SAP SE

Patent Trials and Appeals Board

Feb 2, 2022

2020005867 (P.T.A.B. Feb. 2, 2022)

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. 15/434,872 02/16/2017 Maria Jurova 2058.346US2 7930 50400 7590 02/02/2022 SCHWEGMAN LUNDBERG & WOESSNER/SAP P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER MITCHELL, JASON D ART UNIT PAPER NUMBER 2199 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MARIA JUROVA, MONIKA KOVACHKA-DIMITROVA, and MARIELA TODOROVA ___________________ Appeal 2020-005867 Application 15/434,872 Technology Center 2100 ____________________ Before MARC S. HOFF, CAROLYN D. THOMAS, and JOHN A. EVANS, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 seeks our review under 35 U.S.C. § 134(a) from the final rejection of Claims 2-17.3 Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our Decision refers to Appellant’s Appeal Brief filed April 13, 2020 (“Appeal Br.”); Appellant’s Reply Brief filed August 12, 2020 (“Reply Br.”); Examiner’s Answer mailed June 12, 2020 (“Ans.”); the Final Action mailed November 25, 2019 (“Final Act.”), and the Specification filed September 13, 2018 (“Spec.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies SAP SE, as the real party in interest. Appeal Br. 2. 3 The rejection of the claims was altered in the Answer. See ALTERED GROUNDS OF REJECTION section below. Appeal 2020-005867 Application 15/434,872 2 We REVERSE. STATEMENT OF THE CASE INVENTION. The claims relate to a method for inserting first and second deployment descriptors into a file. See Abstr. Claims 2, 6, and 10 are independent. An understanding of the invention can be derived from a reading of Claim 2, which is reproduced below: 2. A system comprising: an application having a first mode and a second mode, the first mode turning on functional extensions of the application, the second mode turning off functional extensions of the application; a deployment tool configured to, at least: based on a determination that a base environment in which the application is to be deployed supports service extensions corresponding to the functional extensions of the application, permit a total application deployment descriptor associated with the application to make reference to the service extensions and use the total application deployment descriptor to deploy the application in the first mode, the permitting of the total application deployment descriptor to make reference to the service extensions including adding a non-standard application deployment descriptor to an archive file associated with the application, the archive file containing a standard application deployment descriptor, the base environment interpreting the standard application deployment descriptor and the non-standard application deployment descriptor as the total application deployment descriptor; and based on a determination that the base environment does not support service extensions corresponding to the functional extensions, do not permit the total deployment descriptor to make reference to the Appeal 2020-005867 Application 15/434,872 3 service extensions and use the total application deployment descriptor to deploy the application in the second mode, the not permitting of the total application deployment descriptor to make reference to the service extensions including avoiding creation of the non- standard application deployment descriptor and avoiding modification of the archive file. Appeal Br. 22-23 (Claims App.). Prior Art Name4 Reference Date Chen US 2003/0188036 A1 Oct. 2, 2003 Bill Shannon, Java™ 2 Platform Enterprise Edition Specification, vl.3, Sun Microsystems 1-157 (July 27, 2001). BEA Systems, Inc., BEAWebLogic Server™ Developing WebLogic Server Applications 1-1-B-5 (Release 8.1) (Oct. 29, 2002) (“BEA”). REJECTIONS5 AT ISSUE 1. Claims 2, 6, 10, 14, and 15 stand rejected under 35 U.S.C. § 102(a) as anticipated by Chen. Ans. 3-5. 2. Claims 3-5, 7-9, and 11-13 stand rejected under 35 U.S.C. § 103(a) as obvious over Chen and Shannon. Ans. 5-7. ANALYSIS 4 All citations herein to the references are by reference to the first named inventor/author only. 5 The present application is being examined under the pre-AIA first to invent provisions. Final Act. 2. The rejections presented in the Final Action were altered in the Answer. See Ans. 3-7. In order to expedite matters, we shall treat the rejections as presented in the Answer as the pending rejections. Claims 16 and 17 are not rejected in the Answer, as such claims 16 and 17 shall be treated as being objected to. Appeal 2020-005867 Application 15/434,872 4 We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be forfeit. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner’s rejections. We add the following primarily for emphasis. ALTERED GROUNDS OF REJECTION. The Answer states that every ground of rejection entered in the Final Action is maintained in the Answer and that no new grounds of rejection are entered. See Ans. 3. However, the Answer presents a newly-entered anticipation rejection of Claims 2, 6, 10, 14, and 15 over Chen.6 Ans. 3-5. The Answer also presents a newly-entered obviousness rejection of Claims 3-5, 7-9, and 11-13 over Chen and Shannon. Ans. 5-7. The Answer fails to maintain the obviousness rejection of Claims 2, 6, 10, and 14-17 over Chen and BEA: In the Examiner’s Answer, the Examiner appeared to withdraw the rejection of each of independent claims 2, 6, and 10 under 35 U S.C. § 103 as allegedly being unpatentable over Chen [and] BEA . . . instead raising a new rejection of each of 6 This § 102 rejection was also made by the Examiner in the Non-Final rejection dated May 14, 2019. Appeal 2020-005867 Application 15/434,872 5 independent claims 2, 6, and 10 under 35 U.S.C. § 102 as allegedly being anticipated by Chen. See generally Ans.; see also Reply Br. 1. Because the rejection of Claims 2, 6, 10, and 14-17 under 35 U.S.C. § 103 over Chen and BEA is not repeated or discussed in the answer, we deem it to have been withdrawn and not before us. Any rejection that is not repeated, or discussed, in