Ex Parte SinghalDownload PDFPatent Trial and Appeal BoardDec 20, 201611605041 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 11/605,041 11/28/2006 Tara Chand Singhal 11195.55F 4299 103550 7590 Tara Chand Sighal P.O. Box 5075 Torrance, CA 90510 12/21/2016 EXAMINER GILKEY, CARRIE STRODER ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 12/21/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TARA CHAND SINGHAL Appeal 2014-0075771 Application 11/605,0412 Technology Center 3600 Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 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). We AFFIRM. 1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed March 5, 2014), Reply Brief (“Reply Br.,” filed June 22, 2014), the Examiner’s Answer (“Ans.,” mailed April 22, 2014), and Final Office Action (“Final Act.,” mailed October 7, 2013). 2 Appellant identifies Tara Chand Singhal as the real party in interest (Appeal Br. 4). Appeal 2014-007577 Application 11/605,041 CLAIMED INVENTION Appellant’s claimed invention relates generally “to a method and apparatus for an automated determination of compensation of executives of publicly traded companies based on objective internal and external factors” (Spec. 1,11. 22-24). Claims 1, 11, 14, and 17 are the independent claims on appeal. Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal: 1. A system of executive compensation in a public company comprising: [a] a computing system operable with an executive-group total compensation function that computes an executive-group total compensation for only the members of an executive-group, where the executive-group is identified for determining the total compensation for executive-group members as a group and where the executive-group includes at least a chief executive officer of the public company; [b] the total compensation function computes the executive-group total compensation as an output from inputs to the total compensation function of (i) a set of objective company performance factors of revenue, profit and market valuation and (ii) a set of executive-group total compensation policy parameters, by mathematical operation of the set of policy parameters with the set of the objective company performance factors. REJECTIONS Claims 11—13 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1—6, 8—9, and 17—20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Loya (US 2002/0035506 Al, pub. Mar. 21, 2002) and Tremaine (US 5,819,231, iss. Oct. 6, 1998). 2 Appeal 2014-007577 Application 11/605,041 Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Loya, Tremaine, and Official Notice. Claims 10-16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Loya, Tremaine, and Smisek (US 2002/0029177 Al, pub. Mar. 7, 2002). ANALYSIS Written Description Independent claim 11 and dependent claims 12 and 13 In rejecting claims 11—13 under 35 U.S.C. § 112, first paragraph, the Examiner finds that there is no written description support in the Specification for “where the executive-group has been pre-identified and where the set of compensation policy parameters have been pre-approved by shareholders,” as recited by independent claim 11 (see Final Act. 2—3; see also Ans. 16—22). Appellant maintains that the rejection is improper and that support for the identified claim limitation is found in the Specification at page 11, lines 11—20; page 11, line 32 through page 12, line 6; page 12, lines 23—26; page 15, lines 1—32; as well as Figures 1 and 2 (see Appeal Br. 16—19; see also Reply Br. 15—19). Whether a specification complies with the written description requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed, need not literally describe the claimed subject matter (i.e., using the same terms or in haec verba) in order to satisfy the written 3 Appeal 2014-007577 Application 11/605,041 description requirement. But the Specification must convey with reasonable clarity to those skilled in the art that, as of the filing date, Appellant was in possession of the claimed invention. See id. Here, as Appellant points out, the Specification discloses “an approval function that enables some of the compensation policy parameters to be approved at an annual shareholder meeting” (Spec. 11,11. 18—20). Appellant also identifies that the Specification discloses “[t]he approval function enables the compensation policy parameters to be placed before an annual shareholder meeting for approval by the shareholders. The executive-group function determines size and members of the executive-group of the company for the purpose of determining the compensation of the group as a whole” {id. at 12,11. 23—26). Thus, we agree with Appellant that a person of ordinary skill in the art would reasonably understand from the Specification (including the drawings), as originally filed, that the Specification provides written description support for the claim element “where the executive- group has been pre-identified and where the set of compensation policy parameters have been pre-approved by shareholders,” as recited by independent claim 11, at the time the application was filed. Therefore, we do not sustain the Examiner’s rejection of claims 11— 13, under 35U.S.C. § 112, first paragraph. Obviousness Independent claims 1, 11, 14, and 17, and dependent claims 2—10, 12, 13, 15, 16, and 18—20 Appellant argues claims 1—20 as a group (see Appeal Br. 32, 35, 36; Reply Br. 31, 34, 35). We select independent claim 1 as representative. The 4 Appeal 2014-007577 Application 11/605,041 remaining claims stand or fall with independent claim 1. See 37 C.F.R. § 41.37(c)(l)(vii). We are not persuaded by Appellant’s argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the combination of Loya and Tremaine fails to disclose or suggest the subject matter of independent claim 1 (see Appeal Br. 19-23, 29-35; see also Reply Br. 19—22, 28—35). Instead, we agree with the Examiner that the combination of Loya and Tremaine renders obvious the subject matter of independent claim 1 (see Final Act. 4—7 (citing Loya ^fl[ 15, 39, 41, 46, 88, Figs. 4, 6, 13B; Tremaine, Abstract, col. 2,11. 