Ex Parte Tenorio

Board of Patent Appeals and Interferences

May 11, 2009

09978926 (B.P.A.I. May. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte MANOEL TENORIO 8
___________ 9
10
Appeal 2008-1944 11
Application 09/978,926 12
Technology Center 3600 13
___________ 14
15
Decided:1 May 11, 2009 16
___________ 17
18
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE27

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-1944
Application 09/978,926

2
Manoel Tenorio (Appellant) seeks review under 35 U.S.C. § 134 of a final 1
rejection of claims 1-29, the only claims pending in the application on appeal. 2
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 3
We AFFIRM-IN-PART. 4
The Appellant invented a way of providing decision support through 5
visualization of participant past performance in an electronic commerce 6
environment (Specification 1:Technical Field of the Invention). 7
An understanding of the invention can be derived from a reading of 8
exemplary claims 1 and 2, which are reproduced below [bracketed matter and 9
some paragraphing added]. 10
1. A method for providing decision support through the visualization 11
of participant past performance, the method being performed using a 12
computer system associated with an electronic marketplace, the 13
method comprising: 14
[1] retrieving stored past performance information for a plurality of 15
participants reflecting performance of the participants 16
in connection with one or more previous transactions conducted 17
using the marketplace; 18
[2] generating a plurality of substantially linear viewable objects for 19
display to a user, each viewable object 20
corresponding to a particular participant and 21
comprising one or more subdivisions 22
each defined by first and second subdivision boundaries, 23
each subdivision in a viewable object 24
corresponding to a past performance measure and 25
having a length 26
that is proportional to a value of the past 27
performance measure 28
determined according to the retrieved past 29
performance information for the particular 30
participant corresponding to the viewable 31
object; 32
[3] receiving user input 33
selecting a particular past performance measure; and 34
Appeal 2008-1944
Application 09/978,926

3
[4] aligning the first boundaries of the subdivisions corresponding to 1
the selected past performance measure, 2
such that the past performance of the participants with respect 3
to the selected past performance measure can be readily 4
visually compared by the user in connection with a marketplace 5
decision. 6
2. The method of Claim 1, wherein the past performance information 7
for a participant comprises a time to complete each phase of a 8
transaction cycle having a plurality of phases, 9
each phase corresponding to a particular subdivision within 10
each viewable object, 11
the length of a subdivision reflecting the time to complete the 12
phase corresponding to the subdivision. 13
This appeal arises from the Examiner’s Final Rejection, mailed July 26, 2006. 14
The Appellant filed an Appeal Brief in support of the appeal on March 26, 2007. 15
An Examiner’s Answer to the Appeal Brief was mailed on July 18, 2007. A Reply 16
Brief was filed on September 13, 2007. 17
18
PRIOR ART 19
The Examiner relies upon the following prior art: 20
Robert M. Monczka et al. Cost-Based Supplier Performance Evaluation, 24 21
Journal of Purchasing and Materials Management 2-7 (1988). 22
23
Kenneth N. Thompson, Vendor Profile Analysis, 26 Journal of Purchasing 24
and Materials Management 11-18 (1990). 25
26
REJECTIONS 27
Claims 1, 6-10, 15-19, and 24-28 stand rejected under 35 U.S.C. § 103(a) as 28
unpatentable over Thompson. 29
Claims 2-5, 11-14, 20-23, and 29 stand rejected under 35 U.S.C. § 103(a) as 30
unpatentable over Thompson and Monczka. 31
Appeal 2008-1944
Application 09/978,926

4
ISSUES 1
• The issue of whether the Appellant has shown that the Examiner erred in 2
rejecting claims 1, 6-10, 15-19, and 24-28 under 35 U.S.C. § 103(a) as 3
unpatentable over Thompson turns primarily on whether Thompson uses 4
past data and aligns segments of linear objects, and whether it was 5
predictable to extend Thompson’s histogram to plural vendors. 6
• The issue of whether the Appellant has shown that the Examiner erred in 7
rejecting claims 2-5, 11-14, 20-23, and 29 under 35 U.S.C. § 103(a) as 8
unpatentable over Thompson and Monczka turns primarily on whether 9
Monczka describes vendor transaction segments. 10
11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Thompson 15
01. Thompson is directed to a modified weighted point model for aiding 16
decision makers with the pre-purchase evaluation of vendors (Thompson 17
11:Top ¶). 18
02. Thompson describes rating the expected performance of vendors on 19
each of several numerically scaled evaluative criteria (Thompson 20
12:Right col., First ¶). 21
03. Thompson describes using, at the user’s option, historical data 22
concerning vendors’ actual performance in deriving performance 23
estimates (Thompson 16:Left col. Top ¶). 24
04. Thompson describes performing its analysis with a computer 25
(Thompson 16:Computer and Software Support). 26
Appeal 2008-1944
Application 09/978,926

5
05. Thomson portrays a histogram in its Fig. 2. This chart contains 1
multiple substantially linear viewable objects for display to a user, each 2
reflecting the performance of a vendor by the length of the object and 3
comprising one subdivision defined by a top and bottom. The 4
performance so measured is the frequency with which a different 5
specific performance measurement, referred to as a performance index 6
by Thompson, is expected to occur based on the data entered, such as 7
historical data (Thompson 16-17). 8
06. Thomson portrays a chart plotting values for plural vendors in its Fig. 9
1. The performance so measured is the frequency with which a different 10
specific performance measurement, referred to as a performance index 11
by Thompson, is expected to occur based on the data entered, such as 12
historical data, for each vendor (Thompson 15). 13
07. Thompson includes Monczka’s article in its bibliography (Thompson 14
18:Reference 6). Thompson refers to Monczka as an example of a cost 15
based technique that is one of three categories most published normative 16
models for pre-purchase vendor evaluation. 17
Monczka 18
08. Monczka is directed to cost-based supplier performance evaluation 19
(Monczka:Title). 20
09. Monczka describes a total cost approach to evaluating vendors 21
(Monczka 2:Introduction). 22
10. Monczka’s Tables I, II, and III show the costs for a customer’s 23
organizations to correct for non-performance by vendors (Monczka 4-5). 24
Facts Related To The Level Of Skill In The Art 25
Appeal 2008-1944
Application 09/978,926

6
11. Neither the Examiner nor the Appellant has addressed the level of 1
ordinary skill in the pertinent arts of systems analysis and programming, 2
automated analysis modeling systems, and business planning and 3
analysis systems design. We will therefore consider the cited prior art as 4
representative of the level of ordinary skill in the art. See Okajima v. 5
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of 6
specific findings on the level of skill in the art does not give rise to 7
reversible error ‘where the prior art itself reflects an appropriate level 8
and a need for testimony is not shown’”) (quoting Litton Indus. Prods., 9
Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). 10
Facts Related To Secondary Considerations 11
12. There is no evidence on record of secondary considerations of non-12
obviousness for our consideration. 13
14
PRINCIPLES OF LAW 15
Claim Construction 16
During examination of a patent application, pending claims are given 17
their broadest reasonable construction consistent with the specification. In 18
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. 19
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 20
Limitations appearing in the specification but not recited in the claim are not 21
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. 22
Cir. 2003) (claims must be interpreted “in view of the specification” without 23
importing limitations from the specification into the claims unnecessarily). 24
Although a patent applicant is entitled to be his or her own lexicographer of 25
patent claim terms, in ex parte prosecution it must be within limits. In re Corr, 26
Appeal 2008-1944
Application 09/978,926

7
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such 1
definitions in the specification with sufficient clarity to provide a person of 2
ordinary skill in the art with clear and precise notice of the meaning that is to be 3
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although 4
an inventor is free to define the specific terms used to describe the invention, this 5
must be done with reasonable clarity, deliberateness, and precision; where an 6
inventor chooses to give terms uncommon meanings, the inventor must set out any 7
uncommon definition in some manner within the patent disclosure so as to give 8
one of ordinary skill in the art notice of the change). 9
Obviousness 10
A claimed invention is unpatentable if the differences between it and the 11
prior art are “such that the subject matter as a whole would have been obvious at 12
the time the invention was made to a person having ordinary skill in the art.” 35 13
U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); 14
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 15
In Graham, the Court held that that the obviousness analysis is bottomed on 16
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be 17
determined; [(2)] differences between the prior art and the claims at issue are to be 18
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383 19
U.S. at 17. See also KSR, 550 U.S. at 406. “The combination of familiar elements 20
according to known methods is likely to be obvious when it does no more than 21
yield predictable results.” Id. at 416. 22
“When a work is available in one field of endeavor, design incentives and 23
other market forces can prompt variations of it, either in the same field or a 24
different one. If a person of ordinary skill can implement a predictable variation, § 25
103 likely bars its patentability.” Id. at 417. 26
Appeal 2008-1944
Application 09/978,926

