Ex Parte Casey

Patent Trial and Appeal Board

Oct 20, 2014

11967672 (P.T.A.B. Oct. 20, 2014)

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.
11/967,672 12/31/2007 Audrey Lynn Casey 08909095US1 7443
46089 7590 10/20/2014
GOWLING LAFLEUR HENDERSON LLP (OTT)
SUITE 2600
160 ELGIN STREET
OTTAWA, ON K1P1C3
CANADA
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
10/20/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AUDREY LYNN CASEY
____________________

Appeal 2012-0008561
Application 11/967,6722
Technology Center 3600
____________________

Before HUBERT C. LORIN, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 3–15 and 17–24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“Br.,” filed April 15,
2011), the Examiner’s Answer (“Ans.,” mailed July 6, 2011), and the Final
Office Action (“Final Act.,” mailed October 14, 2010).
2 According to Appellant, the real party in interest is the inventor,
Audrey Lynn Casey. Br. 1.
Appeal 2012-000856
Application 11/967,672

2
THE CLAIMED INVENTION
Appellant’s claimed invention “relates generally to methods and
systems for modeling a plurality of assets in an asset based business and
more particularly to asset investment decision optimization which use the
model to evaluate different asset investment decisions, termed investment
alternatives” (Spec. ¶ 2).
Claim 17, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
17. A computer system for mapping business assets to
a financial plan for managing those assets over an extended
period of time, the computer system comprising:
[(a)] a central processing unit;
[(b)] a memory;
[(c)] an asset-based module for storing an asset-based
model of business assets;
[(d)] a mapping module for generating a monetary-
based financial plan for the business assets in dependence upon
the asset base model of business assets; and
[(e)] an alternatives module for evaluating alternatives
within the financial plan and assessing the impact on the
business assets.

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REJECTIONS3
Claims 23 and 24 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 3–15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sundararajan (US 2007/0225949 A1, pub. Sept. 27, 2007) and Nixon
(US 2002/0077711 A1, pub. June 20, 2002).4
Claims 17–24 are rejected under 35 U.S.C. § 102(e) as anticipated by
Sundararajan.

ANALYSIS
Non-Statutory Subject Matter
In rejecting claims 23 and 24 under 35 U.S.C. § 101, the Examiner
reasons that the claims are directed to non-statutory subject matter because
“[a]ccording to the [Bilski v. Kappos, 561 U.S. 593 (2010)] decision, claim
language should include a machine or a transformation to occur” and
“[c]urrently, claims 23 [and] 24 do not comply with this requirement”
(Ans. 4). In the Response to Argument section of the Answer, the Examiner
acknowledges that the Supreme Court clarified in Bilski that the machine-or-
transformation test is not the sole test for deciding whether an invention is a
patent-eligible process under § 101, and the Examiner enumerates a number
of factors weighing toward and against patent-eligibility (id. at 12; see also

3 The Examiner has withdrawn the rejection of claims 3–15 under 35 U.S.C.
§ 102(e) as anticipated by Eryurek (US 7,634,384 B2, iss. Dec. 15, 2009).
Ans. 12.
4 We treat, as inadvertent, the Examiner’s inclusion of cancelled claim 16
among the rejected claims before us for review. Ans. 5 and 13; see also
Final Act. 8.
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Bilski, 561 U.S. at 604). But the Examiner makes no effort to apply any of
these factors to claims 23 and 24. Instead, the Examiner concludes, “[b]ased
on the current claim language, since there is no recitation of a machine or
transformation (express or inherent), this factor weighs heavily against
compliance with 35 U.S.C. [§ ]101” (id. at 13).
The Examiner’s analysis is incomplete inasmuch as it reflects
consideration of the machine-or-transformation test, only, which the
Supreme Court has made clear is not dispositive of the § 101 inquiry.
The Examiner has failed to establish a prima facie case of patent-
ineligibility. Therefore, we do not sustain the Examiner’s rejection of claims
23 and 24 under 35 U.S.C. § 101.

