Ex Parte Peltz et al

Patent Trial and Appeal Board

Sep 23, 2016

12870006 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/870,006 08/27/2010 CHRISTOPHER PELTZ
56436 7590 09/27/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82263185 8986
EXAMINER
SHANKER, TIJLIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER PELTZ, SUSAN SPENCE,
ROGER J. STEFFEN, and DAVID FARRINGTON
Appeal2014-005862
Application 12/870,006
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 (2002) of the Final
Rejection of claims 2, 3, 6, 7, 9-17, and 20-24. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
Appeal2014-005862
Application 12/870,006
THE INVENTION
Claim 20 is illustrative, and is reproduced below with bracketed
matter added:
20. A method comprising:
[l] accessing, by a system having a processor, an information
repository containing information regarding plural engagements,
wherein the information regarding the plural engagements
specifies outcomes of the plural engagements and roles of
individuals involved in the plural engagements; and
[2] in response to a query seeking to locate personnel with
particular experience for a particular engagement,
[3] identifying, by the system, a subset of the plural
engagements that are similar to the particular engagement based
on comparison of characteristics of the particular engagement to
characteristics of the plural engagements;
[ 4] identifying, by the system based on the information
regarding the engagements in the identified subset, at least one
of the individuals, wherein the identifying of the at least one
individual considers the roles of the individuals in the outcomes
of the engagements in the identified subset, wherein the
identifying of the at least one individual comprises identifying
plural individuals, wherein the plural individuals are from
respective engagements in the identified subset; and
[5] ranking the identified plural individuals, the ranking
comprising ranking based on similarity of the particular
engagement to respective ones of the engagements in the
identified subset.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Gorur
Creel
US 2003/0078821 Al
US 7,366,680 Bl
2
Apr. 24, 2003
Apr. 29, 2008
Appeal2014-005862
Application 12/870,006
Kuhlke US 2009/0012833 Al
The following rejections are before us for review:
Jan. 8,2009
1. Claim 9 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 2, 3, 6, 7, 9, 11-16, and 20-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gorur and Creel.
3. Claims 10 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gorur, Creel, and Kuhlke.
ISSUES
Did the Examiner err in rejecting claim 9 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement?
Did the Examiner err in rejecting claims 2, 3, 6, 7, 9, 11-16, and 20-
24 under 35 U.S.C. § 103(a) as being unpatentable over Gorur and Creel?
Did the Examiner err in rejecting claims 10 and 17 under 35 U.S.C. §
103(a) as being unpatentable over Gorur, Creel, and Kuhlke?
ANALYSIS
The rejection of claim 9 under 35 U.S.C. § 112,firstparagraph, as failing to
comply with the written description requirement.
The Examiner finds that the Specification does not provide adequate
written description support for "applying a role inferencing technique to
infer a role of a particular individual based on activities of the particular
individual" as recited in claim 9. According to the Examiner, "Appellant's
specification fails to demonstrate possession of species sufficient to support
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Application 12/870,006
such a claim to the functionally-defined genus" (Ans. 4) (citing Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010)).
The Appellants argue that "the language of claim 9 has not been
amended from original claim 9" (App. Br. 5) and that the example given in
paragraph 18 provides sufficient support for claim 9. Appellants distinguish
Ariad on the grounds that "the invention of claim 9 is not related to the
chemical arts, but to the more predictable computer and software arts"
(Reply Br. 2).
We agree with the Appellants. We find that, in this case, in addition
to paragraph 18, the inclusion of the rejected limitation in claim 9 as
originally filed constitutes its own written description support. Paragraph 18
of the Specification discloses that "a Java developer can be inferred based on
a number of form discussion postings made by the individual containing
Java and related keywords." A person of ordinary skill in the art would
understand this to mean that the software infers roles from keywords (e.g.,
"Java"), and would further understand that the same technique could be used
for various combinations (species) of roles and keywords.
Accordingly, the rejection of claim 9 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
not sustained.
The rejection of claims 2, 3, 6, 7, 9, 11-16, and 20--24 under 35 U.S. C.
§ 103(a) as being unpatentable over Gorur and Creel.
The rejection of claims 10 and 17 under 35 U.S. C. § 103 (a) as being
unpatentable over Gorur, Creel, and Kuhlke.
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Application 12/870,006
We will treat the rejections together because, with respect to the
rejection of claims 10 and 17, the Appellants rely only on the arguments
challenging the rejection of claims 2, 3, 6, 7, 9, 11-16, and 20-24. See App.
Br. 11. With respect to the rejection of claims 2, 3, 6, 7, 9, 11-16, and 20-
24, the Appellants argued the claims as a group (App. Br. 7). We select
claim 20 as the representative claim for this group, and the remaining claims
2, 3, 6, 7, 9, 11-16, and 21-24 stand or fall with claim 20. 37 C.F.R. §
41.37(c)(l)(vii) (2007). We note that there are separate sections in the Brief
with headings "Claims 12-16, 21, 22." and "Claim 23." (App Br. 10 and
11) but the arguments with respect to them rely on the arguments
challenging the rejection of claims 2, 3, 6, 7, 9, 11, 20, and 24 as set forth on
pages 7-10 of the Appeal Brief.
The Examiner's position is that Gorur discloses all the limitations of
claim 20 but "does not describe the concept of having a subset from which
the individuals are subsequently filtered" (Ans. 6), and "[t]his concept of
having a subset is also what is not described in the ranking step and the
identification of individuals step" in Gorur (Final Act. 10). The Examiner
finds these aspects in Creel at col. 4, lines 4--30 (Ans. 6). According to the
Examiner, "[i]t would have been obvious to one having ordinary skill in the
art, at the time of the invention, to modify Gorur, which describes
identifying individuals based on their role in the outcome of previous
activities, to incorporate the filtering concept as taught by Creel" (Final Act.
11).
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Application 12/870,006
The Appellants argue that the prior art does not disclose limitations
[3] and [5] of claim 20 (App. Br. 7-11; Reply Br. 4--7). The Appellants
contend:
There is no indication or hint anywhere in Gorur that ranking
identified plural individuals is based on similarity of the
particular engagement to respective ones of the engagements in
the identified subset of engagements, where this identified
subset of engagements include engagements that are similar to
the particular engagement based on comparison of
characteristics of the particular engagement to characteristics of
the plural engagement.
(App. Br. 9; Reply Br. 6). The Appellants also argue that "there is no
mention whatsoever in Creel regarding ranking identified individuals in the
manner recited in claim 20" (App. Br. 10; Reply Br. 7).
The Appellants' arguments fail to address the Examiner's position.
The Examiner determined that it would have been obvious to one of
ordinary skill in the art to modify the searching and ranking :thnctions
disclosed in Gorur to include the identification of engagements that are
similar to a particular engagement as disclosed in Creel. The Examiner
makes the case that Gorur is disclosing a ranking, albeit not of "the
particular engagement to respective ones of the engagements in the
identified subset" as claimed. See Final Rej. 9. But the Examiner relies on
Creel "to identify, and thus filter, a subset of activities that are similar to a
particular activity in order to find personnel from within the filtered
activities [Col. 4, lines 4--30]." Final Rej. 10. Thus, the Examiner is taking
the position that the combination would lead one of ordinary skill to the
claimed subject matter. The Examiner did not find that-the ranking as
claimed is expressly disclosed in either reference. We find that that in
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Application 12/870,006
pointing to the disclosure of ranking in Gorur and the disclosure of similarity
between new projects and historical projects in Creel, the Examiner provided
adequate evidence to support a legal conclusion of obviousness over the
cited prior art combination for the claimed subject matter including
limitations [3] and [ 5].
In effect, the Appellants address the teachings of the references
individually, failing to address the Examiner's reasoning that one of ordinary
skill in the art would have been led by the combination of the references to
the claimed method. Furthermore, the mere existence of differences
between the prior art and the claim does not necessarily establish
nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). Consistent
with the Examiner's position, the question is "whether the difference
between the prior art and the subject matter in question 'is a difference
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art."' Dann, 425 U.S. at 228-29 (citation omitted) (finding
system for automatic record keeping of bank checks and deposits obvious in
view of nature of extensive use of data processing systems in banking
industry and "closely analogous" patent for an automatic data processing
system used in a large business organization for keeping and updating
system transaction files for each department of the organization). See also
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("As our precedents
make clear, however, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.")
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Application 12/870,006
For the foregoing reasons, the Appellants' argument as to error
in the rejection is unpersuasive. Accordingly, the rejection of claim 20 under
35 U.S.C. § 103(a) as being unpatentable over Gorur and Creel is sustained.
Because the arguments with respect to independent claims 12 and 23
and dependent claims 2, 3, 6, 7, 9-17, 21, 22, and 24 (App. Br. 10, 11) are
the same, we sustain the rejection of those claims for the same reasons.
CONCLUSIONS
The rejection of claim 9 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement is not sustained.
The rejection of claims 2, 3, 6, 7, 9, 11-16, and 20-24 under 35
U.S.C. § 103(a) as being unpatentable over Gorur and Creel is sustained.
The rejection of claims 10 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Gorur, Creel, and Kuhlke is sustained.
DECISION
The decision of the Examiner to reject claims 2, 3, 6, 7, 9-17, and 20-
24 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).
AFFIRMED
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