Ex Parte Fredrickson et al

Patent Trial and Appeal Board

Mar 19, 2014

12032329 (P.T.A.B. Mar. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte J. TODD FREDRICKSON,
MARGARET M. HEDSTROM, KELLI A. HOUSTON, and
CECILE M. PERAIRE
____________________

Appeal 2011-012295
Application 12/032,329
Technology Center 2100
____________________

Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012295
Application 12/032,329

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-6. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejection of these claims and enter a new
ground of rejection.

THE INVENTION
The claims are directed to computer-assisted authoring with a method
definition transformed into a website for review. The method definition is
iteratively refined based upon the website. Abst. Claim 1, reproduced below,
is representative of the claimed subject matter:
1. A method authoring method comprising:
generating a method sketch for a method from a vision
for the method in method authoring method logic executing in
memory by at least one processor of a computer, the method
sketch comprising a walkthrough of a life cycle for the method;
constructing a method definition from the method sketch
transforming the method definition into a Web site for
the method and publishing the Web site for review by reviewers
of the method; and,
iteratively refining the method definition based upon the
review of the Web site.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cécile Péraire, A Roadmap to Method Development, IBM
DEVELOPERWORKS, Feb. 15, 2007, http:/www.ibm.com/
developerworks/rational/library/feb07/peraire/index.html.

Appeal 2011-012295
Application 12/032,329

3
REJECTION
The Examiner rejected claims 1-6 under 35 U.S.C. § 102(b) as being
anticipated by Péraire. Ans. 4-8.

APPELLANTS’ CONTENTION1
Péraire has a publication date that does not precede Appellants’ filing
date by more than one year and is therefore not available under 35 U.S.C.
§ 102(b). App. Br. 4.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 5-8)
and Reply Brief (Reply Br. 1-4), the issue presented on appeal is whether the
Examiner erred in rejecting claims 1-6 under 35 U.S.C. § 102(b) as being
anticipated by Péraire.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred in rejecting claims 1-6 under 35
U.S.C. § 102(b) as being anticipated by Péraire. We agree with Appellants’
conclusions as to this rejection of the claims.
Appellants contend the Péraire document “does not precede
Applicants’ filing date by more than one year thus making the Peraire
reference art citable under 35 U.S.C. § 102(a).” App. Br. 4, n.1. The
Examiner responds by first agreeing with Appellants, but then by finding

1 We note Appellants raise additional contentions of error, but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. § 102(b).
Appeal 2011-012295
Application 12/032,329

4
“though the statute of the rejection changes here forthwith, the claims are
still rejected under 35 U.S.C. §102.” Ans. 9. However, the Examiner never
specifies any alternative ground of rejection other than 35 U.S.C. § 102(b).
We find Péraire’s date does not precede Appellants’ filing date by
more than one year and therefore Péraire is not available under 35 U.S.C.
§ 102(b). As such, the Examiner has not established a prima facie case of
anticipation.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments.
Therefore, for the reasons supra, we do not sustain the rejection of
independent claim 1 under 35 U.S.C. § 102(b) and, for the same reason, we
do not sustain the rejection of independent claim 4 or the rejection of
dependent claims 2, 3, 5, and 6.

NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1-6 are rejected under 35 U.S.C. § 102(a) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Péraire.
While we agree Péraire is not available as a reference under 35 U.S.C.
§ 102(b), it is available under 35 U.S.C. § 102(a) and, therefore, also under
35 U.S.C. § 103(a). Accordingly, we reject claims 1-6 under 35 U.S.C.
§§ 102(a)/103(a) for the reasons found by the Examiner (Ans. 4-8) and for
the additional reasons set forth herein. While we find unpersuasive
Appellants’ substantive argument that Péraire fails to disclose the disputed
limitation of iteratively refining the method definition based upon the review
Appeal 2011-012295
Application 12/032,329

5
of the Web site (App. Br. 5-8), we incorporate additional bases and rationale
as part of the instant new ground of rejection. In particular, Péraire discloses
the claim 1 limitations of a method authoring method comprising:
generating a method sketch for a method from a vision
for the method in method authoring method logic executing in
memory by at least one processor of a computer, the method
sketch comprising a walkthrough of a lifecycle for the method
See Péraire 5 (“Method Sketch is to help the team identity candidate Method
Elements and some of their relationships, and to propose an early description
for some of the key elements. To do so, and depending on the project type
(creation of a new method from scratch, extension of an existing method
with content elements only, extension of an existing method with content
and process elements, etc.), the Method Sketch may take various forms. For
instance, it may include one or more of the following elements: a
walkthrough of the lifecycle; a brief description of candidate roles, tasks,
and work products, and their relationships; a list of candidate method
guidance (templates, examples, whitepapers, etc.).”);
constructing a method definition from the method sketch
See id. at Table 2; p, 5 (“A Method Definition is a well-formed definition of
a method in terms of its Method Elements (including their description) and
their relationships. A Method Definition also characterizes one or more
configurations or versions of the method by identifying, for each
configuration, which elements are presented to the practitioners and how.”);
transforming the method definition into a Web site for
the method
See id. at 6 (“[A] Method Web Site is automatically generated from the
Method Definition (one Method Web Site could be generated per Method
Configuration).”);
Appeal 2011-012295
Application 12/032,329

6
publishing the Web site for review by reviewers of the
method
See id. at Fig. 2; p. 6 (“[A] Method Configuration defines how to compose a
Method Web Site based on the Method Elements included in a selection of
Method Plug-ins and Method Packages (since you may not want to publish
all the Method Elements defined in the method in the context of a given
configuration). The Method Configuration also defines the views that will be
presented in the Method Web Site tree browser. The Method Web Site is the
main outcome of a method development project. It makes the newly defined
method, or method framework, available to the practitioners through a set of
interconnected webpages. In RMC, a Method Web Site is automatically
generated from the Method Definition (one Method Web Site could be
generated per Method Configuration).”); and
iteratively refining the method definition based upon the
review of the Web site
See id. at Summary; p. 2 (“An iterative process allows the development team
to better accommodate change, to obtain feedback and factor it into the
project, to reduce risk early, and to adjust the process dynamically.”); p. 2
(“emphasizes quality by recommending early and frequent evaluation of the
method through reviews and testing” (emphasis omitted)); p. 8 (“[B]enefits
of an iterative and risk-driven approach to method development, I
recommend using Project Plan . . . . Project Plan defines the project phases
and milestones. It may include an Iteration Plan.”); p. 9 (“The approach to
method development proposed in this article is based on the four RUP
phases: Inception, Elaboration, Construction and Transition.”); p. 12; Fig. 4
(“Review Method” element, “Method Web Site” is present and reviewed in
the Elaboration phase.); p. 13; Fig. 5 (“Review Method” element, “Method
Appeal 2011-012295
Application 12/032,329

7
Web Site” is present and reviewed in the Construction phase.); p. 15
(“Method Definition. . . . . Feedback from reviewers has been taken into
account.” (emphasis omitted)).
Furthermore, at page 3 of the Appeal Brief, Appellants indicate the
disputed limitation corresponds to the disclosure appearing at paragraph 20,
lines 1-2, of the Specification. The cited portion of the Specification reads as
follows: “The process described in Figures 1A through 1D can be performed
within a method authoring data processing system.” Appellants’ Figures 1A
through 1D are substantially identical to Figures 3-6 of Péraire. Therefore,
Figures 3-6 of Péraire likewise disclose the disputed limitation of iteratively
refining the method definition based upon the review of the Web site.
Alternatively, Péraire discloses the limitations as discussed, but does
not explicitly disclose “iteratively refining the method definition based upon
the review of the Web site.” However, Péraire teaches that it was known at
the time of invention to develop and refine methods iteratively. See Péraire 2
(“An iterative process allows the development team to better accommodate
change, to obtain feedback and factor it into the project, to reduce risk early,
and to adjust the process dynamically.”); p. 8 (“[B]enefits of an iterative and
risk-driven approach to method development, I recommend using Project
Plan . . . . Project Plan defines the project phases and milestones. It may
include an Iteration Plan.”).
Péraire also teaches that it was known to review a Web site describing
a method (id. at Figs. 4-6 (“Review Method” element); p. 12 (“Method Web
Site. One or more websites have been generated to explore significant
aspects of the method and evaluate usability.” (emphasis omitted))) and to
refine a Method Definition based on review (id. at 15 (“Method Definition. .
Appeal 2011-012295
Application 12/032,329

8
. . . Feedback from reviewers has been taken into account.”) (emphasis
omitted)); p. 2 (“emphasizes quality by recommending early and frequent
evaluation of the method through reviews and testing” (emphasis omitted))).
It would have been obvious to one of ordinary skill in the art at the time of
invention to implement the Method Definition of Péraire as iteratively
refined based upon a review of a Web site as suggested by Péraire’s own
teaching. This implementation would have been obvious because one of
ordinary skill in the art would be motivated to use an iterative process to
obtain feedback and factor it into the project in order to better accommodate
change and emphasize quality (id. at 2 (“Demonstrate value iteratively”
bullet point); p. 8 (“I strongly believe in the benefits of an iterative and risk-
driven approach to method development.”); p. 2 (“emphasizes quality by
recommending early and frequent evaluation of the method through reviews
and testing” (emphasis omitted)), considering the Method Web site provides
several iterations of review of the method (id. at Figs. 4-6 (“Review
Method” element); p. 9 (“The approach to method development proposed in
this article is based on the four RUP phases: Inception, Elaboration,
Construction and Transition.”)) and the Method Definition takes review into
account (id. at 15 (“Method Definition. . . . Feedback from reviewers has
been taken into account.” (emphasis omitted))).
Thus, all the elements of the limitation are known as demonstrated by
Péraire, and all the elements are combined in a known manner to yield a
predictable result.
Independent claim 4 is substantially the same as independent claim 1
and is therefore rejected in substantially the same manner as described.
Appeal 2011-012295
Application 12/032,329

9
Dependent claims 2, 3, 5, and 6 are rejected in the same manner as presented
in the Examiner’s Answer of May 26, 2011.

CONCLUSIONS
1. The Examiner erred in finding Péraire is available as a reference
under 35 U.S.C. § 102(b).
2. The Examiner erred in rejecting claims 1-6 under 35 U.S.C. § 102(b)
as being anticipated by Péraire.
3. A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b)
and claims 1-6 are rejected under 35 U.S.C. § 102(a) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as being unpatentable
over Péraire.

DECISION
The decision of the Examiner rejecting claims 1-6 is reversed. We
enter a new ground of rejection of claims 1-6.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50 (b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
Appeal 2011-012295
Application 12/032,329

10
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
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).

REVERSED
37 C.F.R. § 41.50(b)

bab