Ex Parte Wright

Patent Trial and Appeal Board

Jan 28, 2014

10756598 (P.T.A.B. Jan. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID W. WRIGHT
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Appeal 2013-009293
Application 10/756,598
Technology Center 2100
____________________

Before THU A. DANG, JAMES R. HUGHES,
and JEFFREY S. SMITH, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
Appellant’s invention is directed to content management that includes
identifying digital sending devices, authoring an automated business process
design, and translating the automated business process design into
information technology templates that configure each identified digital
sending device (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A content management method, comprising:
identifying digital sending devices in a communications
network, wherein each of the identified digital sending devices
comprises a combination of hardware and software that is operable to
capture data from documents and send the captured data over the
communications network;
generating an automated business process design comprising
one or more definitions of user interactions with respective ones of the
identified digital sending devices and one or more functions
performed by respective ones of the digital sending devices; and
translating the automated business process design into digital
sending device configurations comprising data processing rules for
capturing the data and instructions for sending the captured data over
the communications network in accordance with the automated
business process; and
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configuring the identified digital sending devices in accordance
with the information technology templates;
wherein the identifying, the generating, the translating, and the
configuring are performed by a computer system.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Janis US 6,115,549 Sep. 5, 2000
Nagai US 6,275,977 B1 Aug. 14, 2001
Charisius US 6,938,240 B2 Aug. 30, 2005
(filed Aug. 31, 2001)

Claims 1-4, 6, 8, 11-13, 16-20, 22, 24, and 27-29 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Nagai.
Claims 5 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagai in view of Charisius.
Claims 7 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagai in view of Janis.
Claims 9, 10, 14, 15, 25, 26, and 30-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nagai.
II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
finding that Nagai teaches “translating the automated business process
design into digital sending device configurations comprising data processing
rules for capturing the data and instructions for sending the captured data
over the communications network in accordance with the automated
business process” (claim 1, emphasis added). The issue turns upon whether
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a logical-to-physical conversion program that selects a corresponding
physical AP object and initiates an execution control script generation
program, which generates an execution control script, comprises translating
an automated business process design into a digital sending device.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Nagai
1. Nagai discloses a logical-to-physical object conversion process
program 110 is a program for selecting physical AP objects corresponding to
respective logical AP objects constituting the logical process model defined
by the logical process model definition program 109, for cooperating the
selected physical AP objects, and for developing (mapping) an
implementation process model of the logical process model (col. 6, ll. 5-11).
2. The logical-to-physical object conversion process program 110
checks whether an OK button 1401 is depressed (step 1306) and if the OK
button 1401 is depressed, the execution control script generation process
program 111 is activated to generate execution control scripts which are
transferred to and registered in the process broker object 124 that controls
the execution of each physical AP object and provides the communication
mechanism between physical AP objects (step 1308) (Fig. 13; col. 15, ll. 22-
39).

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IV. ANALYSIS
Claims 1-4, 6, 8, 11-13, 16-20, 22, 24, and 27-29
Appellant contends that “Nagai does not expressly nor inherently
disclose the ‘translating’ element of claim 1” because “Nagai discloses a
method of selecting business applications (physical AP objects) from a
defined logical business model and integrating the selected business
applications into an implementation process model that can be executed by a
process broker object 124 running on a distributed object server 120” (App.
Br. 6).
After reviewing the record on appeal, we agree with Appellant.
Though we agree with the Examiner that a logical-to-physical object
conversion process program that selecting physical AP objects
corresponding to respective logical AP objects (FF 1 and 2), we cannot find
any teaching in the Examiner’s cited portion of Nagai of “translating the
automated business process design into digital sending device
configurations comprising data processing rules for capturing the data and
instructions for sending the captured data over the communications network
in accordance with the automated business process” as required by claim 1
(emphasis added). That is, although the logical-to-physical object
conversion process program selects physical AP objects corresponding to
respective logical AP objects (FF 1), we do not find support in the
Examiner’s recited portion of Nagai that the step of selecting of a physical
AP object corresponding to a logical AP object comprises translating an
automated business process design into digital sending device configurations
– i.e., instructions and/or rules. Even if we were to consider the physical AP
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object a digital sending device configuration, there is no evidence of
translating an automated business process design.
Additionally, although the logical-to-physical object conversion
process program initiates an execution control script generation process
program that generates execution control scripts when the OK button is
depressed (FF 2), we do not find support in the Examiner’s recited portion of
Nagai that the step of initiating of an execution control script generation
process program that generates execution control scripts comprises
translating an automated business process design into digital sending device.
Accordingly, we find that Appellant has shown that the Examiner
erred in rejecting representative claim 1 under 35 U.S.C. § 102(b) over
Nagai. Further, independent claims 11, 17, and 27 having similar claim
language and claims 2-4, 6, 8, 12, 13, 16, 18-20, 22, 24, 28, and 29
(depending from claims 1, 11, 17, and 27) which have not been argued
separately, fall with claim 1.
Claims 5, 7, 9, 10, 14, 15, 21,
23, 25, 26, and 30-32
Appellant argues that claims 5, 7, 9, 10, 14, 15, 21, 23, 25, 26, and 30-
32 is patentable over the cited prior art for the same reasons asserted with
respect to claims 1, 11, 17, and 27 (App. Br. 11-12).
As noted supra, we reversed the rejection of claims 1, 11, 17, and 27
from which claims 5, 7, 9, 10, 14, 15, 21, 23, 25, 26, and 30-32 respectively
depend.
The Examiner has not identified how Charisius cures the noted
deficiencies of Nagai. As such, we also reverse the rejection of claims 5 and
21 over Nagai in view of Charisius. Additionally, the Examiner has not
identified how Janis cures the noted deficiencies of Nagai. As such, we also
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reverse the rejection of claims 7 and 23 over Nagai in view of Janis.
Moreover, the Examiner has not identified how the noted deficiencies of
Nagai are cured within further recited disclosure of the same. Therefore, we
also reverse rejection of claims 9, 10, 14, 15, 25, 26, and 30-32 over Nagai.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-4, 6, 8, 11-13, 16-20, 22, 24,
and 27-29 under 35 U.S.C. § 102(b) and claims 5, 7, 9, 10, 14, 15, 21, 23,
25, 26, and 30-32 under 35 U.S.C. § 103(a) is reversed.

REVERSED

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