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Patent Trials and Appeals Board

Oct 24, 2019

14536170 - (D) (P.T.A.B. Oct. 24, 2019)

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.
14/536,170 11/07/2014 James D. Jamison III END920140117US1 3283
11445 7590 10/24/2019
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
KYEREME-TUAH, AKOSUA P
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES D. JAMISON and CHARLES C. SNOW
Appeal 2019-000598
Application 14/536,170
Technology Center 3600
Before BRADLEY W. BAUMEISTER, MIRIAM L. QUINN, and
RUSSELL E. CASS, Administrative Patent Judges.
QUINN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a final
rejection of claims 1−2 and 5−20, which constitute all the claims pending in
this application.2 See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 1.
2 Claims 3 and 4 have been cancelled. Final Act. 2.
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Application 14/536,170

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CLAIMED SUBJECT MATTER
The claims are directed to calculating customer experience based on
product performance. Spec. ¶ 1. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A customer lifetime benefit (CLB) system, comprising:
a communication system that provides a communication
link to a plurality of CLB compatible products;
an event processor that detects and processes events
occurring on the plurality of CLB compatible products;
a response engine that determines an appropriate action
from a set of possible actions to take in response to event data
detected on a CLB compatible product, wherein the set of
possible actions includes triggering a corrective action on the
CLB compatible product;
a policy and security orchestrator for determining
whether the appropriate action is consistent with a set of
policies associated with the CLB compatible product; and
a lifecycle benefits analyzer that calculates a CLB metric
based on operational compliance data of the CLB compatible
product and resolution data resulting from corrective actions
taken by the response engine, wherein the operational
compliance data and the resolution data are generated by the
CLB compatible product,
wherein the operational compliance data is calculated
based on a comparison of collected event data against product
design specifications, and wherein the resolution data is
calculated based on a success or failure of a corrective action.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Vaccarelli
Bieda
Brodie
Herrod
Monk
Goyal
US 2003/0163380 A1
US 2003/0171897 A1
US 2009/0182591 A1
US 2010/0131792 A1
US 2013/0204785 A1
US 2014/0278798 A1
Aug. 28, 2003
Sept. 11, 2003
July 16, 2009
May 27, 2010
Aug. 8, 2013
Sept. 18, 2014

