Ex Parte Clater

Board of Patent Appeals and Interferences

Feb 16, 2011

11321649 (B.P.A.I. Feb. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GENE CLATER
____________

Appeal 2010-001393
Application 11/321,649
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-40. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is generally directed to systems and methods in
which various qualitative and quantitative measures are combined to report a
project’s risk level, areas, and mitigation in an automatic and objective
manner (Spec., para. [0003]). Claim 1, reproduced below, is further
illustrative of the claimed subject matter.
1. A method implemented on a computing device for
managing a plurality of active projects, the method comprising:
(a) receiving, into the computing device, an input from a
user (either a person or an automated program interface (API))
comprising data concerning one of the plurality of active
projects;
(b) assessing a risk for said one of the plurality of active
projects based on the input received in step (a);
(c) validating a plan and a quality of execution for said
one of the plurality of active projects based on the input
received in step (a); and
(d) providing a report to the user representing at least one
of the risk assessed in step (b) and a result of validation of the
plan in step (c), wherein said report comprises advice on
mitigation of the risk assessed in step (b).

Claims 1-40 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Smith (US Pub. 2005/0246195 A1, pub. Nov. 3, 2005) in view of
Weinstock (US Pat. 6,223,143 B1, iss. Apr. 24, 2001).
We AFFIRM-IN-PART.
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ISSUES
Did the Examiner err in asserting that a combination of Smith and
Weinstock renders obvious the subject matter of claims 1, 14, and 28?
Did the Examiner err in asserting that a combination of Smith and
Weinstock renders obvious the subject matter of claims 3, 16, and 30?
Did the Examiner err in asserting that a combination of Smith and
Weinstock renders obvious the subject matter of claims 5, 18, and 32?
Did the Examiner err in asserting that a combination of Smith and
Weinstock renders obvious the subject matter of claims 7-9, 20-22, and 34-
36?
Did the Examiner err in asserting that a combination of Smith and
Weinstock renders obvious the subject matter of claims 12-13, 25-26, and
39-40?

FINDINGS OF FACT
Smith
Smith discloses a method and a system of developing and
commercializing technology, and more particularly, a system and method for
optimizing the development and the commercialization of technology
developed by an organization. The method in Smith identifies all proposed
projects under consideration and/or active projects within an organization
and examines each proposed project to determine if such projects may be
related to other proposed, current projects, or existing portfolio technologies.
In the event that there are related projects, such projects are reviewed to
minimize the likelihood of any duplication of effort or resources. Proposed
projects are also reviewed, analyzed, mapped, and assessed for
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commercialization potential relative to other populations, communities, and
functional groups (para. [0007]).
According to Smith, team members working and communicating
together in real time will operate to reduce duplication of effort and enhance
commercialization of the final product. For example, if a team member
operating in a legal functional group determines that the proposed project
will result in an end product that may infringe a patent belonging to another,
the team member can communicate such information to all of the other team
members operating in other functional groups in the community. The team
members can then work and communicate together to determine the best
approach, such as modifying the research to design around the patent or
obtain licensing before significant time and money has been expended on the
project. Accordingly, Smith asserts that team members working and
communicating together on an on-going basis will increase the probability
that specific risks will be identified at an early point in the project thereby
allowing modifications of the project requirements to be done with the
minimum effect to the project (para. [0047]).
Figures 11 and 12 of Smith discloses requirements module 302,
whereby a project is first proposed and/or formed (step 1) 500 and a project
is first created and identified. After the project has been identified, a
coordinator is selected who operates to organize the project (step 2) 502 who
determines and selects the appropriate team members (step 3) 504 who will
work and communicate together to create and identify the appropriate
requirements for the project (step 4) 506 which are then entered into a
requirements and tasks database 308 (step 5) 408 within the processor and
memory 402 of the computer system 400 by the coordinator who operates as
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the focal point for the formulation and communication of the specific
requirements. Accordingly to Smith, the term “‘requirements’” refers to all
of the requirements to be addressed by the technology to be developed (para.
[0051]).
Smith discloses that such requirements, may include, but are not
limited to, operating parameters, dimensions, uses of the technology,
government regulations, problems to be solved, etc. Once the requirements
have been created (step 4) 506 and entered (step 5) 508, together with all
pertinent historical documentation, each requirement is then validated and
verified by participating team members (stop 6) 510 and then recorded in the
requirements and tasks database (step 7) 512. Smith emphasizes that the
steps of identifying requirements (step 4) 506, entering the requirements
(step 5) 508, validating and verifying the requirements (step 6) 510, and
recording the verified requirements (step 7) 512 are accomplished in
succession and in real-time. According to Smith, this real-time operation of
creating and entering, verifying and validating, and recording of a
requirement is essential to ensuring an accurate project specification from
which the technology can be developed. The requirements are then
transmitted during steps 506-510 to suitable output devices 406 (Fig. 10)
through the Internet or by an Intranet system for exposure to all team
members identified and entered into the requirements and tasks database 308
for their review and comment. In this way, all team members participate in
creating a store of clear, concise, and mutually agreed upon set of
requirements that will increase the likelihood of success of the project.
Smith asserts that this results in minimizing the amount of rework typically
associated with inaccurate requirements, or requirements that must change
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for various reasons, such as other similar projects being worked, intellectual
property restrictions, changes in end users needs or wants, and the like (para.
[0052]).
Once the requirements have been determined and entered into the
requirements and tasks database 308, Smith discloses that the specific tasks
are then assigned to the team member (step 8) 514. The coordinator 122
who is responsible for the overall communication exchange between the
team members and may also be responsible for the technical success of the
project then records each task in the requirements and task database 308.
After the requirements of the project have been identified and agreed to by
the team members, project risks that may threaten the success of the project
are identified and assessed (step 9) 416, for example, by a legal functional
group, and recorded into a risk database 310 by the coordinator 122. Smith
discloses that these risks are also constrained and included or excluded based
on input by other team members (para. [0053]).
Smith asserts that this process of creating and entering, verifying and
validating and recording a requirement in real time permits all of the team
members to work together on a project and ensures that any risk or
hindrance, such as the discovery of patents that may block or hinder the use
of any developed product or technology, or changes that may affect the
needs of the end user are quickly identified so that the project requirements
can be modified to circumvent such hindrances or better satisfy the needs of
the end user (para. [0058]).
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Weinstock
Weinstock discloses an entire sensitivity or “‘what if’” package
allowing modifications of system or failure mode probabilities, times of
operation, and event scenarios to assess how risks could be mitigated (col. 3,
ll. 34-37).

