Ex Parte Kelly et al

Patent Trial and Appeal Board

Feb 26, 2016

11915515 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111915,515 11/26/2007 Martin Kelly
23524 7590 03/01/2016
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
068894-0103 6449
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN KELLY and KAM LUN LEUNG
Appeal2013-007241
Application 11/915,515 1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Kelly, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner's Final rejection of claims 1--4, 6-8, 10-14, 16-18,
and 20-48. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM but denominate the affirmed rejections as a NEW
GROUNDS OF REJECTION.
1 The Appellants identify Martin Kelly and Kam Lun Leung, the inventors
of record, as the real party in interest. Br. 2.
Appeal2013-007241
Application 11/915,515
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A device for facilitating a risk assessment, the device comprising a
processor with programmed instructions for:
identifying a process associated with an organization, wherein
the process is part of a process flow;
identifying a risk associated with the process; and
determining whether there exists empirical data about at least
one loss event associated with the risk; and
processing the empirical data to obtain at least two distinct loss
probability distributions for the identified risk, wherein the at least
two distinct loss probability distributions comprise:
a first distribution that represents a probability
distribution of a loss event occurring when no control
activities are used to manage the risk;
a second distribution that represents the probability
distribution of the loss event occurring when an owner of
the process uses a control activity to manage the risk; and
a third distribution that represents the probability
distribution of the loss event occurring when a party
independent of the process assesses the control.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Callahan US 2003/0229525 Al Dec. 11, 2003
Samad-Kahn, Ali, "Why COSO is flawed," OpRisk Advisory" (Jan.
2005); ( www.onriskadvisory.com) (hereinafter "Samad-Kahn").
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Application 11/915,515
P. Embrechts, A. McNeil, and Straumann, "Correlation and
dependence in risk management: properties and pitfalls," (Aug. 9,
1999) (hereinafter "Embrechts").
The following rejections are before us for review:
1. Claims 1-7, 11-14, 16-18, 22 and 23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Callahan and Samad-Kahn.
2. Claims 8, 10, 20, 21, and 35--48 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Callahan, Samad-Kahn, and Embrechts.
ISSUES
Did the Examiner err in rejecting claims 1-7, 11-14, 16-18, 22 and
23 under 35 U.S.C. §103(a) as being unpatentable over Callahan and Samad-
Kahn and claims 8, 10, 20, 21, and 35--48 under 35 U.S.C. §103(a) as being
unpatentable over Callahan, Samad-Kahn, and Embrechts?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-7, 11-14, 16-18, 22 and 23 under 35 USC
§103(a) as being unpatentable over Callahan and Samad-Kahn.
The rejection of claims 8, 10, 20, 21, and 35-48 under 35 USC §103(a) as
being unpatentable over Callahan, Samad-Kahn, and Embrechts.
The Brief addresses the rejections together. See Br. 8.
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Application 11/915,515
There are five independent claims: "device" claims 1, 6, 12, and 18,
and "non-transitory computer-readable storage medium" claim 23. The bulk
of the Brief is focused on claim 1, with additional arguments challenging the
rejection of claims 6 (Br. 12-13), 18 (Br. 13), and claims 11and14 (Br. 14).
In challenging the rejection of claim 1, Appellants argue that
Callahan, which the Examiner cited, does not disclose the third distribution
as claimed (Br. 8-10) and Samad-Kahn, which the Examiner relied on, does
not disclose the first and second distributions as claimed (Br. 10-12).
The argument is unpersuasive as to error in the rejection.
The question is whether one of ordinary skill in the art would have
been led to a device comprising a processor with programmed instructions as
claimed given Callahan and Samad-Kahn. Because claim 1 is directed to a
device, and therefore falls under the apparatus statutory class of invention,
the obviousness determination necessarily turns on the structural and/or
fi1nctional difference bet\~1een the device comprising a processor \~1ith
programmed instructions as claimed and the prior art device. Cf Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
("apparatus claims cover what a device is, not what a device does").
Rather than arguing over a structural and/or functional distinction for
the device comprising a processor with programmed instructions as claimed,
the Appellants focus on the three distributions recited in claim 1.
As drafted, claim 1 defines an apparatus comprising a processor with
programmed instructions, which instructions are "for" performing certain (a)
"identifying," (b) "identifying," ( c) "determining," and ( d) "processing"
functions "for facilitating a risk assessment" (claim 1 ). The "processing"
function is directed to processing data. According to claim 1, the
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Application 11/915,515
"determining" function seeks to "determin[ e] whether there exists empirical
data about at least one loss event associated with [a] risk [associated with
part of a process flow of a process associated with an organization]"
(emphasis added). The "processing" function is therefore conditional on the
existence of data carrying a certain type of information; that is, information
that is empirical and about at least one loss event associated with a risk
associated with part of a process flow of a process associated with an
organization. In addition, said "processing" of data intends "to obtain" at
least two of three distinct loss probability distributions (recited in claim 1)
for the risk associated with part of a process flow of a process associated
with an organization. Accordingly, as reasonably broadly construed, claim 1
defines an apparatus comprising a processor with programmed instructions
for processing data - conditional on the existence of such data - whose
informational content is empirical and about at least one loss event
associated \~1ith a risk associated \~1ith part of a process flo\~1 of a process
associated with an organization for the purpose of obtaining at least two of
three distinct loss probability distributions (recited in claim 1) for said risk.
