Ex Parte Akkiraju et al

Patent Trial and Appeal Board

Nov 21, 2016

12485703 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/485,703 06/16/2009
80330 7590
Kunzler Law Group/ ARC
50 Broadway
Ste 1000
Salt Lake City, UT 84101
11/23/2016
FIRST NAMED INVENTOR
Rama K. Akkiraju
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.
ARC9200801llUS1 3715
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
jeff@kunzlerlaw.com
lauren@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMA K. AKKIRAJU, VALERIA BECKER,
RONG ZENG CAO, JUAN M. CAPPI, WEI DING,
RICHARD T. GOODWIN, SHUN JIANG, JUHNYOUNG LEE,
KELLY A. LYMAN, RAKESH MOHAN, PABLO PESCE, JORGE SANZ,
IGNACIO G. TERRIZZANO, CHUN HUA TIAN, and JOHN VERGO
Appeal2014-004978
Application 12/485,703
Technology Center 3600
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Rama K. Akkiraju, Valeria Becker, Rong Zeng Cao, Juan M. Cappi,
Wei Ding, Richard T. Goodwin, Shun Jiang, Juhnyoung Lee,
Kelly A. Lyman, Rakesh Mohan, Pablo Pesce, Jorge Sanz,
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed December 2, 2013) and Reply Brief ("Reply Br.," filed March 17,
2014), and the Examiner's Answer ("Ans.," mailed January 17, 2014), and
Final Action ("Final Act.," mailed April 29, 2013).
Appeal2014-004978
Application 12/485,703
Ignacio G. Terrizzano, Chun Hua Tian, and John Vergo (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 1-11, 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 way of transforming a business. Specification
para. 5.
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 computer-implemented method for transforming a
business, comprising:
[ 1] receiving,
at a common model server,
an enterprise model including
a plurality of business elements,
a plurality of maps of business components
and
associations between one or more business
elements;
[2] federating one or more business analysis tools external to
the enterprise model,
and
wherein each business analysis tool is configured to filter
the enterprise model on the model platform,
wherein federating a business analysis tool includes
incorporating an external business element generated
from the business analysis tool into the enterprise model;
2
Appeal2014-004978
Application 12/485,703
[3] determining,
by one or more computers,
a business-related impact on one or more other business
elements in the enterprise model
by using one or more of the business analysis tools
The Examiner relies upon the following prior art:
Flaxer US 2008/0033888 Al February 7, 2008
Butner, Mastering carbon management, IBM Institute for Business
Value, GBE03011-USEN-OO, February 2008
Claims 1-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Flaxer and Butner.
ISSUES
The issues of obviousness tum primarily on whether the art describes
federating business analysis tools external to an enterprise model.
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
"federate."
3
Appeal2014-004978
Application 12/485,703
02. The plain meaning of "federate" is to cause to join into a
league, federal union, or similar association. 2
Facts Related to the Prior Art
Fl axer
03. Flaxer is directed to component-based business models and,
more particularly, to the management of portfolios of resources
and assets within the business enterprise based on the Component
Business Model (CBM) framework. Flaxer para. 1.
04. Flaxer discloses a Component Business Model (CBM) that
represents a target state of the business, arraying the components
by competency and by management level, where each component
is a group of cohesive business activities within a competency,
and each competency is a non-overlapping partition of the
activities of the business. According to Flaxer, this CBM provides
a logical and comprehensive view of the enterprise, in terms that
cut across commercial enterprises in general and industries in
particular. Flaxer para. 5.
05. Flaxer utilizes a Component Business Model as a model,
technique, and tool to manage enterprise portfolios and monitor
the progress of strategic initiatives. Flaxer para. 14.