REJECTIONS
Claims 8–20 stand rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement. Final Act. 3.
Claims 1, 5, and 7 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Herrod, Brodie, and Bieda. Id. at 4−10.
Claim 2 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Herrod, Brodie, Bieda, and Monk. Id. at 11.
Claim 6 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Herrod, Brodie, Bieda, and Vaccarelli. Id. at 12−14.
Claims 8, 11, 14, 15, and 18 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Herrod, Brodie, and Goyal. Id. at 14−25.
Claims 10, 12, 17, and 19 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Herrod, Brodie, Goyal, and Bieda. Id. at 25−29.
Claims 9 and 16 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Herrod, Brodie, Goyal, and Monk. Id. at 29−31.
Claims 13 and 20 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Herrod, Brodie, Goyal, and Vaccarelli. Id. at 31−35.
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OPINION
This appeal presents two issues:
1) Did the Examiner err in determining that Appellant’s originally
filed Specification provides insufficient support under the first
paragraph of § 112(a) for the limitation “sending a product
promotion to the customers of the CLB compatible products based
on the CLB metric,” as recited in independent claims 8 and 15?
2) Did the Examiner err in determining that the combination of
Herrod and Brodie teaches limitations involving the “resolution
data,” recited in all independent claims 1, 8, and 15?
Having reviewed the Examiner’s rejections in light of Appellant’s
arguments, as presented in the Appeal Brief and Reply Brief, we are not
persuaded that the Examiner has erred as Appellant alleges. We discuss
each issue in turn.
1. Written Description Rejection
Claims 8 and 15 recite “sending a product promotion to the customers
of the CLB compatible products based on the CLB metric.” Claim App. 12,
14. The Examiner finds that the Specification does not disclose sending a
product promotion to the customers of the CLB compatible product based on
the CLB metric. Final Act. 3.
Appellant submits that the claim language complies with the written
description requirement because paragraphs 14, 15, and 29 support the
limitation. Appeal Br. 5. For instance, Appellant focuses on the disclosure
at paragraph 15, which states that “[i]n one embodiment, a promotion is
defined to be any offer, discount, incentive or similar activity that is made
available to buyers of the product to address potential customer satisfaction
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issues or inconveniences because of product performance non-compliance.”
Id. (emphasis in original). In Reply, Appellant further relies on step 19 of
Figure 3, and further argues that the disclosure shows that “an action (e.g.,
promotion) is taken based on the determined CLB metric.” Reply 2. We are
not persuaded by Appellant’s argument that the written description supports
the claim language.
As the Examiner points out, and we agree, the Specification “does not
indicate anywhere that sending a product promotion to customers of the
CLB compatible products is based on the CLB metric.” Ans. 4.
Paragraph 15 does specify that a promotion is made available to buyers of
the product, thus disclosing the sending of promotions. Spec. ¶ 15. But
paragraph 15 also states that the CLB metric is determined based on the
impact of the promotions acceptance rate. Id. Thus, although the CLB
system may take a corrective action, such as sending a promotion,
paragraph 15, at best, explains that the CLB system sends the promotion,
and, based on the acceptance rate of the sent promotion, a CLB metric is
determined. Paragraph 15, however, does not support the inverse
proposition—that based on the CLB metric, the system sends a promotion as
a corrective action.
Paragraphs 14 and 29 are in accord. For instance, paragraph 29
discloses that the CLB metric is the product of Product Benefit (PB) and
Resolution Quality (RQ), where RQ is a function of “correction action
resolution results that can be detected by the CLB system or supplied to the
CLB system [].” Id. ¶ 29. That is, the CLB metric is calculated based on the
results of a corrective action, one of which may be a promotion.
Paragraph 29 does not support the notion that the promotion is sent based on
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the CLB metric. It is, rather, the opposite. The CLB metric is based on the
promotion results.
Appellant’s reliance on S19 of Figure 3 fares no better. Figure 3
shows that a promotion is indeed a corrective action. Id. Fig. 3 (showing
step S16 as determining whether the event is a corrective action event,
followed by determining the response at step S18, and finally taking the
corrective action at step S19). More importantly, however, Figure 3 shows
that the CLB metric calculation is not performed in the branch of corrective
action determination. Rather, the CLB metric is derived after the system
evaluates the resolution of the event. Id. (showing at step S21 a resolution
completion evaluation and at S22 the CLB calculation). In sum, the
embodiments Appellant identifies show that a promotion is a corrective
action, but do not show that the sending of a corrective action is not based
on the CLB metric.
Accordingly, we find that the Examiner did not err in rejecting claims
8−20 as failing to comply with the written description requirement.
2. Obviousness Rejection
Appellant argues that the Examiner’s rejection of claims 1, 8, and 15
on the basis of Herrod and Brodie (at a minimum) is in error because Brodie
does not teach certain limitations concerning the recited “results data” and
that the Examiner’s motivation for combining Herrod and Brodie are flawed.
Appeal Br. 6−8. We address each argument in turn.
Appellant’s Arguments Based on Brodie
Appellant focuses its arguments on the language of claim 1, and, thus
our analysis below also focuses on that claim. Id. at 2. The Examiner finds
that Herrod teaches most of the limitations of claim 1, except that Brodie
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teaches the following: lifecycle benefits analyzer that calculates a CLB
metric based on operational compliance data of the CLB compatible product
and resolution data resulting from corrective actions taken by the response
engine. Final Act. 6−8. With respect to the “resolution data,” the Examiner
finds that Herrod also teaches the limitations “wherein the resolution data is
calculated based on a success or failure of a corrective action” (id. at 6). We
