Ex Parte Abrahamsen et al

Patent Trial and Appeal Board

Dec 11, 2018

12469390 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/469,390 05/20/2009
79980 7590 12/13/2018
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
FIRST NAMED INVENTOR
Even B. H. Abrahamsen
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.
END9200900 l 9US 1 1812
EXAMINER
PEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
drubbone@kdiplaw.com
Docket@Kdiplaw.com
lcronk@kdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EVEN B. H. ABRAHAMSEN, RAJARAM S. ACHARYA,
ARIAN J. GROAAT BALTINK, ERICH. BROKELBERG,
DAVID A. HOFFMAN, OLIVER HOLZWARTH,
PA TRICK HOWARD, ALEX KRAMER, LORI M. MICHELLE,
ROLF MOERMAN, and LARS RASMUSSEN
Appeal2017-011002
Application 12/469,390 1
Technology Center 3600
Before LARRY J. HUME, JASON J. CHUNG, and
SCOTT E. BAIN, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 10 and 20. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, International Business Machines Corp. is the real
party in interest. App. Br. 2.
2 Appellants state claims 2-9 and 11-19 have been withdrawn. App. Br. 10.
However, Appellants' statement omits mentioning claim 1. According to
the listing of claims filed on September 13, 2016, claims 1-9 and 11-19
have been withdrawn.
Appeal 2017-011002
Application 12/469,390
INVENTION
The invention is directed to measuring and managing team and
individual performance in the development and maintenance of application
software. Abstract. Claim 10 is illustrative of the invention and is
reproduced below:
10. A computer-implemented method for enhancing,
measuring and managing team and individual performance in the
development and maintenance of application software, the
method comprising:
facilitating transparency of design metrics for a set of work
projects by:
characterizing, by at least one computing device, the set of
work projects as a pipeline process, a set of component-based
work plans, and a set of component deliverables; and
providing, by at least one computing device, visibility to
work items in a pipeline based on a process stage within the
pipeline process and based on work assignments assigned to an
individual;
ensuring transparency of team and individual performance
by:
assessing, by at least one computing device, by the
individual performing a deliverable of the set of component
deliverables, for each deliverable associated with the individual,
prior to performance of the deliverable by the individual, a set of
screening criteria to ensure that all requirements of a work
assignment associated with the deliverable are objective, simple,
fair, and non-intensive;
scoring, by at least one computing device, for the each
deliverable associated with the individual, a set of scores relating
to time-based completion of a deliverable on a scorecard, the set
of scores on the scorecard including scores related to each of the
following criteria: quality, cycle time, speed and reuse, wherein
the scorecard is uniquely associated with only one individual and
not project-based;
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Application 12/469,390
aggregating, by at least one computing device, for the
individual, the set of scores associated with the deliverable on
the scorecard; and
making, by at least one computing device, an aggregated
score based on the aggregating available for review;
promoting time-based competition by:
rating, by at least one computing device, an accumulated
score of aggregated scores on the scorecard associated with the
individual for all deliverables over a predetermined period of
time;
ranking, by at least one computing device, the
accumulated score of the individual with respect to accumulated
scores on scorecards uniquely associated with other individuals;
incentivizing, by at least one computing device,
individuals to volunteer to complete unassigned work
assignments when idle by increasing the accumulated score of
the scorecard associated with a volunteering individual in
response to a successful completion of the work assignment for
which the volunteering individual volunteered; and
rating, by at least one computing device, each project team
based on a compilation of the accumulated scores on the
scorecards associated with the individuals in the project team;
and
evolving, by at least one computing device, requirements
of the process based on the iterative development in view of the
accumulated scores.
REJECTION AT ISSUE
Claims 10 and 20 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Ans. 4--6.
ANALYSIS
1. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes the present claims are directed to an abstract
idea of measuring and managing individual and team performance, which
the Examiner concludes is similar to abstract concepts pertaining to
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comparing data and mathematical relationships. Ans. 6. The Examiner
analogizes Appellants' claims to the ineligible claims in Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x 988 (Fed. Cir.
2014), SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F.
App'x 950 (Fed. Cir. 2014), and Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). Ans. 6. In
addition, the Examiner concludes the present claims do not amount to
significantly more than any abstract idea because the additional elements are
generic components. Id. at 6-7.
Appellants provide four arguments: (1) if the Examiner intends to
take Official Notice, such an attempt is traversed because the Examiner
provides naked assertions about what is an abstract idea (App. Br. 6-7);
(2) the Examiner improperly over-generalizes the claimed invention down to