2 The American Heritage Dictionary of the English Language, Fifth Edition
2015 by Houghton Mifflin Harcourt Publishing Company
https://www.ahdictionary.com/word/search.html?q=federate
4
Appeal2014-004978
Application 12/485,703
06. Flaxer Fig. 3 provides a schematic illustration of how the CBl\tI
map relates to a portfolio model. While the prior CBM approach
broke the enterprise down into components with activities, Flaxer
further integrates existing Portfolio Management ("PfM") tools,
including software applications, hardware systems, and projects,
all of which already perform some aspect of portfolio management
for the enterprise. A portfolio model is generated with the
enterprise portfolio management features and the user's view will
include a mapping of the applications, systems, and projects
which are associated with the activities of the respective CBM
component being viewed. Applications and services manage
specialized aspects of PfM. The figure shows three such PfMs
managers including an Application Portfolio Manager that
controls software applications and services, an IT System
Portfolio Manager that oversees hardware representing such
hardware assets as computers and networks, and a Project
Portfolio Manager which organizes and monitors PfM projects to
support business transformations. Each of the managers supports
some aspect of a business transformation and each has a
dependency on at least one other PfM feature. For example,
software may have prerequisites on hardware and both require
project resources to perform modifications. This chain of
interconnections is organized by an Enterprise Portfolio
Management Hub (EPMH) within the CBM interface. Flaxer
para. 37.
5
Appeal2014-004978
Application 12/485,703
07. Flaxer Fig. 4 is a block diagram showing the Enterprise
Portfolio Management Hub (EPMH) as middleware, preferably at
an EPMH server, acting as an intermediary between users and the
enterprise portfolio management tools. Users, such as executives,
information technology architects, and business analysts, use the
EPMH tool from a client location which has been provided with
the EPMH software. Using the EPMH client, the user at this
location can then interact with the EPMH middleware server
which provides centralized function services such as portfolio data
management and mapping. The middleware is ideally provided at
an enterprise server, but may also be installed at the client location
or at a remote server. The EPMH gathers information, referred to
herein as portfolio management features, from the various
portfolio management tools that exist for performing some aspect
of portfolio management for the enterprise. As illustrated in FIG.
4, the enterprise may have existing tools. Each of those existing
portfolio tools may include portfolio management features as part
of the management tool or associated with the tool and accessible
from data stores. Each of the portfolio management tools
specializes in managing and controlling parts of the enterprise and
can affect people, process and technology. Typically, the
portfolio management tools are partitioned and disjoint. The
portfolio management features may be dedicated to a single tool
or may be duplicated across different portfolio management tools.
Flaxer para. 39.
6
Appeal2014-004978
Application 12/485,703
08. Flaxer Fig. 11 illustrates a sample display generated by the
EPMH with analysis results for client review. Based on client
input at a Navigation tree, for an analysis of proposed projects
which effect changes to CustSat, Revenue and Upgrade, the
EPMH has generated a CBM Enterprise Map indicating the
competencies, namely the procurement components that would be
affected by the selected set of proposed projects. Further, EPMH
has performed an analysis of the projects and has generated
feasible transformation plans, shown under the heading "Analyze
Portfolio Options" in the annotation box. Further displayed is a
graphical display of the aggregated return versus risk for the
project options as calculated by EPMH. The EPMH server may
provide services for a plurality of clients. Since there are many
roles and users within an enterprise that have PfM responsibilities,
support for multiple clients is provided by the EPMH server. It is
presumed that not all users will be network connected, and
therefore, the EPMH client can operate in a disconnected mode,
using data contained in its local data store. Repository/data
coherence & version control can be coordinated by storing
"golden" master data on the EPMH server maintained by a
repository application. The EPM data store may be serialized into
a flat file and exchanged between the EPMH Server and Clients
under the direction of CVS. The EPMH Server also employs the
CVS capability to manage EPM information updates when it is
determined that PfM information has changed. The EPMH Server
has sole responsibility for the acquisition and mapping of PfM
7
Appeal2014-004978
Application 12/485,703
data form various sources, the Server Accessible uata as well as
Client Accessible Data, and the mapping of this data into the EMF
data store. Flaxer para. 52-53.
