Ex Parte Birimisa et al

Patent Trial and Appeal Board

Jun 27, 2013

10372009 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIHO EMIL BIRIMISA and HEINRICH WEGENER
____________

Appeal 2010-008004
Application 10/372,009
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Miho Emil Birimisa, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1, 3-5, 7-14, 16-18
and 20-32. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
Appeal 2010-008004
Application 10/372,009

2

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of evaluating business services
comprising:
receiving at a first computer system, from a second
computer system operated by a user, a plurality of user
inputs reflecting business factors that define a business
environment for a particular business enterprise, the
plurality of inputs including a first set of inputs
representing business issues selected from a
predetermined group of business issues and a second set
of inputs representing business objectives selected from
a predetermined group of business objectives;
executing a computer-based process to identify
services, the computer-based process including:
accessing, from computer-readable storage,
one or more data structures which associate technology
services with the business factors;
mapping, based on the accessed one or more
data structures, the first set of inputs representing
business issues to technology services to identify
relevant services;
mapping, based on the accessed one or more
data structures, the second set of inputs representing
business objectives to technology services to identify
relevant services;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 9, 2009) and Reply Brief (“Reply Br.,” filed May 3, 2010),
and the Examiner’s Answer (“Answer,” mailed Mar. 1, 2010).
Appeal 2010-008004
Application 10/372,009

3
determining a relevancy score for an identified
service based on the number of business factors with
which the identified service is associated;
determining comparative relevance of the
identified services according to relevancy scores of the
identified services;
selecting a subset of the identified services
based on comparative relevance of the identified
services, the subset representing recommended services
to address at least some of the business issues
represented in the first set of inputs and the business
objectives represented in the second set of inputs;
sending the subset of identified services over a
network to the second computer system operated by the
user for display on a display device associated with the
computer system operated by the user;
sending one or more of cost associated with the
identified services, cost savings associated with the
identified services and return-in-investment associated
with the identified services over the network to the
second computer system operated by the user for
display on the display device associated with the second
computer system operated by the user; and
storing, in computer-readable storage, a
business case for implementing the identified services,
the business case including the plurality of inputs, the
identified subset of services and one or more of the cost
associated with the identified services, the cost savings
associated with the identified services and the return-in-
investment associated with the identified services.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Appeal 2010-008004
Application 10/372,009

4
Aycock
Bennett
Johnson
Ruffin
Prakash
Dalfsen
Hack

US 5,765,138
US 5,826,085
US 6,169,979 B1
US 6,249,769 B1
US 2002/0143677 A1
US 2003/0145006 A1
US 2003/0187675 A1
Jun. 9, 1998
Oct. 20, 1998
Jan. 2, 2001
Jun. 19, 2001
Oct. 3, 2002
Jul. 31, 2003
Oct. 2, 2003
The following rejections are before us for review:
1. Claims 1, 3, 4, 14, 16, 17, and 27-32 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Ruffin, Dalfsen, and Hack.
2. Claims 5, 12, 13, 18, 25, and 26 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Ruffin, Dalfsen, Hack, and Prakash.
3. Claims 7 and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Ruffin, Dalfsen, Hack, and Johnson.
4. Claims 8, 11, 21, and 24 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Ruffin, Dalfsen, Hack, and Aycock.
5. Claims 9, 10, 22, and 23 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Ruffin, Dalfsen, Hack, and Bennett.

ISSUES
Has the Examiner made out a prima facie case of obviousness?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

Appeal 2010-008004
Application 10/372,009

5
ANALYSIS
The rejection of claims 1, 3, 4, 14, 16, 17, and 27-32 under 35 U.S.C.
§103(a) as being unpatentable over Ruffin, Dalfsen, and Hack.

We reverse for the reasons stated in Appellants’ brief.
For example, both independent claims 1 and 14 call for
“determin[ing] a relevancy score for an identified service based on the
number of business factors with which the identified service is associated”
(claim 14). The Examiner cites to Fig. 9; col. 15, ll. 46-col. 16, l. 52 as
evidence that the prior art discloses this feature, stating that this disclosure
“discloses determining scores for each defined island based on the
customer objectives such as cost reduction, Web enablement, etc ...” (Ans.
5).
The Appellants argue that “[a]lthough Ruffin may disclose
determining a score for each defined island based on the customer objectives
such as cost reduction, Web enablement, as contended by the Office,
determination of such a score is not based on the number of business factors
with which the identified service is associated.” App. Br. 7. (emphasis
omitted). The Appellants point out that “Ruffin discloses in Fig. 9 and col.
15, line 26 to col. 16, line 52 that "the global profile scores relate to
customer objectives 901 such as cost reduction, Web enablement etc." App.
Br. 7.
The Examiner responded by arguing that Ruffin discloses “[f]or
example, a customer having a main objective of cost reduction can be

