Ex Parte Casco-Arias et al

Board of Patent Appeals and Interferences

Jul 27, 2011

10439570 (B.P.A.I. Jul. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUIS CASCO-ARIAS, WILLIAM L. BLISS, JR.,
STEPHEN BLONDI, THOMAS D. CHRISTOPHERSON,
CHARLES S. GAUTHIER, KATHERINE A. IMMING,
BRIAN L. PETERSON, and CHRISTOPHER H. WICHER
____________

Appeal 2010-010629
Application 10/439,570
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-3, 5-10, 13, and
19-24. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6 (2002).
The claimed invention is directed to information technology portfolio
management, and deals more particularly with techniques for managing an
information technology portfolio using product assessments that are
performed using a set of criteria (Spec. 2:3-7). Claim 1, reproduced below,
is further illustrative of the claimed subject matter.
1. A method of managing an information technology
("IT") portfolio, comprising:
determining a plurality of criteria that are important to a
target market for products in an IT portfolio, and at least one
attribute to be used for measuring each of the criteria;
specifying objective measurements for each of the
attributes;
conducting an evaluation of a plurality of the IT products
in the portfolio, wherein the evaluation of each of the IT
products further comprises:
inspecting a representation of the IT product, with
reference to selected ones of the attributes;
assigning attribute values to the selected attributes,
according to how the IT product compares to the
specified objective measurements;
programmatically computing an assessment score,
for the IT product, from the assigned attribute values
using computer-readable program code executed by a
computer;
for each of the selected attributes for which the
assigned attribute value falls below a threshold value,
using computer-readable program code executed by the
computer to programmatically compute an assessment
score increase that will result by raising that assigned
attribute value to the threshold value, the
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programmatically computing an assessment score
increase comprising recomputing a value of the
assessment score for the IT product using the threshold
value as a replacement for the assigned attribute value of
the selected attribute; and
using computer-readable program code executed
by the computer to programmatically compute a potential
assessment score for the IT product by summing the
assigned attribute values and the programmatically-
computed assessment score increases; and
using the programmatically-computed assessment score
and the programmatically-computed potential assessment score
for each of the plurality of evaluated IT products to select a
subset of the IT products in the IT portfolio.

Claims 1-3, 5-10, 13, 19, and 22-24 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Nakano (US Pub. 2002/0184082 A1, pub. Dec.
5, 2002) in view of Robert G. Cooper, et al., Portfolio Management for New
Product Development Results of an Industry Practices Study, Prod. Dvlp.
Inst., Inc., 1, 3, 4, 9-11, 13, 15, 17, 19, 22 (2006-07) (hereinafter “Cooper”)
and Official Notice; and claims 20-21 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Nakano in view of Cooper, Official Notice, and
Carey (US Pat. 7,206,760 B1, iss. Apr. 17, 2007).
We REVERSE.

ISSUE
Did the Examiner err in asserting that a combination of Nakano,
Cooper, and Official Notice renders obvious
for each of the selected attributes for which the assigned
attribute value falls below a threshold value, using computer-
readable program code... to programmatically compute an
assessment score increase that will result by raising that
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assigned attribute value to the threshold value,... comprising
recomputing a value of the assessment score for the IT product
using the threshold value as a replacement for the assigned
attribute value of the selected attribute[,]
as recited in independent claim 11?

FINDINGS OF FACT
Nakano
FF1. Nakano discloses a system that evaluates customer satisfaction
according to the degree of realization of product characteristics
(para. [0003]).
FF2. Customer satisfaction 13 and target quality 14-1 are both indicators
of customer satisfaction for a particular customer requirement 11
on a scale of 1-10, with customer satisfaction 13 being the current
customer satisfaction for a particular company, and target quality
14-1 being the target customer satisfaction (Figs. 2B, 2D, 2E, 4B,
4D, 4E; paras. [0030]-[0031]).
FF3. Figure 4D discloses the results of applying a formula for
calculating raw weight 14-4 and normalized raw weight 14-5. The
formula is a function of customer requirement importance rating
12, improvement ratio 14-3, and sales point 14.2 (paras. [0032]-
[0033]).
FF4. Improvement ratio 14-3 is calculated by taking into account
customer satisfaction 13 and target quality 14-1 for customer
requirement 11 (para. [0032]).

