Ex Parte Thuve et alDownload PDFPatent Trial and Appeal BoardMay 18, 201611363878 (P.T.A.B. May. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/363,878 02/28/2006 63759 7590 05/20/2016 DUKEW, YEE YEE & AS SOCIA TES, P.C. P.O. BOX 802333 DALLAS, TX 75380 FIRST NAMED INVENTOR Matthew L. Thuve 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. 05-0549-US-NP 9282 EXAMINER DELI CH, STEPHANIE ZAGARELLA ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 05/20/2016 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): ptonotifs@yeeiplaw.com mgamez@yeeiplaw.com patentadmin@boeing.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW L. THUVE, MICHAEL GANOWSKY, LOUIS ALVAREZ, and LEONARD ROSENBLUM Appeal2013-009241 Application 11/363,878 Technology Center 3600 Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and PHILIP J. HOFFMANN, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Matthew L. Thuve, Michael Ganowsky, Louis Alvarez, and Leonard Rosenblum (Appellants) seek review under 35 U.S.C. § 134 of a final 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed April 3, 2013) and Reply Brief ("Reply Br.," filed July 16, 2013), and the Examiner's Answer ("Ans.," mailed June 5, 2013), and Final Action ("Final Act.," mailed January 3, 2013). Appeal2013-009241 Application 11/363,878 rejection of claims 1-8, 12-19, and 24--30, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented a software tool that enables the collaborative, systematic, and automated tracking, linking, and analysis of data and information from multiple sources. Spec. para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A system comprising: [ 1] a memory configured to store a relationship network having a plurality of axes, the relationship network having a plurality of addressable nodes relating to a project to be managed, each addressable node of the plurality of addressable nodes being addressed through a plurality of address elements, each address element of the plurality of address elements corresponding to an axis of the plurality of axes of the relationship network and each address element of the plurality of address elements being a different one of a plurality of information types relating to the project to be managed; [2] a metadata mapper for processing a plurality of metadata, and each metadata of the plurality of metadata being associated with a different addressable node of the plurality of addressable nodes, 2 Appeal2013-009241 Application 11/363,878 and for establishing a relationship between the plurality of address elements; [3] a processing architecture configured to analyze the metadata associated with a given addressable node of the plurality of addressable nodes against a requirement assigned to the given addressable node and to provide a result of the analyzing. The Examiner relies upon the following prior art: Hatcher Robin US 2004/0093244 Al US 2005/0114829 Al May 13, 2004 May 26, 2005 Douglas Schaefer, Producibility and 1'.Janufacturing Technology Program, 2002 Defense Manufacturing Conference, Missile Defense Agency - US Department of Defense (December 3, 2002) (hereinafter "Schaefer"). Claim 30 stands rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention. Claims 1---6, 12-17, and 24--30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hatcher and Robin. Claims 7, 8, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hatcher, Robin, and Schaefer. 3 Appeal2013-009241 Application 11/363,878 ISSUES The issues of indefiniteness tum primarily on whether one of ordinary skill would understand the claimed "same axes." The issues of obviousness tum primarily on whether patentable weight should be accorded non- structural limitations in system claim 1 and data label limitations in method claim 12, and whether Hatcher's data and metadata processing are within the scope of those claims. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to Claim Construction 01. The disclosure contains no lexicographic definition of "axes." 02. The disclosure contains no lexicographic definition of "node." 03. The disclosure contains no lexicographic definition of "address element." 04. The disclosure contains no lexicographic definition of "information type." 05. Metadata is information about data. Metadata describes, points to, identifies, or relates to other data. Spec. para. 26. Facts Related to the Prior Art Hatcher 06. Hatcher is directed to analysis systems and methods for organizations. Hatcher, para. 2. 4 Appeal2013-009241 Application 11/363,878 07. Hatcher provides a flexible analytical framework used in many situations and for diverse structures and organizations. The framework may be used for any organization having multiple units of an organization. Hatcher, para. 33. 08. Hatcher describes interrelationships between enterprise information capabilities and strategic value of information. The information evolution model shown in Figure 7 A contains five information evolutionary levels: level 1 "operate" 11 O; level 2 "consolidate" 112· level 3 "integrate" 114· level 4 "optimize" 116· ' ' ' and level 5 "innovate" 118. The "integrate" level 3 (114) is a higher information evolutionary level than the "consolidate" level 2 (112) and thus has a greater strategic value of information as well as reflects a greater information capability for the enterprise. This higher value is shown in that the enterprise can use the enterprise-wide view gleaned from the integrated information assets of level 3 to be more agile and proactive in making strategic decisions to address an ever changing market place than would an enterprise at level 2. Hatcher, para. 42 and Fig. 7 A. 09. Hatcher Figures 8-10 describe graphs depicting interrelationships among enterprise aspects, action items and levels. Figure 8 illustrates a graph 130 wherein action items 134 are associated with an enterprise aspect 132 to evolve that aspect from a lower level to a higher level (represented on axis 136). Figure 9 shows greater detail wherein the level axis 136 may assume different values, such as a "Level 1 Operate" value and so 5 Appeal2013-009241 Application 11/363,878 on. The enterprise axis 132 may expand to represent four constituency dimensions: people, process, culture, and infrastructure. One or more action items 134 are associated with each of these dimensions (132, 136) to progress the dimensions to their respective next levels. Hatcher, para. 52 and Figs. 8-10. 