Ex Parte Ehrler et al

Patent Trial and Appeal Board

Feb 18, 2016

12167731 (P.T.A.B. Feb. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/167,731 07/03/2008
53000 7590 02/22/2016
KENYON & KENYON LLP
1500 K STREET N.W.
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Stefan Ehrler
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.
11884/505901 6054
EXAMINER
PURI,VENAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/22/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN EHRLER and KATTIA JORDAN-PHILIPP
Appeal2013-005323
Application 12/167, 731
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Stefan Ehrler and Kattia Jordan-Philipp (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-25, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented a way of reviewing and managing employees.
Specification: Title.
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed July 31, 2012) and Reply Brief ("Reply Br.," filed February 26,
2013), and the Examiner's Answer ("Ans.," mailed January 3, 2013), and
Final Action ("Final Act.," mailed February 1, 2012).
Appeal2013-005323
Application 12/167,731
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer implemented method for reviewing employees
of a company comprising:
displaying a grid with potential along one axis and performance
along a second axis;
and
using a processor to place each of a selected group of
employees in one of the boxes defined by the grid based on a
defined set of rules for placing employees in the boxes defined
by the grid.
The Examiner relies upon the following prior art:
Dewar US 2002/0055866 Al May 9, 2002
Lindia US 2002/0184085 Al Dec. 5, 2002
Calderaro US 2003/0004790 Al Jan.2,2003
Travis US 2004/0088177 Al May 6, 2004
Richman US 6,754,874 Bl June 22, 2004
Mason US 2007 /0088730 Al Apr. 19, 2007
SHL Group Limited, Performance and Potential Review Combined OPQ
and 360° Report, OPQ32i (Jan. 2008) (hereinafter "SHL").
Claims 1, 13, and 25 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Mason. 2
2 Although the Answer only repeats two of these rejections, none of these
rejections are indicated as being withdrawn, and so we take the omission of
remaining rejections in the Answer to be a matter of administrative
expediency, and that those rejections remain of record.
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Appeal2013-005323
Application 12/167,731
Claims 1, 13, and 25 stand rejected under 35 U.S.C. § 102(e) as
anticipated by SHL.
Claims 1, 12, 13, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over SHL and Mason.
Claims 2 and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over SHL, Mason, and Lindia.
Claims 3, 6-8, 15, and 18-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over SHL, Mason, and Travis.
Claims 4 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over SHL, Mason, and Dewar.
Claims 5 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over SHL, Mason, and Calderaro.
Claims 9-11 and 21-23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over SHL, ~vfason, and Official Notice.
Claims 12 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over SHL, Mason, Travis, and Richman. 3
ISSUES
The issues of anticipation and obviousness tum on whether the claims
recite a minimum group size and whether Mason shows it was predictable to
measure plural employees.
3 Although the Examiner's statement of the rejection omits SHL and Mason
(Final Act. 17), these claims depend from claims 1 and 13 whose rejections
are predicated on SHL and Mason. We take the omission to be a clerical
error.
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Appeal2013-005323
Application 12/167,731
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Mason
0 I .Mason is directed to complex performance management reporting,
and in particular, to providing a flexible mechanism for organizing
and relating performance management data and reporting
aggregated results across a wide variety of organizational
hierarchies and levels as defined in the data model. Mason,
para. 2.
02.Mason does not show a graph having performance on one axis and
potential on another axis.
03.Mason's cross hierarchies allow performance management
tracking, target setting, and reporting at specific and precise
combinations of entities in the entity relationship diagram.
SHL
04. SHL is directed to a report comparing current performance to
potential. SHL 2.
05. SHL shows a Cartesian graph having Performance on the Y axis
and Potential on the X axis. Codes designating human traits are
shown placed at various (x, y) coordinates within the graph.
SHL3.
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Appeal2013-005323
Application 12/167,731
ANALYSIS
We are persuaded by the Appellants' argument that Mason does not
show a graph having performance on one axis and potential on another axis.
We are not persuaded by the Appellants' argument that SHL does not
show plural employees on a graph having performance on one axis and
potential on another axis. The independent claims do recite placing each of
a selected group of employees in the graph, but do not constrain or narrow
the group size. SHL shows such a graph and placing a code designating an
