Ex Parte Fredrickson et alDownload PDFPatent Trial and Appeal BoardMar 19, 201412032329 (P.T.A.B. Mar. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte J. TODD FREDRICKSON, MARGARET M. HEDSTROM, KELLI A. HOUSTON, and CECILE M. PERAIRE ____________________ Appeal 2011-012295 Application 12/032,329 Technology Center 2100 ____________________ Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and DANIEL N. FISHMAN, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012295 Application 12/032,329 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims and enter a new ground of rejection. THE INVENTION The claims are directed to computer-assisted authoring with a method definition transformed into a website for review. The method definition is iteratively refined based upon the website. Abst. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method authoring method comprising: generating a method sketch for a method from a vision for the method in method authoring method logic executing in memory by at least one processor of a computer, the method sketch comprising a walkthrough of a life cycle for the method; constructing a method definition from the method sketch transforming the method definition into a Web site for the method and publishing the Web site for review by reviewers of the method; and, iteratively refining the method definition based upon the review of the Web site. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Cécile Péraire, A Roadmap to Method Development, IBM DEVELOPERWORKS, Feb. 15, 2007, http:/www.ibm.com/ developerworks/rational/library/feb07/peraire/index.html. Appeal 2011-012295 Application 12/032,329 3 REJECTION The Examiner rejected claims 1-6 under 35 U.S.C. § 102(b) as being anticipated by Péraire. Ans. 4-8. APPELLANTS’ CONTENTION1 Péraire has a publication date that does not precede Appellants’ filing date by more than one year and is therefore not available under 35 U.S.C. § 102(b). App. Br. 4. ISSUES ON APPEAL Based on Appellants’ arguments in the Appeal Brief (App. Br. 5-8) and Reply Brief (Reply Br. 1-4), the issue presented on appeal is whether the Examiner erred in rejecting claims 1-6 under 35 U.S.C. § 102(b) as being anticipated by Péraire. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred in rejecting claims 1-6 under 35 U.S.C. § 102(b) as being anticipated by Péraire. We agree with Appellants’ conclusions as to this rejection of the claims. Appellants contend the Péraire document “does not precede Applicants’ filing date by more than one year thus making the Peraire reference art citable under 35 U.S.C. § 102(a).” App. Br. 4, n.1. The Examiner responds by first agreeing with Appellants, but then by finding 1 We note Appellants raise additional contentions of error, but we do not reach them as our resolution of this contention is dispositive of the appealed rejections under 35 U.S.C. § 102(b). Appeal 2011-012295 Application 12/032,329 4 “though the statute of the rejection changes here forthwith, the claims are still rejected under 35 U.S.C. §102.” Ans. 9. However, the Examiner never specifies any alternative ground of rejection other than 35 U.S.C. § 102(b). We find Péraire’s date does not precede Appellants’ filing date by more than one year and therefore Péraire is not available under 35 U.S.C. § 102(b). As such, the Examiner has not established a prima facie case of anticipation. Since we agree with at least one of the arguments advanced by Appellants, we need not reach the merits of Appellants’ other arguments. Therefore, for the reasons supra, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § 102(b) and, for the same reason, we do not sustain the rejection of independent claim 4 or the rejection of dependent claims 2, 3, 5, and 6. NEW GROUND OF REJECTION The following new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). Claims 1-6 are rejected under 35 U.S.C. § 102(a) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Péraire. While we agree Péraire is not available as a reference under 35 U.S.C. § 102(b), it is available under 35 U.S.C. § 102(a) and, therefore, also under 35 U.S.C. § 103(a). Accordingly, we reject claims 1-6 under 35 U.S.C. §§ 102(a)/103(a) for the reasons found by the Examiner (Ans. 4-8) and for the additional reasons set forth herein. While we find unpersuasive Appellants’ substantive argument that Péraire fails to disclose the disputed limitation of iteratively refining the method definition based upon the review Appeal 2011-012295 Application 12/032,329 5 of the Web site (App. Br. 5-8), we incorporate additional bases and rationale as part of the instant new ground of rejection. In particular, Péraire discloses the claim 1 limitations of a method authoring method comprising: generating a method sketch for a method from a vision for the method in method authoring method logic executing in memory by at least one processor of a computer, the method sketch comprising a walkthrough of a lifecycle for the method See Péraire 5 (“Method Sketch is to help the team identity candidate Method Elements and some of their relationships, and to propose an early description for some of the key elements. To do so, and depending on the project type (creation of a new method from scratch, extension of an existing method with content elements only, extension of an existing method with content and process elements, etc.), the Method Sketch may take various forms. For instance, it may include one or more of the following elements: a walkthrough of the lifecycle; a brief description of candidate roles, tasks, and work products, and their relationships; a list of candidate method guidance (templates, examples, whitepapers, etc.).”); constructing a method definition from the method sketch See id. at Table 2; p, 5 (“A Method Definition is a well-formed definition of a method in terms of its Method Elements (including their description) and their relationships. A Method Definition also characterizes one or more configurations or versions of the method by identifying, for each configuration, which elements are presented to the practitioners and how.”); transforming the method definition into a Web site for the method See id. at 6 (“[A] Method Web Site is automatically generated from the Method Definition (one Method Web Site could be generated per Method Configuration).”); Appeal 2011-012295 Application 12/032,329 6 publishing the Web site for review by reviewers of the method See id. at Fig. 2; p. 6 (“[A] Method Configuration defines how to compose a Method Web Site based on the Method Elements included in a selection of Method Plug-ins and Method Packages (since you may not want to publish all the Method Elements defined in the method in the context of a given configuration). The Method Configuration also defines the views that will be presented in the Method Web Site tree browser. The Method Web Site is the main outcome of a method development project. It makes the newly defined method, or method framework, available to the practitioners through a set of interconnected webpages. In RMC, a Method Web Site is automatically generated from the Method Definition (one Method Web Site could be generated per Method Configuration).”); and iteratively refining the method definition based upon the review of the Web site See id. at Summary; p. 2 (“An iterative process allows the development team to better accommodate change, to obtain feedback and factor it into the project, to reduce risk early, and to adjust the process dynamically.”); p. 2 (“emphasizes quality by recommending early and frequent evaluation of the method through reviews and testing” (emphasis omitted)); p. 8 (“[B]enefits of an iterative and risk-driven approach to method development, I recommend using Project Plan . . . . Project Plan defines the project phases and milestones. It may include an Iteration Plan.”); p. 9 (“The approach to method development proposed in this article is based on the four RUP phases: Inception, Elaboration, Construction and Transition.”); p. 12; Fig. 4 (“Review Method” element, “Method Web Site” is present and reviewed in the Elaboration phase.); p. 13; Fig. 5 (“Review Method” element, “Method Appeal 2011-012295 Application 12/032,329 7 Web Site” is present and reviewed in the Construction phase.); p. 15 (“Method Definition. . . . . Feedback from reviewers has been taken into account.” (emphasis omitted)). Furthermore, at page 3 of the Appeal Brief, Appellants indicate the disputed limitation corresponds to the disclosure appearing at paragraph 20, lines 1-2, of the Specification. The cited portion of the Specification reads as follows: “The process described in Figures 1A through 1D can be performed within a method authoring data processing system.” Appellants’ Figures 1A through 1D are substantially identical to Figures 3-6 of Péraire. Therefore, Figures 3-6 of Péraire likewise disclose the disputed limitation of iteratively refining the method definition based upon the review of the Web site. Alternatively, Péraire discloses the limitations as discussed, but does not explicitly disclose “iteratively refining the method definition based upon the review of the Web site.” However, Péraire teaches that it was known at the time of invention to develop and refine methods iteratively. See Péraire 2 (“An iterative process allows the development team to better accommodate change, to obtain feedback and factor it into the project, to reduce risk early, and to adjust the process dynamically.”); p. 8 (“[B]enefits of an iterative and risk-driven approach to method development, I recommend using Project Plan . . . . Project Plan defines the project phases and milestones. It may include an Iteration Plan.”). Péraire also teaches that it was known to review a Web site describing a method (id. at Figs. 4-6 (“Review Method” element); p. 12 (“Method Web Site. One or more websites have been generated to explore significant aspects of the method and evaluate usability.” (emphasis omitted))) and to refine a Method Definition based on review (id. at 15 (“Method Definition. . Appeal 2011-012295 Application 12/032,329 8 . . . Feedback from reviewers has been taken into account.”) (emphasis omitted)); p. 2 (“emphasizes quality by recommending early and frequent evaluation of the method through reviews and testing” (emphasis omitted))). It would have been obvious to one of ordinary skill in the art at the time of invention to implement the Method Definition of Péraire as iteratively refined based upon a review of a Web site as suggested by Péraire’s own teaching. This implementation would have been obvious because one of ordinary skill in the art would be motivated to use an iterative process to obtain feedback and factor it into the project in order to better accommodate change and emphasize quality (id. at 2 (“Demonstrate value iteratively” bullet point); p. 8 (“I strongly believe in the benefits of an iterative and risk- driven approach to method development.”); p. 2 (“emphasizes quality by recommending early and frequent evaluation of the method through reviews and testing” (emphasis omitted)), considering the Method Web site provides several iterations of review of the method (id. at Figs. 4-6 (“Review Method” element); p. 9 (“The approach to method development proposed in this article is based on the four RUP phases: Inception, Elaboration, Construction and Transition.”)) and the Method Definition takes review into account (id. at 15 (“Method Definition. . . . Feedback from reviewers has been taken into account.” (emphasis omitted))). Thus, all the elements of the limitation are known as demonstrated by Péraire, and all the elements are combined in a known manner to yield a predictable result. Independent claim 4 is substantially the same as independent claim 1 and is therefore rejected in substantially the same manner as described. Appeal 2011-012295 Application 12/032,329 9 Dependent claims 2, 3, 5, and 6 are rejected in the same manner as presented in the Examiner’s Answer of May 26, 2011. CONCLUSIONS 1. The Examiner erred in finding Péraire is available as a reference under 35 U.S.C. § 102(b). 2. The Examiner erred in rejecting claims 1-6 under 35 U.S.C. § 102(b) as being anticipated by Péraire. 3. A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b) and claims 1-6 are rejected under 35 U.S.C. § 102(a) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable over Péraire. DECISION The decision of the Examiner rejecting claims 1-6 is reversed. We enter a new ground of rejection of claims 1-6. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50 (b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter Appeal 2011-012295 Application 12/032,329 10 reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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). REVERSED 37 C.F.R. § 41.50(b) bab Copy with citationCopy as parenthetical citation