ANALYSIS
Independent Claims 1, 14, and 28
We are not persuaded that the Examiner erred in asserting a
combination of Smith and Weinstock renders obvious the subject matter of
independent claims 1, 14, and 28 (App. Br. 9-17; Reply Br. 1-4).
Appellant asserts that the claimed invention presents several
advantages over the prior art (App. Br. 9-10, 13-14). However, these
advantages are not specifically set forth in the claims. See CollegeNet, Inc.
v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the
specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims). Moreover, the
Examiner has set forth a combination of Smith and Weinstock that
purportedly renders obvious each recited aspect of claims 1-40. Absent a
technical showing by Appellant as to why this purported combination, that
meets each recited aspect of claims 1-40, lacks the advantages of the claimed
invention, this argument is unpersuasive. See In re Best, 562 F.2d 1252,
1255 (CCPA 1977) (the PTO can require an applicant to prove that the prior
art products do not necessarily or inherently possess the characteristics of the
claimed product); see also Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985),
aff’d mem., 795 F.2d 1017 (Fed. Cir. 1986) (the recognition of another
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advantage flowing naturally from following the suggestion of the prior art
cannot be the basis for patentability when the difference would otherwise
have been obvious).
Appellant asserts that “Smith does not provide a mechanism for
quantifying and weighting risks associated with an initiative, nor does it
provide advice on best practices that can then be used to potentially mitigate
identified risks” (App. Br. 10). As an initial matter, Weinstock is cited for
mitigating risk (Exam’r’s Ans. 7). See In re Keller, 642 F.2d 413, 426
(CCPA 1981) (“one cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references”). Moreover, Smith discloses team members individually and
collectively quantifying and weighting risks (paras. [0047], [0053], [0058]).
As for the “advice,” independent claim 1 recites “providing a report to the
user representing at least one of the risk assessed in step (b) and a result of
validation of the plan in step (c), wherein said report comprises advice on
mitigation of the risk assessed in step (b).” Accordingly, the report is the
advice. Smith discloses both risk assessments recorded in a risk database
and validating project requirements in a requirement and task database, thus
satisfying the recited content of both “reports” that are the recited equivalent
of “advice” (paras. [0047], [0051]-[0053], [0058]). And since Weinstock is
cited for mitigating risk, when combined with Smith, the mitigating of risk
would be included in the report/advice for the Examiner’s stated rationale of
“providing the user with alternative resolutions for risk issues” (Exam’r’s
Ans. 5).
Appellant asserts that “[t]he cited portions of Smith et al[.] teach
validating and verifying the requirements, not validating a plan and a quality
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of execution for one of the plurality of active projects” (App. Br. 10).
However, the validating and modifying of the requirements in Smith do
correspond to a broadest reasonable construction of “validating a plan and a
quality of execution for said one of the plurality of active projects.” See
CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231.
Appellant further asserts that “Smith also does not provide an ability
to ask standard questions defined by a SME, with underlying application of
weight risk values that vary based on answers to related questions,” that,
unlike Weinstock,
[t]he present invention uses subjective and/or objective
responses to questions to not only do reflexive branching to
pertinent subsequent questions, but also to assess relative risks
via risk weighting associated to KPI's, and then provide
possible mitigation alternatives, as well as visual representation
of the analysis. It is important to note that questions posed to a
user can vary by the role of the user and/or the time phase of the
area for which the questions are targeted. The present invention
does not use a branch tree to determine next steps or outcome.
What the present invention does is provide information to an
individual who can then take the cumulative information
presented and factor that information into possible actions[,]
that
[Weinstock] is quite different from the present invention, where
responses to questions are informative to users of the invention,
and those users may make a decision as to the usefulness of the
information presented by the invention, and any decision they
may make our outside of the direct control or impact of the
invention[,]
and that
[t]here is no teaching or suggestion in Smith that would support
a position that Smith uses an approach that applies quantitative
or qualitative metrics to a decision process. By contrast, the
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Appellant's claims (1, 12, 13, 14, 18, 25, 26) recite a process
that applies metrics to the decision process in a manner that
provides an indicator of relative risk as measured by KPI's,
where those KPl's are pre-definable and mapped to a set of
questions that are pre-definable and authorable by an
administrator of the system (claims 8, 9, 20).
(App. Br. 10-12; Reply Br. 1-2). However, Appellant has not shown where
any of these aspects are specifically set forth in the claims. See CollegeNet,
Inc. v. ApplyYourself, Inc., 418 F.3d at 1231.
Appellant additionally asserts that
the present invention differs in that the invention is not integral
to any project itself. The invention is an “independent”
assessment component to any project it is applied to, meaning
the project can proceed without applying the invention,
although when the invention is used ancillary to the project, it
can help ensure a higher degree of success of a project.
(App. Br. 10-11; Reply Br. 2). Once again, Appellant has not shown where
any of these aspects are set forth in the claims. See CollegeNet, Inc. v.
ApplyYourself, Inc., 418 F.3d at 1231.
Appellant also asserts that Smith only discloses identifying project
risks in prospective projects, and not active projects, as set forth in the
claims (App. Br. 12). However, Smith discloses modifying requirements on
active projects, as well as identifying risks early in active projects (paras.
[0047], [0058]).
Appellant provides names and credentials of various industry
consultants as recognizing the “power and uniqueness of this invention”
(App. Br. 14-17). Accordingly, Appellant appears to be attempting to
provide expert testimony. However, such testimony has not been submitted
in declaration form as required by 37 C.F.R. § 1.132.
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Moreover, it is unclear what these experts are testifying to. If
Appellant is attempting to argue that the combination of Smith and
Weinstock is technically deficient, the declaration should set forth either
what specific recited claim element is missing from the combination of
Smith and Weinstock, or why the Examiner’s rationale for combining Smith
and Weinstock is either erroneous or inadequate. If the Appellant is
attempting to establish secondary considerations of non-obviousness such as
“commercial success, long felt but unsolved needs, [and] failure of others,”
objective evidence supporting the relevant secondary consideration should
be included in the declaration. See Graham v. John Deere Co., 383 U.S. 1,
17 (1966). In the absence of such supporting objective evidence, we are
constrained to give little weight to a conclusory statement that the invention
is powerful and unique.
Appellant further asserts that Smith and Weinstock are incompatible,
and in fact teach away from being combined (Reply Br. 3-4). However, the
Examiner merely adds the risk mitigation aspect of Weinstock to the risk
assessment of Smith, with “the motivation of providing the user with
alternative resolutions for risk issues” (Exam’r’s Ans. 5). We do not find
error in the Examiner’s logic. Moreover, a teaching away requires
disparagement. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a]
reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent from the path
that was taken by the applicant”). The Appellant has not shown how the
disclosures of Smith disparage the disclosures of Weinstock, or vice versa.

