Ex Parte Santos et al

Patent Trial and Appeal Board

Feb 27, 2014

11590110 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CIPRIANO A. SANTOS, ANDREI FUCIEC, DIRK M. BEYER,
JOACHIM RESCH, ERNESTO BRAU, and SHAILENDRA JAIN
___________

Appeal 2011-012327
Application 11/590,110
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/590,110

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STATEMENT OF THE CASE
Cipriano A. Santos et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1, 3-8, 11-19, and 21-24. We
have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter new grounds of rejection pursuant
to 37 C.F.R. § 41.50(b). 1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An enterprise resource planning method
comprising:
receiving, by a tool executing in a system
having a processor, parameters relating to: a target
enterprise objective associated with an enterprise
based on forecast activity of the enterprise; cost of
an internal workforce of the enterprise; a capacity
of the internal workforce; and a cost of an external
workforce; and
calculating, by the tool, an amount of the
internal workforce and an amount of the external
workforce to be assigned based on the received
parameters relating to the target enterprise
objective, cost of the internal workforce, the

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed May 4, 2011) and Reply Brief (“Reply Br.,” filed Aug. 8, 2011), and
the Examiner’s Answer (“Ans.,” mailed Jun. 9, 2011).

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capacity of the internal workforce, and the cost of
the external workforce, wherein calculating the
amounts of the internal workforce and the external
workforce uses a model that takes into account the
received parameters and that enhances utilization
of the internal workforce and a gross margin of the
enterprise.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
KINTNER
ENGELKING

US 6,732,079 B1
US 2005/0049911 A1

May 4, 2004
Mar 3, 2005

The Examiner took official notice that “it was old and well-known in
the art of workforce management to outsource enterprise functions
that cannot be reasonably completed internally.” Ans. 4 (“Official
Notice”).

The following rejections are before us for review:
1. Claims 1, 4-8, 11-17, 19, and 21-24 are rejected under 35
U.S.C. § 102(b) as being anticipated by Engelking.
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Engelking and Kintner.
3. Claim 18 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Engelking and Official Notice.

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ISSUE
The issue is whether Engelking describes calculating an amount of
internal workforce and an amount of external workforce using a model that
enhances utilization of the internal workforce.

FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
The rejection of claims 1, 4-8, 11-17, 19, and 21-24 under § 102(b) as being
anticipated by Engelking
Claims 1, 4-8, 11, 12, 14-17, 19, 21, and 23
The Appellants argue claims 1, 4-8, 11, 12, 14-17, 19, 21, and 23 as a
group. We select claim 1 as the representative claim for this group, and the
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants and the Examiner dispute whether Engelking describes
calculating an amount of internal workforce and an amount of external
workforce using a model that enhances utilization of the internal workforce.
App. Br. 7-9, Reply Br. 1-3, Ans. 14-16.
We find that Engelking describes this limitation. Engelking describes
a transformation opportunity indicator that identifies, through an analysis
(i.e., a model), a business organization transformation opportunity scenario.
¶ 44. A Business organization transformation opportunity scenario includes
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a mixed outsourcing/internal transformation scenario. Id. “The mixed
outsourcing/internal transformation scenario model may include any
combination of retained to outsource business organization human resource
function . . . , as well as may include suggestions for streamlining and/or
restructuring retained human resource functions thereby allowing increased
human resource performance and/or efficiency.” ¶ 45. Engelking describes
that the transformation scenario can be presented as a solution summary.
The solution summary depicts the determined outsourced and retained (i.e.,
internal) FTEs (full time equivalents). ¶¶ 186-187, 189; Fig. 12A(1)-(2).
Accordingly, we are not persuaded that Engelking fails to anticipate
claims 1, 4-8, 11, 12, 14-17, 19, 21, and 23. Since our rationale differs from
that of the Examiner, we will designate our affirmance as a new ground of
rejection.
Claim 13
Dependent claim 13 recites that the model takes into account “a
parameter to indicate that the excess internal workforce is to be kept idle if
allocation is not needed.” The Examiner relies upon paragraph 64 of
Engelking as “implying” this limitation. Ans. 8. We agree with the
Appellants (App. Br. 10, Reply Br. 3-5) that Engelking’s paragraph 64 fails
to teach this limitation.
Accordingly, the rejection of claim 13 under 35 U.S.C. § 102(b) as
being anticipated by Engelking is reversed.
Claims 22 and 24
Dependent claims 22 and 24 both recite “wherein the model
maximizes the utilization of the internal workforce.” The Examiner argues
that “maximizing” means “improving” or “enhancing,” and, therefore, the
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limitation is met because Engelking improves the allocation of work in order
to realize improved cost benefits. Ans. 16. We agree with the Appellants
(Reply Br. 5) that “maximizing” is not the same as “improving” or
“enhancing” and that the Examiner’s interpretation of “maximizing” is
unreasonable. Accordingly, the rejection of claims 22 and 24 under 35
U.S.C. § 102(b) as being anticipated by Engelking is reversed.

The rejection of claim 3 under § 103(a) as being unpatentable over
Engelking and Kintner
To contest the rejection of claim 3, Appellants rely upon their
argument made to contest the rejection of claim 1. App. Br. 12. For the
same reasons as discussed above, we find Appellants’ argument
unpersuasive as to the rejection of claim 3. Accordingly, the rejection of
claim 3 under 35 U.S.C. § 103(a) as being unpatentable by Engelking and
Kintner is affirmed.

The rejection of claim 18 under § 103(a) as being unpatentable over
Engelking and Official Notice
Dependent claim 18 recites that solving the workforce allocation
model comprises “allocating a portion of the target revenue to an external
vendor in response to determining that the workforce gap cannot be filled
with the internal workforce.” The Examiner admits that Engelking does not
teach this limitation, and, therefore, takes Official Notice that “it was old and
well-known in the art of workforce management to outsource enterprise
functions that cannot be reasonably completed internally” to teach the
limitation. Ans. 13. We agree with Appellants (App. Br. 13, Reply Br. 5-6)
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that Official Notice does not teach the limitation of allocating revenue when
solving a workforce allocation model.
Accordingly, the rejection of claim 13 under 35 U.S.C. § 103(a) as
being unpatentable over Engelking and Official Notice is reversed.

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
on claim 15 under 35 U.S.C. § 101. We find that claim 15 is directed to
patent ineligible subject matter.
Claim 15 recites:
15. A method comprising:
providing a workforce allocation model that
takes into account target revenue information, cost
information of an internal workforce of an
enterprise, and cost information of an external
workforce; and
solving, by a system having a processor, the
workforce allocation model that enhances
profitability of the enterprise and that enhances
utilization of the internal workforce to determine
an amount of the internal workforce and an amount
of the external workforce to assign.
We find that claim 15 recites patent ineligible subject matter because
it encompasses an abstract idea. Our analysis begins with the statue. Claim
15 is drawn nominally to a method (i.e., a process), which falls into one of
the four categories of subject matter recited in 35 U.S.C. § 101. However,
there are “three specific exceptions to § 101’s broad [patent-eligibility]
principles: ‘laws of nature, physical phenomena, and abstract ideas.”’ Bilski
v. Kappos, 130 S. Ct. 3218, 3225 (2010) (quoting Diamond v. Chakrabarty,
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447 U.S. 303, 309 (1980)). We find that claim 15 falls into the abstract idea
exception because it encompasses the abstract idea of determining an
amount of internal workforce and an amount of external workforce to
enhance profitability and utilization of the internal workforce of an
enterprise taking into account target revenue information, cost information
of an internal workforce of an enterprise, and cost information of an external
workforce. We find claim 15 recites no meaningful limitations that limit the
claim to a particular practical application. “[T]he prohibition against
patenting abstract ideas ‘cannot be circumvented by attempting to limit the
use of the [invention] to a particular technological environment’ or adding
‘insignificant post solution activity.’” Bilski, 130 S. Ct. at 3230 (quoting
Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)). Although claim 15 does
recite a processor, we find this recitation does not meaningfully limit claim
15 to a particular practical application of the abstract idea.
Accordingly, we reject claim 15 under 35 U.S.C. § 101 as
encompassing patent ineligible subject matter. Although, we have exercised
our discretion by entering a new ground of rejection on claim 15, no
inference should be drawn from our failure to exercise that discretion with
respect to the remaining claims. We leave it up to the Examiner to evaluate
the remainder of the claims in light of the new grounds of rejection above.

DECISION
The decision of the Examiner to reject claims 1, 3-8, 11, 12, 14-17,
19, 21, and 23 is affirmed and to reject claims 13, 18, 22, and 24 is reversed.
We enter a new ground of rejection on claim 15.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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-IN-PART; 37 C.F.R. § 41.50(b)

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