Ex Parte Forman et al

Patent Trial and Appeal Board

Feb 21, 2013

10636990 (P.T.A.B. Feb. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte IRA R. FORMAN and CHARLES GORHAM WARD
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Appeal 2010-010871
Application 10/636,990
Technology Center 3600
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Before: HUBERT C. LORIN, ANTON W. FETTING, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Ira R. Forman and Charles Gorham Ward (Appellants) seek our
review under 35 U.S.C. § 134 (2010) from the Examiner’s final rejection of
claims 1, 3-10, and 21-29. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

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THE INVENTION
This invention is directed to doing business using an interactive
computer controlled display system to estimate cost involved in the purchase
and use of software program products based upon an estimated quality level
of a proposed software supplier. (Specification 1:6-11).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer controlled display method for calculating the
cost of ownership of a software product obtained from a first
proposed supplier including a cost of software failure factor
estimation comprising:
predetermining the quality level of an ideal supplier of
said software product;
determining deviation in quality level of said first
proposed software supplier from said ideal supplier level;
estimating the difference in product defect rate at the
quality level of the first proposed supplier from the defect
rate of said ideal supplier;
estimating the cost to compensate for a damage
resulting from each defect based upon the intended use of
said software product;
determining a cost of software failure factor for each
unit of said software product obtained from said first
proposed supplier by multiplying said difference in defect
rate by said cost to compensate for damage resulting from
each defect;
calculating the cost of failure factor for a second
proposed supplier of said software product;
determining the price per unit for said software
product respectively charged by said first proposed and said
second proposed suppliers; and
selecting a supplier by comparing the differences in
said cost of failure factors between said first proposed and
second proposed suppliers with differences in price per unit
charged by said suppliers.
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THE REJECTIONS
The Examiner relies up on the following as evidence of
unpatentability:
Aycock
Kansal
US 5,765,138
US 6,647,374 B2
Jun. 9, 1998
Nov. 11, 2003

Ho-Won Jung, et al., “Selecting Optimal COTS Products Considering
Cost and Failure Rate,” ISSRE Fast Abstract, 1999.
Stephen T. Knox, “Modeling the Cost of Software Quality,” Digital
Technical Journal, Vol. 5, No. 4, 1993.
Herb Krasner, “Using the Cost of Quality Approach for Software,”
CrossTalk, The Journal of Defense Software Engineering, November, 1998.
Hoang Pham, et al., “A Software Cost Model with Warranty and Risk
Costs,” IEEE Transactions on Computers, Vol. 48, No.1, January, 1999.
Barbara Cavanaugh Phillips, et al., “Add Decision Analysis to Your
COTS Selection Process,” Support Technology Support Center CrossTalk,
April, 2002.
J. Christopher Westland, “The cost of errors in software development:
evidence from industry,” The Journal of Systems and Software, Vol. 62,
2002.
Yuxiao Zhao, et al., “Decision Making for Make vs. Buy of Software
Components,” Proceedings of the Second Conference on Computer Science
and Systems Engineering in Linkoping, CCSSE '99, 1999.

The following rejections are before us for review:
Claims 1 and 3-10 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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Claims 1, 3-5, 8, 10, 21-24, 27, and 29 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Knox, Westland, and Zhao.
Claims 6, 7, 25, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Knox, Westland, Zhao, and Aycock.
Claims 9 and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Knox, Westland, Zhao, and Kansal.

ISSUES
The first issue turns on whether claims 1 and 3-10 recite patentable
eligible subject matter under 35 U.S.C. § 101.
The second issue is whether the combination of Knox, Westland, and
Zhao teaches the step of “determining a cost of software failure factor for
each unit of said software product obtained from said first proposed supplier
by multiplying said difference in defect rate by said cost to compensate for
damage resulting from each defect” (Claim 1).

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. We do not find a disclosure of “determining a cost of software failure
factor for each unit of said software product” at Knox paragraph 2 (page
1), paragraph 3 (page 3), pages 4-5, paragraphs 1, 4, and 6 (page 6), or
Table 1.
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2. We do not find a disclosure of “determining a cost of software failure
factor for each unit of said software product” at Westlake’s Abstract,
column 2 paragraph 1 (page 1), or column 2 paragraph 3 (page 6).

