SAP SE

Patent Trials and Appeals Board

Mar 15, 2021

2019006752 (P.T.A.B. Mar. 15, 2021)

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.
14/754,578 06/29/2015 Theodor Foerster 54874-120F01US 1929
64280 7590 03/15/2021
Mintz Levin/SAP
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
EXAMINER
NIPA, WASIKA
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
03/15/2021 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEODOR FOERSTER, IVO SCHMIDT, SERGEY SMIRNOV,
and PETRA HOCHSTEIN
Appeal 2019-006752
Application 14/754,578
Technology Center 2400
Before THU A. DANG, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 6–9, 12–15, 18, and 19. See Final
Act. 1. Claims 4, 5, 10, 11, 16, 17, and 20 are canceled. Id. at 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies SAP SE of Walldorf, Germany, as the
real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to ad hoc end-
to-end authentication and authorization of logistics network services. Spec.
¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A computer program product comprising a non-transitory
machine-readable medium storing instructions that, when
executed by at least one programmable processor, cause the at
least one programmable processor to perform operations
comprising:
scanning, by a scanner at a first mobile device associated
with a transport participant in a transport assignment, an
electronic authentication token displayed at a second mobile
device associated with an external logistics provider operator of
the transport assignment, the scanning initiated by a first mobile
application at the first mobile device, the electronic
authentication token displayed by a second mobile application at
the second mobile device, the electronic authentication token
being provided from a server to the second mobile device but not
to the first mobile device, the electronic authentication token
authorizing the external logistics provider operator for a transport
assignment, the electronic authentication token linked, at the
server, to the transport assignment, and the linking establishing
a logical link between the electronic authentication token and the
transport assignment that is only valid for a duration of the
transport assignment;
sending, by the first mobile application at the first mobile
device to the server, the scanned electronic authentication token,
the sending comprising a request to the server to verify, based at
least on the scanned electronic authentication token that the
external logistics provider operator is registered and
authenticated for the transport assignment; and
in response to receiving, from the server, a confirmation
message, providing, by the first mobile application at the first
mobile device, an indication that the external logistics provider
operator is registered and authenticated for the transport
assignment.
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Appeal Br. 21 (Claims App.).
REJECTION2
Claims 1–3, 6–9, 12–15, 18, and 19 stand rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Lim (US 2009/0001153 A1,
published Jan. 1, 2009) and Barton et al. (US 2016/0078397 A1, published
Mar. 17, 2016) (“Barton”).
ANALYSIS
We have reviewed the § 103 rejections of claims 1–3, 6–9, 12–15, 18,
and 19 in light of Appellant’s arguments that the Examiner erred. We have
considered in this decision only those arguments Appellant actually raised in
the Briefs. Any other arguments Appellant could have made, but chose not
to make, in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant’s arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
With respect to independent claim 1, Appellant contends the cited
portions of Lim and Barton do not teach or suggest a mobile application at
one mobile device that scans an electronic authentication token displayed by
a mobile application at another mobile device before sending the scanned
electronic authentication token to a remote server for verification, as claim 1
requires. Appeal Br. 14. Appellant argues that “nowhere does Barton
disclose or suggest sending a scanned delivery token to a remote server for

