11350613 (B.P.A.I. Dec. 15, 2010)

Ex Parte Kiran

Board of Patent Appeals and InterferencesDec 15, 2010

11350613 (B.P.A.I. Dec. 15, 2010)

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. 11/350,613 02/09/2006 Prem Kiran 11884/494701 1575 53000 7590 12/15/2010 KENYON & KENYON LLP 1500 K STREET N.W. WASHINGTON, DC 20005 EXAMINER ABDI, KAMBIZ ART UNIT PAPER NUMBER 3684 MAIL DATE DELIVERY MODE 12/15/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte PREM KIRAN 8 ___________ 9 10 Appeal 2010-000152 11 Application 11/350,613 12 Technology Center 3600 13 ___________ 14 15 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16 JOSEPH A. FISCHETTI, Administrative Patent Judges. 17 FETTING, Administrative Patent Judge. 18 DECISION ON APPEAL1 19 20 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-000152 Application 11/350,613 2 STATEMENT OF THE CASE2 1 2 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed April 24, 2009) and Reply Brief (“Reply Br.,” filed July 21, 2009), and the Examiner’s Answer (“Ans.,” mailed June 10, 2009), and Final Rejection (“Final Rej.,” mailed February 20, 2009). Prem Kiran (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a 2 final rejection of claims 26-41, the only claims pending in the application on 3 appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 4 (2002). 5 The Appellant invented a method and apparatus for automatically 6 assisting a senior manager in reassigning project work. Specification ¶ 7 0002. 8 An understanding of the invention can be derived from a reading of 9 exemplary claim 26, which is reproduced below [bracketed matter and some 10 paragraphing added]. 11 26. A computer-implemented method for automating 12 reassignment of certain project work of an unavailable 13 manager, comprising the steps of: 14 [1] when a manager in an organization is identified as 15 unavailable, retrieving, from a computer memory element, data 16 relating to a project to which the unavailable manager is 17 assigned including criticality information, skill requirement 18 information, and cost information; 19 Appeal 2010-000152 Application 11/350,613 3 [2] retrieving data representing a skill level, expertise, cost, 1 and availability of at least one other manager in the 2 organization, where the availability information includes cost 3 information and criticality information of a current assignment 4 of the other manager; 5 [3] comparing through a processor the skill level, expertise, 6 and cost of the at least one other manager to the skill 7 requirement information and cost information of the project to 8 identify eligible managers possessing required skills while 9 satisfying cost requirements; 10 [4] for at least one identified eligible manager, calculating 11 the cost impact of reassigning the eligible manager to the 12 project using the cost information and criticality information of 13 the current assignment of the identified eligible manager; 14 [5] calculating, from the criticality information and cost 15 information in the project data, a cost of postponing the project; 16 [6] determining, from a comparison of the cost of postponing 17 the project and the cost of reassigning each identified eligible 18 manager to the project, whether the project should be postponed 19 or whether at least one of the identified eligible managers 20 should be reassigned to take over for the unavailable manager; 21 and 22 [7] storing data representing the determination with the 23 project data in storage. 24 25 The Examiner relies upon the following prior art: 26 Vashistha et al. US 2001/0051913 A1 Dec. 13, 2001 Vogel et al. US 2004/0162753 A1 Aug. 19, 2004 Thayer Watkins, Cost Benefit Analysis, San Jose State University Economics Department, Feb. 25, 1999. 27 Claims 26-41 stand rejected under 35 U.S.C. § 103(a) as unpatentable 28 over Vogel, Vashistha, and Watkins. 29 Appeal 2010-000152 Application 11/350,613 4 1 ISSUES 2 The issue of whether the Examiner erred in rejecting claims 26-41 under 3 35 U.S.C. § 103(a) as unpatentable over Vogel, Vashistha, and Watkins 4 turns on whether Vogel, Vashistha, and Watkins describe limitations [3] – 5 [6] of claim 26 and whether Vogel, Vashistha, and Watkins describe the 6 limitations of claim 41. 7 8 FACTS PERTINENT TO THE ISSUES 9 The following enumerated Findings of Fact (FF) are believed to be 10 supported by a preponderance of the evidence. 11 Facts Related to the Prior Art 12 Vogel 13 01. Vogel is directed to analyzing resource supply and demand 14 models for planning the deployment of a workforce or other 15 resources. Vogel ¶ 0002. Vogel describes a roster building 16 process and a rationalization process. Vogel ¶’s 0052 and 0058. 17 A roster includes basic information for workforce members, such 18 as name, system ID, job code, and job title. Vogel ¶ 0052. The 19 skill sets corresponding to the roster member’s current work 20 assignment are entered into the roster. Vogel ¶ 0053. The skill 21 sets include different levels and different proficiencies. Vogel ¶ 22 0053. The geographic assignment of a roster member is also set 23 in order to determine the profitability of assigning that roster 24 Appeal 2010-000152 Application 11/350,613 5 member to a project in that geographic location. Vogel ¶ 0055. 1 The rationalization process begins with the selection of an 2 effective date and the selection of a roster. Vogel ¶ 0058. 3 Workforce member that satisfy selected criteria are selected and 4 parameters for rationalization are set. Vogel ¶’s 0058-0059. At 5 basic, the workforce can be rationalized to identify excess supply 6 or open demand that indicates that the enterprise is carrying 7 unnecessary costs or forgoing additional revenue. Vogel ¶ 0059. 8 Based on the input parameters and criteria, a rationalization 9 summary is generated. Vogel ¶ 0062. The rationalization 10 summary includes a report identifying certain skills, geographic 11 locations, or worker types that have open demand or excess 12 supply. Vogel ¶ 0062. The summary may further indicate 13 whether a deployment fails to make financial sense. Vogel ¶ 14 0062. The summary also includes information on workforce 15 members whose work can be performed by a contractor or by a 16 global competitive resource at a more profitable level. Vogel ¶ 17 0062. A workforce manager may be able to reassign sub-18 optimally assigned workforce members and take the results of the 19 rationalization reports in to consideration when making workforce 20 planning decisions. Vogel ¶ 0063. This future planning data 21 allows a manager to determine any new employee or contractor 22 needs that will develop in the future. Vogel ¶ 0067. 23 Vashistha 24 02. Vashistha is directed to a method and system configured for 25 facilitating the outsourcing of information technology projects and 26 Appeal 2010-000152 Application 11/350,613 6 services, including the planning, outsourcing, procuring , 1 managing, and/or delivering of the information technology 2 projects and services. Vashistha ¶ 0002. The method begins with 3 a buyer initiating the development of specifications for an IT 4 project. Vashistha ¶ 0054. Once the buyer submits a request for 5 proposal (RFP), the outsourcing system matches qualified 6 providers with the RFP. Vashistha ¶ 0057. Providers are matched 7 with buyers based on both technical skills and project 8 management skills. Vashistha ¶ 0059. The buyer can specify 9 project manage skills desired, such as experience amount. 10 Vashistha ¶ 0059. The outsourcing system further accounts for 11 the size of the provider such that time critical projects can be 12 matched with large providers that have an abundance of 13 manpower. Vashistha ¶ 0060. Vashistha describes the use of a 14 statement of work that is used to carry out the selections and 15 administration functions of the outsourcing system. Vashistha ¶ 16 0090. 17 Watkins 18 03. Watkins is directed to directed to a discussion on the less 19 obvious components needed to be discovered for a cost benefit 20 analysis. Watkins 2. 21 Appeal 2010-000152 Application 11/350,613 7 1 ANALYSIS 2 Claims 26-41 rejected under 35 U.S.C. § 103(a) as unpatentable over 3 Vogel, Vashistha, and Watkins 4 The Appellant contends that Vogel, Vashistha, and Watkins fail to 5 describe reassigning specific managers, as claimed in limitations [3]-[6] of 6 claim 26 and as recited in claims 32 and 38. App. Br. 9-13 and Reply Br. 3-7 4. The Examiner responded to this argument at Answer 15-26. We agree 8 with the Examiner. We find that the Examiner has adequately responded to 9 the Appellant’s arguments and accordingly we adopt the Examiner’s 10 findings and analysis at Answer 3-29. 11 The Appellant also contends that Vogel, Vashistha, and Watkins fail to 12 describe sending criticality, skill requirement, and cost information to a 13 human resource entity, as required by claim 41. App. Br. 13-14 and Reply 14 Br. 4. The Examiner responded to this argument at Answer 26-29. We 15 agree with the Examiner. We find that the Examiner has adequately 16 responded to the Appellant’s arguments and accordingly we adopt the 17 Examiner’s findings and analysis at Answer 14 and 26-29. 18 Thus, the only issues remaining are those presented in the Reply Brief 19 that have not been addressed by the Examiner. The Appellant specifically 20 argues in the Reply Brief that Vogel only describes that a manager, not a 21 computer, is enabled to make decisions about current workforce issues. 22 Reply Br. 3. We disagree with the Appellant. Limitation [3] requires the 23 use of a processor to determine eligible managers that satisfy cost 24 requirements, however, the determination step in limitation [6] fails to 25 Appeal 2010-000152 Application 11/350,613 8 specifically require that only a computer is used to perform the 1 determination step. Vogel describes that a computer performs the 2 rationalization process and provides reports to a manger to determine 3 resource allocation issues. FF 01. As such, Vogel’s description of the 4 rationalization processes that uses a computer is the same as limitation [3] 5 requiring the use of a processer and Vogel’s description that a manager is 6 enabled to make decisions is the same as limitation [6]’s broad recitation 7 that does not specify whether a computer or manager is enabled to make the 8 determination. The Appellant further argues that Vogel is not directed to 9 “automatically reassigning individuals in an organization” as required by the 10 claims (Reply Br. 3); however, we find nothing in the claims that the process 11 of reassigning individuals is an automated process. As such, the Appellant’s 12 argument is not found to be persuasive because the Appellant is arguing 13 limitations not found in the claims. 14 The Appellant also argues in the Reply Brief that Watkins fails to 15 describe calculating the cost impact of reassigning a manager using the cost 16 information of the current assignment. Reply Br. 3. We disagree with the 17 Appellant. The Examiner relied on Watkins to describe a cost benefit 18 analysis of tasks in project management and rejected claim 26 on the 19 combination of Vogel, Vashistha, and Watkins. Ans. 3-7. As such, the 20 Appellant's contention does not persuade us of error on the part of the 21 Examiner because the Appellant responds to the rejection by attacking the 22 references separately, even though the rejection is based on the combined 23 teachings of the references. Nonobviousness cannot be established by 24 attacking the references individually when the rejection is predicated upon a 25 Appeal 2010-000152 Application 11/350,613 9 combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1 1091, 1097 (Fed. Cir. 1986). 2 3 CONCLUSIONS OF LAW 4 The Examiner did not err in rejecting claims 26-41 under 35 U.S.C. 5 § 103(a) as unpatentable over Vogel, Vashistha, and Watkins. 6 7 DECISION 8 The rejection of claims 26-41 under 35 U.S.C. § 103(a) as unpatentable 9 over Vogel, Vashistha, and Watkins is sustained. 10 11 No time period for taking any subsequent action in connection with this 12 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13 § 1.136(a)(1)(iv) (2007). 14 15 AFFIRMED 16 17 18 mev 19 20 Address 21 KENYON & KENYON LLP 22 1500 K STREET N.W. 23 WASHINGTON DC 20005 24