Ex Parte Steffen et al

Patent Trial and Appeal Board

Feb 29, 2016

12846696 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/846,696 07/29/2010 Roger J. Steffen
56436 7590 03/02/2016
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.
82263149 2440
EXAMINER
SWARTZ, STEPHENS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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 ROGER J. STEFFEN, SUSAN SPENCE, CHRISTOPHER PEITZ,
and DAVID FARRINGTON LUDWIG
Appeal2013-007467
Application 12/846,696
Technology Center 3600
Before BIBHU R. MOHANTY, KEVIN W. CHERRY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1--4, 6, 8-11, and 13-18.3 We have jurisdiction
under 35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Jan.
28, 2013), Reply Brief ("Reply Br.," filed May 17, 2013), the Specification
("Spec.," filed July 29, 2010), and the Examiner's Answer ("Ans.," mailed
April 12, 2013).
2 Appellants identify the real party in interest as "Hewlett-Packard
Development Company, LP" (App. Br. 3).
3 Claims 5, 7, and 12 are canceled (id. at 17-18, Claims Appendix).
Appeal2013-007467
Application 12/846,696
STATEMENT OF THE DECISION
We AFFIRM and designate our affirmance a NEW GROUND of
REJECTION pursuant to 37 C.F.R. § 41.50(b).
INVENTION
Appellants' invention relates to selecting a project portfolio (Spec.,
Title). Claim 1 is illustrative of the subject matter on appeal.
1. A computing system for selecting a project portfolio,
compnsmg:
[a] a storage to store:
a list of projects;
lists of objectives, wherein each list of objectives is associated
with a stakeholder; and
[b] a processor to select groups of projects from the list of
projects based on the degree to which each selected group of
projects meets the lists of objectives and based on characteristics
of the stakeholder associated with each list of objectives.
App Br. 16, Claims Appendix (lettering in brackets added).
REJECTIONS
I. Claims 1-3, 6, 8-11, and 13-18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bennett (US 7,835,929 B2, iss. Nov. 16,
2010), Creel (US 2006/0089943 Al, pub. Apr. 27, 2006), and Abrams
(US 7,305,392 Bl, iss. Dec. 4, 2007). Ans. 3.
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bennett, Creel, Abrams, and Kagan (US 7,885,848 B2, iss. Feb. 8,
2011 ). Id. at 4.
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Application 12/846,696
ANALYSIS
Rejection I
Claims 1, 3, 6, 9-11, 13, and 15
Appellants argue the patentability of independent claims 1, 6, and 11
as a group, and select claim 1 as being representative (App. Br. 12). Our
analysis focuses on claim 1, and thus, independent claims 6 and 11 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(vii)(2011).
We are not persuaded by Appellants' argument that "Bennett fails to
teach or suggest, 'a processor to select groups of projects from the list of
projects based on the degree to which each selected group of projects meets
the lists of objectives,' as recited in independent claim 1" (App. Br. 8
(emphasis omitted)).
Bennett is directed to a method and system for managing a portfolio
(Bennett, Abstract). Figure 1-9 of Bennett displays a project portfolio
window that depicts a list of projects, metric values, and goals. We find that
Bennett discloses an "invention to interact with a computer to evaluate a
plurality of projects" (id. at 2:28-29). We also find that the evaluation of the
plurality of projects includes inputting one or more acceptances or rejections
of the projects by one or more participants, and selecting one or more
criteria for evaluating one or more of the projects, wherein at least one of
said criteria is based on the one or more acceptances or rejections (id. at
2:33--40). Bennett discloses that each participant initially specifies his/her
job classification (e.g., sales and marketing), which is used in the analysis
tool to determine a relationship between responses on projects and the type
of job (id. at 10:66-11:3, Fig. 2-1). For example, each participant is asked to
select exactly four projects to accept and four projects to reject (id. at 11 :4--
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Application 12/846,696
16, Figs. 2-2, 2-3 (participants select/rank groups of projects to accept and
reject from a list of projects)). According to Bennett, the evaluation criteria
includes the number of acceptances or rejections, the difference between the
number acceptances and rejections, the percentage of acceptances, the
number of projects, and the loaded data, which can be used to set an absolute
threshold (e.g., drop all projects whose probability of success is below 0.2)
or set cumulative thresholds (e.g., keep those projects whose cumulative
expenses in year 2000 are less than 2 million dollars, when summing
expenses in the order of the present ranking (id. at 11:36-44, Fig. 2-4 (right
click to see properties of each project to allow user to rank based on
criteria)).
We find that Appellants' Specification discloses:
The stakeholder may be any suitable stakeholder, such as an
individual, business unit, department, or region. The objectives
included in the lists of objectives 110 may be any suitable
objectives. For example, an objective may be to spend under a
certain amount in a quarter, to minimize risk, to perform specific
projects, or to perform projects associated with a department or
reg10n.
(Spec. ii 14).
Based on the disclosures of Bennett and in light of Appellants'
Specification, we determine that Bennett discloses limitation [b] of claim 1.
As discussed above, Bennett's project evaluation system discloses a
computer (a processor) to allow a participant (stakeholder) to select 4
projects to accept and 4 projects to reject (to select groups of projects) from
a list of projects available (from the list of projects) and rank the projects
selected based on project properties and goals by the participant (based on
the degree to which each selected group of projects meets the lists of
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Application 12/846,696
objectives) and based on the job classification of the participant (and based
on characteristics of the stakeholder associated with each list of objectives).
In other words, Bennett teaches a computer implemented system to evaluate
a portfolio of projects by allowing a participant characterized by her job
classification, to select groups of projects from a list of available projects,
and evaluate and rank those projects based on various criteria, including
project properties and strategic goals.
Appellants argue against the combination on the grounds that
if that feature of Abrams is utilized into the project list ranking
discussed in Bennett, the combination would, at best, yield a
ranking of a list of projects based on the skills and abilities of the
users assigned to work on each project. Thus, the combination of
Abrams into Bennett still fails to yield a selection of multiple
groups of projects from a list of projects, let alone a selection of
groups of projects based on the characteristics of the user or
stakeholder of the objectives.
App. Br. 10-11.
We do not find this persuasive. The Examiner relies on Abrams to
suggest that one of ordinary skill would have known to utilize criteria such
as characteristics of a stakeholder associated with each list of objectives with
respect to projects (Abrams, 4:25-27 ("Each project can also be linked to the
goals and objectives of each user, based on their role assignment.")).
Appellants describe characteristics of a stakeholder as the role of the
employee (e.g., CEO). See Spec. i-fi-123, 32. Furthermore, as discussed
above, Bennett discloses evaluating the selection of a group of projects
based in part on the participant's job classification and goals. Thus, based
on our findings regarding the disclosure of Bennett discussed above, we do
not agree with Appellants that the combination would not teach or suggest
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"a processor to select groups of projects from the list of projects ... based
on characteristics of the stakeholder associated with each list of objectives,"
as recited in claim 1.
Accordingly, we sustain the rejection of independent claim 1, and
independent claims 6 and 11, which fall with claim 1. Appellants rely on the
arguments for independent claims 1, 6, and 11 in contesting the rejection of
dependent claims 3, 9, 10, 13, and 15 (App. Br. 12). Thus, we sustain the
rejection of claims 3, 9, 10, 13, and 15 for the same reasons. Because our
findings and rationales in rejecting claim 1 are different from those set forth
by the Examiner, we designate our affirmance as a new ground.
Claims 2, 8, and 14
Appellants argue that Bennet fails to teach or suggest, "wherein the
processor further ... updates the selected groups ofprojects based on
feedback," as recited in claim 2 (App. Br. 12). Appellants disclose that
"each stakeholder may rank the project portfolio options or provide feedback
indicating which of the groups of projects the stakeholder liked or disliked
about a project portfolio or a particular project within a project portfolio."
Spec. i-f 11; see also i-f 40 ("For example, each stakeholder may provide
feedback indicating which of the groups of projects the stakeholder liked or
disliked. The processor 104 may use the feedback to select updated groups
of projects. Feedback may be useful for adding a human element to the
project selection process.")
We are not persuaded by Appellants' argument because as discussed
above with regards to claim 1 and in light of the Specification, Bennett's
disclosure that each participant inputs 4 projects to accept and reject
(stakeholder provides feedback indicating liked/ disliked groups of projects)
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and ranks those selections (updates based on feedback) fairly teaches or
suggests this contested limitation. See Bennett, Fig. 2-3.
Thus, we sustain the rejection of claim 2. Appellants rely on the
arguments for claim 2 in contesting the rejection of claims 8 and 14.
Accordingly, we sustain the rejection of claims 8 and 14 for the same
reasons.
Claims 16--18
Appellants argue "Bennett fails to teach or suggest, 'wherein selecting
groups of projects based on characteristics of the stakeholder associated with
each list of objectives comprises selecting groups of projects using a weight
associated with a list of objectives based on the stakeholder associated with
the list of objectives,' as recited in claim 16." App. Br. 13 (emphasis
omitted). Appellants acknowledge that "the system of Bennett may rank the
projects based on the weights of the strategic measures, however,
[Appellants argue that] Bennett does not teach or suggest a processor that
selects groups of projects from a list of projects using the weight of the list
of objectives based on the stakeholder." Id.
As we determined above, Bennett teaches a processor to select groups
of projects from a list of available projects using participant feedback and
evaluation criteria. As the Examiner finds, "[t]he user of [Bennett] can
[also] apply weights to different strategic measures so as to rank their
relative importance." Ans. 7 (quoting Bennett, 16:29-30). The test for
obviousness is not whether the claimed invention must be expressly
suggested in any one embodiment, but rather, what the combined teachings
of the disclosures would have suggested to those of ordinary skill in the art.
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Thus, Bennett suggests applying weights associated with different objectives
in selecting and further refining groups of projects.
Thus, we sustain the Examiner's rejection of claim 16, and claims 17
and 18, which are argued based on claim 16 (see App. Br. 14).
Rejection II
Claim 4
In contesting the rejection of claim 4, Appellants rely on arguments
presented with respect to claim 1. As such, we sustain the rejection of claim
4 for the reasons discussed above.
DECISION
The decision to reject claims 1--4, 6, 8-11, and 13-18 is AFFIRMED
and we designate this affirmance as a NEW GROUND of rejection under 35
U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2010). 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 appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE 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 prosecution will be
remanded to the examiner ....
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(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance will be deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED; 37 C.F.R. § 41.50(b)
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