Ex Parte Gonzalez Diaz et al

Patent Trial and Appeal Board

Feb 23, 2017

13124831 (P.T.A.B. Feb. 23, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/124,831 04/18/2011 Maria Teresa Gonzalez Diaz 82656102 9857
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
SWARTZ, STEPHEN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIA TERESA GONZALEZ DIAZ,
CIPRIANO A. SANTOS, SHAILENDRA K. JAIN,
K. RAVINDRA KUMAR,
MADRABUSHI RANGARAMANUJAM,
SUBRAMANYA GOPIKKRISHNA MADLE, and
RAO PRADEEP SHAM
Appeal 2014-0050201
Application 13/124,831
Technology Center 3600
Before MICHAEL W. KIM, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1—20. We have
jurisdiction to review the case under 35 U.S.C. §§134 and 6.
The claimed invention relates generally to employee resource
planning, where employee resources needed to accomplish a potential
1 The Appellants identify “Hewlett-Packard Development Company, LP”
the real party in interest. App. Br. 2.
Appeal 2014-005020
Application 13/124,831
project and employee resources available to the potential project are each
consolidated and defined in terms of a plurality of employees and jobs,
respectively. Spec. 116.
Independent claim 1 is illustrative:
1. A method of employee resource planning, comprising,
with a processing subsystem for communicating with a data
storage subsystem:
consolidating and defining a demand for employee
resources needed to accomplish a potential project in terms of a
plurality of jobs and a supply of employee resources in terms of
a plurality of employees, each said job and each said employee
comprising a plurality of job attributes uniformly categorized
into indices[;] and
mapping employees in said supply to corresponding jobs
in said demand according to said job attributes.
Claims 1—5 are rejected under 35 U.S.C. § 101 for being directed to
non-statutory subject matter.
Claims 1—6, 8—16, and 18—20 are rejected as unpatentable over Vogel
(US 2004/0162753 Al, pub. Aug. 19, 2004) in view of Official Notice.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Vogel in view of Official Notice and Lu (US 2007/0219837 Al, Sept. 20,
2007).
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Vogel in view of Official Notice and Stauffer (Stauffer, Richard, 1989,
Implementing Manufacturing Resources Planning for Marine Corps
Logistics Base, Naval Postgraduate School, pp. 1—74).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
2
Appeal 2014-005020
Application 13/124,831
ANALYSIS
Rejection of Claims 1—5 under 35 U.S.C. § 101
We are unpersuaded that the Examiner erred in asserting that claims
1—5 are rejected under 35 U.S.C. § 101 for being directed to non-statutory
subject matter. App. Br. 10-11; Reply Br. 3^4. The Appellants assert that
“claims 1—5 are now tied to a machine, i.e., processing and data storage
subsystems,” and, thus, are now statutory subject matter under the machine-
or-transformation test, which is still a valid test under Bilski v. Kappos, 561
U.S. 593 (2010). App. Br. 10. Since the briefing was submitted in this case,
the Supreme Court clarified a two-step framework for determining statutory
subject matter in Alice Corp. v. CLS BankInt’l, 134 S. Ct. 2347 (2014).
Specifically,
Step one asks whether the claim is “directed to one of [the]
patent-ineligible concepts.” Id. If the answer is no, the inquiry
is over: the claim falls within the ambit of § 101. If the answer
is yes, the inquiry moves to step two, which asks whether,
considered both individually and as an ordered combination, “the
additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
1297). Step two is described “as a search for an ‘inventive
concept.’” Id. (quotingMayo, 132 S. Ct. at 1294). At step two,
more is required than “well-understood, routine, conventional
activity already engaged in by the scientific community,” which
fails to transform the claim into “significantly more than a patent
upon the” ineligible concept itself. Mayo, 132 S. Ct. at 1298,
1294.
Rapid Litigation Management Ltd. v. Cellzdirect, Inc., 827 F.3d 1042, 1047
(Fed. Cir. 2016).