ANALYSIS
The Rejection of claims 1 and 3-10 under 35 U.S.C. § 101
We are not persuaded by Appellants’ arguments (App. Br. 10) that the
Examiner erred in rejecting claims 1 and 3-10 as being non-statutory subject
matter. The Examiner found that that these claims fail the machine or
transformation test as they are not tied to a particular machine or transform a
particular article into a different state or thing. See Ans. 21-24. Further, the
Examiner found that the recitation of a computer in the preamble does not
impose meaningful limits on the scope of the claim. App. Br. 24.
We recognize 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.” Yet the Court explained
that this test remains a “useful and important clue or investigative tool.” See
Bilski v. Kappos, 130 S. Ct. 3218, 3221 (2010).
The Appellants do not contest the Examiner’s findings made with
respect to the machine-or-transformation test, but instead argue that the
“claims do not relate to an abstract idea; there is a tangible result provided”
(App. Br. 10), In as much as the Appellants may be relying upon the
“useful, concrete and tangible result” test, we note that our reviewing court
has determined that the “useful, concrete, and tangible result” test associated
with State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149
F.3d 1368, 1373 (Fed. Cir. 1998) is inadequate. In re Bilski, 545 F.3d 943,
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959-960 (Fed. Cir. 2008) (en banc); see also Bilski v. Kappos, 130 S. Ct.
3218, 3231 (2010).
Accordingly, we are not persuaded by the Appellants’ argument that
the Examiner erred, and the rejection of claims 1 and 3-10 under 35 U.S.C.
§ 101 as being direct to non-statutory subject matter is affirmed.

The rejection of claims 1, 3-10, and 21-29 under 35 U.S.C. § 103(a)
Independent claims 1 and 21 each recite “determining a cost of
software failure factor for each unit of said software product obtained from
said first proposed supplier by multiplying said difference in defect rate by
said cost to compensate for damage resulting from each defect.”
We are persuaded by the Appellants’ argument (App. Br. 13) that the
Examiner erred in finding this limitation taught by Knox and Westland. The
Examiner first cites to Knox’s paragraph 2 at page 1, paragraph 3 at page 3,
pages 4-5, paragraphs 1, 4, and 6 at page 6, Table 1, and Figure 31 as
teaching “providing a cost of software failure factor for each unit of the
software product obtained from the proposed supplier.” Ans. 7, 24. We
disagree. While these cited sections of Knox discuss software quality (page
1), a benchmark against actual quality costs and need for this for software
(page 3), cost categories (pages 4-5 and Table 1), and cost vs. quality charts
and comparisons (page 6), we fail to see a teaching of “determining a cost of
software failure factor for each unit of said software product” as claimed. FF
1.
The Examiner also cites to Westland’s Abstract, column 2, paragraph
1 at page 1, and column 2, paragraph 3 at page 6 as disclosing “a cost of

1 We do not find an image of Figure 3 in the copy of Knox in the record.
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software failure factor.” Ans. 8. Again, we disagree. While these cited
sections of Westland include a general discussion of software defect costs
(Abstract and page 1) and errors (page 6), we fail to see a teaching of
“determining a cost of software failure factor for each unit of said software
product” as claimed. FF 2.
We find that the Examiner has failed to establish that Knox, Westland,
or a combination, thereof, teaches the limitation at issue. We note that the
Examiner does not rely upon Zhao to teach this limitation. Accordingly, the
rejection of claims 1 and 21, and claims 3-5, 8, 10, 22-24, 27, and 29,
dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Knox,
Westland, and Zhao is reversed.
The rejection of dependent claims 6, 7, 25, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Knox, Westland, Zhao, and Aycock and the
rejection of dependent claims 9 and 28 under 35 U.S.C. § 103(a) as
unpatentable over Knox, Westland, Zhao, and Kansal are also reversed. Cf.
In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.").
DECISION
The decision of the Examiner to reject claims 1 and 3-10 under 35
U.S.C. § 101 is affirmed.
The decision of the Examiner to reject claims 1, 3-10, and 21-29
under 35 U.S.C. § 103(a) is reversed.

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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).

AFFIRMED-IN-PART

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