understand the rejection, therefore, to apply a combination of teachings from
Herrod and Brodie, where Brodie’s teachings contribute the disclosure of the
CLB metric calculation, and Herrod further contributes the required
“resolution data.”
Appellant argues that Brodie’s calculation fails to teach the recited
CLB metric calculation because Brodie’s metric is based on a “possible
resolution,” rather than an “already executed corrective action.” Appeal
Br. 6−7. The argument is not persuasive.
The rejection is not based on Brodie’s metric calculation alone. The
Examiner also relies on Herrod’s teachings of a “problem resolution report”
that the system generates to inform management personnel that the mobile
device problem is resolved. Ans. 6 (citing Herrod ¶ 41); see also Ans. 5−6
(interpreting Herrod’s workflow generator, which determines corrective
actions and generates the workflow to resolve the problem, as teaching the
claim’s “response engine” that takes the corrective action), 8 (“The Herrod
reference discloses resolution data taken by a response engine[,] and the
Brodie reference discloses calculating CLB metric using resolution data.”).
Paragraph 41 of Herrod states that the problem resolution report is part of
the workflow report component, which generates reports for later review and
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analysis to investigate systemic problems and to improve the overall
efficiency of the enterprise mobile device architecture. Herrod ¶ 41.
Consequently, the rejection of claim 1 is not based on solely the
Brodie metric calculation involving a determined resolution that is not yet
implemented. The rejection also includes the teachings of Herrod’s
implemented resolution results as the results data that would be combined
with the teaching of Brodie’s metric calculation. Ans. 8; see also Appeal
Br. 7 (pointing out the Examiner’s reliance on Herrod “taking corrective
action, [and] therefore the combination teaches allegedly the CLB metric
based on ‘resolution data resulting from corrective actions taken by the
response engine.’”). “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Appellant’s arguments that focus on Brodie alone, therefore, do not persuade
us that the Examiner erred.
Motivation to Combine Teachings
Appellant next argues that “the Examiner has not provided any
motivation for modifying the metric calculated in Brodie to be based off data
from Herrod’s corrective action in order to modify Herrod to include ‘a
lifecycle benefits analyzer that calculates a CLB metric.’” Id. at 7.
Appellant explains that Brodie’s calculation is not based on resolution data
resulting from corrective actions taken by a response engine, and, that
modifying “Brodie’s metric to be calculated based on Herrod’s corrective
actions would frustrate the purpose of the calculation.” Id. at 7−8.
Specifically, Appellant argues that “Brodie’s metric is used to determine
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resolution or corrective action that should be taken.” Id. at 8. Thus,
“modifying the metric to be based off of the corrective action having already
been taken [as taught in Herrod] would frustrate the purpose of the
calculation.” Id.
The Examiner responds that a person of ordinary skill in the art would
have combined the teachings to “better examine failure and resolution
effects.” Ans. 8 (citing Brodie ¶ 8). Furthermore, the Examiner states that
“the claimed invention is merely a combination of old elements in a similar
field of endeavor and, in the combination, each element merely would have
performed the same function as it did separately, and one of ordinary skill in
the art would have recognized that, given the existing technical ability to
combine elements as evidenced by Brodie, the results of the combination
were predictable.” Id. (citing MPEP § 2143(A)).
We do not find error in the Examiner’s provided motivation to
combine. Brodie states an advantage of examining failures and providing
the most optimized resolution. Brodie ¶ 8. As stated above, the Examiner
finds that the same advantage (to better examine failures and resolution
effects) would have motivated a person of ordinary skill in the art to use the
Brodie metric with Herrod’s teachings. Herrod similarly describes its desire
to provide resolution reports to management to investigate systemic
problems and to improve the overall efficiency of the enterprise mobile
device architecture. Herrod ¶ 41 (cited in Ans. 6).
In the combination, Brodie’s metric calculation provides the added
benefit of examining failures using Herrod’s resolution reports. This added
benefit of Brodie advances the object of Herrod, which is to investigate
systemic problems and to improve the efficiency of the system. Thus, one of
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ordinary skill would have been motivated to apply Brodie’s metric
calculation to enhance the benefit articulated by Herrod. Indeed, if Brodie’s
metric provides a more optimized resolution to deploy, and Herrod provides
the results of such a resolution, a metric that takes these resolutions into
consideration would better inform a system administrator whether the
optimized resolutions are indeed a more efficient resolution to systemic
problems, as Herrod confirms.
Consequently, we are not persuaded by Appellant’s argument that the
Examiner provides no reasonable motivation to combine the teachings of
Herrod and Brodie with respect to claims 1, 8, and 15.3, 4
CONCLUSION
The Examiner’s rejections of all pending claims are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
8−20 112(a) First, Paragraph:
Written Description
Requirement
8−20
1, 5, 7 103(a) Herrod, Brodie, Bieda 1, 5, 7
2 103(a) Herrod, Brodie, Bieda,
Monk
2
6 103(a) Herrod, Brodie, Bieda,
Vaccarelli
6

3 Appellant does not argue separately claims 8 and 15, or any other claim for
that matter. Appeal Br. 8. Therefore, all claims rise and fall in accordance
with our determination concerning claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
4 In the event further prosecution is warranted, the Examiner should consider
whether the claims recite patent-eligible subject matter pursuant to the
2019 Revised Patent Subject Matter Eligibility Guidance. 84 Fed. Reg. 50.
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
8, 11, 14,
15, 18
103(a) Herrod, Brodie, Goyal 8, 11, 14, 15, 18
10, 12, 17,
19
103(a) Herrod, Brodie,
Goyal, Bieda
10, 12, 17, 19
9, 16 103(a) Herrod, Brodie,
Goyal, Monk
9, 16
13, 20 103(a) Herrod, Brodie,
Goyal, Vaccarelli
13 20
Overall Outcome: 1, 2, 5−20

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED