Ex Parte Le

Board of Patent Appeals and Interferences

Sep 29, 2010

10696817 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HIEN K. LE
____________________

Appeal 2009-005291
Application 10/696,8171
Technology Center 2100
____________________

Before JEAN R. HOMERE, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed October 30, 2003. The real party in interest is
BearingPoint, Inc. (App. Br. 3.)
2 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.
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STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1-20 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention at issue on appeal relates to a system and method for
facilitating software engineering and management according to a process
that is compliant with a qualitatively measurable standard, for example, the
Software Engineering Institute’s Software Capability Maturity Model (SW-
CMM). The system includes a server system (one or more servers) that
communicates with multiple client systems, and contains a database
including resources accessible to the client systems. The resources include
tasks to be performed within the process. (Spec. 1, ll. 6-9; 2, ll. 1-5; 3, ll. 4-
30.)3
Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A system facilitating software engineering and
management in connection with a software development project
according to a process that is compliant with a qualitatively
measurable standard, comprising:
a server system operable to communicate with a plurality
of client systems;

3 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed April 17, 2008; and Reply Brief (“Reply Br.”) filed August 26, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed June 26, 2008.
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a database associated with the server system and
containing resources accessible to the client systems using the
server system in connection with one or more software
development projects, the resources comprising at least:
first resources specifying a plurality of tasks to be
performed within the process and specifying for each
task one or more of:
a description of the task;
a description of how the task relates to the
standard;
one or more activities to be performed for
the task;
which personnel should perform the
activities for the task;
one or more deliverables to be generated for
the task;
one or more expected artifacts according to
which the process will be measured against the
standard; and
an expected time to complete the task; and
second resources comprising one or more
templates, each template operable to be customized in
generating one or more deliverables for one or more
tasks;
the server system operable to, at one or more times
during a software development project:
receive from a user associated with a client system
a request for one or more resources;
retrieve the requested resources from the database;
and
provide the requested resources to the user in
connection with the software development project.

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Reference
The Examiner relies on the following reference as evidence of
unpatentability:
Miller US 2006/0235732 A1 Oct. 19, 2006
(filed Dec. 9, 2002)

Rejection on Appeal
The Examiner rejects claims 1-20 under 35 U.S.C. § 102(e) as being
anticipated by Miller.

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us is as follows:
Does the Examiner err in finding the Miller reference discloses “a
database . . . containing resources accessible to the client systems using the
server system[,] . . . the resources comprising . . . first resources specifying a
plurality of tasks to be performed within the process and specifying for each
task one or more” attributes of the tasks, as recited in Appellant’s claim 1?

FINDINGS OF FACT (FF)
Appellant’s Specification
1. Appellant does not explicitly define a “resource,” or a “task” in
the Specification, nor does Appellant explain how the resources “specify”
the tasks and/or attributes of the tasks in the database. The Specification,
however, does describe the structure and functionality of Appellant’s server
system and database with respect to the resources and tasks:
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System 10 includes a server system 12 that provides one
or more users at one or more client systems 14 access to one or
more resource databases 16 that include one or more resource
sets 18 . . . . Server system 12 may include one or more
appropriate computer systems . . . that may collectively receive
a resource request from a client system 14 and, in response to
the resource request, access one or more resources from one or
more resource sets 18 and communicate the accessed resources
to client system 14 . . . . A resource set 18 in resource database
16 may include one or more resources that may be used to
facilitate software engineering and management in connection
with a software development project according to a process that
is compliant with a qualitatively measurable standard. As an
example and not by way of limitation, a resource set 18 may
include information specifying one or more tasks that an
organization may execute to reach one or more particular MLs
of SEI’s SW-CMM, as described more fully below . . . .

In particular embodiments, tasks 20 may each relate to one or
more of the following: tools, checklists, templates, procedures,
tasks, methods, activities, processes, standards, and policies. In
particular embodiments, tasks 20 may each correspond (and be
traceable) to one or more particular KPAs 24. In addition to
tasks 20, task collaterals associated with tasks 20 may also be
identified. Task collaterals may include implementation aids
(such as task descriptions for compliance with ML 22,
templates, checklists policy statements, training and
presentation materials, software tools, sample work products,
and other implementation aids) and other resources.
(Spec. 7, l. 18 to 9, l. 8.)
Miller Reference
2. Miller describes a system and method for “arranging and
administering an organization’s infrastructure and a project of interest so
that the organization and the product may be more mature, as measured by
the CMM” (Capability Maturity Model for Software (SW-CMM) or, more
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generally, Capability Maturity Model (CMM)). (¶¶ [0002]-[0003].)
Generally, Miller describes a “CMM in a Box” method that assists an
organization in reaching higher levels in the CCM. (¶¶ [0015]-[0016],
[0030].) In particular, the steps in the CCM method:
include the creation or updating of various documentation (or
monuments) that detail and verify the execution of tasks
performed by the organization. These documents may be used
to demonstrate compliance with the higher levels of the CMM
or CMMI . . . . A short listing and summary of some of the
various documents that may be created or updated during the
steps of the CMM in a Box method 10 is listed below in Table
1.
(¶ [0031].) For example, Miller describes a software organization’s
development process (¶¶ [0003], [0037]-[0038]; see generally, ¶¶ [0033]-
[0049], Figs. 1, 2A-2D), and software project management processes (¶¶
[0129]-[0145]; Figs. 5A-5D). These processes include development of a
project plan (¶ [0031]); related work plans – “the organization may further
create a work plan . . . . a ‘bottom-up’ or task-level project work plan based
upon estimates where critical paths and dependencies are defined and
managed within a project work-planning tool, such as Microsoft Project and
Project Workbench.RTM” (¶ [0038]); organizing project resources, work
assignments, and other tasks (¶ [0040]); and controlling work by monitoring
and evaluating work and deliverables against the plan (¶ [0045]).
3. Miller implements the CMM in a box system and method as
illustrated in figures 11A, 11B, 12, and 14 (see ¶¶ [0278]-[0289], [0291],
[0299]-[0311]). In one embodiment, Miller describes a CMM
implementation system (1100) including various modules with an associated
database (1120) containing information about the organization. (¶¶ [0280]-
[0282]; Figs. 11A & 11B.) In another embodiment, Miller describes an
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accelerated process improvement framework (APIF) (1200) including an
enterprise document management system (EDMS) (1210) with associated
storage devices (1220) containing files (1222) that include data relating to
steps of the CMM method. (¶¶ [0283]-[0287]; Fig. 12.) In particular, Miller
utilizes templates (¶ [0278]) and/or task lists (¶ [0279]) and/or document
files (¶ [0286]) to implement the CCM in a box as illustrated in the figures
(¶¶ [0280]-[0287]). For example, in the APIF:
[T]he file storage device 1220 contains files 1222 that store data
relating to one or more steps in Method 10 (FIG. 1). Thus,
when performing a step in Method 10, a user may select a file
1222 corresponding to that step. The file 1222 may then
provide the user with the information and instructions needed to
accomplish that step. For instance, the file may direct the user
to undertake certain quality control actions during the
development of a software application. The file 1222 may
further specify documentation that must be completed by the
user during the step. In this way, a user may perform Method
10 of FIG. 1 by opening one or more files 1222, following the
actions specified in the files 1222, and then, when applicable,
completing required documentation specified in the files 1222.
The file 1222 may alternatively instruct the user on the
relationship of that step with other steps in Method 10. In
doing so, the file 1222 may direct the user to other, subsequent
steps in Method 10 by directing the user to files 1222
corresponding to these subsequent steps.
(¶ [0286]; see ¶ [0031] & Table 1 (appended to Miller).)

