SAP SEDownload PDFPatent Trials and Appeals BoardFeb 18, 20212019005754 (P.T.A.B. Feb. 18, 2021) Copy Citation 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. Appeal 2019-005754 Application 15/373,993 2 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.”). Appeal 2019-005754 Application 15/373,993 3 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. Appeal 2019-005754 Application 15/373,993 4 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). Appeal 2019-005754 Application 15/373,993 5 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). Appeal 2019-005754 Application 15/373,993 6 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. Appeal 2019-005754 Application 15/373,993 7 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 Appeal 2019-005754 Application 15/373,993 8 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) § Appeal 2019-005754 Application 15/373,993 9 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 Copy with citationCopy as parenthetical citation