the point where it appears to be an abstract idea (id. at 8); (3) the present
claims are similar to the claims in Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016) because the present claims are directed to
development and maintenance of application software, which is a specific
implementation of a solution to a problem in the software arts (id. at 7-9);
Reply Br. 1-2; and (4) the present claims are similar to the claims in SiRF
Technology, Inc. v. International Trade Commission, 601 F.3d 1319 (Fed.
Cir. 2010) because the present claims require specialized machinery
including at least one computing device to perform the elements of the
invention (App. Br. 9-10; Reply Br. 2). We disagree with Appellants.
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2. Legal Principles
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: "'[l]aws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-90 (2013)). The
Court has set forth a two-part inquiry to determine whether this exception
applies.
First, we must "determine whether the claims at issue are directed to
one of those patent-ineligible concepts." Alice, 134 S. Ct. at 2355. Second,
if the claims are directed to one of those patent-ineligible concepts, we
consider "the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 77-78 (2012)). Put differently, we must search the claims for an
"inventive concept," that is, "an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
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than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
3. Based Upon a Preponderance of the Evidence, and our Review of the
Record, we Disagree with Appellants 'Arguments
A. Alice Step 1
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are directed to an abstract idea of
measuring and managing individual and team performance, which is similar
to abstract concepts pertaining to comparing data and mathematical
relationships. Ans. 6. Appellants' claims recite "aggregating," "ranking,"
"rating," and "scoring" data, which is analogous to the abstract ideas in
Electric Power (i.e., collecting information, analyzing it, and displaying
certain results of the collection and analysis), Cyberfone (i.e., using
categories to organize, store, and transmit information), SmartGene (i.e.,
comparing new and stored information and using rules to identify options),
and Digitech (i.e., organizing and manipulating information through
mathematical correlations). Id. We, therefore, disagree with Appellants'
argument (App. Br. 6-7) that the Examiner does not support their
conclusion.
We also disagree with Appellants' argument that the Examiner
improperly over-generalizes the claimed invention down to the point where
it appears to be an abstract idea (id. at 8). Rather, the Examiner maps
Electric Power, Cyberfone, SmartGene, and Digitech to the limitations
recited in the present claims and concludes the remaining limitations are
merely generic components (Ans. 6-7).
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In addition, we disagree with Appellants' argument that, similar to
Enfzsh, the present claims are directed to development and maintenance of
application software, which is a specific implementation of a solution to a
problem in the software arts (id. at 7-9; Reply Br. 1-2). Specifically, we
disagree because the claims in Enfish were directed to a self-referential
database, whereas the present claims are not. Additionally, unlike Enfish,
the present claims are not directed to an improvement to computers as tools;
rather, the present claims are directed to independently abstract ideas that
use computers as tools.
Because the present claims are directed to an abstract idea, we
proceed to step (2) of the Alice, two-part test.
B. Alice Step 2
On this record, we discern no error in the Examiner's analysis and
conclusion that the present claims are not directed to significantly more than
the abstract idea because the additional elements are generic components. In
particular, the Specification states "client systems and/or servers will include
computerized components as known in the art. Such components typically
include (among others), a processing unit, a memory, a bus, input/output
(I/0) interfaces, external devices, etc." Spec. ,r 71 ( emphasis added). We,
therefore, find the present claims implement generic components that are
well-understood, routine, and conventional to implement the abstract idea.
We disagree with Appellants' argument that, similar to the claims in
SiRF Technology, the present claims require specialized machinery
including at least one computing device to perform the elements of the
invention (App. Br. 9-10; Reply Br. 2), because the Specification recites
"computerized components as known in the art." Spec. ,r 71. Appellants
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Application 12/469,390
state, because the claims of the present invention are not directed to an
abstract idea, they need not discuss Alice step 2 (App. Br. 2). However, we
categorize SiRF Technology as an Alice step 2 issue. Nonetheless, the
present claims are directed to an abstract idea without significantly more for
the reasons stated herein.
Appellants do not separately argue independent claims 10 and 20, but
assert the rejections of those claims should be withdrawn for at least the
same reasons. App. Br. 5-10. Accordingly, we sustain the Examiner's
rejection of independent claims 10 and 20 under 35 U.S.C. § 101.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 10 and 2 0 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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