Ex Parte Burchfield et alDownload PDFPatent Trial and Appeal BoardJan 8, 201611015551 (P.T.A.B. Jan. 8, 2016) 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. 11/015,551 12/17/2004 Nancy L. Burchfield END920040108US1 (17867) 9531 7590 01/11/2016 Steven Fischman, Esq. Scully, Scott, Murphy & Presser 400 Garden City Plaza Garden City, NY 11530 EXAMINER PATS, JUSTIN ART UNIT PAPER NUMBER PTAB MAIL DATE DELIVERY MODE 01/11/2016 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 NANCY L. BURCHFIELD and PAUL C. MUGGE ____________ Appeal 2013-0062021 Application 11/015,5512 Technology Center 3600 ____________ Before ANTON W. FETTING, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejections of claims 1, 2, 5, 8, 9, 13, 14, 18, 19, 23, and 24.3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Throughout this opinion, we refer to the Reply Brief (“Reply Br.,” filed Apr. 1, 2013), the Appeal Brief (“Appeal Br.,” filed Dec. 10, 2012), the Examiner’s Answer (“Ans.,” mailed Jan. 31, 2013), the Final Action (“Final Act.,” mailed July 10, 2012), and the Specification (“Spec.,” filed Dec 17, 2004). 2 According to Appellants, the real party in interest is International Business Machines Corporation. Appeal Br. 2. 3 Claim 26 has been cancelled by Appellants after the Final Action and is not pending on appeal. See id. Appeal 2013-006202 Application 11/015,551 2 STATEMENT OF THE CASE Appellants’ invention is directed to “a comprehensive, integrated and collaborative model for the practice of innovation management.” Spec. ¶ 1. Independent claim 1 (Claims Appendix), reproduced below, is illustrative of the subject matter on appeal: 1. A method of assessing and improving an innovation management capability of an organization, comprising the steps of: providing a business model for the organization on a computer, said model defining a model for the practice of innovation management and identifying a plurality of capabilities, each of the capabilities having a plurality of domains; identifying, by using said computer, a sequence of proficiency levels for each of the capabilities, said sequence of proficiency levels providing a recommended order for improving said each capability; identifying a key discipline area (KDA) for each of the capabilities; describing each KDA in terms of key disciplines; assigning key disciplines across said capabilities to carry out work for the proficiency levels identified for the capabilities; within each capability, organizing the key disciplines into the domains of said each capability; said organization progressing up the levels of proficiency for each of the capabilities; evolving the specific disciplines to be executed in each KDA as the organization progresses up the levels of proficiency for the capability for which said each KDA is identified; and wherein for each KDA, each of the proficiency levels identified for the capability for which said each KDA is identified is comprised of specific and generic disciplines Appeal 2013-006202 Application 11/015,551 3 that, when performed, achieve a set of goals that lead to improved KDA performance; each KDA is defined by a set of specific and generic goals and disciplines, the specific goals of each KDA are implemented by specific disciplines of said each KDA and are unique to said each KDA, the generic goals of each KDA are implemented by generic disciplines and apply to multiple KDAs; and the organization assessing the proficiency of practices of the organization within each of the capabilities, identifying specific weaknesses in said practices, and then constructing a transformation plan for improving said practices. REJECTIONS Claims 1, 2, 5, 8, 9, 13, 14, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Knight (US 2004/0054545 A1, pub. Mar. 18, 2004). Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Knight and Hatcher (US 2004/0093244 A1, pub. May 13, 2004). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.4 4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2013-006202 Application 11/015,551 4 ANALYSIS We have reviewed the Examiner’s rejections in light of the arguments presented by Appellants in the Appeal and Reply Briefs that the Examiner erred. We disagree with Appellants’ contention for the below reasons. Claims 1, 2, 5, 8, 9, 13, 14, 18, and 19 Appellants argue claims 1, 2, 5, 8, 9, 13, 14, 18, and 19 as a group. See Appeal Br. 21. We select claim 1 as representative. Claims 2, 5, 8, 9, 13, 14, 18, and 19 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(iv) (2014). Appellants contend the Examiner’s rejection of claim 1 is in error because Knight fails to disclose or render obvious “the relationship between the key discipline areas [“KDAs”] and the proficiency levels used in the present invention and the way these key discipline areas evolve as an organization moves up the proficiency levels” as recited. Appeal Br. 24. Specifically, Appellants argue that Knight does not disclose “evolving KDAs for each capability as the organization moves up the proficiency levels for that capability” because the status levels of Knight are not the claimed key discipline areas that are “sets of key disciplines that when performed achieve a set of goals that lead to improved performance.” Id. Conversely, the Examiner finds Knight teaches an “organizational maturity evolution for the standards and procedures for ideas key discipline area” such that as the organization advances in maturity levels, “the standards and procedures are more evolved and developed, thus increasing the organization’s chances of a successful achievement of their goal of innovation.” Ans. 4. Appeal 2013-006202 Application 11/015,551 5 Appellants’ argument is unpersuasive. The Examiner does not find that the KDAs of Knight are status levels (as interpreted by Appellants, see Appeal Br. 24), but rather that Knight teaches “showing for each level a status regarding KDAs such as ideas, standards and procedures, support, orientation, and environment.” Final Act. 8. In other words, the KDAs are ideas, standards and procedures, support, orientation, and environment. See id. The Examiner’s interpretation of KDAs is reasonable and not inconsistent with the Specification. See Spec. ¶ 28 (“A KDA is a body of work or a collection of disciplines that an organization must master to carry out the essential work of an innovation management capability.”). We find unpersuasive Appellants’ argument that the factors of Knight are not KDAs because the factors are used to assess the level of the organization as opposed to being used to improve KDA performance. See Reply Br. 3. In fact, Knight discloses that the factors can be used to show how the capabilities of an organization can be improved. See Knight ¶ 54. Appellant’s argument that Knight does not render obvious the relationship between the KDAs and the proficiency levels and the way the KDAs evolve as an organization moves up the proficiency levels (Appeal Br. 24) is unpersuasive, because we agree with the Examiner that Knight discloses the claimed relationship between the proficiency and KDAs. See Ans. 3–4; Final Act. 10. We further agree with the Examiner that Knight discloses evolving the disciplines, such as standards and procedures, for the ideas KDA as the organization progresses, i.e. moves up in proficiency levels. See Ans. 4; Final Act. 10. We note that providing “specific, dynamically changing guidance for improving each of these specific areas” as argued by Appellants (Appeal Br. 24), is not commensurate with the Appeal 2013-006202 Application 11/015,551 6 scope of the claim. Rather, claim 1 recites “identifying specific weaknesses in said practices, and then constructing a transformation plan for improving said practices” (id. at 31), as disclosed by Knight (Final Act. 11). Appellants further argue that the Examiner, in using status levels as KDAs, uses hindsight to “read the teaching of the present invention into Knight.” Appeal Br. 25. This argument is unpersuasive because, as discussed above, the Examiner’s interpretation of KDAs as ideas, standards and procedures, support, orientation, and environment is reasonable and consistent with Appellants’ Specification. Further, Appellants do not explain why the Examiner’s articulated reasoning (see Final Act. 12) is ineffective to support the conclusion of obviousness. For the above reasons, we sustain the Examiner’s rejection of claim 1. For the same reasons, we sustain the Examiner’s rejections of claims 2, 5, 8, 9, 13, 14, 18, and 19, as they fall with claim 1. Claim 23 Appellants contend the rejection of claim 23 is in error because neither Knight nor Hatcher teaches or suggests “the use of any three dimensional structure in which one of the dimensions represents all three of the[] orders” of the domain of the capability, one of the KDAs, and the disciplines of the one KDA. Appeal Br. 26–27. Specifically, Appellants argue that the combination of Knight and Hatcher does not teach one dimension representing three orders. Reply Br. 5. The Examiner finds that Knight teaches dimensions including a multitude of orders, a first order being one of the domains of the capabilities, a second order being the KDA identified for the one capability, and a third order being the key disciplines for the identified KDA. Final Act. 14. The Appeal 2013-006202 Application 11/015,551 7 Examiner further finds that Hatcher teaches representing a model as a three- dimensional structure with each dimension having sub-analyses of different levels, action items and aspects. Id; see also Ans. 6 (citing Hatcher Fig. 9). The Examiner determines that one of ordinary skill in the art would modify Knight with Hatcher to “provid[e] the benefit of facilitated comprehension of data by a more digestible view, enabling more efficient decision making.” Final Act. 15. Appellants’ argument is unpersuasive because the test for obviousness is not what any one reference would have suggested, but rather what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). “[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of the references.” Id. Here, the Examiner’s combination of the three-dimensional representation of Hatcher with one dimension having the three orders of Knight is adequately supported by articulated reasoning with some rational underpinning. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417–418 (2007). Appellants do not provide sufficient evidence or technical reasoning to rebut the Examiner’s conclusion of obviousness. Appellants’ general allegation that the Examiner uses hindsight (Reply Br. 6) is not persuasive because Appellants fail to address the Examiner’s articulated motivation for the modification and further reasoning to support the conclusion of obviousness. See Ans. 6–7. For the above reasons, we sustain the Examiner’s rejection of claim 23. Appeal 2013-006202 Application 11/015,551 8 Claim 24 Appellants contend that the Examiner’s rejection of claim 24 is in error “[s]ince the combination of Knight and Hatcher does not disclose the specific three dimensional structure of Claim 23, it follows that these references do not disclose or render obvious the use of this structure described in Claim 24.” Appeal Br. 27. Inasmuch as we find the combination of Knight and Hatcher does render obvious the claimed three- dimensional structure, as discussed above with reference to claim 23, this argument is unpersuasive. Appellants also argue that Knight does not teach using the three orders to calculate “a detailed, discipline[d] level path for improvement.” Id. This argument is unpersuasive because we agree with the Examiner’s finding that Knight’s calculating detailed, disciplined paths for improvement by a gap analyzer accessing solutions and identifying possible relevant solutions corresponds to this limitation of claim 24. Ans. 7 (citing Knight ¶ 30). For the above reasons, we sustain the Examiner’s rejection of claim 24. Appeal 2013-006202 Application 11/015,551 9 DECISION The Examiner’s decision rejecting claims 1, 2, 5, 8, 9, 13, 14, 18, 19, 23, and 24 under 35 U.S.C. § 103 is AFFIRMED. No time period of 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 cda Copy with citationCopy as parenthetical citation