23—25); see also Ans. 2—9 (citing Loya 10, 15, 39, 41, 46, 82, Figs. 7, lid, 13b; Tremaine, col. 23— 25)), and adopt the Examiner’s response to Appellant’s arguments as set forth at pages 2—10 of the Answer. We add the following for emphasis. Loya is directed to “[a] system for creating incentive plans to motivate and reward employees [that] includes a series of computer programs or tools which customize, develop, and implement an incentive plan for a variety of businesses” (Loya, Abstract). More particularly, Loya enables a user of the programs to modify preset structures of the computer programs according to parameters determined by the user. The preset structures include an Employee Group structure, Incentive Factor Score Table structures, a Factor Percent Allocation of Incentive Factors to Employee Groups structure, and a Profit Allocation to Employee Groups structure. The series of computer programs accept data input from the user and generate outputs based on the preset structures and periodic data input, the outputs including periodic employee bonuses. (Id. 19; see also id. ]ff[ 39-49). In this regard, Loya’s system directly links a company’s financial performance to the incentive rewards of a particular employee or group of employees and “each participant is assigned a piece of 5 Appeal 2014-007577 Application 11/605,041 the total award pie depending on the importance of their role and contribution” {id. 115; see also id. H 46, 88). For example, the incentive rewards may be “calculated as a percentage of one or several of financial benchmarks, including but not limited to pretax profits, gross profit dollars earned, sales dollars, increase in sales dollars, increase in profit dollars, economic value added (EVA), earnings per share (EPS), etc.” {id. 115). Tremaine is directed to “a compensation planning tool that generates realistic profit and loss (P&L) outlooks” which may be “used for accounting, budgeting or other financial planning purposes” (Tremaine, col. 2,11. 26— 31). More particularly, Tremaine discloses that its compensation planner (25) may receive and store compensation information for a plurality of employees. The compensation information preferably includes an identifier (100), a current salary (112), a current bonus (130), a current salary guideline (78), a current total compensation guideline (80), a planned salary action (122), a planned bonus action (132) and a ranking (108). The compensation planner (25) may sort the employees by rank and display a compensation plan. The compensation plan may include a current total compensation (103), a planned salary (108) and a planned total compensation (105) for each employee. {Id., Abstract). Tremaine also discloses that its compensation planning tool “provides a means for determining whether the compensation plan is fair to the employees” {id. at col. 2,11. 23—25). Appellant argues that the combination of Loya and Tremaine fails to disclose or suggest “an executive-group of a public company for the determination of total compensation of the executive-group,” as required by independent claim 1, because the [pjrior art teaches incentive group compensation for an employee group of any company and not necessarily a public company. 6 Appeal 2014-007577 Application 11/605,041 The prior art does not teach an executive-group of a public company for the determination of total compensation of the executive-group. The executive-group of a public company is defined as executives that include at least the CEO of the company. (Appeal Br. 22; Reply 21). However, we agree with the Examiner that the combination of Loya and Tremaine discloses the argued limitation (see Ans. 4-5). In this regard, we acknowledge that neither Loya nor Tremaine explicitly discloses that their systems are directed to a “public company;” however, as the Examiner points out, Loya describes that one of the financial benchmarks can be related to “earnings per share” which would indicate that the company could be traded on the public stock market; therefore, it would have been obvious to a person of ordinary skill in the art to apply the system to a publicly traded company, as this would open up Loya’s system to many more users. (Final Act. 6 (citing Loya 115)). Moreover, the feature that Appellant argues is not disclosed, i.e., “any company” as opposed to “a public company,” is directed merely to a difference in terminology. But such terminology is non-functional descriptive material that does not affect the structure or function of the claimed system. Therefore, it may not be relied on to distinguish over the cited prior art for purposes of patentability. See e.g., In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (mere informational content of non-functional descriptive material is not entitled to patentable weight); see also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative). We also acknowledge that Loya is primarily directed to determining “incentive rewards,” which is not the same as determining total 7 Appeal 2014-007577 Application 11/605,041 compensation. However, the Examiner does not rely solely on Loya to disclose determining total compensation (see Final Act. 6—7). Instead, the Examiner turns to Tremaine to disclose “where the compensation is total compensation (Abstract; ‘ . . . a current total compensation guideline ... a current total compensation . . . ’)” {id. at 7). And, to the extent Appellant argues the combination of Loya and Tremaine fails to disclose “the executive-group of a public company is defined as executives that include at least the CEO of the company” because Loya does not explicitly disclose that its “executive” group (see Loya at Fig. lid) “include[s] at least the CEO of the company,” we agree with the Examiner’s determination that [although Loya does not specifically disclose that a CEO is included in the group, as is explained in the Office Action on Page 6, it would have been obvious to a person having ordinary skill in the art at the time of invention to include the CEO in the group. (Ans. 5). Thus, Appellant’s arguments are not persuasive to show error in the Examiner’s rejection of independent claim 1. Appellant also argues Loya’s “incentive compensation is attributable only to the profits of the company, and claim 1 [’s] [tjotal compensation is attributable to a set of objective company performance factors of revenue, profit and market valuation and not just to profit” (Appeal Br. 31; Reply Br. 31). However, Loya discloses that its system directly links a company’s financial performance to the incentive rewards of a particular employee or group of employees and the incentive rewards may be “calculated as a percentage of one or several of financial benchmarks, including but not limited to pretax profits, gross profit dollars earned, sales dollars, increase in sales dollars, increase in profit dollars, economic value added (EVA), earnings per share (EPS), etc[.]” (Loya 115; see also id. H 46, 88). 8 Appeal 2014-007577 Application 11/605,041 Therefore, in contrast to Appellant’s argument, Loya’s determination of incentive compensation is not limited solely to profits of the company. Appellant further argues that independent “claim 1 is directed to solving] an entirely different problem that of total compensation to members of a select executive group, and not just to incentive compensation” (Appeal Br. 32; Reply Br. 31), whereas Loya is directed to creation of an incentive plan for the entire company employees and allocation among groups of an entire company work force, whereas claim 1 [is] directed to only an executive-group and further claim 1 is directed to total compensation and yet further total compensation derived from a set of performance factors that include revenue, profit, and market valuation. (Appeal Br. 32; Reply Br. 31). Appellant’s argument is not persuasive at least because Appellant argues Loya and Tremaine, individually. The argument that a single reference alone does not disclose all the recited claim limitations is not persuasive where, as here, independent claim 1 is rejected under 35 U.S.C. § 103 as obvious over the combination of Loya and Tremaine, and not over either one of them alone. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Here, as discussed above, the Examiner relies on Tremaine to address the determination of total compensation (see Final Act. 6—7), while relying on Loya to disclose determining incentive rewards for a particular group of employees, e.g., executives (see id. at 4). Appellant further argues that the combination of Loya and Tremaine fails to disclose or suggest a “[fjurther distinguishing feature is getting 9 Appeal 2014-007577 Application 11/605,041 approval of compensation from shareholders, and using a specific three variable formula in computation” (Appeal Br. 22—23; Reply Br. 22—23). However, Appellant’s argument is not persuasive of Examiner error at least because it is not commensurate with the scope of independent claim 1. As the Examiner correctly points out (see Ans. 5), neither “getting approval of compensation from shareholders” nor “using a specific three variable formula in computation” are limitations appearing in independent claim 1. Limitations appearing in the Specification, but not recited in a claim, are not to be read into the claim. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Appellant also argues that the combination of Loya and Tremaine fails to disclose or suggest the subject matter of independent claim 1 because neither reference is directed to solving problems related to “excessive executive compensation,” and as such, one of ordinary skill in the art would not have looked to either of Loya or Tremaine (see Appeal Br. 32—35; Reply Br. 32—35). However, the Supreme Court has made clear that when considering obviousness “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” (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)). And to the extent Appellant seeks an explicit suggestion or motivation in the reference itself, this is not the law (see id. at 418). We find that the Examiner has provided an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” (see id. (citing 10 Appeal 2014-007577 Application 11/605,041 In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner reasons [i]t would have been obvious for a person of ordinary skill in the art (PHOSITA) at the time of invention to modify the teachings of Loya to incorporate[e] where the compensation is total compensation as taught by Tremaine because this would provide a means for determining whether the compensation plan is fair to the employees (col. 2, lines 23-25), thus benefitting the employees. (Final Act. 7). We note that Appellant’s arguments do not address whether the modification described by the Examiner is more than the predictable use of prior art elements according to their established functions nor do they specifically mention or contest the substance of the Examiner’s rationale, but rather only generally assert that Loya and Tremaine “lack relevancy to the claimed subject matter” (see Appeal Br. 32—35; Reply Br. 32—35). In view of the foregoing, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s rejections of claims 2—20, which fall with independent claim 1. DECISION The Examiner’s rejection of claims 11—13 under 35 U.S.C. § 112, first paragraph, is reversed. The Examiner’s rejections of claims 1—20 under 35 U.S.C. § 103(a) are 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)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation