Ex Parte Heyns et al

Patent Trial and Appeal Board

Jan 19, 2016

13022181 (P.T.A.B. Jan. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/022,181 02/07/2011
113123 7590
Harrity & Harrity, LLP
11350 Random Hills Road
Suite 600
Fairfax, VA 22030
01/21/2016
FIRST NAMED INVENTOR
Herman R. Heyns
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10761.1491-01000 6183
EXAMINER
PATS, JUSTIN
ART UNIT PAPER NUMBER
PTAB
NOTIFICATION DATE DELIVERY MODE
0112112016 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):
docket@harrityllp.com
mpick@harrity llp .com
jesterbrook@harrityllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERMAN R. HEYNS, STUART REILLY, STEWART SMYTHE,
and BRIAN F. MCCARTHY
Appeal2013-007785 1
Application 13/022,181 2
Technology Center 3600
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 15-32. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
March 11, 2013) and Reply Brief ("Reply Br.," filed June 4, 2013), and the
Examiner's Answer ("Ans.," mailed April 4, 2013) and Final Office Action
("Final Act.," mailed October 10, 2012).
2 Appellants identify Accenture Global Services Limited as the real party in
interest. App. Br. 2.
Appeal2013-007785
Application 13/022, 181
CLAIMED fNVENTION
Appellants' claimed invention "relates to methods and tools for
planning and budgeting within a business organization. More particularly,
the present invention relates to methods and tools for efficiently setting
strategic targets and budgets within a business organization so as to increase
cash flow and shareholder value" (Spec. i-f 2).
Claim 15, reproduced below (with added bracketed notations), is
illustrative of the subject matter on appeal:
15. A computer-implemented method for developing a
strategic planning solution for a business organization, the
computer including a processor and memory and the method
comprising steps performed by the computer of:
[(a)] selecting, by the processor, a target company, one
or more comparison companies, and one or more key metrics of
the target company and the one or more comparison companies;
[ (b)] comparing, by the processor, the one or more key
metrics based on financial data;
[(c)] estimating, by the processor, a value of the target
company's stock;
[ ( d)] predicting, by the processor, future cash flows of
the target company based on historical financial statements and
one or more financial inputs;
[(e)] implementing, by the processor, a discounted cash
flow valuation model that includes forecasted future cash flows
that are discounted at a cost of capital and added to a terminal
value calculation to determine a total value of the target
company;
[(f)] generating, by the processor, present and future
discounted cash flows and one or more stock prices of the target
company based on the historical financial statements, the one or
more financial inputs, the discounted cash flow valuation
model, and one or more key financial drivers;
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Application 13/022, 181
[ (g)] displaying, by the processor, the results of the
comparison, a range of stock prices of the target company, and
an impact on the target company based on the future cash
flows;
[(h)] receiving, by the processor, one or more candidate
goal selections for the business organization based on the
displayed results, range of stock prices, and impact on the target
company;
[(i)] evaluating, by the processor, the one or more
candidate goal selections using actual historical company data
of the target company to return one or more resulting
performances;
[ (j)] comparing, by the processor, the one or more
resulting performances to an actual historical company
performance of the target company; and
[(k)] selecting, by the processor based on the
comparing, at least one of the candidate goal selections that
provides the target company with a highest value.
REJECTION
Claims 15-32 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Eugene F. Brigham and Phillip R. Daves, Intermediate Financial
Management, 7th Ed., Thomson Leaming, Inc. (2002), Zarb
(US 2004/0039619 Al, pub. Feb. 26, 2004), and Winther
(US 2003/0177056 Al, pub. Sept. 18, 2003).
ANALYSIS
Independent claim 15 and dependent claims 16-20
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 15 under 35 U.S.C. § 103(a) because Zarb, on
which the Examiner relies, does not disclose or suggest limitations (i), (j),
and (k), as recited in claim 15. The Examiner cites paragraphs 45--49 and
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Application 13/022, 181
54---62 of Zarb as disclosing the argued limitations (Final Act. 5---6).
However, we agree with Appellants that rather than evaluating one or more
candidate strategies, i.e., goal selections, using historical company data to
return one or more resulting performances, and then selecting a candidate
strategy based on a comparison of the resulting performances to the
historical performance of the target company, as called for in claim 15,
Zarb selects a strategy for the target (i.e., prospect) company based on the
performance of that strategy at another company (App. Br. 12-16).
For example, Zarb discloses in paragraphs 54---62, with reference to Figure 5,
that a strategy for the prospect (target) company is selected based on a "best-
in-class" analysis of the prospect company and "the at least one other
organization."
Responding to Appellants' argument in the Response to Argument
section of the Answer, the Examiner asserts that "[t]he prospect or any of
companies 1, 2, or 3 of Zarb [the "other companies"], as shown in Figs. 2--4
can be considered the target company using the broadest reasonable
interpretation (see also i-fi-1 45--49 and 54---62 cited by Examiner, as well as
flow chart of Fig. 5, discussing best in class analysis)" (Ans. 2). We
disagree.
Zarb 's prospect company cannot be mapped to the claimed "target
company" at least because steps (i), (j), and (k) are not performed with
respect to the prospect company (Reply Br. 4 ). Rather than selecting a
strategy, i.e., "at least one of the candidate goal selections," for the prospect
company based on the company's own historical company data, as called for
in claim 15, a strategy for the "prospect company" in Zarb is selected based
on the performance of that strategy at one of Zarb's "other companies" (id.).
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Application 13/022, 181
For example, Zarb discloses, with reference to Table 64 in Figure 2, how a
user may compare a prospect company with three other companies,
i.e., "Comp. 1," "Comp. 2," and "Comp. 3," with respect to various metrics,
e.g., revenue growth, gross margin, etc., and explains that "[t]he
comparisons may help the user select or identify a strategy for the prospect
company" (Zarb i-f 48). The "best in class" determination with respect to the
various metrics, as shown in Figure 4 of Zarb, also is made as among the
three "other companies," and the prospect company's percentage with
respect to each metric is determined based on a comparison with the
performance of the "best in class" company.
Contrary to the Examiner's assertion, Zarb's "other companies" also
cannot properly be considered the claimed "target company." Claim 15 calls
for selecting a strategy, i.e., "at least one of the candidate goal selections,"
for the target company. Zarb's method determines a strategy for the
prospect company, not for the "other companies" (Reply Br. 4).
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 15 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of dependent claims 16-20. Cf In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the
independent claims from which they depend are nonobvious").
Independent claims 21and27, and dependent claims 22-26 and 28-32
Independent claims 21 and 2 7 include language substantially similar
to the language of claim 15. Therefore, we do not sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of independent claims 21 and 27, and
claims 22-26 and 28-32, which depend therefrom, for the same reasons set
forth above with respect to claim 15.
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Application 13/022, 181
DECISION
The Examiner's rejection of claims 15-32 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
msc
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