computer, permits a user to:
enter, for each department, a workflow plan for
said department,
generate worker assignments,
receive a workflow performed by departments of
said organization, and
create a report comparing said workflow plan with
said workflow performed;
said workflow process management application using
said report to automatically generate subsequent worker
assignments without further interaction with the user;
wherein said workflow plan comprises a plurality of
standards, each one of said standards inter-relating at least one
activity object with at least one resource object as a function of
time and skill level.

22. A computer implemented method of performing a
workflow process management application for an organization,
said method comprising:
entering a user input workflow plan for a department,
each department being associated with at least one department
object, each department object being associated with at least
one resource object, each resource object being further
associated with a production resource of the organization, each
department object also being associated with at least one
activity object that is associated with an activity of the
organization;
generating worker assignments;
creating a first report corresponding to planned workflow
and expected needs;
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inputting an indication of workflow performed;
creating a second report comparing the entered workflow
plan with the input workflow performed; and
automatically generating subsequent worker assignments
without further interaction with the user based on information
in the second report.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Miller US 7,035,809 B2 Apr. 25, 2006

User's Guide to Microsoft Project, 1995

(hereinafter “MSProject”)

The following rejection is before us for review.
The Examiner rejected claims 1-20 and 22 under 35 U.S.C. § 103(a)
as being unpatentable over Miller and MSProject.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claims 1-20
and 22 as being unpatentable under 35 U.S.C. § 103(a) over Miller and
MSProject on the grounds that a person with ordinary skill in the art would
understand that the leveling system in MSProject would meet the claim
requirement of “responsive to a command, automatically generating, by said
computer system, said workflow process management application from said
department objects, resource objects, and activity objects; wherein said
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workflow process management application, when executed by said
computer, permits a user to:… automatically generate subsequent worker
assignments without further interaction with the user.” (Emphasis added)

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
“[I]f the preamble merely state[s] a purpose or intended use and the
remainder of the claim completely defines the invention independent of the
preamble,” it does not constitute a limitation. Lipscomb’s Walker on
Patents, 3rd Edition, Vol. 3, § 11.11 at p. 361 (citing Marston v. J.C. Penney
Co., 353 F.2d 976, 986 (4th Cir. 1965)); see also Rowe v. Dror, 112 F.3d
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473, 478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A.,
Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) (An element initially recited in
the preamble is thereafter fully incorporated into the body of the claim so as
to breathe life and breath into it by setting forth the complete combination).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. MSProject discloses that "[l]eveling simply delays certain tasks in
your schedule until the resources assigned to them are no longer
overallocated." (p. 65, ll. 24-25).
2. MSProject discloses that "it can't substitute a resource on an
overallocated task or change the task’s duration.” (p. 69, ll. 15-16).
3. The Examiner found that Miller discloses initially generating
worker assignments. (Answer 5).
4. Miller discloses that the CMM criteria generally relates “to the
tasks and functions given to the various workers in a project.” (col. 8, ll. 6-
7).
5. Miller discloses changing an initial assignment only after “actual
results from the development of the project do not match the plans….” (col.
8, ll. 39-40).

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ANALYSIS
We affirm the rejection of claims 1-20 and reverse the rejection of
claim 22.
Independent Claims 1, 8 and 12 require:
d) after steps (a), (b), and (c), and responsive to a
command, automatically generating, by said computer system,
said workflow process management application from said
department objects, resource objects, and activity objects;
wherein said workflow process management application,
when executed by said computer, permits a user to:…
create a report comparing said workflow plan with
said workflow performed;
said workflow process management application using
said report to automatically generate subsequent worker
assignments without further interaction with the user….
The Examiner relies on MSProject to show limitation (d) stating that
in “…Microsoft Project, any changes to parent tasks automatically generates
changes to dependent tasks (i.e., subsequent assignments) without further
interaction from the user….” (Answer 6).
Appellant, however, asserts that “MSProject is capable only of
pushing back in time existing tasks, not generating new subsequent tasks,”
and thus cannot meet the claim limitations. (Appeal Br. 8).
We agree with Appellant because the MSProject system uses a
leveling feature which simply delays certain tasks in a schedule until the
resources assigned to them are no longer overallocated, and cannot substitute
a resource on an overallocated task, or change the task’s duration. (FF 1-2).
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Therefore, simply shifting deadlines out from an earlier time does not
constitute generating subsequent worker assignments because the
assignments stay as assigned, thereby failing to meet the required claim
language.
Since claims 2-7 and 15-20, 9-11, and 13, 14 depend from claims 1, 8
and 12, respectively, and since we cannot sustain the rejection of claims 1, 8
and 12, the rejection of the dependent claims likewise cannot be sustained.
Claim 22
Claim 22 does not recite the limitation (d) calling for the step
responsive to a command, automatically generating, by said computer
system, said workflow process management application to create a report
comparing said workflow plan with said workflow performed; said
workflow process management application using said report to automatically
generate subsequent worker assignments without further interaction with the
user. Thus, we do not credit claim 22 with requiring a computer to effect the
step of automatically generating subsequent worker assignments without
further interaction with the user.
First, although a computer is recited in the preamble, it is not
thereafter incorporated into the body of the claim, and thus does not
constitute a limitation. See e.g., Lipscomb, p. 361. Second, nothing in claim
22 prevents the step of automatically generating subsequent worker
assignments from using the same assignments which were established
previously in the claim to be used subsequently. The Examiner found that
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Miller discloses initially generating worker assignments. (FF 3). Appellant
does not challenge this and we confirm that Miller in fact discloses this
feature. That is, Miller discloses changing an initial assignment only after
“actual results from the development of the project do not match the
plans….” (FF 5). Therefore, if the plans match in Miller there would be no
change, and the same assignments would automatically be used in a post
comparison mode. Accordingly, based on our interpretation of claim 22, we
find that Miller meets the limitations of claim 22.

CONCLUSIONS OF LAW
We conclude the Appellant has shown that the Examiner erred in
rejecting claims 1-20.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claim 22.
DECISION
The rejection of claims 1-20 is reversed. The rejection of claim 22 is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
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AFFIRMED-IN-PART

mls

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