employee on the graph. SHL thus shows doing so for a group of one.
But even if the claim required a group of more than one employee, this
would not change the conclusion. Our reviewing court has held that
nonfunctional descriptive material cannot lend patentability to an invention
that would have otherwise been anticipated by the prior art. In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004). Cf In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (noting that when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability). King Pharm., Inc. v.
Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant
question is whether 'there exists any new and unobvious functional
relationship between the printed matter and the substrate."') (citations
omitted).
Appellants argue that the claimed employee token data patentably
distinguishes over the prior art employee attribute token data. We disagree
because Appellants have failed to establish that the claimed employee data
label is in any way functionally related to the claimed graph (substrate). As
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Application 12/167,731
a result, Appellants' claimed data label as being "employees" does not
distinguish his invention from the prior art.
To more readily see the issue, we construe the limitations at issue as
follows:
using a processor to place each of a selected group of DATAl m one
of the boxes defined by the grid based on a defined set of rules for placing
DATAl in the boxes defined by the grid
wherein DATAl is labeled as "employees."
There is no issue that SHL does so where the data is labeled as
"employee traits."
To agree with Appellants' reasoning would mean that each novel label,
over which the known graphing technique is applied, is sufficient to warrant
a separate patent even if the remainder of the invention is unchanged. This
would result not only in Appellants' employees in an employee appraisal
context distinguishing over the prior art, but equally, the same employees in
a broader context would distinguish over the prior art, as would every single
unique data label. To give effect to Appellants' argument, we would need to
ignore our reviewing court's concerns with repeated patenting. We decline
to do so.
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel non-
functional descriptive material. King Pharm., 616 F.3d at 1279 ("The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations.") Cf In re Ngai, 367 F.3d at 1339 ("If we were to adopt Ngai's
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Appeal2013-005323
Application 12/167,731
position, anyone could continue patenting a product indefinitely provided
that they add a new instruction sheet to the product.").
Here, the limitation of employee data labels in no way depends on the
data being placed, and the placing of data in no way depends on the
perception of the data as being employees. Thus, this limitation should be
afforded no patentable weight.
We agree with the Examiner that the prior art describes claim 1 because
it teaches each and every functional limitation of the claim. The difference
between the prior art and the claimed invention is simply a rearrangement of
nonfunctional descriptive material (the particular data label).
We are not persuaded by the Appellants' argument that the combination
of SHL and Mason fails to show it was predictable to show plural employees
on a graph having performance on one axis and potential on another axis.
SHL shows placing plural tokens for a single employee on such a graph.
Mason shows it was known to be desirable to report aggregated results
across a wide variety of organizational hierarchies and levels. Such
reporting necessarily measures plural employees. One of ordinary skill
seeing SHL in light of the known desire for aggregating personnel results
from Mason would have immediately envisaged placing tokes for the
various members in a hierarchy on the SHL graph.
CONCLUSIONS OF LAW
The rejection of claims 1, 13, and 25 under 35 U.S.C. § 102(b) as
anticipated by Mason is improper.
The rejection of claims 1, 13, and 25 under 35 U.S.C. § 102(e) as
anticipated by SHL is proper.
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Appeal2013-005323
Application 12/167,731
The rejection of claims 1, 12, 13, 24, and 25 under 35 U.S.C. § 103(a) as
unpatentable over SHL and Mason is proper.
The rejection of claims 2 and 14 under 35 U.S.C. § 103(a) as
unpatentable over SHL, Mason, and Lindia is proper.
The rejection of claims 3, 6-8, 15, and 18-20 under 35 U.S.C. § 103(a)
as unpatentable over SHL, Mason, and Travis is proper.
The rejection of claims 4 and 16 under 35 U.S.C. § 103(a) as
unpatentable over SHL, Mason, and Dewar is proper.
The rejection of claims 5 and 17 under 35 U.S.C. § 103(a) as
unpatentable over SHL, Mason, and Calderaro is proper.
The rejection of claims 9-11 and 21-23 under 35 U.S.C. § 103(a) as
unpatentable over SHL, Mason, and Official Notice is proper.
The rejection of claims 12 and 24 under 35 U.S.C. § 103(a) as
unpatentable over SHL, Mason, Travis, and Richman is proper.
DECISION
The rejection of claims 1-25 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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