8
“For the same reason, if a technique has been used to improve one device, 1
and a person of ordinary skill in the art would recognize that it would improve 2
similar devices in the same way, using the technique is obvious unless its actual 3
application is beyond his or her skill.” Id. 4
“Under the correct analysis, any need or problem known in the field of 5
endeavor at the time of invention and addressed by the patent can provide a reason 6
for combining the elements in the manner claimed.” Id. at 420. 7
8
ANALYSIS 9
Claims 1, 6-10, 15-19, and 24-28 rejected under 35 U.S.C. § 103(a) as 10
unpatentable over Thompson. 11
The Appellant argues these claims as a group (Appeal Br. 18). 12
Accordingly, we select claim 1 as representative of the group. 13
37 C.F.R. § 41.37(c)(1)(vii) (2007). 14
The Examiner found that Thompson described all of the limitations except 15
for aligning the boundaries for multiple participants. The Examiner found that one 16
of ordinary skill would have found this to be an obvious extension. The Examiner 17
also cited Parker v Flook, 437 U.S. 584 (1978), for the proposition that the act of 18
graphically depicting a result was obvious (Answer 3-6). 19
The Appellant contends that (1) Parker v Flook is inapplicable and 20
accordingly the Examiner’s findings are deficient (Appeal Br. 12-15); (2) 21
Thompson fails to describe retrieving stored past performance information (Appeal 22
Br. 19:Top ¶); generating plural substantially linear visual objects for display 23
(Appeal Br. 19:Bottom ¶); receiving user input selecting a measure (Appeal Br. 24
20:Bottom ¶); and aligning the first boundaries (Appeal Br. 20:Bottom ¶); and (3) 25
Appeal 2008-1944
Application 09/978,926

9
the Examiner has failed to show motivation to combine the references (Appeal Br. 1
21-22). 2
As to the first argument, we agree with the Appellant. The Examiner cites 3
Parker at 590. 4
The notion that post-solution activity, no matter how 5
conventional or obvious in itself, can transform an unpatentable 6
principle into a patentable process exalts form over substance. A 7
competent draftsman could attach some form of post-solution activity 8
to almost any mathematical formula; the Pythagorean theorem would 9
not have been patentable, or partially patentable, because a patent 10
application contained a final step indicating that the formula, when 11
solved, could be usefully applied to existing surveying techniques. 12
We find no discussion of obviousness in this passage. Instead, this passage 13
speaks to the lack of substance in insignificant post-solution activity to render 14
otherwise non-statutory subject matter into statutory subject matter. We further 15
find that this is not dispositive as to whether the Examiner erred in making this 16
rejection, because this is not the sole finding upon which the Examiner based a 17
conclusion of obviousness. The issue of obviousness over the prior art is further 18
discussed in relation to the Appellant’s third argument, infra. 19
As to the second argument, we disagree with the Appellant. Thompson is 20
directed to a modified weighted point model for aiding decision makers with the 21
pre-purchase evaluation of vendors (FF 01). Thompson describes using a 22
computer (FF 04) to draw upon historical data concerning vendors’ actual 23
performance in deriving performance estimates (FF 03) in rating the expected 24
performance of vendors on each of several numerically scaled evaluative criteria 25
(FF 02). The Appellant further argues that Thompson only does this when such 26
information is available and only refines its data with this information (Reply Br. 27
5). This argument is not commensurate with the scope of the claim. Limitation [1] 28
only requires that some stored past performance information be retrieved. This 29
Appeal 2008-1944
Application 09/978,926

10
limitation does not impose any narrowing on how much data is retrieved or that 1
such retrieval be unconditional. Thus, we find that Thompson does describe 2
retrieving stored past performance information. 3
As to limitation [2], Thompson portrays a histogram in its Fig. 2. This chart 4
contains multiple substantially linear viewable objects for display to a user, each 5
reflecting the performance of a vendor by the length of the object and comprising 6
one subdivision defined by a top and bottom. The performance so measured is by 7
a bar length that is proportional to the frequency with which a different specific 8
performance measurement, referred to as a performance index by Thompson, is 9
expected to occur based on the data entered, such as historical data (FF 05). Such 10
a frequency computed from past performance is itself a derivative measure of past 11
performance derived from the source data. Thus, we find that Thompson does 12
describe limitation [2] of generating a plurality of substantially linear viewable 13
objects for display to a user, each viewable object corresponding to a particular 14
participant and comprising one or more subdivisions each defined by first and 15
second subdivision boundaries, each subdivision in a viewable object 16
corresponding to a past performance measure and having a length that is 17
proportional to a value of the past performance measure determined according to 18
the retrieved past performance information for the particular participant 19
corresponding to the viewable object. 20
As to limitation [3], the past performance data is optional and therefore is 21
selected by the user (FF 03). As to limitation [4], Thompson displays a histogram 22
(FF 05). By definition, and by visual observation of Thompson’s histogram, a 23
histogram aligns the bottom edges of its bars so the values measured can be readily 24
visually compared by a user in connection with whatever purpose the histogram is 25
prepared for. Thus, we find that limitation [4], except for the further limitation that 26
Appeal 2008-1944
Application 09/978,926

