Ex Parte Abrahamsen et alDownload PDFPatent Trial and Appeal BoardDec 11, 201812469390 (P.T.A.B. Dec. 11, 2018) Copy Citation 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 Br. 2. 2 Appellants state claims 2-9 and 11-19 have been withdrawn.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 According to the listing of claims filed on September 13, 2016, claims 1-9 and 11-19 have been withdrawn.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; 2 Appeal 2017-011002 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 3 Appeal 2017-011002 Application 12/469,390 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. 4 Appeal 2017-011002 Application 12/469,390 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 5 Appeal 2017-011002 Application 12/469,390 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). 6 Appeal 2017-011002 Application 12/469,390 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 7 Appeal 2017-011002 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 8 Copy with citationCopy as parenthetical citation