2 Claims 1–3, 6, 8, 9, 12, 14, 15, 18, and 19 are also objected to because of
informalities that require correction. Final Act. 2.
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verification.” Id. at 15. Appellant further argues that “[i]n order to convey a
code to a verification agency for verification, Lim expressly requires a
delivery agent to manually place a telephone call or send a message
containing the code.” Id., citing Lim ¶¶ 40, 43.
We are not persuaded that the Examiner erred. Appellant attacks Lim
and Barton individually, even though the Examiner relied on the
combination of Lim and Barton in rejecting claim 1. In re Mouttet, 686 F.3d
1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)) (“The test for obviousness is what the combined teachings of the
references would have suggested to those having ordinary skill in the art.”).
The Examiner found Barton teaches that a delivery person uses a delivery
device to scan a delivery token displayed on consumer device. Ans. 4, citing
Barton ¶ 50. The Examiner found Lim teaches the limitation of verifying the
scanned electronic authentication token by a remote server. Id., citing Lim
¶¶ 43, 45, 46. In particular, the Examiner found Lim teaches that a
verification agency may receive electronically, by a computer, a request sent
by a delivery agent, and if the codes match, the verification agency send an
authorization message to the delivery agent. Id.
Appellant has not persuasively addressed or rebutted the Examiner’s
findings directed to the combined teachings of Lim and Barton.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Lim and Barton teaches or suggests
scanning, by a scanner at a first mobile device associated
with a transport participant in a transport assignment, an
electronic authentication token displayed at a second mobile
device associated with an external logistics provider operator of
the transport assignment, the scanning initiated by a first mobile
application at the first mobile device, the electronic
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authentication token displayed by a second mobile application
at the second mobile device, ...
sending, by the first mobile application at the first mobile
device to the server, the scanned electronic authentication
token, the sending comprising a request to the server to verify,
based at least on the scanned electronic authentication token
that the external logistics provider operator is registered and
authenticated for the transport assignment; and
in response to receiving, from the server, a confirmation
message, providing, by the first mobile application at the first
mobile device, an indication that the external logistics provider
operator is registered and authenticated for the transport
assignment,
See Appeal Br. 14.
Appellant next argues that the Examiner erred in combining the
teachings of Lim and Barton. In addition to restating the arguments
addressed above regarding the teachings of Lim and Barton, Appellant
argues that Barton teaches away from the subject matter of claim 1. Appeal
Br. 15–16. In particular, Appellant argues that Barton teaches away from
verifying an electronic authentication token remotely at a server instead of
locally at a mobile device. Id. at 16. Appellant points to paragraph 58 of
Barton, which teaches that “whether the delivery tokens 4a, 4b match ... may
be verified locally between the delivery device 13 and the customer device
3, without reference to a remote record.” Id. Appellant argues that “Lim’s
reliance on a central verification agency is thoroughly inconsistent with
Barton’s efforts to avoid remote verification altogether.” Reply Br. 6.
Appellant’s “teaching away” argument fails because Appellant has not
identified where Barton actually criticizes, discredits, or otherwise
discourages “sending, by the first mobile application at the first mobile
device to the server, the scanned electronic authentication token, the sending
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comprising a request to the server to verify, based at least on the scanned
electronic authentication token that the external logistics provider operator is
registered and authenticated for the transport assignment,” as recited in
claim 1. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (“A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed”) (citing Fulton). Moreover, the Examiner provided “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see Final Act.
9.
Appellant further argues that “[t]he Examiner provides no evidentiary
support that a person having ordinary skill in the art is capable of making a
creative leap necessary to bridge the gap present in the combination of Lim
and Barton.” Appeal Br. 17.
Appellant’s argument is not persuasive at least because it is based on
Appellant’s position, addressed above, that “neither [Lim nor Barton]
disclose []or suggest remotely verifying an electronic authentication token
that is displayed by a mobile application at one mobile device and scanned
by a mobile application at another mobile device.” Id.
In the cases that Appellant cites (Appeal Br. 17), the Federal Circuit
reversed conclusions of obviousness made by this Board where the
proponent of obviousness relied on ordinary creativity and/or common sense
to establish the obviousness of a claim element missing from the prior art.
See DSS Tech. Management, Inc. v. Apple Inc., 885 F.3d 1367 (Fed. Cir.
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2018); see also Arendi S.A.R.I. v. Apple Inc., 832 F.3d 1355 (Fed. Cir.
2016). In DSS, the court explained that ordinary creativity and/or common
sense may be used to supply a missing claim element only when the missing
element is “unusually simple and the technology particularly
straightforward.” 885 F.3d at 1374 (quoting Arendi, 832 F.3d at 1362).
We do not agree with Appellant that this case is one in which the
Examiner relied on ordinary creativity and/or common sense to establish the
obviousness of a claim element missing from the prior art. Rather, as we
explained above, the combination of Lim and Barton teaches or suggests the
“scanning” and “sending” limitations disputed by Appellant. No reliance on
ordinary creativity or common sense was necessary to bridge a gap, as the
prior art teaches or suggests all of the disputed claim elements. Moreover,
Appellant has not persuaded us of error in the Examiner’s conclusion that
the claimed subject matter would have been obvious to those of ordinary
skill in the art in light of the combined teachings of those references. See
Keller, 642 F.2d at 425.
Accordingly, we sustain the Examiner’s § 103 rejection of
independent claim 1, as well as the Examiner’s § 103 rejection of
independent claims 7 and 13, not argued separately with particularity.
Appeal. Br. 13. We also sustain the Examiner’s § 103 rejection of dependent
claims 2, 3, 6, 8, 9, 12, 14, 15, 18, and 19, argued as a group with claim 1.
See id.
DECISION
We affirm the Examiner’s decision rejecting claims 1–3, 6–9, 12–15,
18, and 19.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6–9, 12–
15, 18, 19
103 Lim, Barton 1–3, 6–9, 12–
15, 18, 19

TIME PERIOD FOR RESPONSE
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).
AFFIRMED