11
the performance of plural participants be included, is described by Thompson. We 1
further find that Thompson displays charting plural participants in a single chart 2
separately (FF 06). Thus, Thompson shows that charting the measures displayed 3
in Thompson’s histogram for plural vendors would be both predictable and 4
desirable to one of ordinary skill. 5
As to the third argument, we disagree with the Appellant. As we found in 6
the preceding paragraph, Thompson shows that charting the measures displayed in 7
Thompson’s histogram for plural vendors would be both predictable and desirable 8
to one of ordinary skill. Further, 9
[w]hen a work is available in one field of endeavor, design incentives 10
and other market forces can prompt variations of it, either in the same 11
field or a different one. If a person of ordinary skill can implement a 12
predictable variation, § 103 likely bars its patentability. For the same 13
reason, if a technique has been used to improve one device, and a 14
person of ordinary skill in the art would recognize that it would 15
improve similar devices in the same way, using the technique is 16
obvious unless its actual application is beyond his or her skill. 17
KSR, 550 U.S. at 417. To the extent the Examiner is only applying the 18
plurality of vendors in Thompson’s Fig. 1 to the aligned linear segments in 19
Thompson’s Fig. 2, such a substitution is in the exact same field of endeavor, and 20
thus a much stronger case for obviousness is made. Thus, we find that there is 21
sufficient evidence within Thompson itself to conclude that the claimed invention 22
is obvious over Thompson without requiring precedential support from Parker as 23
cited by the Examiner. 24
The Appellant has not sustained its burden of showing that the Examiner erred 25
in rejecting claims 1, 6-10, 15-19, and 24-28 under 35 U.S.C. § 103(a) as 26
unpatentable over Thompson. 27
Appeal 2008-1944
Application 09/978,926

12
Claims 2-5, 11-14, 20-23, and 29 rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Thompson and Monczka. 2
The Examiner found that Monczka described the limitations added in claim 3
2. The Appellant argues that Monczka does not describe the past performance 4
information for a participant comprising a time to complete each phase of a 5
transaction cycle having a plurality of phases. The Appellant argues that Monczka 6
instead describes ratings based on subjective experience (Appeal Br. 27-28). 7
We agree with the Appellant. The Examiner cites Tables I, II, and III in 8
Monczka for such supplier transaction cycles (Answer 8). This is in error. 9
Monczka’s Tables I, II, and III show the costs for a customer’s organizations to 10
correct for non-performance by vendors (FF 10), not the costs for supplier’s 11
transactions. All of the claims in this rejection contain a similar limitation. 12
13
CONCLUSIONS OF LAW 14
The Appellant has not sustained its burden of showing that the Examiner 15
erred in rejecting claims 1, 6-10, 15-19, and 24-28 under 35 U.S.C. § 103(a) as 16
unpatentable over Thompson. 17
The Appellant has sustained its burden of showing that the Examiner erred 18
in rejecting claims 2-5, 11-14, 20-23, and 29 under 35 U.S.C. § 103(a) as 19
unpatentable over Thompson and Monczka. 20
21
DECISION 22
To summarize, our decision is as follows: 23
• The rejection of claims 1, 6-10, 15-19, and 24-28 under 35 U.S.C. § 103(a) 24
as unpatentable over Thompson is sustained. 25
Appeal 2008-1944
Application 09/978,926

13
• The rejection of claims 2-5, 11-14, 20-23, and 29 under 35 U.S.C. § 103(a) 1
as unpatentable over Thompson and Monczka is not sustained. 2
No time period for taking any subsequent action in connection with this 3
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 4
AFFIRMED-IN-PART 5
6
7
8
9
10
11
12
13
14
hh 15
i2 TECHNOLOGIES US, INC. 16
ONE i2 PLACE, 11701 LUNA ROAD 17
DALLAS, TX 75234 18
19