Butner
09. Butner is directed to mastering carbon management by
balancing trade-offs to optimize supply chain efficiencies. Butner
Title.
10. Butner describes a model, or "heat map," of a current carbon
footprint that represents processes within the enterprise and the
extended enterprise that are carbon-intensive. Butner Figure 5
depicts a possible carbon heat map based on the "deconstruction"
of a company's business model into discrete processes and
functions. Butner 10-11.
ANALYSIS
We adopt the Examiner's findings and analysis from Final Action 5-18
and Answer 5-10 and reach similar legal conclusions. We now address
Appellants' Reply Brief arguments.
We are not persuaded by Appellants' argument that the Examiner's
proposed definition of "federation" is inaccurate. Appellants contend that
the Examiner essentially asserts that "federation" is purportedly synonymous
with "assigning and integrating." Reply Br. 4--5. The Examiner instead
construes "federating" as assigning and integrating an external application
with the modeling application that includes incorporating a business element
generated from an analysis tool of the external application into the modeling
8
Appeal2014-004978
Application 12/485,703
application. Ans. 6. The plain meaning of federating is causing to join into
a league, federal union, or similar association. Claim 1 further narrows the
context as incorporating an external business element generated from the
business analysis tool into the enterprise model. This is consistent with the
Examiner's construction.
We are not persuaded by Appellants' argument that the Examiner's
arguments about "internal tools" ignores the actual language of the claims.
Appellants contend that the existing tools of Flaxer are already tools of the
enterprise model and, therefore, cannot be considered "external" tools of the
enterprise model. Appellants further contend that, rather than acknowledge
these arguments, the Examiner attempts to avoid the arguments by
refocusing on the inverse question of whether or not the tools are internal
tools to the enterprise model. Reply Br. 5---6. Claim 1 defines the scope of
its enterprise model as a plurality of business elements, a plurality of maps
of business components, and associations between one or more business
elements. Thus, tools per se that act upon such business elements, maps, and
associations are external to such a scope.
Appellants further contend that Flaxer explicitly refers to the PfM tools
as existing and integrated within the enterprise or enterprise model. Id.
Appellants are referring to Flaxer para. 3 7 which says that existing Portfolio
Management tools already perform some aspect of portfolio management.
App. Br. 8. Flaxer does not recite an enterprise model per se. Flaxer's
Component Business Model is more than a model per se, and comprises a
model, technique, and tool to manage enterprise portfolios and monitor the
progress of strategic initiatives competency. Thus, the model in Flaxer is a
component of Flazer' s CBM. As such, Flaxer' s CBM tools are external to
9
Appeal2014-004978
Application 12/485,703
the model within Flaxer' s CBl\tI. The Examiner essentially makes this point.
Ans. 8.
We are not persuaded by Appellants' argument that the Examiner's
references to an external party are irrelevant to external tools. Reply Br. 6.
Whether this is true or not is itself irrelevant to the issue of whether Flax er' s
tools are external to its model.
We are not persuaded by Appellants' argument that the Examiner's
references to mergers and acquisitions are irrelevant to external tools. Id.
Whether this is true or not is itself irrelevant to the issue of whether Flax er' s
tools are external to its model.
We are not persuaded by Appellants' argument that the Examiner's
reliance on "partitioned and disjoint" tools does not vacate the relationship
of those existing tools within the enterprise. Reply Br. 7. The claim recites
that the business analysis tools are external to the enterprise model, not the
enterprise itself.
We are not persuaded by Appellants' argument that the Examiner's
assertion that certain claim language is non-functional descriptive material
that improperly mischaracterizes the claims. Id. Whether we agree or not,
the Examiner still finds that even granting the limitations patentable weight,
the art applied describes the claims as recited.
CONCLUSIONS OF LAW
The rejection of claims 1-11 under 35 U.S.C. § 103(a) as unpatentable
over Flaxer and Butner is proper.
10
Appeal2014-004978
Application 12/485,703
uECISION
The rejection of claims 1-11 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
11