Ex Parte Burchfield et al

Patent Trial and Appeal Board

Jan 8, 2016

11015551 (P.T.A.B. Jan. 8, 2016)

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
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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

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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.
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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
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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
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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.
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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

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