10. Hatcher describes an audit that analyzes information inputs, information processes, and information outflows of an enterprise constituency. Information input analyses address such issues as: how is information captured, how is it transformed, and how is it defined (e.g., metadata). Information process analyses address such issues as: how is information managed, how is quality ensured, how is it stored for retrievability, and what is the current value of the information asset and is that value being realized (e.g., exploited). Information outflow analyses address such issues as: how is information packaged and displayed for consumers, how is it analyzed, and how is its usage monitored. Hatcher, para. 56. Robin 11. Robin is directed to facilitating the process of designing and developing a project. Robin, para. 3. 12. Robin describes memory for storing data. Robin, paras. 82-85. 13. Robin describes collecting project risk classifications along various taxonomies, and kinds of projects and risks that go into project risk data. Robin, paras. 1152-1155. 6 Appeal2013-009241 Application 11/363,878 14. Robin describes collecting project risk consequences for project risk classifications. Robin, para. 1161. 15. Robin describes collecting project categories as dimensions and indicators having ratings for each dimension. Robin, paras. 1666- 1671. ANALYSIS Claim 30 rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention We are persuaded by Appellants' argument that one of ordinary skill would understand the claimed "same axes." App. Br. 5-7. Claims 1-6, 12-17, and 24-30 rejected under 35 U.S.C. § 103(a) as unpatentable over Hatcher and Robin Claim 1 is an apparatus claim with three recited parts, viz. a memory, a metadata mapper, and a processing architecture. As to structural inventions, such claims must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus as disclosed must be capable of performing the claimed function. Id. at 1478. When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 7 Appeal2013-009241 Application 11/363,878 1367 (Fed. Cir. 2008)). In some circumstances generic structural disclosures may be sufficient to meet the functional requirements. See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376---77 (Fed. Cir. 2010)). Also, a structural invention is not distinguished by the work product it operates upon, such as data in a computer. "[E]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "inclusion of material or article worked upon by a structure being claimed does not impart patentabilityto the claims." In re Otto, 312 F.2d 937, 940 (CCPA 1963). As to the memory, although claim 1 recites it is configured to store a relationship and goes on to recite the relationship characteristics, memory by definition is configured to store any data. The nature of the data characterizes the work product, not the structure. As no implementation for the storage is recited or narrowed, the nature of the data imposes no structural limitations. As to the metadata mapper, claim 1 recites it is for processing metadata. No implementation for such processing is recited and as metadata is by definition a form of data, this limitation is structurally reduced to processing data. Claim 1 also recites the metadata mapper is for establishing relationships among address elements. Accordingly, although the mapper must in some manner be capable of establishing relationships, again, no implementation is recited, and so the capacity for any form or relationship establishment is within its scope. For example, the memory address 8 Appeal2013-009241 Application 11/363,878 relationships between logical and physical addresses of data inherent in the basic input and output system (BIOS) necessary for the operation of a computer is within this scope. As to the processing architecture, we take this to mean the processing algorithm that is configured to analyze metadata against requirements to provide some sort of result. The recitation of association with nodes imposes no structural requirement, because the claim does not limit the manner or implementation of analysis to depend on such nodes, and cannot distinguish the claimed structure over the art. Again, as metadata is data, any structure capable of analyzing data against some form of criteria to produce some form of result is within the scope of this limitation. For example, conventional data type enforcing in databases that compare the data type (metadata) of the data content being entered (e.g. Integer, Float, Double Precision, Boolean, String, Pointer) to the data type of the field being entered into to ensure compatibility is within this scope. Independent claim 12 is a method claim and so is defined by its steps rather than structure. The recited steps of claim 12 are similar to the recited purpose of the structural elements in claim 1. But, even here, data labels as such are undeserving of patentable weight. Mental perceptions of what data represents are non-functional and given no weight. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any new and unobvious functional relationship between the printed matter and the substrate.'") (citations omitted). See also In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (describing printed matter as "useful and intelligible only to the human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Data 9 Appeal2013-009241 Application 11/363,878 labels are just examples of such mental perceptions. Data, being a succession of 1 s and Os, is data. The binary digits may impose some functional consequence, but absent some recitation of how so, such consequence is not an issue. The Examiner finds that Hatcher Figures 8-10 describe defining a relationship network having plural axes. The Examiner maps Hatcher's Figure 9 axes to the recited axes, instances such as levels to the recited nodes, and data elements of differing data types corresponding to the instances to the recited address elements. The Examiner maps Hatcher's referral to analyzing metadata input to both the association of such metadata to the data elements aligned with the nodes defined by the metadata, and to the audit analysis Hatcher describes which encompasses metadata within its scope. An audit implies some audit criteria which is within the scope of an audit requirement. Hatcher describes its audit as producing results. The Examiner applies Robin for the unremarkable finding that memory is the substrate in which data such as recited in the claims resides. Final Act. 6- 11. With this in mind, we understand Appellants' arguments generally to be based on a more narrow construction of the claim limitations than recited. In other words, the arguments are not commensurate with the scope of the claims. We are not persuaded by Appellants' argument that "different action items along the action items axis in figures 9 and 11 of Hatcher) are of the same information type." App. Br. 12. As information type is undefined as such, differing data are inherently different as to type at least at the level of 10 Appeal2013-009241 Application 11/363,878 content. Further, mental perceptual distinctions such as "type" imparting no functional effect cannot distinguish the claims over the art. We are not persuaded by Appellants' argument that the Office Action cannot reasonably interpret Hatcher in two different manners simultaneously. Specifically, if the Office Action considered each specific axis in Hatcher as being an "address element," in order to attempt to overcome the above argument, then the Office Action would not be able to reasonably state that the axis has a plurality of addressable nodes, as claimed. Id. We find supra that the Examiner mapped different aspects of Hatcher to the axes and address elements. We are not persuaded by Appellants' argument that Robin does not remedy Hatcher (App. Br. 12-13) as the Examiner does not apply Robin to remedy the argued purported deficiencies. We are not persuaded by Appellants' argument that Hatcher is not mapping metadata, but rather the data itself. App. Br. 13. As we find supra, Hatcher identifies how data is defined as metadata. We are not persuaded by Appellants' argument that Hatcher is not analyzing metadata associated with a given "addressable node" against a requirement. Instead, Hatcher is analyzing the data itself against a "requirement". For example, Hatcher might evaluate whether a particular action item is met. However, Hatcher does not analyze metadata regarding that particular action item against a requirement, such as whether the action item is met. App. Br. 14. This is essentially the same argument as that regarding metadata supra, and is equally unpersuasive here. We are not persuaded by Appellants' argument that Hatcher and Robin are non-analogous art and there is no reason to combine them. The 11 Appeal2013-009241 Application 11/363,878 Examiner finds that Robin provides implementation details for Hatcher's analysis systems. Final Act. 10. This shows both the similarity of the references and the reason for their combination. We are not persuaded by Appellants' argument that Hatcher is not in the same field of invention as the claims. App. Br. 16-22. Appellants cite Specification paragraph 6 as narrowingly directing the invention to predictive capability to isolate systemic engineering and manufacturing problems related to production readiness and technology maturation. App. Br. 20. This is an exemplary field of use for the claims, but the claims are directed to far broader systems and procedures. Nothing in the claims would narrow the use of the claims as Appellants suggest. Claim 12 is broadly directed to managing any project. Claim 1 directed to a system that is broader yet that analyzes metadata related to a network. The remaining claims are argued on the basis of the patentability of the above claims. Claims 7, 8, 18, and 19 rejected under 35 U.S.C. § 103(a) as unpatentable over Hatcher, Robin, and Schaefer These claims are not separately argued. CONCLUSIONS OF LAW The rejection of claim 30 under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention is improper. The rejection of claims 1---6, 12-17, and 24--30 under 35 U.S.C. § 103(a) as unpatentable over Hatcher and Robin is proper. 12 Appeal2013-009241 Application 11/363,878 The rejection of claims 7, 8, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Hatcher, Robin, and Schaefer is proper. DECISION The rejection of claims 1-8, 12-19, and 24--30 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). See 37 C.F.R. § 1.136(a)(l)(iv) (2011). AFFIRMED 13 Copy with citationCopy as parenthetical citation