Ex Parte Ang et al

Patent Trial and Appeal Board

Jan 21, 2014

11496917 (P.T.A.B. Jan. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte JENNY SIEW HOON ANG, ALI P. ARSANJANI, 7
LYUBOV CHERBAKOV, GEORGE M. GALAMBOS, 8
KERRIE LAMONT HOLLEY, 9
and DAVID HUGH JANSON 10
___________ 11
12
Appeal 2011-010591 13
Application 11/496,917 14
Technology Center 3600 15
___________ 16
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18
Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and 19
JAMES A. TARTAL, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
Appeal 2011-010591
Application 11/496,917

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed January 19, 2011) and the Examiner’s Answer (“Ans.,” mailed
March 30, 2011).
Jenny Siew Hoon Ang, Ali P. Arsanjani, Lyubov Cherbakov, George M. 2
Galambos, Kerrie Lamont Holley, and David Hugh Janson (Appellants) seek 3
review under 35 U.S.C. § 134 of a final rejection of claims 1-6, the only 4
claims pending in the application on appeal. We have jurisdiction over the 5
appeal pursuant to 35 U.S.C. § 6(b). 6
The Appellants invented a way of engaging a client company for the 7
purpose of business transformation and moving from prior art business 8
models created through component business modeling or other techniques to 9
new models required by a service-oriented architecture solution design 10
(Specification 1:5-10). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. A computer implemented method 15
of providing a service oriented architecture solution 16
for a business, 17
the computer implemented method comprising: 18
[1] a processor identifying goals and sub-goals 19
for said business; 20
[2] the processor selecting 21
from a portfolio of service models 22
stored in a database running on said processor, 23
services for fulfilling each of said sub-goals; 24
and 25
[3] the processor thereafter collecting metrics 26
to assess the state of performance indicators 27
for each of said sub-goals. 28
Appeal 2011-010591
Application 11/496,917

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The Examiner relies upon the following prior art: 1
Rossomando US 6,910,204 B1 Jun. 21, 2005
Claims 1 and 3-5 stand rejected under 35 U.S.C. § 112, second 2
paragraph, as failing to particularly point out and distinctly claim the 3
invention.2 4
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over 5
Rossomando. 6
ISSUES 7
The issues as to indefiniteness turn primarily on whether Appellants 8
have lexicographically defined the word “service” and on whether 9
antecedent support in a claim may be found in the Specification instead of 10
the claim. The issues of obviousness turn primarily on whether a participant 11
providing service may be a service. We also raise the issue of whether the 12
Specification provides sufficient support for showing possession of the 13
generic functional limitations in claim 1. 14
FACTS PERTINENT TO THE ISSUES 15
The following enumerated Findings of Fact (FF) are believed to be 16
supported by a preponderance of the evidence. 17
Facts Related to Claim Construction 18
01. A service is a software resource with an externalized service 19
specification. This service specification is available for searching, 20
binding, and invocation by a service consumer. A service 21
provider realizes the service specification implementation and also 22
delivers the quality of service required by the service consumer. 23

2 A rejection under 35 U.S.C. § 112, first paragraph was withdrawn. Ans. 3.
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Services are governed by declarative policies and thus support a 1
dynamically re-configurable architectural style. Spec. 4:25-32. 2
02. A domain denotes a large business area consisting of a logical 3
grouping of business capabilities that provide related business 4
functions and require similar skills and expertise, such as financial 5
services management, product development, or business 6
administration. A domain corresponds to a component business 7
modeling (CBM) competency. Spec. 5:1-7. 8
Facts Related to Appellants’ Disclosure 9
03. Key performance indicators (KPIs), also known as key success 10
indicators or key business indicators are used by businesses to 11
define and measure progress toward their goals. As used herein, 12
KPIs represent quantifiable, measurable objectives, agreed to 13
beforehand, that reflect the critical success factors of an 14
organization. Spec. 6:6-11. 15
04. KPIs differ depending on an industry or organization. A sales 16
organization may use the percentage of its sales that come from 17
return customers. A customer service organization may measure 18
the number of customer service calls answered in less than one 19
minute. To determine if the objectives associated with a KPI are 20
being met, the KPI may need to be broken down into one or more 21
metrics, which are specific measurements to collect for analysis, 22
such as time to close an average sales deal. Spec. 6:12-20. 23
05. Business organizations define goals to meet their mission and to 24
set strategic direction. The terms goals, business goals, and 25
strategic goals are often used to mean business aspirations. As 26
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used herein, the term goal shall denote a business aspiration, such 1
as increase revenue by five percent. Spec. 5:29 – 6:2. 2
ANALYSIS 3
Claims 1 and 3-5 rejected under 35 U.S.C. § 112, second paragraph, as 4
failing to particularly point out and distinctly claim the invention. 5
We are persuaded by the Appellants’ argument that the word “service” is 6
lexicographically defined to be a software resource with an externalized 7
service specification. 8
We are not persuaded by the Appellants’ argument that there is sufficient 9
antecedent basis for the phrase “the state of performance indicators.” 10
Appellants contend the antecedent basis is found in the Specification, but it 11
must be found in the claim itself. As claims 2-6 each depend from claim 1, 12
this rejection is affirmed as to claims 1-6. 13
Claims 1-6 rejected under 35 U.S.C. § 103(a) as unpatentable over 14
Rossomando. 15
We are persuaded by the Appellants’ argument that the Examiner failed 16
to present a prima facie case. The Examiner failed to find that Rossomando 17
describes a portfolio of service models, where a service is a software 18
resource. The Examiner instead found Rossomando described participants 19
who provide services. Appellants have lexicographically defined the word 20
service so as to exclude non-software resources, such as participants. 21
NEW GROUND OF REJECTION 22
The following new ground of rejection is entered pursuant to 23
37 C.F.R. § 41.50(b). Claim 1 is rejected under 35 U.S.C. § 112, first 24
paragraph, as lacking a supporting written description within the original 25
disclosure. 26
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Claim 1 recites both “a processor identifying goals and sub-goals for 1
said business” and “the processor thereafter collecting metrics to assess the 2
state of performance indicators for each of said sub-goals.” Both of these 3
limitations are generic in that the first limitation identifies generic goals and 4
sub-goals and the second limitation collects generic metrics to assess the 5
generic state of performance indicators for each of the sub-goals. These 6
limitations are generic in the sense that they do not recite individual species 7
of goals, sub-goals, metrics, and indicators. 8
Much as in Grams, “[t]he specification does not bulge with disclosure on 9
those tests.” In re Grams, 888 F.2d 835,840 (Fed Cir 1989). Appellants 10
claim a vast genus in functional terms without providing sufficient examples 11
or structural directions to show possession of the entire genus. 12
[A] generic claim may define the boundaries of a vast genus of 13
chemical compounds, and yet the question may still remain 14
whether the specification, including original claim language, 15
demonstrates that the applicant has invented species sufficient 16
to support a claim to a genus. The problem is especially acute 17
with genus claims that use functional language to define the 18
boundaries of a claimed genus. In such a case, the functional 19
claim may simply claim a desired result, and may do so without 20
describing species that achieve that result. But the specification 21
must demonstrate that the applicant has made a generic 22
invention that achieves the claimed result and do so by showing 23
that the applicant has invented species sufficient to support a 24
claim to the functionally‐defined genus. 25
Ariad Pharmaceuticals v. Eli Lilly and Co., 598 F.3d 1336, 1349 (Fed. 26
Cir. 2010) 27
[A] sufficient description of a genus instead requires the 28
disclosure of either a representative number of species falling 29
within the scope of the genus or structural features common to 30
the members of the genus so that one of skill in the art can 31
“visualize or recognize” the members of the genus. We 32
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explained that an adequate written description requires a precise 1
definition, such as by structure, formula, chemical name, 2
physical properties, or other properties, of species falling within 3
the genus sufficient to distinguish the genus from other 4
materials. We have also held that functional claim language 5
can meet the written description requirement when the art has 6
established a correlation between structure and function. But 7
merely drawing a fence around the outer limits of a purported 8
genus is not an adequate substitute for describing a variety of 9
materials constituting the genus and showing that one has 10
invented a genus and not just a species. 11
Id. at 1350 (internal citations omitted). See also LizardTech, Inc. v. Earth 12
Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) for holding 13
such written description requirements in electrical and computer technology 14
claims. 15
Here Appellants simply state that goals are business aspirations and that 16
performance indicators differ depending on an industry or organization. 17
While Appellants break goals and indicators down somewhat, the result is 18
equally generic in the form of raising revenue by some percent or a sales or 19
customer-centered organization. There is no guidance in the form of 20
examples or structure as to how a processor identifies goals and sub-goals 21
for a business, for how a processor collects metrics to assess the state of 22
performance indicators for each of said sub-goals, or for how to assess the 23
state of performance indicators for each of said sub-goals. As these are 24
disclosed as being variable and context dependent, at least some examples 25
from a sufficient number of contexts or some structural description of how 26
to accomplish these in various contexts is needed to show possession of the 27
entire genus. 28
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CONCLUSIONS OF LAW 1
The rejection of claims 1-6 under 35 U.S.C. § 112, second paragraph, as 2
failing to particularly point out and distinctly claim the invention is proper as 3
to the lack of antecedent basis only. 4
The rejection of claims 1-6 under 35 U.S.C. § 103(a) as unpatentable 5
over Rossomando is improper. 6
A new ground of rejection of claim 1 under 35 U.S.C. § 112, first 7
paragraph, as lacking a supporting written description within the original 8
disclosure, is entered pursuant to 37 C.F.R. § 41.50(b). 9
DECISION 10
The rejection of claims 1-6 is affirmed. 11
Our decision is not a final agency action. 12
In addition to affirming the Examiner's rejection(s) of one or more 13
claims, this decision contains new grounds of rejection pursuant to 37 CFR 14
§ 41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection 15
pursuant to this paragraph shall not be considered final for judicial review.” 16
This Decision contains a new rejection within the meaning of 37 17
C.F.R. § 41.50(b) (2007). 18
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO 19
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 20
the following two options with respect to the new rejection: 21
(1) Reopen prosecution. Submit an appropriate amendment of 22
the claims so rejected or new evidence relating to the claims 23
so rejected, or both, and have the matter reconsidered by the 24
Examiner, in which event the proceeding will be remanded 25
to the Examiner. . . . 26
(2) Request rehearing. Request that the proceeding be reheard 27
under § 41.52 by the Board upon the same record. . . . 28
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Should the Appellants elect to prosecute further before the examiner 1
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek 2
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 3
the effective date of the affirmance is deferred until conclusion of the 4
prosecution before the examiner unless, as a mere incident to the limited 5
prosecution, the affirmed rejection is overcome. 6
If the Appellants elect prosecution before the Examiner and this does 7
not result in allowance of the application, abandonment or a second appeal, 8
this case should be returned to the Patent Trial and Appeal Board for final 9
action on the affirmed rejection, including any timely request for rehearing 10
thereof. 11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 13
C.F.R. § 1.136(a)(1)(iv). 14
15
AFFIRMED; 37 C.F.R. § 41.50(b) 16
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Klh 19