SAP SE

Patent Trials and Appeals Board

Feb 18, 2021

2019005754 (P.T.A.B. Feb. 18, 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.
15/373,993 12/09/2016 Alexander Ubillus 2058.B23US1 8989
50400 7590 02/18/2021
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
PAULA, CESAR B
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
02/18/2021 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):
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 ALEXANDER UBILLUS, KAM YUE,
ARUN THIYAGARAJAN, VERONICA VIJIL,
HUIHANG LIANG, ORVILLE PINTO,
JIAWEI SUN, and GISO SCHROEDER
Appeal 2019-005754
Application 15/373,993
Technology Center 2100

Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, 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 to reject claims 1–20. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies SAP SE as the real party in interest. Appeal Brief filed
March 15, 2019 (“Appeal Br.”) at 2.
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Application 15/373,993

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CLAIMED SUBJECT MATTER
Summary
Appellant’s claimed subject matter “relates to tracking of documents
through multiple computer networks.” Spec. ¶ 2.2
Illustrative Claim
Claims 1, 6, and 14 are independent. Claim 1, reproduced below with
certain dispositive limitations at issue italicized, illustrates the claimed
subject matter:
1. A system comprising:
at least one processor;
a memory; and
a middleware management architecture engine stored in
the memory and executable by the at least one processor to
perform operations comprising:
performing a first function on a first document
received from a first network, causing a change in the
status of the first document, the first document being a file
stored at the first network;
logging the change in the status of the first
document in a record corresponding to the first document
in the memory;
causing the first document to be sent to a second
network via a transmission protocol layer;

2 In addition to the above-noted Appeal Brief, throughout this Decision we
refer to: (1) Appellant’s Specification filed December 9, 2016 (“Spec.”);
(2) the Non-Final Office Action (“Non-Final Act.”) mailed September 19,
2018; (3) the Examiner’s Answer (“Ans.”) mailed June 28, 2019; and (4) the
Reply Brief filed July 24, 2019 (“Reply Br.”).
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receiving, in a layer other than the transmission
protocol layer, from the second network, a notification of
a change in status of the first document within the second
network, the layer other than the transmission protocol
layer being an integration layer having defined therein a
plurality of status codes, the notification including one of
the status codes;
logging the change to the status of the first
document in the second network in the record
corresponding to the first document in the memory; and
causing the reporting, to the first network, of
information corresponding to the change in the status of
the first document in the middleware management
architecture and the change in the status of the first
document in the second network.
Appeal Br. 15 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art references:3
Name Reference Date
Smith US 2007/0136592 A1 June 14, 2007
Peter US 2008/0082575 A1 Apr. 3, 2008
Liu US 2013/0061129 A1 Mar. 7, 2013
Wu US 2014/0153387 A1 June 5, 2014
Anderson US 2016/0364277 A1 Dec. 15, 2016
REJECTIONS
The Examiner rejects claims 1–4, 6, 7, 14, and 15 under 35 U.S.C.
§ 103 as being unpatentable over Anderson and Peter. Non-Final Act. 3–14.
The Examiner rejects claims 5, 8, and 16 under 35 U.S.C. § 103 as
being unpatentable over Anderson, Peter, and Liu. Id. at 14–15.

3 All citations to the references use the first-named inventor or author only.
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The Examiner rejects claims 9 and 17 under 35 U.S.C. § 103 as being
unpatentable over Anderson, Peter, Liu, and Wu. Id. at 15–16.
The Examiner rejects claims 10–13 and 18–20 under 35 U.S.C. § 103
as being unpatentable over Anderson, Peter, Liu, Wu, and Smith. Id. at 16–
20.
The Examiner rejects claims 1, 6, and 14 under 35 U.S.C. § 112(a), as
failing to comply with the enablement requirement. Ans. 4.
The Examiner rejects claims 1, 6, and 14 under 35 U.S.C. § 112(b),
“as being indefinite for failing to particularly point out and distinctly claim
the subject matter which the inventor or a joint inventor . . . regards as their
invention.” Id. (emphasis omitted).
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Rejections under 35 U.S.C. § 103
The Examiner finds Peter teaches or suggests,
receiving, in a layer other than the transmission protocol layer,
from the second network, a notification of a change in status of
the first document within the second network, the layer other
than the transmission protocol layer being an integration layer
having defined therein a plurality of status codes, the notification
including one of the status codes,
as recited in claim 1. Non-Final Act. 5–7 (citing Peter ¶¶ 32, 33, 46, 47).

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Appellant argues that the cited “paragraphs describe two different use
cases and it is unclear from the Office Action how the Examiner thinks that
both these different use cases teach the present claims element.” Appeal
Br. 10 (citing Peter ¶¶ 32, 33, 46, 47). Appellant posits that “perhaps the
Examiner meant that the uploading and/or saving of the document in the
system 100 causes a change in its status. Even if this were true, however,
Appellant can find no notification being sent indicating the change in the
status” because the “user simply uploads the documents and asks the system
to process it.” Appeal Br. 11. Appellant further summarizes the arguments
in the Appeal as follows:
in order for Peter to teach the element in question, it would have
to teach:
1. That a notification of a change in status of the first
document is received from the second network.
2. That the notification of a change in status is received in
a layer other than the transmission protocol layer.
3. That the layer other than the TCP layer is an integration
layer.
4. That the layer other than the TCP layer has a plurality
of status codes defined therein.
5. That the notification of status change comprises one of
the status codes.
Peter fails to teach any of these aspects, let alone all of them.
Appeal Br. 13.
We find Appellant’s arguments persuasive. “When a reference is
complex or shows or describes inventions other than that claimed by the
applicant, the particular part relied on [by the Examiner] must be designated
as nearly as practicable. The pertinence of each reference, if not apparent,
must be clearly explained and each rejected claim specified.” 37 C.F.R.
§ 1.104(c)(2).
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Here, it is unclear from the Examiner’s rejection how the cited
paragraphs from Peter teach or suggest the limitation at issue. See In re
Zurko, 258 F. 3d 1379, 1386 (Fed. Cir. 2001) (“With respect to core factual
findings in a determination of patentability [the Patent Office] must point to
some concrete evidence in the record in support of these findings.”). The
cited paragraphs from Peter are silent about layers, let alone the specific
types of layers recited in the claim. Nor do we find instructive the
Examiner’s cut-and-paste of the same text in response to each of Appellant’s
five different arguments. Ans. 24, 29, 31, 33, 37.
Accordingly, the Examiner has not demonstrated that the combination
of Anderson and Peter teaches or suggests “receiving, in a layer other than
the transmission protocol layer, from the second network, a notification of a
change in status,” as recited in claim 1. Because we agree with at least one
of the dispositive arguments advanced by Appellant, we need not reach the
merits of Appellant’s other arguments.
For the reasons discussed above, and constrained by the record before
us, we do not sustain the Examiner’s rejection of independent claim 1 under
35 U.S.C. § 103. For similar reasons, we do not sustain the Examiner’s
rejection of independent claims 6 and 14, which recite a similar limitation.
In addition, we do not sustain the Examiner’s rejections of claims 2–5, 7–13,
and 15–20, which depend directly or indirectly from claims 1, 6, and 14.
Rejection under 35 U.S.C. § 112(a)
The Examiner rejects claim 1, 6, and 14 “under 35 [U.S.C. [§] 112(a)]
for lack of enablement since it is not defined what ‘status codes’ [are] in a
way to enable one of ordinary skill in the art to make this object” without
undue experimentation. Ans. 4.
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Appellant argues that it is clear from paragraphs 40–42, 51, and 52
and “the rest of the Specification, that the term ‘status code’ is meant to
imply a numeric or alphanumeric value that represents a status of a
document in a system.” Reply Br. 3. According to Appellant, “[t]his is
consistent with Table 1, which uses alphanumeric codes such as
DocumentReceivedFailed to represent the status of a document” and
therefore “Table 1 clearly indicates a way in which the status codes may be