The Appellants argue that
[ m ]erely disclosing compliance monitoring through a central process,
as in Callahan, is no way equivalent to disclosing the specifically
claimed "third distribution" or a "loss event occurring when a party
independent of the process assesses the control." [regarding the third
distribution];
[ e ]ven if [Samad-Kahn] does disclose "using controls to mitigate risk
and that this approach provides a way to ... focus control strategies,"
such disclosure is in no way equivalent to a "first distribution that
represents a probability distribution of a loss event occurring when no
control activities are used to manage the risk," as claimed. [regarding
the first distribution]; and,
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[i]dentifying areas that are under-controlled or over-controlled, as
allegedly disclosed by[Samad-Kahn], is in no way equivalent to a
"probability distribution" of a "loss event occurring when an owner of
the process uses a control activity to manage the risk," as claimed
[regarding the second distribution].
Br. 9-12.
However, the obviousness question is not whether the three
distributions recited in claim 1 would have been obvious to one of ordinary
skill in the art given the cited prior art. The question is whether a device
comprising a processor with programmed instructions for processing data as
claimed would have been obvious to one of ordinary skill in the art.
In that regard, there appears to be insufficient evidence showing a
functional relationship between the informational content recited in claim 1
that is indicative of the data being empirical and about at least one loss event
associated with a risk associated with part of a process flow of a process
associated with an organization for the purpose of obtaining at least two of
three distinct loss probability distributions for said risk and the processor,
and thus would appear to have little patentable weight. See Ex parte Curry,
84 USPQ2d 1272, 1275 (BP AI 2005) (informative). "Non-functional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious." Id. at 1274 (citing In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004)). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983) (when descriptive material is not functionally related to the substrate,
the descriptive material will not distinguish the invention from the prior art
in terms ofpatentability). See also In re Xiao, 462 Fed. Appx. 947, 950-52
(Fed. Cir. 2011) (non-precedential):
[T]he Board did not create a new "mental distinctions" rule in
denying patentable weight. . On the contrary, the Board
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simply expressed the above-described functional relationship
standard in an alternative formulation---consistent with our
precedents-when it concluded that any given position label's
function . . . is a distinction "discemable only to the human
mind." ... ; [see] In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir.
1994) (describing printed matter as "useful and intelligible only
to the human mind") (quoting In re Bernhart, 417 F.2d 1395,
1399 (CCPA 1969)).
Xiao, 462 Fed. Appx. at 951-952. "Thus non-functional descriptive
material, being useful and intelligible only to the human mind, is given no
patentable weight." Ex parte Graf, Appeal 2012-003941, slip op. at 7
(PTAB July 23, 2013) (non-precedential), aff'd, In re Graf, 585 Fed. Appx.
1012 (Fed. Cir. 2014) (Fed. Cir. 2014) (non-precedential). "The rationale
behind this line of cases is preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
limitations." King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279
(Fed. Cir. 2010). In the context of electronic media, see In re Distefano, 808
F.3d 845 (Fed. Cir. 2015).
Because the arguments challenging the rejection of claim 1 are based
on an inaccurate reading of the subject matter covered by claim 1, and thus
do not go to the question of obviousness of what is claimed as a whole, the
arguments are not persuasive as to error in its rejection under §103.
The arguments challenging the rejection of claims 6 and 18 are
similarly inapposite. The arguments challenging the rejection of claims 6
and 18 focus on whether the cited prior art discloses "graphically
presenting" and "aggregating," respectively. See Br. 12-13. These
arguments are based on an inaccurate reading of the subject matter covered
by claims 6 and 18 and thus do not go to the question of obviousness of what
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is claimed as a whole. Accordingly, they are not persuasive as to error in
their rejection under § 103.
The arguments challenging the rejection of claims 11 and 14, which
argue that the cited prior does not disclose the three distributions recited in
the claims (Br. 14), are similarly unpersuasive.
There is an argument over the motivation to combine Callahan and
Samad-Kahn (Br. 14--15), but it is based on the contention that "neither
Callahan nor Samad-Kahn disclose the 'first distribution,' 'second
distribution,' or 'third distribution,' as claimed" (Br. 15), a contention that is
based on an inaccurate reading of the subject matter covered by the claims,
as such, and does not persuade us as to error in their rejection under§ 103.
No arguments challenging the rejections of the other claims on appeal
having been made, their rejections are sustained.
Our reasoning above departs significantly from that of the Examiner,
amounting to an articulation of a ne\'X/ rationale. Consequently, albeit \'X/e
affirm the rejections of the claims, the affirmed rejections are denominated
as new grounds of rejection.
CONCLUSIONS
The rejection of claims 1-7, 11-14, 16-18, 22 and 23 under 35 U.S.C.
§ 103 (a) as being unpatentable over Callahan and is affirmed.
The rejection of claims 8, 10, 20, 21, and 35--48 under 35 U.S.C.
§ 103 (a) as being unpatentable over Callahan, Samad-Kahn, and Embrechts
is affirmed.
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Application 11/915,515
DECISION
The decision of the Examiner to reject claims 1--4, 6-8, 10-14, 16-18,
and 20--48 is affirmed but the affirmed rejections under § 103 are
denominated as a new grounds of rejection.
NEW GROUNDS
This decision contains new grounds 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 Appellants, 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
exammer ....
(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).
AFFIRMED; 37 C.F.R. § 41.50(b)
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