Ex Parte Forman et alDownload PDFPatent Trial and Appeal BoardFeb 21, 201310636990 (P.T.A.B. Feb. 21, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte IRA R. FORMAN and CHARLES GORHAM WARD ____________________ Appeal 2010-010871 Application 10/636,990 Technology Center 3600 ____________________ Before: HUBERT C. LORIN, ANTON W. FETTING, and MEREDITH C. PETRAVICK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Ira R. Forman and Charles Gorham Ward (Appellants) seek our review under 35 U.S.C. § 134 (2010) from the Examiner’s final rejection of claims 1, 3-10, and 21-29. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM-IN-PART. Appeal 2010-010871 Application 10/636,990 2 THE INVENTION This invention is directed to doing business using an interactive computer controlled display system to estimate cost involved in the purchase and use of software program products based upon an estimated quality level of a proposed software supplier. (Specification 1:6-11). Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer controlled display method for calculating the cost of ownership of a software product obtained from a first proposed supplier including a cost of software failure factor estimation comprising: predetermining the quality level of an ideal supplier of said software product; determining deviation in quality level of said first proposed software supplier from said ideal supplier level; estimating the difference in product defect rate at the quality level of the first proposed supplier from the defect rate of said ideal supplier; estimating the cost to compensate for a damage resulting from each defect based upon the intended use of said software product; determining a cost of software failure factor for each unit of said software product obtained from said first proposed supplier by multiplying said difference in defect rate by said cost to compensate for damage resulting from each defect; calculating the cost of failure factor for a second proposed supplier of said software product; determining the price per unit for said software product respectively charged by said first proposed and said second proposed suppliers; and selecting a supplier by comparing the differences in said cost of failure factors between said first proposed and second proposed suppliers with differences in price per unit charged by said suppliers. Appeal 2010-010871 Application 10/636,990 3 THE REJECTIONS The Examiner relies up on the following as evidence of unpatentability: Aycock Kansal US 5,765,138 US 6,647,374 B2 Jun. 9, 1998 Nov. 11, 2003 Ho-Won Jung, et al., “Selecting Optimal COTS Products Considering Cost and Failure Rate,” ISSRE Fast Abstract, 1999. Stephen T. Knox, “Modeling the Cost of Software Quality,” Digital Technical Journal, Vol. 5, No. 4, 1993. Herb Krasner, “Using the Cost of Quality Approach for Software,” CrossTalk, The Journal of Defense Software Engineering, November, 1998. Hoang Pham, et al., “A Software Cost Model with Warranty and Risk Costs,” IEEE Transactions on Computers, Vol. 48, No.1, January, 1999. Barbara Cavanaugh Phillips, et al., “Add Decision Analysis to Your COTS Selection Process,” Support Technology Support Center CrossTalk, April, 2002. J. Christopher Westland, “The cost of errors in software development: evidence from industry,” The Journal of Systems and Software, Vol. 62, 2002. Yuxiao Zhao, et al., “Decision Making for Make vs. Buy of Software Components,” Proceedings of the Second Conference on Computer Science and Systems Engineering in Linkoping, CCSSE '99, 1999. The following rejections are before us for review: Claims 1 and 3-10 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Appeal 2010-010871 Application 10/636,990 4 Claims 1, 3-5, 8, 10, 21-24, 27, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Knox, Westland, and Zhao. Claims 6, 7, 25, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Knox, Westland, Zhao, and Aycock. Claims 9 and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Knox, Westland, Zhao, and Kansal. ISSUES The first issue turns on whether claims 1 and 3-10 recite patentable eligible subject matter under 35 U.S.C. § 101. The second issue is whether the combination of Knox, Westland, and Zhao teaches the step of “determining a cost of software failure factor for each unit of said software product obtained from said first proposed supplier by multiplying said difference in defect rate by said cost to compensate for damage resulting from each defect” (Claim 1). FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. We do not find a disclosure of “determining a cost of software failure factor for each unit of said software product” at Knox paragraph 2 (page 1), paragraph 3 (page 3), pages 4-5, paragraphs 1, 4, and 6 (page 6), or Table 1. Appeal 2010-010871 Application 10/636,990 5 2. We do not find a disclosure of “determining a cost of software failure factor for each unit of said software product” at Westlake’s Abstract, column 2 paragraph 1 (page 1), or column 2 paragraph 3 (page 6). ANALYSIS The Rejection of claims 1 and 3-10 under 35 U.S.C. § 101 We are not persuaded by Appellants’ arguments (App. Br. 10) that the Examiner erred in rejecting claims 1 and 3-10 as being non-statutory subject matter. The Examiner found that that these claims fail the machine or transformation test as they are not tied to a particular machine or transform a particular article into a different state or thing. See Ans. 21-24. Further, the Examiner found that the recitation of a computer in the preamble does not impose meaningful limits on the scope of the claim. App. Br. 24. We recognize that the Supreme Court clarified in Bilski that the machine-or-transformation test “is not the sole test for deciding whether an invention is a patent-eligible ‘process' under § 101.” Yet the Court explained that this test remains a “useful and important clue or investigative tool.” See Bilski v. Kappos, 130 S. Ct. 3218, 3221 (2010). The Appellants do not contest the Examiner’s findings made with respect to the machine-or-transformation test, but instead argue that the “claims do not relate to an abstract idea; there is a tangible result provided” (App. Br. 10), In as much as the Appellants may be relying upon the “useful, concrete and tangible result” test, we note that our reviewing court has determined that the “useful, concrete, and tangible result” test associated with State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1373 (Fed. Cir. 1998) is inadequate. In re Bilski, 545 F.3d 943, Appeal 2010-010871 Application 10/636,990 6 959-960 (Fed. Cir. 2008) (en banc); see also Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010). Accordingly, we are not persuaded by the Appellants’ argument that the Examiner erred, and the rejection of claims 1 and 3-10 under 35 U.S.C. § 101 as being direct to non-statutory subject matter is affirmed. The rejection of claims 1, 3-10, and 21-29 under 35 U.S.C. § 103(a) Independent claims 1 and 21 each recite “determining a cost of software failure factor for each unit of said software product obtained from said first proposed supplier by multiplying said difference in defect rate by said cost to compensate for damage resulting from each defect.” We are persuaded by the Appellants’ argument (App. Br. 13) that the Examiner erred in finding this limitation taught by Knox and Westland. The Examiner first cites to Knox’s paragraph 2 at page 1, paragraph 3 at page 3, pages 4-5, paragraphs 1, 4, and 6 at page 6, Table 1, and Figure 31 as teaching “providing a cost of software failure factor for each unit of the software product obtained from the proposed supplier.” Ans. 7, 24. We disagree. While these cited sections of Knox discuss software quality (page 1), a benchmark against actual quality costs and need for this for software (page 3), cost categories (pages 4-5 and Table 1), and cost vs. quality charts and comparisons (page 6), we fail to see a teaching of “determining a cost of software failure factor for each unit of said software product” as claimed. FF 1. The Examiner also cites to Westland’s Abstract, column 2, paragraph 1 at page 1, and column 2, paragraph 3 at page 6 as disclosing “a cost of 1 We do not find an image of Figure 3 in the copy of Knox in the record. Appeal 2010-010871 Application 10/636,990 7 software failure factor.” Ans. 8. Again, we disagree. While these cited sections of Westland include a general discussion of software defect costs (Abstract and page 1) and errors (page 6), we fail to see a teaching of “determining a cost of software failure factor for each unit of said software product” as claimed. FF 2. We find that the Examiner has failed to establish that Knox, Westland, or a combination, thereof, teaches the limitation at issue. We note that the Examiner does not rely upon Zhao to teach this limitation. Accordingly, the rejection of claims 1 and 21, and claims 3-5, 8, 10, 22-24, 27, and 29, dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Knox, Westland, and Zhao is reversed. The rejection of dependent claims 6, 7, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Knox, Westland, Zhao, and Aycock and the rejection of dependent claims 9 and 28 under 35 U.S.C. § 103(a) as unpatentable over Knox, Westland, Zhao, and Kansal are also reversed. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious."). DECISION The decision of the Examiner to reject claims 1 and 3-10 under 35 U.S.C. § 101 is affirmed. The decision of the Examiner to reject claims 1, 3-10, and 21-29 under 35 U.S.C. § 103(a) is reversed. Appeal 2010-010871 Application 10/636,990 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation