Ex Parte Milano

Patent Trial and Appeal Board

Dec 27, 2016

13674231 (P.T.A.B. Dec. 27, 2016)

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.
13/674,231 11/12/2012 Michel S. Milano 20121237US1/CAT 007 PA 1070
107313 7590
Stevens & Showalter, LLP
Box CAT
7019 Corporate Way
Dayton, OH 45459-4238
12/29/2016 EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
PTO@sspatlaw.com
ssllp@speakeasy.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHEL S. MILANO
Appeal 2015-0027221
Application 13/674,231
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1, 3—9, 11—17, and
19—24. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6.
The invention relates generally to the development of business
performance indicator metrics. Spec., para. 1.
1 The Appellants identify CA Inc. as the real party in interest. Appeal Br. 2.
Appeal 2015-002722
Application 13/674,231
Independent claim 1 is illustrative:
1. A method for developing a business performance indicator for
an organization comprising:
presenting a plurality of measured operational values of
the organization to a first member of the organization;
receiving from the first member a selection of a first
operational value from amongst the plurality of measured
operational values;
receiving, by a computer, from the first member of the
organization a first metric formula Ml related to the first
operational value of the organization;
receiving, by the computer, from other members of the
organization feedback information related to the first metric
formula Ml;
receiving, by the computer, from the first member of the
organization a refined metric formula based on the first metric
formula Ml and the feedback information; and
outputting, by the computer, the business performance
indicator calculated by the computer according to the refined
metric formula.
Claims 1, 3—9, 11—17, and 19-24 are rejected under 35 U.S.C. § 101
as reciting ineligible subject matter in the form of an abstract idea.
Claims 1, 3—9, 11—17, and 19-24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gartner (US 2007/0100684 Al, pub. May 3,
2007) and Bagchi (US 2005/0080696 Al, pub. Apr. 14, 2005).
We AFFIRM.
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Application 13/674,231
ANALYSIS
Patentable Subject Matter Under 35 U.S.C. § 101
We are not persuaded by the Appellant’s argument that the claimed
invention is not directed to a fundamental economic practice, as asserted by
the Examiner, because, according to the Appellant, the method “sets out
specific steps and a sequence to develop a business performance indicator
having specific and beneficial characteristics.” Reply Br. 4—5. The
Examiner asserts that the claims are directed to “measuring business
performance (based on feedback from members [of] the business).” Ans. 3.
We would reformulate that assertion slightly, and find that the claims are
directed to “developing a business performance indicator based on
feedback.” Taking independent claim 1 as an example, the preamble recites
explicitly that the claim is directed to “developing a business performance
indicator,” and all of the other claim limitations are to realize the goal of
“developing a business performance indicator,” with the main possible
nuance of that general goal that needs to be acknowledged explicitly is that
the development is based on feedback. Paragraph [0001] of the
Specification also supports our finding, reciting expressly that “[t]he present
disclosure relates to . . . developing business performance indicator metrics,”
and the background section of the Specification delves into the benefits of
defining business performance indicators. Spec. ^fl[ 2—3.
Going back to the Appellant’s assertion, we are unpersuaded that the
“specific steps and . . . sequence” identified by certain claim limitations take
what the claim is directed to out of the realm of “developing a business
performance indicator based on feedback.” The Appellant’s proffered
variations are, essentially, determining what to measure, however, the
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Application 13/674,231
performance indicator, by its very nature, must measure “something” using
some “formula,” and without more specifics, we are unpersuaded that
measuring each of the “somethings” using some “formula” is anything more
than just a routine and widespread practice performed in every
implementation of “developing a business performance indicator based on
feedback.”
We are unpersuaded by the Appellant’s argument that the Examiner’s
finding, that the claims recite a fundamental economic practice, was done
without evidence or reasoning and is, thus, “unsupported.” The Examiner
points out that measuring business performance, and, thus, also developing
an indicator of business performance, “has long been practiced in business
and industry.” Ans. 3^4. Perhaps if the alleged fundamental economic
practice was one that could not be readily ascertained as well-known,
routine, and/or widespread, it would be reasonable to expect some objective
evidence presented by the Examiner. Such is not the case here. We are
unpersuaded that anyone of ordinary skill familiar with any business would
have recognized “developing a business performance indicator based on
feedback” as needing further proof to be accepted as a reasonable
observation. Accordingly, we are unpersuaded that knowing that businesses
measure themselves, and work to select appropriate measurements, requires
consultation with “multiple textbooks and publications,” as asserted by the
Appellant. Reply Br. 5.
We are also not persuaded by Appellant’s argument that the claims
are not a method of organizing human activity, because they are instead
directed to “computer activities,” and, thus, are “more than organizing
human activities.” Reply Br. 5—6.
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Application 13/674,231
Independent claim 1 recites a process that is essentially a business
meeting, or interpersonal collaboration, undertaken in a particular order
using a generic computer: a first person selects something of importance to
a business, such as a parameter from an agenda, and presents a proposed
way to measure that parameter, which is communicated to a group; a second
person provides feedback, and the first person revises the proposal. We
discern that this is a typical structure for almost any meeting, and especially
of a negotiation session. The claims do not completely remove humans from
a meeting and place the entire method into the care of a computer, but
merely supplement a normal human activity with assistance from a computer
as a communication tool. The steps of the method that involve a computer
do no more than receive and output information, which makes the claim
nothing more than a method of organizing human activity.
The Appellant urges that the claimed method is an improvement
which will “allow an organization to iteratively and collaboratively
determine what to measure and how, specifically, to measure it.” Reply Br.
6. We are unpersuaded, however, that the process of collaborating to make
decisions about what and how to measure in a business is not already in
long-time use, and the method merely specifies a narrow order of steps as
described above, using a computer to affect communications. In other
words, we do not see any “improvement,” where all the claims recite are
groups of people selecting what to discuss and have a back-and-forth
discussion as recited, with the mere use of computers for voice
communications and messaging, along with other, more refined approaches.
The Appellant also argues the claims are not merely abstract ideas
because they do not attempt to “preempt all methods of measuring business
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performance.” Reply Br. 7. If that were the case, the Appellant’s position
may be more convincing. That, however, is not what is set forth in the
claims. The Appellant is attempting to preempt “measuring business
performance,” or “developing an indicator of business performance,”
involving “receiving feedback from other members of [an] organization
about. . . one specific metric formula,” as recited in independent claim 1.
Id. We are unclear as to how such a limitation does not effectively preempt
all of “developing an indicator of business performance,” in that we are
unclear as to how one would “develop an indicator of business performance”
without “receiving feedback from other members of [an] organization about
. . . one specific metric formula.”
For these reasons, we sustain the rejection of claims 1, 3—9, 11—17,
and 19-24 as reciting ineligible subject matter under 35U.S.C. § 101.
Claims 1, 3, 8, 9, 11, 16, 17, 19, and 24 under 35 U.S.C. f 103(a)
The Appellant argues independent claims 1, 9, and 17 only by
reference to arguments directed to claim 1. Appeal Br. 17, 18. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting independent claim 1, the Examiner finds that Gartner
discloses “a first metric formula Ml related to the first operational value of
the organization.” Final Act. 5—6. The Examiner, however, does not find in
Gartner a disclosure of selecting a “first operational value” from among a
plurality of presented values, finding the presentation of and selection from
operational values in Bagchi. Id.
We are not persuaded by the Appellant’s argument that Bagchi fails to
disclose operational values because the significance of the items presented
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and selected from in Bagchi are “not the same as, or analogous to” the
claimed values. Appeal Br. 9-11; see also Reply Br. 11. The Examiner
relies on Bagchi only to show how a value upon which a formula is based is
identified by selecting it from a plurality of presented values, rather than
being dictated by “management.” Gartner 122. Thus, the Examiner finds,
and the Appellant does not dispute, that a first operational value is disclosed
in Gartner, rather than Bagchi. Accordingly, the Appellant’s arguments here
are misplaced.
We are unpersuaded by the Appellant’s argument that modifying
Gartner would render it inoperable, because, according to the Appellant,
Gartner makes predictions “ahead of time,” whereas the claimed invention
uses values that are already measured. Appeal Br. 11—12; see also Reply Br.
10—11. Gartner is directed to “evaluating sales opportunities.” Gartner 11.
Gartner discloses a method to arrive at an evaluation involving management
directives, and a supervisor applying subjective reasoning, with input from
sales representative, to arrive at a precise measurement for use with sales
opportunities. Id. 27, 29. The claimed invention is directed to
“developing a business performance indicator.” The body of the claim
recites using “measured operational values,” which Gartner also takes into
consideration in the form of already measured operational values such as
gross revenue, margin, and volume. Id. 130. Using the claimed values, that
Gartner discloses it uses, would, thus, not render Gartner inoperable.
For these reasons, we sustain the rejection of independent claims 1, 9,
and 17. We also sustain the rejection of dependent claims 3, 8, 11, 16, 19,
and 24, rejected along with claims 1, 9, and 17, because no substantive
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argument is advanced for these dependent claims. See Appeal Br. 12, 17,
18.
Claims 4, 6, 12, 14, 20, and 22
Dependent claims 4 and 6 recite:
4. The method of claim 1, further comprising:
receiving from the first member a second metric formula
M2 based on the feedback information related to the first metric
formula Ml received from the other members of the
organization; and
disseminating the second metric formula M2 to the other
members of the organization.