implemented, thus enabling one of ordinary skill in the art to make this
object” without undue experimentation. Id. at 3–4.
The Examiner, who bears the initial burden, fails to adequately
explain why the disclosure, as filed, is not sufficiently complete to enable
one of ordinary skill in the art to make and use the invention of claims 1, 6,
and 14 without undue experimentation. See In re Wright, 999 F.2d 1557,
1561–62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223–24
(CCPA 1971)) (The PTO bears the “initial burden” when rejecting claims
for lack of enablement.). The rejection before us does not include adequate
discussion of the Wands factors to provide the Appellant or the Board with
an indication as to why one would have to engage in undue experimentation
to practice the claimed invention. See In re Wands, 858 F.2d 731, 736–737
(Fed. Cir. 1988) (“Enablement is not precluded by the necessity for some
experimentation . . . . However, experimentation needed to practice the
invention must not be undue experimentation. The key word is ‘undue,’ not
‘experimentation.’”) Id. at 737. The Examiner fails to demonstrate
consideration of the amount of experimentation needed to make or use the
invention based on the content of the disclosure; the nature of the invention;
the state of the prior art; the relative skill of those in the art; or the level of
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predictability in the art. Id. at 737. Although the Examiner is not required to
provide a discussion of every Wands factor, it is not apparent from the
Examiner’s rejection that any of these factors has been considered or that the
Examiner relies on any evidence sufficient to support the conclusion of lack
of enablement. Id.
Accordingly, the Examiner has not established that the limitation at
issue lacks enablement under 35 U.S.C. § 112(a), and we do not sustain the
Examiner’s rejection of claim 1, 6, and 14.
Rejection under 35 U.S.C. § 112(b)
The Examiner rejects claims 1, 6, and 14 under 35 U.S.C. § 112(b) “as
being indefinite for failing to particularly point out and distinctly claim the
subject matter.” Ans. 4 (emphasis omitted). Specifically, the Examiner
determines “the element ‘status codes’ renders the claims indefinite because
the claims include an element that is not clearly defined. Neither
Specification nor Drawings provides a better description of what ‘status
codes’ really means.” Id.
Appellant argues that “one of ordinary skill in the art reading the
Specification would clearly understand that the table describes a list of
statuses and their corresponding status codes, given the definition of codes
in the Specification. The fact that Appellant did not explicitly recite that the
table also contained status values does not make the term inconsistent with
the term ‘statuses.’” Reply Br. 4.
Appellant’s arguments are persuasive. “A decision on whether a
claim is indefinite . . . requires a determination of whether those skilled in
the art would understand what is claimed when the claim is read in light of
the specification.” Manual of Patent Examining Procedure (MPEP) §
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2173.02 (citation omitted) (9th Ed., Rev. 10.2019, June 2020). “‘[A] claim is
indefinite when it contains words or phrases whose meaning is unclear.’” In
re Packard, 751 F.3d 1307, 1310, 1314–15 (Fed. Cir. 2014) (citing MPEP
§ 2173.05(e)).
Here, the Examiner has provided insufficient evidence to support the
conclusion that the term “status code” would have been unclear to one of
ordinary skill in the art in view of the Specification. Accordingly, we do not
sustain the Examiner’s rejection of claims 1, 6, and 14, as being indefinite
under 35 U.S.C. § 112(b).
DECISION SUMMARY
In summary:

REVERSED

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 6, 14 112(a) Written
Description
1, 6, 14
1, 6, 14 112(b) Indefiniteness 1, 6, 14
1–4, 6, 7,
14, 15
103 Anderson,
Peter
1–4, 6, 7,
14, 15
5, 8, 16 103 Anderson,
Peter, Liu
5, 8, 16
9, 17 103 Anderson,
Peter, Liu,
Wu
9, 17
10–13
18–20
103 Anderson,
Peter, Liu,
Wu, and
Smith
10–13
18–20
Overall
Outcome
1–20