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Claims 3, 16, and 30
We are persuaded that the Examiner erred in asserting a combination
of Smith and Weinstock renders obvious the subject matter of dependent
claims 3, 16, and 30 (App. Br. 17). Dependent claims 3, 16, and 30 recite
“an integrated project management office toolkit of best practices and
process asset library representing assets shared among the plurality of active
projects.” The Examiner cites column 3, lines 33-37 and column 14, lines 1-
60 of Weinstock as disclosing these aspects (Exam’r’s Ans. 4-5). However,
the Examiner has not adequately shown how the aforementioned portions of
Weinstock render obvious the recited toolkit and library.

Claims 5, 18, and 32
We are not persuaded that the Examiner erred in asserting a
combination of Smith and Weinstock renders obvious the subject matter of
dependent claims 5, 18, and 32 (App. Br. 17). Dependent claims 5, 18, and
32 recite “wherein step (a) comprises prompting the user to answer a
plurality of questions or accept API data relating to the questions, and
wherein step (b) is performed in accordance with the answers to the
questions received from the user or in response to the API data.” Column
14, lines 1-60 of Weinstock discloses a user prompted to answer a series of
“‘Yes’” or “‘No’” questions related to pivotal events (PE) (Exam’r’s Ans. 4-
5). We note that due to the presence of “or,” the references do not also need
to disclose API data in order to render the claims obvious.
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Claims 7-9, 20-22, and 34-36
We are persuaded that the Examiner erred in asserting a combination
of Smith and Weinstock renders obvious the subject matter of dependent
claims 7-9, 20-22, and 34-36 (App. Br. 17-18). Appellant asserts that these
claims generally recite “[t]he ability of the user to add or edit questions”
(App. Br. 17-18). We agree. The Examiner cites column 3, lines 33-37 and
column 14, lines 1-60 of Weinstock as disclosing these aspects (Exam’r’s
Ans. 5). While column 14, lines 1-60 of Weinstock disclose asking
questions, the Examiner has not adequately shown that the aforementioned
portions of Weinstock disclose “[t]he ability of the user to add or edit
questions.”

Claims 12-13, 25-26, and 39-40
We are persuaded that the Examiner erred in asserting a combination
of Smith and Weinstock renders obvious the subject matter of dependent
claims 12-13, 25-26, and 39-40 (App. Br. 18). Appellant asserts that these
claims generally recite “[t]he ability to present a stop light on a user
interface to the user if either the risk or the result of validation of the plan
reaches an unacceptable level” (App. Br. 18). We agree. The Examiner
cites paragraph [0005] of Smith as disclosing a status indicator (Exam’r’s
Ans. 8). However, we are unable to discern any status indicators in
paragraph [0005]. The Examiner also cites paragraphs [0007] and [0051]-
[0053] of Smith as disclosing the cited stop light (Exam’r’s Ans. 4).
However, here also the Examiner has not adequately shown what is
supposed to correspond to the recited stop light.
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DECISION
The Examiner’s rejection of claims 1, 2, 4-6, 10, 11, 14, 16-19, 23, 24,
27-29, 31-33, 37, and 38 is AFFIRMED.
The Examiner’s rejection of claims 3, 7-9, 12, 13, 15, 20-22, 25, 26,
30, 34-36, 39, and 40 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2007).

AFFIRMED-IN-PART

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