Ex Parte Dunagan et alDownload PDFPatent Trial and Appeal BoardAug 15, 201611501660 (P.T.A.B. Aug. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111501,660 08/08/2006 79980 7590 08/17/2016 Keohane & D'Alessandro 1881 Western Avenue Suite 180 Albany, NY 12203 FIRST NAMED INVENTOR Deborah Louise Dunagan 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 ATTORNEY DOCKET NO. CONFIRMATION NO. END920060115US 1 6511 EXAMINER FIELDS, BENJAMIN S ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 08/17/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): drubbone@kdiplaw.com Docket@Kdiplaw.com lcronk@kdiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEBORAH LOUISE DUNAGAN, CHERYL DIANE JETMUND, LOUISA JOSEPHINE PELUSO, and GLORIA M. RON-FORNES Appeal2014-004005 Application 11/501,660 1 Technology Center 3600 Before ANTON W. PETTING, CYNTHIA L. MURPHY, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Appellants' claimed "invention relates to a community of practice and particularly to a method and system for assessing the capability level of a community of practice." (Spec. 1.) 1 According to Appellants, the real party in interest is International Business Machines Corporation. (Appeal Br. 2.) Appeal2014-004005 Application 11/501,660 Claims 1 and 9 are the independent claims on appeal. Claim 1 is representative and is reproduced below (emphasis added): 1. A method of assessing a community of practice capability, the method comprising: providing, using a computing device, a community of practice comprising a plurality of individuals, the community of practice formed based on a same subject matter interest common to each of the plurality of individuals; providing, using the computing device, a community model having key areas of focus representing requirements, including requirements based on the same subject matter interest common to each of the plurality of individuals to be peiformed by one or more of the plurality of individuals following the formation of the community of practice for operating and maintaining the community of practice, wherein each said key area of focus is defined by levels corresponding to stages in the development of the community of practice, each level having attributes that characterize the development of the community of practice for each said key area of focus; for each said key area of focus, comparing, using the computing device, said community of individuals to said attributes to determine a community level for that key area of focus; and combining, using the computing device, the community levels for each said key area of focus to assess said community capability. REJECTIONS Claims 1-18 are rejected under 35 U.S.C. § 102(b) as anticipated by Huberman (US 2005/0138070 Al, pub. June 23, 2005). ANALYSIS Huberman discloses that "[a ]cquired data about communication interactions is used to form constructs which are indicative of an entity and 2 Appeal2014-004005 Application 11/501,660 communities-of-practice within the entity." (Huberman, Abstract.) In particular, Huberman discloses: The process 101 of identifying communities-of-practice from a substantially random communication network construct may be initiated by collecting 103 communication data for the organization-in-analysis. This data may be any form of pairwise communication, but for this exemplary embodiment is simply a system administrator's access to e-mail messaging "To, "From," "CC:" and "BCC" data-namely, the addressing information which is inherent in known manner e-mail messaging systems. (Huberman i-f 21.) "In one aspect, each nodal connector 305 signifies that two connected people have e-mailed over a predetermined threshold amount." (Id. i-f 23.) The Examiner finds that "Huberman identifies communities from random e-mail communications between members of a company" and that "[p ]eople are connected if they've emailed over a predetermined threshold amount." (Answer 4.) Based on this, the Examiner finds, "these plurality of individuals form a community of practice formed based on a same subject matter interest in common to each of the plurality of individuals." (Id.) Appellants argue that the only requirement of the community members in Huberman's model is that they reach and/or maintain a threshold amount of e-mail communications. There is nothing disclosed in Huberman to support the conclusion that the formation and requirement( s) of this model are based on the same subject matter interest common to each of the plurality of individuals of the community, including requirements to be performed by one or more of the plurality of individuals following the formation of the community of practice for operating and maintaining the community of practice. (Appeal Br. 10.) 3 Appeal2014-004005 Application 11/501,660 "[A]n invention is anticipated if the same [method], including all the claim limitations, is shown in a single prior art reference. Every element of the claimed invention must be literally present, arranged as in the claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). "Anticipation can occur when a claimed limitation is 'inherent' or otherwise implicit in the relevant reference." Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). It is not clear where, in the paragraphs cited by the Examiner, Huberman discloses "a community model having key areas of focus representing requirements, including requirements based on the same subject matter interest common to each of the plurality of individuals to be performed by one or more of the plurality of individuals following the formation of the community of practice for operating and maintaining the community of practice." (See Final Action 3.) While it is possible that people who have emailed each other "over a predetermined threshold amount" (Answer 4) provide a community model "based on a same subject matter interest in common to each of the plurality of individuals" (id., emphasis omitted), it is not clear from the portions of Huberman cited by the Examiner that the existence of such a threshold quantity of emails inherently or implicitly discloses anything about the commonality of the subject matter of the emails. Nor is it clear from the portions of Huberman cited by the Examiner where Huberman discloses requirements on such individuals to "operat[e] and maintain[] the community of practice." (See Final Action 3.) Therefore, we are persuaded that the Examiner erred in finding that Huberman anticipates claim 1 and claims 2-8 which depend therefrom. Independent claim 9 contains language similar to that of claim 1 and 4 Appeal2014-004005 Application 11/501,660 Appellants make similar arguments. Thus, for the reasons discussed above, we are persuaded that the Examiner erred in finding that Huberman anticipates claim 9 and claims 10-18 which depend therefrom. DECISION The Examiner's rejection of claims 1-18 under 35 U.S.C. § 102(b) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation