Ex Parte Lee et al

Patent Trials and Appeals Board

Apr 2, 2013

11200847 - (D) (P.T.A.B. Apr. 2, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUHNYOUNG LEE, GRACE Y. LIN,
KO-YANG WANG, and CLAUDIA L. WOODY
____________________

Appeal 2011-007007
Application 11/200,847
Technology Center 3600
____________________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
JAMES A. TARTAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007007
Application 11/200,847

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-6, 9, 10, 12, 14-16, 19-21, and 23-28. We have
jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to a method and system for managing
business solutions, and more particularly, to a method and system that
evaluate business solutions based on a corresponding business value for each
business solution (Spec., para. [0002]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of evaluating a set of business
solutions, the method comprising:
generating the set of business solutions
based on a business pain point and a business
model for a target enterprise, wherein the business
model includes a set of business concerns, wherein
each of the set of business solutions comprises at
least one modification to at least one attribute of
the set of business concerns for a target enterprise
and wherein each business concern comprises one
of: a business process, a business activity, a
business component, a resource, or a relationship

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed August 27, 2010) and the Examiner’s Answer (“Ans.,” mailed
October 6, 2010).
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between a plurality of business concerns for the
target enterprise;
obtaining a value model that comprises a
unique value for each of the set of business
concerns and relationship information for the set of
business concerns, wherein each unique value
comprises a relative change to a value provided by
the corresponding business concern and wherein
the relationship information includes a relative
contribution that a first business concern provides
to a second business concern;
determining a business value for each of the
set of business solutions by processing the value
model using at least one computing device,
wherein the processing includes determining a
value provided by each of the at least one
modification for each of the set of business
solutions using the value model and combining the
value provided by each of the at least one
modification for a corresponding business
solution;
prioritizing the set of business solutions
based on their corresponding business values; and
providing the set of business solutions for
review.

THE REJECTIONS
The following rejections are before us for review:
Claims 1, 3, 4, 9, 12, 14, 19, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gallacci (US 2003/0229526 A1,
pub. Dec. 11, 2003) in view of Ulwick (US 6, 115,691, iss. Sep. 5, 2000).
Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallacci in view of Ulwick and further in view of Klein
(US 2004/0006399 A1, pub. Jan. 8, 2004).
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Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallacci in view of Ulwick and in view of Klein and
further in view of Ruffin (US 6,526,387 B1, iss. Feb. 25, 2003).
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallacci in view of Ulwick and further in view of Adler
(US 2002/0169658 A1, pub. Nov. 14, 2002).
Claims 21 and 23-25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallacci in view of Ulwick and further in view of Heyns
(US 2004/0073442 A1, pub. Apr. 15, 2004).
Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallacci in view of Ulwick and in view of Heyns, and
further in view of Klein.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallacci in view of Ulwick and in view of Heyns and
Klein, and further in view of Ruffin.

ANALYSIS
Independent claim 1 and dependent claims 3-6, 9, and 10
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because the combination of Gallacci and Ulwick fails to
teach or suggest “obtaining a value model that comprises . . . relationship
information for the set of business concerns, . . . wherein the relationship
information includes a relative contribution that a first business concern
provides to a second business concern,” as recited in claim 1 (Br. 9-10).
The Examiner responds that the rejection is proper, and cites
Figures 4-11 and paragraphs [0044] and [0045] of Gallacci as disclosing this
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feature (Ans. 4 and 17). In this regard, the Examiner maintains that
Figures 4-8 of Gallacci show how each potential solution is assessed for
multiple business concerns and that paragraphs [0044] and [0045] disclose
the contribution that one business concern provides to another business
concern, such as the relative contribution that a customer’s business size
provides to the customer’s reliance on the supplier’s sophistication and
infrastructure (Ans. 4 and 17).
We have reviewed the cited portions of Gallacci relied on by the
Examiner, and we conclude that the Examiner’s findings are reasonable and
supported. In particular, we note that Gallacci assesses potential solutions
based on the size of the customer organization in Figure 4 and that the
customer’s responses regarding its infrastructure and practices are reflected
in Figure 7 of Gallacci.
We also are not persuaded by Appellants’ argument that the
combination of Gallacci and Ulwick fails to teach or suggest “generating the
set of business solutions based on a business pain point and a business
model . . .wherein the business model includes a set of business concerns,”
as recited in claim 1 (Br. 10-12). Instead, we agree with the Examiner that
Gallacci discloses this feature with reference to Figures 4-11 and paragraphs
[0056] through [0064] (Ans. 18).
Gallacci discloses a computer-based system and method to enable a
component supplier to provide supply chain service solutions that meet the
needs and requirements of its customer. The customer’s supply chain needs
and requirements and other customer metrics (i.e., business concerns and
business pain points) are obtained via the customer’s responses to various
information requests. Each response to an information request is mapped to
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a table (e.g., Figures 4-10) containing supply chain service solutions
appropriate for the response. The table also provides a value (to the
customer) weight and a risk (to the supplier) weight associated with
implementing the supply chain service solutions. These results are
combined to provide a set of four possible business solutions, i.e., I, G, F,
and D, as well as a graphical assessment of the associated risk versus the
value, as shown in Figure 11 (see Gallacci, Abstract, Figures 4-11 and
paragraphs [0056] through [0064]).
Appellants’ further argument that the combination of Gallacci and
Ulwick fails to teach or suggest “combining the value provided by each of
the at least one modification for a corresponding business solution,” as
recited in claim 1, also is unpersuasive (Br. 12). Instead, we agree with the
Examiner that Gallacci presents a corresponding value for each business
solution program with respect to a specific business modification, e.g.,
Figure 6 shows value factors for inventory and labor force reductions, and
these value factors are combined in tab 208a (Figure 11) for possible
solutions I, G, F, and D (Ans. 19).
In view of the foregoing, we sustain the Examiner’s rejection of claim
1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection of
claims 3-6, 9, and 10, which were not separately argued.

Independent claims 12, 21, and 28 and dependent claims 14-16, 19, 20, and
23-27

Appellants’ arguments with respect to independent claims 12, 21, and
28 are substantially identical to Appellants’ arguments with respect to
claim 1. Therefore, we sustain the Examiner’s rejection of claims 12, 21,
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and 28 under 35 U.S.C. § 103(a) for the same reasons as set forth above with
respect to claim 1. We also sustain the Examiner’s rejection of dependent
claims 14-16, 19, 20, and 23-27, which were not separately argued.

DECISION
The Examiner’s rejection of claims 1, 3-6, 9, 10, 12, 14-16, 19-21,
and 23-28 under 35 U.S.C. § 103(a) is affirmed.

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).

AFFIRMED

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