1 Appellants state that independent claims 1, 23, and 24 stand or fall together
(App. Br. 12).
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FF5. Comparison analysis (baseline) value 19 and target value 20 are
both indicators for product characteristics 15, with baseline value
19 being the current product characteristic for a particular
company, and target value 20 being the target product
characteristic (Figs. 2B, 2C, 2E, 4B, 4C, 4E; paras. [0041]-[0042]).
FF6. Each particular customer requirement 11 takes into account a
subset of relevant product characteristics 15 (Figs. 2B, 4B; paras.
[0066]-[0073]).
FF7. Estimated values of customer satisfaction for a particular customer
requirement 11 are calculated for each actual achievement value
EMx of the subset of relevant product characteristic 15. The
calculations are a function of account customer satisfaction 13,
target quality 14-1, baseline value 19, target value 20, and actual
achievement value EMx. Baseline value 19, target value 20, and
actual achievement value EMx all have the same value format
(Figs. 5-7; paras. [0049]-[0065]).
FF8. The final estimated value of customer satisfaction for a particular
customer requirement 11 is a weighted average of the estimated
values of customer satisfaction for each actual achievement value
EMx of the subset of relevant product characteristic 15 (Fig. 9;
paras. [0066]-[0073]).
FF9. Customer satisfaction 13, target quality 14, baseline value 19, and
target value 20 are all inputs (para. [0027]).

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ANALYSIS
We are persuaded the Examiner erred in asserting that Nakano
discloses
for each of the selected attributes for which the assigned
attribute value falls below a threshold value, using computer-
readable program code... to programmatically compute an
assessment score increase that will result by raising that
assigned attribute value to the threshold value,... comprising
recomputing a value of the assessment score for the IT product
using the threshold value as a replacement for the assigned
attribute value of the selected attribute[,]
as recited in independent claim 1 (App. Br. 12-19; Reply Br. 2-7). The
recited assessment score is an aggregation of the recited assigned attribute
values. The only value in Nakano that is an aggregation of other values is
the final estimated value of customer satisfaction for a particular customer
requirement 11 (hereinafter “final value”), which is a weighted aggregation
of customer satisfaction for each actual achievement value EMx of the
subset of relevant product characteristic 15 (FF6, FF8).
Independent claim 1 then recites computing two such assessment
scores (final values): an assessment score and a potential assessment score.
The assessment score would have, as an input, baseline values, and the
potential assessment score would have, as an input, threshold values if the
threshold value is “better” than the baseline value2. When applied to

2 Whether a threshold value is “better” than a baseline value in Nakano
depends on whether a higher number is better or a lower number is better, as
determined by the arrow in the “direction of improvement” row set forth in
Figure 4A. For example, in the first column of Figure 4C, product
characteristic 15 for “our company” is higher than the target value (design
quality), and the relevant arrow in Figure 4A points down. Accordingly for
this column, lower is “better.” By contrast, in the second column of Figure
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Nakano, the baseline values would include customer satisfaction 13 and
baseline value 19, while the threshold values would include target quality
14-1 and target value 20 (FF2, FF5, FF7). As the only relevant variable in
the formula for the final value is actual achievement value EMx, however
(making any of customer satisfaction 13, baseline value 19, target quality
14-1, and target value 20 variable in the same manner would make the
formula inoperable), the corresponding assessment score and potential
assessment score would accordingly be calculated respectively using only
baseline value 19 and target value 20 as the actual achievement value EMx
(FF7)3.
The first problem with this application of Nakano to the claimed
invention, however, is that the Examiner has not shown which specific
calculations in Nakano correspond to the recited assessment score and
potential assessment score. While Nakano discloses how to calculate final
values (assessment scores), there is no specific number of final values
calculated, as recited in independent claim 1.
Furthermore, Nakano does not disclose specifically using baseline
value 19 or target value 20 as the actual achievement value EMx in
calculating any of these final values, as would be required to calculate the
assessment score and potential assessment score, respectively. Indeed, in the
examples shown in paragraphs [0052]-[0054] and [0059]-[0060], numbers

4C, product characteristic 15 for “our company” is lower than the target
value (design quality), and the relevant arrow in Fig. 4A points up.
Accordingly for this column, higher is “better.”
3 To simplify the analysis, as the target values are always “better” than the
baseline values in Nakano, all the inputs for the potential assessment score
will be target values.
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other than baseline value 19 and target value 20 are used as actual
achievement value EMx.
The Examiner asserts that Figures 5-7 and paragraphs [0048]-[0068]
“depict[ ] the present customer satisfaction when the product characteristic
has the baseline value, and the value of customer satisfaction if the product
characteristic is raised to the target value” (Exam’r’s Ans. 6, 18). In other
words, the Examiner asserts customer satisfaction 13/target quality 14-1
corresponds to the recited assessment score, and baseline value 19/target
value 20 corresponds to the recited assigned attribute value. However,
customer satisfaction 13/target quality 14-1 is itself an input, and is not
“programmatically comput[ed]” using baseline value 19/target value 20 as
an input, as required by independent claim 1 (FF9).
The Examiner then asserts that the “‘improvement ratio’” of Nakano
corresponds to the recited assessment score increase, which is the difference
between the assessment score and the potential assessment score (Exam’r’s
Ans. 18-19). However, while improvement ratio 14-3 does compare
customer satisfaction 13 and target quality 14-1 for customer requirement
11, it is only further used to calculate raw weight 14-4 and normalized raw
weight 14-5, which is unrelated to the final values (FF2-FF4). And only one
raw weight 14-4/normalized raw weight 14-5 is calculated, so it cannot
correspond to both the recited assessment score and potential assessment
score.
The Examiner further asserts that the estimated value of customer
satisfaction of the bottom row in Figure 8 corresponds to the recited
potential assessment score, because “[t]hese estimations are performed when
the value of a product characteristic is changed to a ‘target quality’ (i.e.[,] a
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threshold)” (Exam’r’s Ans. 19). However, these estimated values are the
result of inputting the actual achievement value of product characteristics 15
(the second to last row of Figure 8) as the variable EMx into the equations in
paragraphs [0049], [0056], [0063], and not design quality 20 from the
middle row (FF7). Moreover, even in the scenario where actual
achievement value EMx and design quality 20 are the same, so as to
calculate the recited potential assessment score, Nakano still does not
disclose using baseline value 19 as actual achievement value EMx to
calculate the recited assessment score.
The Examiner finally asserts that “the calculations of the claimed
invention are extremely basic, and were old and well-known at the time of
the invention,” specifically, to substitute certain numbers for higher numbers
(Exam’r’s Ans. 20). Even if this were the case, the Examiner has not
provided any rationale as to why one of ordinary skill would modify Nakano
to output final values, corresponding to the recited assessment score and
potential assessment score, with baseline value 19 and target value 20 as
respective inputs for actual achievement value EMx. As set forth above, the
values used for actual achievement value EMx in paragraphs [0052]-[0054]
and [0059]-[0060] differ from baseline value 19 and target value 20.
As independent claims 1, 23, and 24 stand together, and the other
claims depend from one of these claims, we will not sustain the rejections of
claims 1-3, 5-10, 13, and 19-24.

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DECISION
The decision of the Examiner to reject claims 1-3, 5-10, 13, and 19-24
is REVERSED.

REVERSED

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