Ex Parte Bellamy et alDownload PDFPatent Trial and Appeal BoardApr 8, 201512268480 (P.T.A.B. Apr. 8, 2015) Copy Citation 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. 12/268,480 11/11/2008 Valorie Bellamy BPCCR0021VB 8313 27939 7590 04/08/2015 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER UTAMA, ROBERT J ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 04/08/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte VALORIE BELLAMY and MONTE HYTCHE ________________ Appeal 2013-002741 Application 12/268,480 Technology Center 3700 ________________ Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and MICHAEL L. WOODS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a Final rejection of claims 7‒18 and 21‒26. Br. 2. Claims 1‒6, 19, and 20 have been canceled. Br. 20, 23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to a method and business form facilitating management of employees, and more specifically to a method of preparing a supervisor, as well as providing the supervisor with appropriate tools, to empower the supervisor with practices and Appeal 2013-002741 Application 12/268,480 2 techniques for obtaining breakthrough performance from employees by utilizing a coaching model in the workplace.” Spec. ¶ 1. Sole independent claim 7 is illustrative of the claims on appeal and is reproduced below: 7. A management scorecard document configured to assist a supervisor in managing an employee, the management scorecard document comprising: a metric analysis portion, the metric analysis portion comprising predefined matrices for recording a plurality of objective performance metrics corresponding to a position held by the employee; a behavior analysis portion, the behavior analysis portion comprising predefined matrices for recording a plurality of behavioral analytics corresponding to the employee, the plurality of behavioral analytics comprising at least one strength analytic and at least one weakness analytic, wherein each of the plurality of behavioral analytics comprises at least a current assessment of a particular behavior, a business impact corresponding to the particular behavior, and a suggested modification of the particular behavior; and a performance target section, the performance target section comprising a plurality of improvement goals, each of the plurality of improvement goals corresponding to at least one of the plurality of objective performance metrics or the plurality of behavioral analytics, wherein each of the plurality of improvement goals comprises a current performance metric and a target metric. REFERENCES RELIED ON BY THE EXAMINER Desanti US 2003/0120537 A1 June 26, 2003 Flockhart US 6,661,889 B1 Dec. 9, 2003 Travis US 2004/0088177 A1 May 6, 2004 Whitacre US 2004/0138944 A1 July 15, 2004 Ellis US 2005/0026119 A1 Feb. 3, 2005 McCall US 2008/0059291 A1 Mar. 6, 2008 Aleixo US 2009/0292728 A1 Nov. 26, 2009 Appeal 2013-002741 Application 12/268,480 3 THE REJECTIONS ON APPEAL Claims 7‒9, 11, 14, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Whitacre and Travis. Final Act. 2. Claims 10, 12, 13, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Whitacre, Travis, and Flockhart. Final Act. 4. Claims 15 and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Whitacre, Travis, and Ellis. Final Act. 5. Claims 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Whitacre, Travis, and Aleixo. Final Act. 6. Claims 21‒23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Whitacre, Travis, Flockhart, and Ellis. Final Act. 7. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over Whitacre, Travis, Flockhart, Ellis, and McCall. Final Act. 8. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Whitacre, Travis, and Desanti. Final Act. 9. ANALYSIS Appellants acknowledge that “[c]laims 8‒18 and 21‒26 each depend from claim 7” and “that these claims may be grouped together, with claim 7 serving as the exemplary claim.” Br. 11. We further note that Appellants present no new arguments regarding dependent claims 8‒18 and 21‒26 but instead contend that “[t]he addition of any of Flockhart, Ellis, [Aleixo], McCall, or Desanti, alone or in combination, fails to correct” the deficiency of the initial combination of Whitacre and Travis. Br. 18. Accordingly, and in view of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we select claim 7 for review with claims 8‒18 and 21‒26 standing or falling therewith. Appeal 2013-002741 Application 12/268,480 4 Appellants address the limitation in claim 7 directed to that portion of the scorecard document having “predefined matrices for recording a plurality of behavioral analytics.” Br. 11; see also Br. 12. More specifically, Appellants contend that the combination relied upon by the Examiner (i.e., Whitacre and Travis) “plainly fails to make known a matrix having behavioral analytics that each include [Appellant’s] claimed ‘business impact corresponding to the particular behavior.’ The Examiner has not identified any component of the combination corresponding to this claim element.” Br. 13; see also Br. 14‒17. Appellants thereafter contend that due to this omission, “the Examiner fails to put [Appellants] on notice regarding [] the rationale behind the rejection.” Br. 13. The Examiner relies on Travis for disclosing the “behavior analysis portion” limitation in claim 7, including the above mentioned “business impact corresponding to the particular behavior” element thereof. Final Act. 3. In doing so, the Examiner references Travis Figure 17 and also Travis Paragraphs 107 and 135. Final Act. 3. Appellants, however, contend that they refer to only “general feedback” on this topic and do not teach the claimed matrix having this specific “business impact” claim element. Br. 14. In reply, the Examiner notes that claim 7 is directed to a “scorecard document” and that “[a]s such, one can interpret the matrix having behavior analysis portion as a printed matter limitation.” Ans. 4‒5. The Examiner states that “the difference between the prior art[] and the claim limitation is the type of information that is printed on the document.” Ans. 5. In other words, and according to the Examiner, Appellants “do not show any functional relationship between the printed matter (i.e., the claimed matrix Appeal 2013-002741 Application 12/268,480 5 limitation) and the substrate (i.e., the document).” Ans. 5. “And therefore, the [E]xaminer concludes that the printed matter (the matrix) will not distinguish over the prior art.” Ans. 5. We are instructed by our reviewing court that “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (citation omitted (FN10)). Appellants do not respond to or otherwise attempt to rebut the Examiner’s printed matter rationale. More specifically, Appellants do not show how the limitation directed the portion of the document used “for recording” the “business impact corresponding to the particular behavior” as claimed is functionally related to the document itself. Accordingly, we are not persuaded the Examiner erred in finding claim 7 obvious in view of Whitacre and Travis. We sustain the Examiner’s rejection of claim 7, and also dependent claims 8‒18 and 21‒26. DECISION The Examiner’s rejections of claims 7‒18 and 21‒26 are 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)(l)(iv). AFFIRMED rvb Copy with citationCopy as parenthetical citation