Ex Parte Malkin

Patent Trial and Appeal Board

Nov 23, 2016

11958182 (P.T.A.B. Nov. 23, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/958,182 12/17/2007 Wayne Malkin CA920070183US1 1655
63675 7590 11/28/2016
PATTERSON & SHERIDAN, LLP/IBM SVL
24 Greenway Plaza
SUITE 1600
HOUSTON, TX 77046-2472
EXAMINER
FLYNN, KEVIN H
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
PAIR_eofficeaction@pattersonsheridan.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE MALKIN
Appeal 2014-003911
Application 11/958,1821
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
AMEE A.SHAH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
non-final rejection of claims 1-5, 8-12, 14-17, and 20-25. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM IN PART.
1 Appellant identifies International Business Machines Corporation as the
real party in interest. Appeal Br. 3.
1
Appeal 2014-003911
Application 11/958,182
THE INVENTION
Appellant claims relate to “systems and methods for analyzing,
simulating and optimizing a defined workflow.” (Spec. para. 4).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method, comprising:
measuring cost data generated by repeated
execution of a physical process, wherein each activity of
the physical process is assigned to a stage in a multi­
stage workflow, wherein a financial model associated
with the multi-stage workflow contains at least one
activity-based cost for performing each activity of the
physical process;
estimating, by operation of one or more computer
processors, a distribution of costs between at least two of
the stages of the multi-stage workflow based on the
measured cost data, wherein the distribution of costs
assigns a cost value to each activity-based cost in the
multi-stage workflow;
determining, based on the distribution of costs, a
plurality of simulated distribution of costs and a plurality
of simulated total revenues by iteratively varying a value
of at least one parameter associated with at least one
activity, wherein varying the value of the at least one
parameter varies the activity-based cost of the at least one
activity; and
upon determining a maximum profit based on the
plurality of simulated distribution of costs and the
plurality of simulated total revenues, determining a
process change for the multi-stage workflow based on the
value of the at least one parameter that yields the
maximum profit.
(Appeal Br. 16).
Appeal 2014-003911
Application 11/958,182
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hwang US 2003/0220828 A1 Nov. 27, 2003
Jin US 2003/0233273 A1 Dec. 18,2003
Dismukes US 2004/0034555 A1 Feb. 19, 2004
The following rejections are before us for review.
Claims 21-25 are rejected under 35 U.S.C. § 112(pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Applicant regards as the
invention.
Claims 1-5, 8-12, 14-17, and 20-25 are rejected under 35 U.S.C.
103(a) as being unpatentable over Dismukes in view of Jin in view of
Hwang.
FINDINGS OF FACT
1. Jin discloses:
Another example of an input parameter change is to
reduce the time cost of the resource Geti3 Approval (which is
usually a role that is performed by a manager. Simulation
results show that the average cycle for the first and second
simulation are 2.09 hours and 2.13 hours respectively. If the
cost of the resource Getn Approval is cut in half, the average
business process cycle drops to 1.89 hours. Furthermore,
resource utilization of Geti3 Approval drops to 18.88 from
37.74.
Para. 54.
Appeal 2014-003911
Application 11/958,182
ANALYSIS
35 U.S.C. § 112 second paragraph rejection
We affirm the rejection of claims 21-25 under 35 U.S.C. § 112,
second paragraph, because the Appellant offers alternative language which
we take to be an admission to the language the Examiner cites as
problematic. (Answer 2, see also, Appeal Br. 7).
35 U.S.C. § 103(a) Rejection
Each of independent claims 1, 9, and 14 recites, in pertinent part,
determining, based on the distribution of costs, a plurality of
simulated distribution of costs and a plurality of simulated total revenues by
iteratively varying a value of at least one parameter associated with at least
one activity, wherein varying the value of the at least one parameter varies
the activity-based cost of the at least one activity,
(Appeal Br., Claims App. (emphasis added)).
The Examiner found concerning this limitation that:
Jin, in Fig. 6,10043, H 0045-0046,10052
discloses iterative variation of a parameter which
results in H 0054-0055 varying the activity costs
as well as determining a distribution of costs.
(Non-Final Act. 4).
Appellant, however, argues that:
Simply put, various simulations can be executed and analyzed
based on changing the value of the parameters, and the
parameters can be modified manually or by retrieving historical
information. Jin teaches, however, that “[bjusiness process
developers can use custom statistics to create customized
combinations of the standard statistics (e.g., setting cost
Appeal 2014-003911
Application 11/958,182
information or revenue formulas).” 1 [0052] (emphasis added).
In other words, Jin teaches that a developer can use the
statistics generated from the output of the simulations and
manipulate those statistics for use in revenue formulas. This
brief disclosure that statistics may be used in revenue formulas
does not teach the specific recitation in the independent claims
of iteratively varying a parameter to determine a plurality of
simulated total revenues. For example, Jin never discloses if
the revenue formulas derive a plurality of simulated total
revenues.
(Appeal Br. 10).
We agree with Appellant. Appellant’s Specification does not
specifically define the term “iterative”, nor does it utilize the term contrary
to its customary meaning. The ordinary and customary definition of the
word “iterative” is: “involving repetition: . . . b: relating to or being iteration
of an operation or procedure.”2 The claims require “determining, based on
the distribution of costs, a plurality of simulated distribution of costs and a
plurality of simulated total revenues by iteratively varying a value of at least
one parameter associated with at least one activity, by iteratively varying a
value of at least one parameter associated with at least one activity. ” Thus,
the determining step must be part of a process by which an activity
parameter is repeatedly varied which results in the determination of “a
plurality of simulated distribution of costs and a plurality of simulated total
revenues.” While Jin at paragraphs 54 and 55 discloses that varying the
resource Geti3 Approval value results in a corresponding average business
process cycle drop to 1.89 hours (FF. 1), there is no disclosure of repeatedly
varying the resource Geti3 Approval value to effect a determination. The
2 http://www.merriam-webster.com/dictionarv/iterative (last visited
11/16/2016).
Appeal 2014-003911
Application 11/958,182
section cited by the Examiner merely discloses that by changing the Geti3
Approval value, a corresponding change in the average business process
cycle occurs. Thus, we will not sustain the rejection of independent claims
1, 9, and 14.
Since claims 2-5, 8, 10-12, 15-17, and 20-25 depend from claim 1,
9, and 14, and since we cannot sustain the rejection of claims 1, 9, and 14,
the rejection of claims 2-5, 8, 10-12, 15-17, and 20-25 likewise cannot be
sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 21-25 under
35U.S.C. § 112 second paragraph.
We conclude the Examiner did err in rejecting claims 1-5, 8-12,
14-17, and 20-25 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s decision to reject claims 21-25 under
35 U.S.C. § 112 (pre-AIA), second paragraph.
We reverse the Examiner’s decision to reject claims 1-5, 8-12,
14-17, and 20-25 under 35 U.S.C. 103(a) as being unpatentable over
Dismukes in view of Jin in view of Hwang.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED IN PART