Ex Parte Westendorf et al

Patent Trial and Appeal Board

May 30, 2013

10642151 (P.T.A.B. May. 30, 2013)

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.
10/642,151 08/18/2003 Frank Westendorf 07781.0070-00 2310
60668 7590 05/31/2013
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
GATLING, STACIE D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
05/31/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK WESTENDORF,
MICHAEL IHLE, and LARS WIESNER
____________

Appeal 2011-013459
Application 10/642,151
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013459
Application 10/642,151

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 28. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). The Appellants appeared for oral hearing on March
13, 2013.
We REVERSE.
Claim 1 is illustrative:
1. A process for the computer-implemented management
of one or more target agreements with one or more parties to
the agreement by using a target agreement computer system, in
which said target agreements each comprise at least one
performance target, a performance target being a measurable
target value to be achieved within a predetermined time span,
where at the start of said time span an individual target
agreement is newly defined and at the end of said time span the
degree of achievement of each measurable target value and
hence of each performance target is determined and an
incentive payment dependent thereon is calculated and
distributed, the process comprising:
generating the individual target agreement based on a
standard agreement linked to a template of a performance
objective management computer system,
wherein the individual target agreement and an individual
target agreement document contain the performance targets;
providing a calculation module in which the definition of
an assessment scale for determining the degree of achievement
of said measurable target values is laid down;
providing a remuneration module in which said incentive
payment belonging to an assessment resulting from said
assessment module is laid down; and
providing an interface to the performance objective
management computer system in which said measurable target
values for said performance targets are managed, said
measurable target values forming the basis for a comparison of
target values and actual values to be carried out in said target
Appeal 2011-013459
Application 10/642,151

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agreement computer system being imported via said interface,
wherein the comparison between said target values and said
actual values is used to track and determine a current degree of
achievement of said measurable target values at any given time
within the predetermined time span, the performance objective
management computer system generates an individual target
agreement document based on the template linked to the
standard agreement, and the individual target agreement
document of the performance objective management system is
linked to the individual target agreement of the target
agreement computer system generated from the standard
agreement.

Appellants appeal the following rejection:
1. Claims 1 to 28 under 35 U.S.C. § 103(a) as unpatentable over Chao (US
2002/0188535 A1; pub. Dec. 12, 2002) and Walker (US 6,128,599; iss.
Oct. 3, 2000).
ISSUE
Did the Examiner establish a prima facie case of obviousness in
regard to the appealed claims?

ANALYSIS
We initially note that the allocation of burden requires that the United
States Patent and Trademark Office (USPTO) produce the factual basis for
its rejection of an application under 35 U.S.C. §§ 102 and 103. The
Examiner bears the initial burden of presenting a prima facie case of
unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In order to satisfy this burden, the Examiner must explain how each of
the claims, elements, or steps would have been obvious in view of the
teachings of the cited references as opposed to matching some of the steps or
Appeal 2011-013459
Application 10/642,151

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elements and leaving the rest as an exercise for the reader. After reading the
Examiner’s Answer, we are left to speculate as to how claim 1 would have
been obvious pursuant to 35 U.S.C. § 103(a).
For example, although the Examiner states on page 10 of the Answer
that a standard agreement linked to a template is disclosed in Chao at
paragraphs [0042]-[0043], the Examiner has failed to explain which portion
of this disclosure relates to a standard agreement. The Examiner also fails to
explain how the contract kit disclosed in Chao can be considered a template
as claimed. In fact, it appears that the Examiner is relying on the contract kit
for meeting the requirements of a template and a standard agreement (Ans. 5
and 11) and has not explained how the contract kit can be considered both a
standard agreement and a template.
We therefore agree with Appellants that the rejection fails to set forth
a prima facie case of obviousness for claim 1 and claims 2 to 12 dependent
thereon. The rejection of the other independent claim on appeal, claim 13,
and claims 14 to 28 dependent thereon, suffers the same deficiency. We
thus cannot sustain the Examiner’s rejection.

DECISION
The decision of the Examiner is reversed.

REVERSED

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