Adapting the Appellants’ and the Examiner’s positions to that
framework, we discern that the Examiner asserts, essentially, that the
claimed invention is directed to the patent-ineligible concept of
3
Appeal 2014-005020
Application 13/124,831
“consolidating, defining, and mapping.” Final Act. 4. We further discern
that the Examiner asserts, essentially, that the purported recitation of “a
processing subsystem for communicating with a data storage subsystem” in
independent claim 1 is “well-understood, routine, conventional activity
already engaged in by the scientific community,” which fails to transform
the claim into “significantly more than a patent upon the” ineligible concept
itself. Mayo, 132 S. Ct. at 1298, 1294; Final Act. 4; Ans. 4—5.
Against those assertions, the Appellants appear to be asserting that the
recitation of “a processing subsystem for communicating with a data storage
subsystem” is either unconventional or “significantly more” than
“consolidating, defining, and mapping.” We agree with the Examiner. The
processing and data storage subsystems are only recited in the preamble,
with a general instruction to “apply it” to the method steps, and the
Appellants have not identified any disclosure in the Specification concerning
processing subsystem 105 of data storage subsystem 110 that persuades us
that either is unconventional or “significantly more.”
We sustain the rejection of claims 1—5 under 35 U.S.C. § 101 for
being directed to non-statutory subject matter.
We also discern that independent claims 6 and 14 merely recite
system and computer program product counterparts to independent claim 1.
We determine that the Examiner’s and our analysis is equally applicable to
the subject matter of independent claims 6 and 14.
These cases demonstrate that the mere recitation of a
generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply if ” is not enough for patent
eligibility. Mayo, supra, at___ , 132 S. Ct., at 1294. Nor is
limiting the use of an abstract idea “‘to a particular technological
4
Appeal 2014-005020
Application 13/124,831
environment.’” Bilski, supra, at 610-611, 130 S. Ct. 3218.
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” Mayo, supra, at___ , 132 S. Ct., at 1301,
that addition cannot impart patent eligibility. This conclusion
accords with the pre-emption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers, see 111 F.3d, at
1286 (Lourie, J., concurring), wholly generic computer
implementation is not generally the sort of “additional featur[e]”
that provides any “practical assurance that the process is more
than a drafting effort designed to monopolize the [abstract idea]
itself.” Mayo, 566 U.S., at___ , 132 S. Ct. at 1297.
Alice Corp. v. CLS Bank Inti, 134 S. Ct. at 2358. Accordingly, we invoke
our authority under 37 C.F.R. § 41.50(b), and enter a new ground of
rejection for independent claims 6 and 14, as well as their dependent claims
7—13 and 15—20, under 35 U.S.C. § 101 on the same basis as independent
claim 1.
Rejection of Claims 1—6, 8, 9, 11—16, and 18—20 under 35 U.S.C.
§103
We are unpersuaded that the Examiner erred in asserting that claims
1—6, 8, 9, 11—16, and 18—20 are obvious over a combination Vogel and
Official Notice. App. Br. 11—24; Reply Br. 4—18. The Appellants assert that
the Examiner did not properly provide an affidavit to support their finding of
Official Notice, as required following a proper traversal. App. Br. 11—12;
Reply Br. 4—6. The Examiner’s analysis at pages 5—7 of the Answer is fully
responsive to the Appellants’ assertions. Accordingly, we adopt it as our
own. Specifically, an adequate traverse must contain adequate information
or argument to create on its face a reasonable doubt regarding the
5
Appeal 2014-005020
Application 13/124,831
circumstances justifying the examiner's notice of what is well known to one
of ordinary skill in the art. See In re Boon, 439 F.2d 724, 728 (CCPA 1971).
None has been provided here.
The Appellants assert that Vogel does not disclose or suggest “each
said job and each said employee comprising a plurality of job attributes
uniformly categorized into indices,” as recited in independent claim 1,
because Vogel does not disclose or suggest (1) job attributes for a job, as
opposed to job attributes of an employee, (2) indices for job attributes, or (3)
a combination of both. Independent claims 6 and 14 recite similar claim
limitations. App. Br. 12—18; Reply Br. 6—12. We disagree with Appellants
on all accounts. For (1), Vogel discloses “[djata representing projected
resource needs” and “workforce demand,” which we find corresponds
properly to the required job attributes of a job. Vogel Tflf 8, 12, 40, 42, 44,
53, 61, 68. In contrast, we find that the required job attributes of an
employee are met by Vogel’s “workforce member.” Id.
For (2), we agree with the Appellants that an “index” is a “specially
ordered structure for a type or types of data.” App. Br. 12 (citing
http://www.merriam-webster.com/dictionary/index). We find, however, that
while perhaps the exact word “index” or “indices” is not used in Vogel, we
are persuaded that the data for resources and needs in Vogel, which
corresponds to the recited “job attributes,” are placed in a “specially ordered
structure for a type or types of data.” For example, Vogel discloses that
“[t]he roster also includes a number of predetermined data fields for storing
characteristics of each workforce member.” Vogel 138 (emphasis added).
We find that the data fields being “predetermined” for storing characteristics
denotes structure for those characteristics. In another example, Vogel
6
Appeal 2014-005020
Application 13/124,831
discloses “[t]he skill set characteristics may be selected from a predefined
menu of skill[s],” “a corresponding proficiency level may also be entered
into a field of the roster,” and “[t]he skill sets corresponding to the roster
member’s current work assignment are entered into appropriate fields of
the roster.” Vogel 153 (emphases added). We find that the data fields
being “predefined” and “appropriate” also denotes structure. In a further
example, Vogel discloses “[d]ata categorizing different skills by billing
level,” again, denoting structure. Vogel | 61.
For (3), given that we find that Vogel discloses both job attributes of a
job and indices for job attributes, we are persuaded Vogel renders obvious
indices for job attributes of a job, for the reasons articulated at pages 7—9 of
the Answer.
Dependent claim 8 recites “mapping at least one employee in said
supply to a job in said demand having the most stringent job attributes for
which said at least one employee is found to be qualified.” The Appellants
assert that paragraph 44 of Vogel discloses, at best, mapping an employee to
a job with specific attributes, which does not correspond properly to the
recited “most stringent job attributes.” App. Br. 18—19; Reply Br. 12—13.
We are unpersuaded, primarily because the Appellants do not provide any
criteria for determining how to identity a job with the “most stringent job
attributes.” Absent such criteria, any identification of specific skills in
Vogel is sufficient to correspond properly to the recited job with the “most
stringent job attributes.”
Dependent claim 9 recites “mapping at least one employee in said
supply to a job in said demand for which it is anticipated that said at least
one employee will be qualified prior to a commencement of said project
7
Appeal 2014-005020
Application 13/124,831
according to said job attributes.” The Appellants assert that paragraph 68 of
Vogel does not disclose the aforementioned subject matter, because the
claim language “anticipates a change in the qualifications of an employee,”
and paragraph 68 of Vogel does not disclose such claim language. App. Br.
19—20; Reply Br. 13—15. The Appellants’ assertions are misplaced, because
dependent claim 9 does not require “anticipating] a change in the
qualifications of an employee.” While the Appellants may be asserting that
the combination of the claim terms “anticipated” and “will be” denotes such
a “change,” such is not the case. To that end, the Examiner’s finding that
paragraph 66 of Vogel discloses that an employee with certain skills today
“prior to commencement of the job that requires specific attributes” is
sufficient to meet the claim limitation, because if they are qualified today,
they will also be qualified in the future. Ans. 10.
Dependent claim 18 recites “wherein said processing subsystem filters
said plurality of employees based on an availability date assigned to each
employee before mapping only employees with an availability date matching
a job to that corresponding job.” The Appellants assert that the cited
portions of Vogel “merely teach[ ] predicting future needs and making
adjustments in the workforce accordingly, i.e., ‘trained in new skills, to be
transferred to a different project or geographic region, to be promoted, or to
be released,”’ which is not what is required by dependent claim 18. App.
Br. 21—22; Reply Br. 16—17. We disagree with the Appellants for the
findings and reasons set forth on pages 11—12 of the Answer. Accordingly,
we adopt them as our own.
The Appellants challenge the sufficiency of the Examiner’s rejection
of dependent claim 19. App. Br. 23; Reply Br. 17. The arguments are
8
Appeal 2014-005020
Application 13/124,831
unpersuasive for the same reasons as set forth above with respect to
independent claim 1.
Dependent claim 20 recites “wherein said processing subsystem is
further configured to map a number of transitional employees to
corresponding jobs for which those transitional employees are expected to
become qualified according to said job attributes before commencement of
the corresponding jobs.” The Appellants assert that paragraph 44 of Vogel
does not disclose the aforementioned subject matter, because “[wjhile this
portion of Vogel does mention that workforce members may be retrained to
[sic] ‘based on the identified future needs and excesses,’ this is inapplicable
to claim 20. Claim 20 applies to current ‘corresponding jobs’ that are being
staffed, not future needs.” App. Br. 23—24; Reply Br. 17—18. The
Appellants’ assertions are misplaced, because dependent claim 20 only
recites “corresponding jobs,” and not “current corresponding jobs.”
We sustain the rejection of claims 1—6, 8, 9, 11—16, and 18—20 under
35U.S.C. § 103.
Rejection of Dependent Claim 10 under 35 U.S.C. § 103
We are persuaded that the Examiner erred in asserting that “mapping
a number of employees in the supply of employee resources to an attrition
factor according to an anticipated attrition of employees throughout said
[specific] project,” as recited in dependent claim 10, is obvious over a
combination Vogel and Official Notice. App. Br. 21; Reply Br. 15. Both
the Examiner and the Appellants agree that paragraph 42 of Vogel discloses
“predicted attrition.” The Examiner then asserts that “[additionally par.
[0042] discloses providing forecast for future changes which the examiner
understands to mean anticipated attrition of employees throughout said
9
Appeal 2014-005020
Application 13/124,831
project.” Ans. 11. We disagree that Vogel’s general, non-specific
disclosure of “information regarding . . . predicted attrition . . . and the like
may provide data that can be used to forecast future changes in supply and
demand” is sufficient to indicate that such forecasts are made for a
“[specific] project,” as required by dependent claim 10.
We do not sustain the rejection of dependent claim 10 under 35
U.S.C. § 103.
Rejection of Dependent Claim 7 under 35 U.S.C. § 103
The Appellants do not set forth separate reasoning concerning the
rejection of dependent claim 7 under 35 U.S.C. § 103. Accordingly, we
summarily sustain this rejection.
Rejection of Dependent Claim 17 under 35 U.S.C. § 103
We are persuaded that the Examiner erred in asserting that dependent
claim 17 is obvious over a combination of Vogel, Official Notice, and
Stauffer. App. Br. 24—25; Reply Br. 18—19. Specifically, dependent claim
17 recites
wherein said anticipated amount of employee attrition is
calculated using a binomial distribution in which nReqs = a(N),
where nReqs represents a number of replacements required in a
given period, a is an attrition factor based on a probability of an
employee leaving and N is a number of employee resources that
are qualified to perform a particular job.
While we agree with the Examiner that Stauffer’s disclosure of a
replacement factor “RF” corresponds properly to the recited function a(),
the Examiner has not explained adequately what in Vogel corresponds to the
recited “N,” let alone how that “N” of Vogel interacts with the “RF” of
10
Appeal 2014-005020
Application 13/124,831
Stauffer to arrive at the subject matter of dependent claim 17. See Final Act.
15—16; Ans. 13.
We do not sustain the rejection of dependent claim 17 under 35
U.S.C. § 103.
DECISION
We AFFIRM the rejections of claims 1—9, 11—16, and 18—20.
We REVERSE the rejection of dependent claims 10 and 17 under 35
U.S.C. § 103.
This decision contains a new ground of rejection for claims 6—20
under 35 U.S.C. § 101, pursuant to our authority under 37 C.F.R. § 41.50(b)
(2008). 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 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). See
37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R $ 41.50(b)
11