6. The method of claim 5, further comprising:
receiving further feedback information from the other
members of the organization regarding the third metric formula
M3.
Claims 12 and 20 recite language substantially equivalent to claim 4,
and claims 14 and 22 are substantially equivalent to claim 6.
These claims recite steps that essentially modify the initial method by
repeating portions of it with and adding refinements to the metric being
developed, in an iterative process.
The Appellant argues dependent claims 4, 12, and 20 together as a
group, as well as the group of claims 6, 14, and 22. See Appeal Br. 17—19.
We select each of claims 4 and 6 as representative of each group. See 37
C.F.R. § 41.37(c)(l)(iv).
The Appellant argues that the combination of Gartner and Bagchi do
not disclose distributing the metric of claim 1, and receiving additional
feedback that further refines the metric, leaving to additional versions of the
metric. Appeal Br. 13—15.
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We are unpersuaded because merely repeating a process of presenting
a proposal, receiving feedback about the proposal, and modifying the
proposal, in an iterative fashion, does no more than repeat similar steps. See
In re Harza, 27 4 F.2d 669, 124 USPQ 378 (CCPA I960)) (mere duplication
of parts has no patentable significance unless a new and unexpected result is
produced). “[Wjhile an analysis of obviousness always depends on evidence
that supports the required Graham factual findings, it also may include
recourse to logic, judgment, and common sense available to the person of
ordinary skill that do not necessarily require explication in a reference or
expert opinion.” Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009). Claims 4—6 essentially recite repeating steps taught
by Gartner “a predetermined number of times,” which we discern is one of
the “inferences and creative steps that a person of ordinary skill in the art
would employ” {Id. at 1330-31), especially when all we are talking about is
repetition.
For these reasons, we sustain the rejection of claims 4 and 6, as well
as claims 10, 14, 20, and 22 that recite similar claim language for which no
separate argument is advanced. See Appeal Br. 17—19.
Claims 5, 13, and 21
5. The method of claim 4, further comprising:
receiving from the first member identification of a
business constant comprising a value; and
receiving from the first member a third metric formula M3
whose value is based on the second metric formula M2 and the
business constant value.
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The Appellant argues claims 5, 13, and 21 together as a group.
Appeal Br. 17—19. We select claim 5 as representative. See 37 C.F.R.
§41.37(c)(l)(iv).
The Appellant argues:
claim 5 does not merely recite existence of a third formula but
one that explicitly has a lineage that makes it related to metric
Ml. The distinct formula elements (e.g., W3) of Gartner that are
identified by the Examiner are, independent of, unrelated to, each
other and therefore do not teach or suggest the features of claim
5.
Appeal Br. 14. We are not persuaded by the Appellant’s argument because
it is essentially repeating the arguments directed to claims 4 and 6, above.
There, we find that it would have been a well-known modification to merely
repeat steps, as the Appellant essentially argues claim 5 also does, by being
“related to metric Ml” by lineage because of the repeating of receiving
feedback and modifying the proposed metric.
For these reasons, we sustain the rejection of claims 5, 13, and 21.
Claims 7, 15, and 23
Dependent claim 7 recites:
7. The method of claim 5, further comprising:
receiving from the first member an identification of a
measurable live operational value of the organization that is
related to the business constant; and
defining the refined metric formula by replacing the
business constant value in the third metric formula M3 with the
measurable live operational value.
The claim, thus, recites that “live” data is substituted into a formula in
place of a constant.
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The Appellant argues claims 7, 15, and 23 together (see Appeal Br.
17—19), so we select claim 7 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We are not persuaded by the Appellant’s argument that Gartner does
not replace constants with a “measurable live operational value.” Appeal Br.
15—17. Gartner discloses creating a “master formula” that corresponds to
the developed metric of the claim, and further discloses “the sales
representatives select only the elements of an opportunity; they have no
direct mechanism to affect the rating of an individual element rating or
weighting factor for an element category.” Gartner 129. The sales
representatives, thus, substitute “live” data, such as an element of an
opportunity into the formula. Although the claim language distinguishes a
“constant,” and a sales element may actually be a “variable” in the formula,
we are unpersuaded that the ordinary artisan would not have recognized that
the entire point of a formula, beyond its philosophical use, is to substitute
variables and constants with actual data for the result of the formula
calculation. See KSRInt'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In
making the obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”)
For these reasons, we sustain the rejection of claims 7, 15, and 23.
DECISION
We AFFIRM the rejection under 35 U.S.C. § 101 of claims 1, 3—9,
11-17, and 19-24.
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We AFFIRM the rejection under 35 U.S.C. § 103(a) of claims 1, 3—9,
11-17, and 19-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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