Anticipation
Independent claims 17 and 23 and dependent claims 18–22 and 24
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claims 17 and 23 under 35 U.S.C. § 102(e) because
“Sundararajan is concerned with forecasting, for example forecasting sales”
and “does not teach modeling business assets of a company, generating a
financial plan based upon the asset model and allowing the evaluation of
alternatives within the financial plan to assess the impact on the business
assets,” as required by limitations (c), (d), and (e) of claim 17, and similarly
required by claim 23 (Br. 8–9). Instead, we agree with the Examiner that
Sundararajan discloses the argued limitations at paragraphs 22, 24, 42, and
45 (Ans. 10 and 13).
Sundararajan is directed to the modeling of forecast and production
planning data, and describes “[a] data model that provides a common data
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Application 11/967,672

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structure to represent a forecast and allows for customization of the data
model in a manner that facilitates upgrading of the data model”
(Sundararajan ¶ 22). Sundararajan explains that the forecast data model
defines relationships of a forecast with various entities related to the
forecast, including “a related product line (a product line or service for
which the forecast is created), a related product (a product or service for
which the forecast is created), [and] a related account (an organization
providing the product or service for which the forecast is created)”
(Sundararajan ¶ 24), i.e., business assets. Sundararajan also describes that
“the forecast data model associates the forecast with fact data,” including,
for example, “the unit price of the product or service for which the forecast
is created, the total cost of the product or service for which the forecast is
created, the total revenue that is expected to be generated by the product or
service, the best case estimate of the revenue, and the worst case estimate of
the revenue” (Sundararajan ¶ 42).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000) (citations omitted). Here, claim 17
broadly recites “storing an asset-based model of business assets;”
“generating a monetary-based financial plan for the business assets in
dependence upon the asset base model of business assets;” and “evaluating
alternatives within the financial plan and assessing the impact on the
business assets.” We agree with Examiner that Sundararajan discloses
product lines and product services, which are business assets under a broad,
but reasonable, interpretation (Ans. 13). Sundararajan also discloses a
forecast data model related to the business assets, i.e., an asset-based model
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of business assets (limitation (c) of claim 17), and describes that a revenue
forecast, i.e., a monetary-based financial plan for the business assets
(limitation (d)), is generated based on the data model (see id. at 13).
In addition, Sundararajan describes that the forecast data model associates
the forecast with fact data, including a best and worst case estimate of the
revenue, and that executives may make revisions to the forecasts using
historical data to determine trends and create a reasonable projection of
expected revenue (see Sundararajan ¶ 45), which meets the language of
limitation (e) of claim 17 under a broad, but reasonable, interpretation.
In view of the foregoing, we sustain the Examiner’s rejection
35 U.S.C. § 102(e) of independent claims 17 and 23, and claims 18–22 and
24, which depend from claims 17 and 23, respectively, and are not argued
separately.
Appellant also is specifically reminded, with reference to Appellant’s
statements regarding claims 17 and 23 at pages 8 to 9 of the Appeal Brief,
that merely repeating the language of the claim does not constitute a separate
argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that the Board reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) (2007) as requiring “more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art”).
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Obviousness
Dependent claims 3–15
Each of claims 3–15 depends, directly or indirectly, from claim 17.5
Appellant does not present any arguments for the separate patentability of
dependent claims 3–15 except to assert that Nixon does not cure the alleged
deficiencies of Sundararajan, and that the dependent claims are, therefore,
allowable based on their dependence on independent claim 17 (Br. 6).
We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting claim 17 under 35 U.S.C. § 102(e). Therefore,
we sustain the Examiner’s rejection of claims 3–15 under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s rejection of claims 23 and 24 under 35 U.S.C. § 101
is reversed.
The Examiner’s rejection of claims 3–15 under 35 U.S.C. § 103(a) is
affirmed.
The Examiner’s rejection of claims 17–24 under 35 U.S.C. § 102(e) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

5 The Claims Appendix of Appellant’s Appeal Brief reflects that dependent
claim 3 depends from cancelled claim 2. For purposes of this appeal, we
treat claim 3, as did the Examiner, as depending from claim 17.
See Ans. 1314. However, upon return of this application to the jurisdiction
of the Examining Corps, the Examiner and Appellant should appropriately
address and correct the improper dependency of this claim.
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AFFIRMED
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