Ex Parte Hack et al

Board of Patent Appeals and Interferences

Jan 28, 2011

10161474 (B.P.A.I. Jan. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEFAN HACK and SHAUN ELLIOTT
____________

Appeal 2010-000146
Application 10/161,474
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/161,474

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 17-34. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to systems and methods for
implementing business process valuation (Spec. 1:6-7). Claim 25,
reproduced below, is further illustrative of the claimed subject matter.
25. An article comprising a computer-readable medium
storing computer-executable instructions that, when executed
by one or more computers, cause the computers to:
receive a user selection, for a particular business, of an
industry corresponding to the particular business from a set of
predefined industries;
receive a user selection, for the particular business, of a
role in which the particular business operates in the selected
industry;
display on a display device information identifying a set
of relevant business software programs that are available for
implementation in the particular business, the set of relevant
business software programs having been predefined for the
selected industry and role in which the particular business
operates;
receive a user selection of a particular business software
program from the set of relevant business software programs
displayed on the display device;
in response to the user selection of the particular business
software program, present on the display device a set of one or
more key performance indicators associated with the particular
business software program;
receive a user selection of a subset of one or more of the
key performance indicators from the set of the key performance
indicators presented on the display device; and
output a value of the financial impact of implementing
the particular business software program in the particular
business, the value being at least partially based on the selected
subset of key performance indicators.

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Claims 17-24 stand rejected under 35 U.S.C. § 101 for reciting
non-statutory subject matter; and claims 17-34 stand rejected under 35
U.S.C. § 103(a) as unpatentable over MySAP
(http://web.archive.org/web/20010211023626/www.mysap.com/solutionma
ps/solomap_over . . . ) (last visited Mar. 8, 2001) in view of Pisello (US Pub.
2003/0158800 A1, pub. Aug. 21, 2003), which claims priority to U.S.
Provisional Patent Application No. 60/358,404, filed February 21, 2002
(hereinafter “Pisello Provisional”).
We DISMISS claims 17-24 and enter a NEW RATIONALE under 37
C.F.R. § 41.50(b) (2010) for rejecting claims 25-34 under 35 U.S.C. §
103(a).

ISSUE
Did the Examiner err in asserting that a combination of MySAP and
Pisello renders obvious the subject matter of claims 25-34?

FINDINGS OF FACT
Pisello Provisional
FF1. ValueIT collects IT performance and expenditure data into standard
forms, and creates comparative IP performance and budget reports
(pp. 1-2).
FF2. A computer window to the ValueIT application is shown below.
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Application 10/161,474

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FF3. (p. 6).
FF4. The ValueIT application window, set forth above, displays an IT
Spending Assessment profile, with user-input fields including Official
IT Budget, Additional IT Spending, Average Hours Spent Per Day on
IT, and Average User Salary, among others.

ANALYSIS
Claims 17-24
Claims 17-24 were rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter (Exam’r’s Ans. 2-5). While this was a new
ground of rejection set forth in the Examiner’s Answer, the Appellants had a
chance to respond in a Reply Brief1. However, no Reply Brief was filed.

1 “[I]f an examiner's answer contains a rejection designated as a new ground
of rejection, appellant must within two months from the date of the
examiner's answer [(1) request that prosecution be reopened or (2) request
that the appeal be maintained by filing a reply brief] to avoid sua sponte
dismissal of the appeal as to the claims subject to the new ground of
rejection.” See 37 C.F.R. § 41.39(b) (2010) (emphasis added).
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Accordingly, claims 17-24 are dismissed. As they are dismissed, we do not
reach the merits of the prior art rejections of claims 17-24.

Claims 25-34
We are not persuaded that the Examiner erred in asserting that a
combination of MySAP in view of Pisello renders obvious the subject matter
of claims 25-34 (App. Br. 5-9). As an initial matter, we agree with the
Appellants that because the September 10, 2002 filing date of Pisello does
not predate this application’s May 31, 2002 filing date, that only the subject
matter in Pisello supported by disclosures in the Pisello Provisional are
available as prior art to claims 25-34 (App. Br. 5-6).
Appellants assert that the Pisello Provisional does not disclose
receive[ing] a user selection of a subset of
one or more of the key performance indicators
from the set of the key performance indicators
presented on the display device; and
output[ting] a value of the financial impact
of implementing the particular business software
program in the particular business, the value being
at least partially based on the selected subset of
key performance indicators
as recited in independent claims 25 and 30 (App. Br. 6-9). In particular,
Appellants assert that the Pisello Provisional does not disclose user selection
of a subset of the key performance indicators that alter a financial impact
output value. However, FF1-FF4 of the Pisello Provisional disclose a
variety of input fields used to determine a company’s productivity and
spending assessments. The user could choose to enter data in only a subset
of these input fields, which would alter the company’s productivity and
spending assessments, thus meeting the aforementioned aspects of
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independent claims 25 and 30 under a broadest reasonable interpretation.
See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(during examination of a patent application, a pending claim is given the
broadest reasonable construction consistent with the specification and should
be read in light of the specification as it would be interpreted by one of
ordinary skill in the art). Insofar as our rationale for rejecting independent
claims 25 and 30 differ from those set forth by the Examiner, we denominate
it a new ground under 37 C.F.R. § 41.50(b).
This decision contains a new rationale for rejecting claims 25-34
under 35 U.S.C. § 103(a) 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 Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 .…
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED; 37 C.F.R. § 41.50(b)

hh

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