Ex Parte Enand et al

Board of Patent Appeals and Interferences

May 31, 2012

11334192 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAJIV ENAND, CHRISTOPHER A. NEWLON,
and NEHA SHAHANI
____________

Appeal 2010-007886
Application 11/334,192
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007886
Application 11/334,192

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-24 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to a method and system
for identifying business offerings based on customer needs (Spec. [0001]).
Claim 1, reproduced below with the numbering in brackets added, is
representative of the subject matter on appeal.

1. A computer-implemented method performed by a computer
device for identifying business offerings based on customer needs,
comprising:
[1] receiving a designation of at least one detail, the at least one
detail including a particular business analysis perspective for the
customer;
[2] automatically identifying, via a computer device, a set of
customer needs from a set of possible customer needs, the set of
possible customer needs being a global set of needs that a
customer could possibly have and the set of customer needs for the
customer being identified based on the at least one detail;
receiving a designation of at least one customer need from the
set of customer needs; and
[3] identifying a set of prioritized business offerings from a set
of possible business offerings based on the at least one customer need
and a mapping of customer needs to possible business offerings.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Ruffin US 6,249,769 B1 Jun. 19, 2001

The following rejections are before us for review:
1. Claims 1-15 and 24 are rejected under 35 U.S.C. § 101.
2. Claims 1-3, 5-10, 12-18, 20-24 are rejected under 35 U.S.C.
§ 102(b) as unpatentable over Ruffin.
3. Claims 4, 11, and 19 are rejected under 35 U.S.C. § 10 3(a) as
unpatentable over Ruffin and Official Notice.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Ruffin discloses that an information technology environment and
requirements of a business entity are evaluated via an interactive
engagement process to match the entity’s needs to a set of IT solutions to
generate a business solution deliverable. (Abstract).
FF2. Ruffin at col. 9:20-10:28 discloses that customers are solicited via
online questionnaires to elicit responses which will enable the provider to
determine whether the customer is properly situated to benefit from the
proffered IT solution. Ruffin discloses that the questionnaire includes

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/334,192

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questions regarding budgetary constraints, technical issues that exist, and the
start date.
FF3. Ruffin at col. 7:29-8:8 discloses that customer may be given a
computerized questionnaire. The customer is prompted to identify so called
“islands of IT infrastructure” along the lines of various criterion such as
workload, geography, technology, etc. within their organization which are
well-known to them. Analysis of these “islands” will enable the solution
provider to potentially isolate the islands and address them in a manner that
accommodates the interests of the customer and provider. The process
culminates with the generation of a business deliverable which preferably
includes a formal solution proposal for the customer.

ANALYSIS
Rejections under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 101 is improper because the claim contains more than a nominal recitation
to a computer apparatus (Br. 5-6, Reply Br. 1-2). In contrast, the Examiner
has determined that the rejection of record is proper (Ans. 3-5, 9-11)
We agree with the Examiner. The claim 1 is directed to largely to the
abstract idea of identifying a set of customer needs based on at least one
received detail, and identifying a set of prioritized business offerings based
on the customer need. While the claim does make recitation to a computer-
implemented device this appears in the preamble. Regardless, like the
reference to the phrase “via a computer device” in the claim, this nominal
reference to a computer is insignificant extra-solution activity in the scope of
the claim. For these reasons, this rejection of claim 1 and its dependent
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claim is sustained. The rejection of claim 24, which contains similar claim
limitations and has not been specifically argued, is sustained for these same
reasons given above.
Claim 9 is directed to a system claim which contains several elements
such as a computer device, a detail selection system, a customer needs
identification system, a customer needs selection system, and a prioritized
offering system which are not an abstract idea and the rejection of claims 9-
15 under this rejection is not sustained.

Rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art of Ruffin fails to disclose the claim limitations [1] and [2]
(Br. 6-7). In contrast, the Examiner has determined that the rejection of
record is proper (Ans. 5-6, 12-13).
We agree with the Examiner. Claim limitation [1] requires:
“receiving a designation of at least one detail, the at least one detail
including a particular business analysis perspective for the customer”.
Ruffin in col. 9:20-10:28 discloses that customers are solicited via online
questionnaires to elicit responses which will enable the provider to
determine whether the customer is properly situated to benefit from the
proffered IT solution. Ruffin discloses that the questionnaire includes
questions regarding budgetary constraints, technical issues that exist, and the
start date which all serve as elements of a “business analysis” (FF2) as
required by claim 1. Since this questionnaire is received from the customer
the requirements of claim limitation [1] are met by Ruffin.
Claim limitation [2] requires:
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[2] automatically identifying, via a computer device, a set of customer
needs from a set of possible customer needs, the set of possible
customer needs being a global set of needs that a customer could
possibly have and the set of customer needs for the customer being
identified based on the at least one detail. (Claim 1).

Ruffin at col. 7:29-8:8 discloses that customer may be given a
computerized questionnaire to identify so called “islands of IT
infrastructure” along the lines of various criterion such as workload,
geography, technology, etc. within their organization and that analysis of
these “islands” will enable the solution provider to potentially isolate the
islands and address them in a manner that accommodates the interests of the
customer and provider culminating with the generation of a business
deliverable which preferably includes a formal solution proposal for the
customer (FF3). Here, Ruffin's disclosure of using the computerized
questionnaire to find needs for their IT system and offer them solutions
based on the questionnaire results or provided detail meeting the
requirements of claim limitation [2]. For these reasons the rejection of claim
1, and claims 2-3, 5-10, 12-18, and 20-24 for which the same arguments
have been presented is sustained.
Claim 4 requires that” the computer-implemented method is
implemented in conjunction with a spreadsheet computer program”. The
Appellants acknowledge that spreadsheets are well known but assert that the
combination would not have been obvious (Br. 8). We agree with the
Examiner that the use of a conventional spreadsheet program with the
system of Ruffin would have been obvious as spreadsheets are widely
known as an efficient way to store data for computation. For these reasons
the rejection of claims 4, 11, and 19 are sustained as well.
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CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting: claims 1-8 and 24 under 35 U.S.C. § 101; claims 1-3, 5-10, 12-
18, 20-24 under 35 U.S.C. § 102(b) as unpatentable over Ruffin; and claims
4, 11, and 19 under 35 U.S.C. § 103(a) as unpatentable over Ruffin and
Official Notice.
We conclude that Appellants have shown that the Examiner erred in
rejecting: claims 9-15 under 35 U.S.C. § 101

DECISION
The Examiner’s rejection of claims 1-24 is sustained.

AFFIRMED

MP