ANALYSIS
Appellant has elected to argue claims 1-20 together as a group based
on representative claim 1, and does not separately argue independent claims
7, 13, 19, and 20, nor any of the dependent claims – claims 2-6 (dependent
on claim 1), 8-12 (dependent on claim 7), and 14-18 (dependent on claim
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13). (App. Br. 23-24, 26). Therefore, we select independent claim 1 as the
representative of Appellant’s arguments and grouping, and we will address
Appellant’s arguments with respect thereto. 37 C.F.R. § 41.37(c)(1)(vii).
See In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of anticipation in the
Examiner’s Answer with respect to representative claim 1. (Ans. 4-6, 10-
14.) Therefore, we look to the Appellant’s Briefs to show error in the
proffered reasoned conclusion. See Kahn, 441 F.3d at 985-86.
Arguments Concerning the Examiner’s Rejection of
Claims 1-20 under 35 U.S.C. § 102(e)
Appellant contends that Miller does not disclose Appellant’s recited
database – “the database . . . or the multiple repository system in Miller can
[not] properly be considered a database associated with the server system
and containing resources accessible to the client systems using the server
system in connection with one or more software development projects, as
independent Claim 1 recites.” (App. Br. 24.) Appellant also contends that
“[n]owhere does Miller disclose, teach, or suggest that [Miller’s database
and “multiple repository system”] contain each and every one of the first
resources that independent Claim 1 specifically recites.” (App. Br. 25
(underlining added); see App. Br. 24-25.)
The Examiner finds that the Miller reference discloses each feature of
Appellant’s claim 1, and provides a detailed explanation as to why
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Appellant’s arguments fail to overcome the Examiner’s anticipation
rejection. (Ans. 4-6, 10-14.) Specifically, the Examiner finds that Miller
discloses the disputed features of “a database . . . containing resources
accessible to the client systems using [a] server system,” that the resources
comprise “first resources specifying a plurality of tasks to be performed
within the process,” and that “for each task,” “one or more” attributes are
specified. (Ans. 4-5 (underlining added); see Ans. 10-14.)
Based on the record before us, we do not find error in the Examiner’s
anticipation rejection of representative claim 1. We agree with the Examiner
that the Miller reference discloses the disputed features. We begin our
analysis by construing Appellant’s disputed claim limitation.
We give claim terminology the “broadest reasonable interpretation
consistent with the [S]pecification” in accordance with our mandate that
“claim language should be read in light of the [S]pecification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). We note that
Appellant does not explicitly define “resources,” “tasks,” or their attributes –
e.g., a “description of the task” or “one or more activities to be performed
for the task” – either in the claim or the Specification. (FF 1.) Nor, does
Appellant describe in the Specification (FF 1) or positively recite in the
claim how the recited “first resources” specify (“specifying”) the tasks and
their attributes.
We also note that the recitation of “first resources” (or resources,
generally), tasks, and specific related attributes (e.g., a “description of the
task”) constitute non-functional descriptive material. Appellant’s recited
resources, tasks, and attributes correspond to data stored in a database and
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available to a client. These recitations merely recite what the information or
data represents. How the data in a database may be named or labelled (e.g.,
“resources,” “tasks,” and data “specifying” attributes of tasks) does not
functionally change the database. The acts of storing, identifying, and
retrieving data in a database are the same regardless of how the data may be
named. Merely labelling data as a resource or a task, as opposed to some
other unique identifier, does not further limit the claimed invention either
functionally or structurally. The informational content of the data thus
represent non-functional descriptive material entitled to no weight in the
patentability analysis. See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36)
(“wellness-related” data in databases and communicated on distributed
network did not functionally change either the data storage system or the
communication system used in the claimed method). See also In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004); Ex parte Nehls, 88 USPQ2d 1883,
1887-90 (BPAI 2008) (precedential) (discussing non-functional descriptive
material).
Accordingly, we broadly but reasonably construe the disputed
limitations to mean a database containing data (resources) accessible to
client systems using a server system – i.e., “a database associated with the
server system and containing resources accessible to the client systems using
the server system” – the data (resources) further comprising data specifying
related data (tasks) and attributes of the related data – i.e., “first resources
specifying a plurality of tasks to be performed within the process and
specifying for each task one or more of: a description of the task[, etc.].”
This construction is consistent with the cited references, Appellant’s
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Specification, and the knowledge of those skilled in the art at the time of
Appellant’s invention.
As detailed in the Findings of Fact section supra, the Miller reference
describes a system for managing software according to a Capability Maturity
Model for Software (SW-CMM). (FF 2.) The same model utilized by
Appellant. In particular, Miller describes a “CMM in a Box” method that
includes steps for “the creation or updating of various documentation (or
monuments) that detail and verify the execution of tasks performed by the
organization.” (FF 2.) Miller describes implementing the CMM in a box
system utilizing a database accessible to clients through a server system –
specifically, a system (CMM system) including various modules and an
associated database, and an accelerated process improvement framework
(APIF) including databases and storage devices. The APIF includes an
enterprise document management system (EDMS) and associated storage
devices containing files which include data relating to steps of the CMM
method. For example, the database and/or APIF system files may include
templates, task lists, and/or document files. (FF 3.) Miller describes the
data (templates, task lists, and/or document files) as documenting a software
organization’s development process and software project management
processes, which include the development of a project plan and related work
plans (“task-level project work plan[s]”), organizing project resources, work
assignments, and other tasks, and controlling work by monitoring and
evaluating work and deliverables against the plan. (FF 2.) Miller explicitly
describes the functionality of the data within the CMM system and method:
“when performing a step in [the method] a user may select a file . . .
corresponding to that step[,] . . . . [t]he file . . . provide[s] the user with the
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information and instructions needed to accomplish that step.” (FF 3; Miller,
¶ [0286].)
Thus we find that Miller discloses a database containing data
accessible to client systems using a server system. Therefore, a broad but
reasonable interpretation of Appellant’s claim 1 reads on at least one
embodiment of Miller. Moreover, even if we confer, arguendo, some
weight to Appellant’s recited resources, tasks, and attributes, we find Miller
discloses a database containing data (resources) accessible to client systems
using a server system, and that the resources comprise data specifying
related data (tasks) and attributes of the related data – i.e., “first resources
specifying a plurality of tasks to be performed within the process and
specifying for each task one or more” attributes (emphasis added).
Appellant’s Specification explicitly describes Appellant’s resources and
tasks to include “tools, checklists, templates, procedures, tasks, methods,
activities, processes, standards, and policies.” In view of Appellant’s broad
disclosure of resources and tasks, we find Miller discloses a database
containing resources (resource data) accessible to client systems, and that the
resources comprise data specifying related tasks (task data) and attributes of
the related task data.
We find Appellant’s contrary arguments unpersuasive. Specifically,
Appellant mischaracterizes Miller as failing to describe a database
containing data accessible to client systems using a server system. We find
(supra) that Miller discloses this feature. Further, Appellant’s arguments are
not commensurate with the scope of the recited claim limitations. Appellant
argues that Miller fails to disclose “each and every one of the first resources
that independent Claim 1 specifically recites.” (App. Br. 25 (underlining
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added for emphasis.) As we explain (supra), however, this is non-functional
descriptive material that does not further distinguish the claimed invention.
Moreover, even if we confer, arguendo, some weight to Appellant’s recited
resources, tasks, and attributes, Appellant’s claim does not recite every
resource or first resource, it instead recites “the resources comprising at
least: first resources specifying a plurality of tasks to be performed within
the process and specifying for each task one or more of: a description of the
task” – which we construe to mean resource data specifying (describing)
related task data, and further specifying one or more, but not necessarily all,
of the recited task attributes.
We, therefore, find the Miller reference discloses Appellant’s disputed
claim limitations as recited in Appellant’s independent claim 1. Appellant
does not separately argue remaining claims 2-20 (supra). Thus, we find the
Miller reference anticipates Appellant’s claims 1-20 for the reasons set forth
with respect to representative claim 1. It follows that Appellant does not
persuade us of error in the Examiner’s anticipation rejection of claims 1-20,
and we affirm the Examiner’s rejection of these claims.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-20 under 35 U.S.C. § 102(e).

DECISION
We affirm the Examiner’s rejection of claims 1-20 under 35 U.S.C.
§ 102(e).
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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)(1)(iv).

AFFIRMED

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