Ex Parte O

Patent Trial and Appeal Board

Apr 25, 2016

13345037 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/345,037 01/06/2012 Paul John O'Keeffe
79340 7590 04/27/2016
MANNA VA & KANG, P,C
3201 Jermantown Road
SUITE 525
FAIRFAX, VA 22030
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
D 11-040-02418-00-US 8765
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
ASHOKM@MANNA V AKANG.COM
docketing@mannavakang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL JOHN O'KEEFFE
Appeal2014-000346
Application 13/345,037
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
STATEMENT OF THE DECISION
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed June
25, 2013) and Reply Brief ("Reply Br.," filed Sept. 23, 2013), the
Examiner's Answer ("Ans.," mailed July 22, 2013), and the Final Office
Action ("Final Action," mailed Jan. 30, 2013).
2 Appellant identifies the real party in interest as Accenture Global Services
Limited (Appeal Br. 3).
Appeal2014-000346
Application 13/345,037
CLAIMED fNVENTION
The claimed invention relates to methods, systems, and computer
program products that measure readiness to implement business changes
needed for project implementation (Spec. i-f 15). Claims 1, 12, and 20 are the
independent claims on appeal. Claim 1, reproduced below, is illustrative of
the subject matter on appeal (Appeal Br. 25, Claims App. (with bracketed
matter added)).
1. A change management system comprising:
[a] a change management data capture module to capture
metrics associated with phases of a project and associated
with a change management model;
[b] a prediction engine, executed by a processor, to generate
predictions indicating a level of readiness from a plurality
of levels of readiness including intermediate levels of
readiness to move to a next phase of the project based on
the model and to indicate actions for achieving goals of the
project based on the predictions; and
[ c] a reporting module to provide via a user interface an
indication of the predictions, the actions and a current
change management state of the project.
REJECTIONS
1. Claims 1, 12, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Christiansen (US 2008/0255912 Al, pub. Oct. 16,
2008) and Davies (US 2003/0033191 Al, pub. Feb. 13, 2003).
2. Claims 2 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christiansen, Davies, and Block (US 2003/0172013 Al,
pub. Sept. 11, 2003).
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Appeal2014-000346
Application 13/345,037
3. Claims 3-5, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Christiansen, Davies, and Norelli (US
2011/0196712 Al, pub. Aug. 11, 2011).
4. Claim 6 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christiansen, Davies, and Hudson (US 6,964,044 B 1, iss.
Nov. 8, 2005).
5. Claim 7 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christiansen, Davies, and Hirata (US 2008/0221950 Al,
pub. Sept. 11, 2008).
6. Claims 8 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christiansen, Davies, and Kannan (US 2009/0222313 Al,
pub. Sept. 3, 2009).
7. Claims 9 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christiansen, Davies, and Dawkes (US 2007 /0094059 A 1,
pub. Apr. 26, 2007).
8. Claims 10 and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Christiansen, Davies, and Borr (US 2009/0138340
Al, pub. May 28, 2009).
9. Claims 11 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Christiansen, Davies, and Frahm (US 2007 /0288397
Al, pub. Dec. 13, 2007).
ANALYSIS
\Ve are persuaded by Appellant's arguments and do not sustain the
Examiner's rejections of claims 1-20.
Independent claim 1 requires, inter alia:
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Appeal2014-000346
Application 13/345,037
a prediction engine, executed by a processor, to generate
predictions indicating a level of readiness from a plurality of
levels of readiness including intermediate levels of readiness to
move to a next phase of the project based on the model and to
indicate actions for achieving goals of the project based on the
predictions
(Appeal Br. 25, Claims App. (hereinafter "limitation [b ]")).
Appellant disputes the Examiner's finding that Christiansen discloses
limitation [b] of claim 1. In particular, Appellant argues that "[a] human
having the authority to decide whether to proceed to the next stage is not a
prediction engine executed by a processor" (Appeal Br. 11 ).
With respect to limitation [b ], the Examiner finds that processors 202
and 204 of Christiansen correspond to the claimed "prediction engine,
executed by a processor" (Ans. 3--4), and that the "formal reviews"
described in paragraph 58 (indicated as gates 720 in Figure 4) correspond to
the claimed "predictions" (id.). Paragraph 5 8 discloses that "formal reviews
... give the programJproject the authority to proceed to the next phase;" but
does not disclose that processors 202 and 204 are executing the formal
reviews. Although paragraphs 312-321 of Christiansen describe that the
authority to proceed to the next phase is received from a client of the IT /IS
provider, the relied-upon paragraphs in Christiansen do not disclose and the
Examiner has not shown that the authority to proceed is generated by a
processor.
In the Answer, the Examiner further finds that "[t]he plan is
essentially a prediction regarding the course of action to take to change the
business" (Ans. 26), and "the BCL framework is implemented with a data
processing system, so a processor is used to make these predictions" (id. at
27). However, the entire BCL framework itself cannot be a prediction
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Appeal2014-000346
Application 13/345,037
"indicating a level of readiness ... to move to a next phase of the project
based on the model" because the BCL framework divides the business
transformation into phases (see Christiansen i-f 51 ). Thus, Christiansen does
not support the finding that the entire BCL framework is a prediction
indicating readiness to move to a next phase within the BCL framework.
Therefore, we agree with Appellant that the Examiner has not shown by a
preponderance of the evidence that Christiansen discloses limitation [b].
Accordingly, because a prima facie case of obviousness has not been
established in the first instance, we do not sustain the rejection of
independent claim 1 as obvious over Christiansen and Davies. For the same
reasons, we do not sustain the rejection of claims 2-11 dependent thereon.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
Independent claims 12 and 20 recite similar limitations and the
Examiner's rejection of claims 12 and 20 as obvious over Christiansen and
Davies relies on the same erroneous finding discussed with regards to claim
1. Accordingly, we do not sustain the rejection of claims 12 and 20, and the
rejections of claims 13-19, which depend from claim 12 and are similarly
nonobvious.
DECISION
The Examiner's decision to reject claims 1-20 is reversed.
REVERSED
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