the Answer may be taken by the Board as having been withdrawn. See Ex Parte Emm, 118 USPQ 180 (Bd. App. 1957). CLAIMS 2, 6, 10, 14, AND 15: ANTICIPATION BY CHEN. Appellant argues these claims as a group and designates Claim 6 as representative. Appeal Br. 11 (“Independent claim 6, which is representative of independent claims 2 and 10 . . .”). Therefore, we decide the appeal of the § 103(a) rejections on the basis of representative Claim 6 and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appellant first contends that: because the Examiner previously conceded that there are differences between Chen and these elements [set forth at page 2 of the Reply] of each of independent claims 2, 6, and 10, it is respectfully requested that the Board reverses the Examiner’s rejection of each of claims 2, 6, and 10 under 35 U.S.C. § 102 for this reason alone. Reply Br. 2. The Examiner initially found Chen failed to teach each limitation of the independent claims. Final Act. 8. The Examiner’s subsequent, contradictory finding, that Chen anticipates the claims, impeaches the deference normally accorded the Board by the Federal Circuit. In re Vaidyanathan, 381 Fed.Appx. 985, 991 (Fed. Cir. 2010) (“Although the Appeal 2020-005867 Application 15/434,872 6 Solicitor argues that the court must defer to the PTO’s latest position, the agency’s contradictory findings of technological facts based on shifting perceptions of the prior art impeach the deference normally owed to administrative findings of fact.”). We, therefore, reverse the rejection of Claims 2, 6, 10, 14, and 15 under 35 U.S.C. § 102. We further discuss this rejection in the context of the obviousness rejection over Chen and Shannon, below. CLAIMS 3-5, 7-9, AND 11-13: OBVIOUSNESS OVER CHEN AND SHANNON. Appellant contends these claims are allowable in view of their dependence from one of independent Claims 2, 6, and 10. Appeal Br. 18. Appellant and the Examiner discussed the obviousness rejection of Claim 2 in the context of a obviousness rejection of Claims 2, 6, 10, and 14- 17 over Chen and Bea. See Final Act. 6; Appeal Br. 12. That rejection was not maintained in the Answer. Thus, we find it has been withdrawn. See Ex parte Emm. We discuss the rejection of Claim 2 insofar as Appellant contends the presently-rejected claims are patentable by virtue of their dependence from Claim 2. Independent Claim 2 recites, inter alia: “an application having a first mode and a second mode, the first mode turning on functional extensions of the application, the second mode turning off functional extensions of the application.” Appeal Br. 12. The Examiner finds Chen teaches an application operating in a first mode which turns on functional extensions of the application. Final Act. 6 (citing Chen ¶ 26). The Examiner finds Chen teaches a second mode which turns off the functional extensions. Id. (citing Chen ¶ 46). Appeal 2020-005867 Application 15/434,872 7 Appellant contends Chen discloses the migration of a program that includes replacing a proprietary extension in a source file with a compatibility replacement in a destination file. Appeal Br. 13. Appellant argues replacement of a file upon migration does not teach or suggest an application program that, itself, “has a first mode and a second mode, the first mode turning on functional extensions of the application, the second mode turning off functional extensions of the application,” as recited in each of independent claims 2, 6, and 10. Id. Appellant argues to the contrary, Chen discusses a file-by-file migration that results in a set of files that are used to implement a different program at different destinations; Chen does not teach or suggest the program itself has two modes. The files for a program in Chen are changed after a migration, leaving the program with only one possible implementation. The Examiner finds Chen discloses a program that can be deployed and executed in one of two configurations, i.e., with the original proprietary extensions, or where destination server extensions replace the original proprietary extensions. Ans. 8. Appellant argues: replacing proprietary extensions is not the same as turning them on or off, much less doing so in the specifically recited way. Furthermore, the compatibility replacements in Chen are used to make it possible to migrate a program to a new server environment. That is, in Chen, the original source files used to implement the program are not compatible with the new server environment. In contrast, the recited application is executable in the recited base environment in either the first mode or the second mode. In the first mode, functional extensions of the application are turned on; in the second mode, the functional extensions of the application are turned off. But the application is executable in either mode. Appeal 2020-005867 Application 15/434,872 8 Reply Br. 2. We agree with Appellant. The claims recite an application that can operate in two, distinct, modes depending on whether certain optional features are turned on or off. See Spec. ¶¶ 10, 11, 16, 27, 28. In contrast, Chen discloses a first application having features appropriate for a first environment and Chen discloses a second, distinct, application having features appropriate for a second environment. The Examiner does not apply Shannon (or BEA) to teach the limitations of the independent claims disputed above. Ans. 6 (“Chen discloses claims 2, 6 and 10”). In view of the foregoing, we decline to sustain the rejection of Claims 3-5, 7-9, and 11-13 under 35 U.S.C. § 103(a). Where, as above, the Examiner finds Chen, alone, teaches a disputed limitation, Appellant’s traversal applies equally to the rejection under § 102(a) as to the rejection under § 103(a). For this reason, as well, we decline to sustain the anticipation rejection discussed above. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 6, 10, 14, 15 102(a) Chen 2, 6, 10, 14, 15 3-5, 7-9, 11-13 103(a) Chen, Shannon 3-5, 7-9, 11-13 Overall Outcome 2-15 Appeal 2020-005867 Application 15/434,872 9 REVERSED