Appeal 2010-008004
Application 10/372,009

6
associated with the number of servers per island and S/390 and UNIX skills
(i.e. information technology services). See Fig. 9; Col. 15, Line 46-Col.
16, Line 6.” Ans. 19.
Ruffin is directed to a process for developing a business solution, for
example an IT system proposal, “based upon a set of business related
requirements which is collected from a business entity via an interactive
process and is sequentially analyzed to determine the appropriate business
solutions.” Col. 3, ll. 34-37. According to the process, “the customer is
prompted to identify so-called "islands of IT" or partitioned segments of
their IT infrastructure organized along the lines of various criterion
such as workload, geography, technology etc ..” Col. 7, ll. 36-40. These
“islands” are analyzed and “an ordered listing of potential projects [ ] to be
undertaken by the solution provider” (col. 7, ll. 46-47) is compiled and
examined. A computer program is used to make “more detailed inquiries of
the customer regarding the selected portions of the ordered list” (col. 7, ll.
60-62) and is then used as an input in a project implementation assessment
tool from which a formal solution proposal is generated for the customer.
The Examiner cites Fig. 9. Fig. 9 depicts a process flow for a
business solution assessment core tool; see box 803 in Fig. 8.
The BSA core tool 803 utilizes the island data input to create an
opportunity score 804a for each island, as well as a related
opportunity list for each island and a set of qualitative messages
including tool-generated observations regarding each quantitatively
scored island 804b. ... Based upon the output 804 of the core tool, a
determination is made as to whether the scored island includes
opportunities for which the customer wishes to pursue solutions 805.

Col. 14, ll. 35-63. Ruffin does not disclose here a relevancy score based on a
Appeal 2010-008004
Application 10/372,009

7
number of factors, as claimed.
The Examiner cites col. 15, l. 46 - col. 16, l. 6. This disclosure
provides a detailed explanation of the business solution assessment core tool
process depicted in Fig. 9. The process comprises (a) assigning “scores to
the previously defined global IT objective information which is part of the
island data input to the CORE tool and which has been generated as a result
of the customer profiling step; and (b) using “the scored global objectives ...
to [weigh] the scored island-specific IT metrics.”
The weighing is applied in conjunction with the scoring of the global
objectives, so that, for example, with a customer who has cost
reduction as his highest ranked global objective metrics such as the
number of servers per island and S/390 and UNIX skills could receive
a higher weighing factor than less cost-sensitive metrics such as
World Wide Web enablement. The weighted island scores can now be
used to rank each island.

Col. 15, l. 65 – col. 16, l. 6. But this evidence of weighing “island” scores
depending on a customer’s objectives in order to determine which "island of
IT" is a potential project to be undertaken by a solution provider, without
more, would not, more likely than not, lead one of ordinary skill in the art to
“determine a relevancy score for an identified service based on the number
of business factors with which the identified service is associated” (claim
14).
Accordingly, we find that a prima facie case of obviousness has not
been made out in the first instance and thus the rejection is not sustained.

Appeal 2010-008004
Application 10/372,009

8
The rejection of claims 5, 12, 13, 18, 25, and 26 under 35 U.S.C. §103(a) as
being unpatentable over Ruffin, Dalfsen, Hack, and Prakash.
The rejection of claims 7 and 20 under 35 U.S.C. §103(a) as being
unpatentable over Ruffin, Dalfsen, Hack, and Johnson.
The rejection of claims 8, 11, 21, and 24 under 35 U.S.C. §103(a) as being
unpatentable over Ruffin, Dalfsen, Hack, and Aycock.
The rejection of claims 9, 10, 22, and 23 under 35 U.S.C. §103(a) as being
unpatentable over Ruffin, Dalfsen, Hack, and Bennett.

These rejections are directed to claims dependent on claims 1 and 14,
whose rejection we have reversed above. For the same reasons, we will not
sustain the rejections of these claims over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.").

CONCLUSIONS
The rejections of claims 1, 3, 4, 14, 16, 17, and 27-32 under 35 U.S.C.
§103(a) as being unpatentable over Ruffin, Dalfsen, and Hack; claims 5, 12,
13, 18, 25, and 26 under 35 U.S.C. §103(a) as being unpatentable over
Ruffin, Dalfsen, Hack, and Prakash; claims 7 and 20 under 35 U.S.C.
§103(a) as being unpatentable over Ruffin, Dalfsen, Hack, and Johnson;
claims 8, 11, 21, and 24 under 35 U.S.C. §103(a) as being unpatentable over
Ruffin, Dalfsen, Hack, and Aycock; and, claims 9, 10, 22, and 23 under 35
U.S.C. §103(a) as being unpatentable over Ruffin, Dalfsen, Hack, and
Bennett, are reversed.

Appeal 2010-008004
Application 10/372,009

9

DECISION
The decision of the Examiner to reject claims 1, 3-5, 7-14, 16-18
and 20-32 is reversed.

REVERSED

Klh