Ex Parte Kasravi et alDownload PDFPatent Trial and Appeal BoardMar 23, 201610818013 (P.T.A.B. Mar. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/818,013 0410512004 Kasra Kasravi 56436 7590 03/25/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82256453 3252 EXAMINER ROTARU, OCTAVIAN ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 03/25/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): hpe.ip.mail@hpe.com mkraft@hpe.com chris.mania@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KASRA KASRA VI, REINIER J. AERDTS, RANDALL F. MEARS, WILLIAM H. PHIFER, and JEFFREY L. WACKER Appeal2013-009975 1 Application 10/818,0132 Technology Center 3600 Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 6-15, 32, 33, and 35-38. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed May 6, 2013), the Reply Brief ("Reply Br.," filed Aug. 5, 2013), the Examiner's Answer ("Ans.," mailed June 5, 2013), the Final Action ("Final Act.," mailed Feb. 14, 2013), and the Specification ("Spec.," filed Apr. 5, 2004). 2 According to the Appellants, the real party in interest is Hewlett-Packard Development Company, LP. Appeal Br. 3. Appeal2013-009975 Application 10/818,013 STATEMENT OF THE CASE The Appellants' invention "provides a method, system, and computer program product for improving an organization's business adaptability." Spec. p. 5, 11. 6-8. Claims 6 and 11 are the independent claims on appeal. Claim 6 is exemplary of the subject matter on appeal and is reproduced below (bracketing added for reference): 6. A computer program product in a non-transitory computer readable media for use in a data processing system for measuring, assessing, and improving an organization's business adaptability, the computer program product comprising: [a] first instructions for creating a taxonomy comprising a hierarchical list that includes organizational elements used to measure an adaptability of an organization, wherein the organizational elements are organization and industry specific and include at least a first organizational element and a second organizational element; [b] second instructions for assigning a set of weights associated \'l1ith the organizational elements of the taxonomy, indicating a relevant contribution of each organizational element to the adaptability of the organization, wherein the weights are organization and industry specific; [ c] third instructions for determining an enterprise profile for the organization including assigning a first numerical score to the first organizational element and a second numerical score to the second organizational element; [ d] fourth instructions for identifying a first weight from the set of weights that corresponds to the first organizational element and for identifying a second weight from the set of weights that corresponds to the second organizational element; [ e] fifth instructions for calculating an adaptability index of the organization based on the first and second weights and the first and second numerical scores, wherein the adaptability index provides a quantitative assessment of the adaptability of the organization; and 2 Appeal2013-009975 Application 10/818,013 [ ±1 sixth instructions for determining recommendations for improving the adaptability of the organization, wherein the recommendations are determined based upon the adaptability index and data gathered in creating the taxonomy, the enterprise profile, and the set of weights. Appeal Br. 18, Claims App. REJECTIONS Claims 11-15, 35, and 36 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 4. Claims 6-15, 32, 33, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Duplaga et al, Mixed-Model Assembly Line Sequencing at Hyundai Motor Company, Production and Inventory Management Journal, vol. 37, iss. 3, at 20, ABI/INFORM Global, 1996 (hereafter "Duplaga") and Brody (US 5,481,64 7, iss. Jan. 2, 1996). Final Act. 6. Claims 37 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Duplaga, Brody, and Nick Thompolous, Line Balancing- Sequencing for Mixed-Model Assembly, Management Science, vol. 14, no. 2, pp. B59-B75, INFORMS, Oct. 1967 (hereafter "Thompolous"). Final Act. 18. 3 Appeal2013-009975 Application 10/818,013 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. 3 ANALYSIS Indefiniteness The Examiner finds that independent claim 11 (and thus dependent claims 12-15, 35, and 36), invoke 35 U.S.C. § 112, sixth paragraph. Final Act. 4. The Examiner finds the claims indefinite because the Specification fails to disclose the corresponding structure, materials, or acts for the claimed functions of independent apparatus claim 11 (and thus the dependent claims 12-15, 35, and 36) of creating a taxonomy, assigning a set of weights, determining an enterprising profile, and identifying a first weight. Id. The Appellants contend the rejection is in error because the Specification discloses structure of a data processing system including a processor and main memory, an operating system running in the processor to "coordinate and provide control of various components with [the] data processing system," and an Agility Enterprise Index ("AEI") tool that runs on the data processing system, utilizes a taxonomy, weights, and scores, and provides "insights into actions that would elevate agility." Appeal Br. 8-9, citing Spec. p. 8, 1. 6 through p. 9, 1. 9. 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 4 Appeal2013-009975 Application 10/818,013 The framework under which we determine if a claim limitation invokes§ 112, i-f 6 is a two-step process. First, we must determine if the claim limitation is drafted in the means-plus-function format. The use of the term "means" triggers a rebuttable presumption that § 112, i-f 6 governs the construction of the claim term. EnOcean GmbH v. Face Int'! Corp., 742 F.3d 955, 958 (Fed.Cir.2014) (citations omitted). If we conclude that a claim term invokes § 112, i-f 6, we proceed to the second step and attempt to construe the disputed claim term by identifying the "corresponding structure, material, or acts described in the specification" to which the claim term will be limited. Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1097 (Fed.Cir.2008). If we are unable to identify any "corresponding structure, material, or acts described in the specification," the claim term is indefinite. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed.Cir.2012) ("[A] means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim.") (citations omitted). Here, the claim limitations are drafted in the means-plus-function (Claims App.), the Examiner states the limitations invoke the § 112, i-f 6 (Final Act. 4), and the Appellants do not dispute that invocation (see Appeal Br. 8). Thus, the claim terms invoke § 112, i-f 6, and we proceed to identifying the corresponding structure, material or acts described in the Specification to which the terms will be limited. "In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, [it] has [been] consistently required that the structure disclosed in the specification be more 5 Appeal2013-009975 Application 10/818,013 than simply a general purpose computer or microprocessor." Aristocrat Techs. Australia Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1333 (Fed. Cir. 2008). Here, the Specification discloses only a general purpose computer (see Appeal Br. 8-9; see also Spec. p. 8, 1. 6 through p. 9, 1. 19). The Specification does not clearly correspond the structure to the claimed functions, but rather generally states that the AEI tool that runs on the data processing system and utilizes a taxonomy of organizational factors, a set of customizable weights, and scores. See Spec. p. 9, 11. 20-29. The portions of the Specification cited by the Appellants (Appeal Br. 8-10), discuss the functions of creating a taxonomy, assigning a set of weights, determining an enterprise profile, and identifying first and second weights, but do not discuss any algorithms for performing those functions. The Specification simply discloses a general computer to perform particular functions, but does not "limit the scope of the claim to 'the corresponding structure, material, or acts' that perform the function[s], as required by section 112, i-f 6." Aristocrat, 521 F.3d. at 1333. Thus, we sustain the Examiner's rejection of claims 11-15, 35, and 36 stand under 35 U.S.C. § 112, second paragraph, as being indefinite. Obviousness The Examiner finds Duplaga discloses the claimed instructions recited in independent claim 6 (see Final Act. 6-11 ), but does not disclose a non- transitory computer readable media or system as claimed, for which the Examiner cites Brody (id. at 12). The Appellants contend the Examiner's rejection is in error because "Duplaga fails to teach or suggest a product for measuring, assessing, and 6 Appeal2013-009975 Application 10/818,013 improving an organization's business adaptability, as recited in independent claim 6." Appeal Br. 12. Specifically, Appellants argue that because Duplaga's "approach is for smoothing the demand of component parts in a just-in-time (JIT) production line system and for minimizing balance delays in the production line" (id.), Duplaga does not disclose any of the claimed limitations (see id. at 12-16). We agree with the Appellants that Duplaga discloses how to improve the assembly sequencing of an organization to be more efficient, but does not disclose the claimed limitations of measuring, assessing, and improving the organization's adaptability, defined in the Specification as "the responsiveness of an organization to changes in external factors such as customer demands, government regulations, the competitive landscape, new technologies etc." Spec. p. 11, 11. 8-11. The Examiner's finding that Duplaga discloses measuring, assessing, and improving Hyundai Motor Company's (the organization) adaptability "in the form of flexibility[] of auto companies [] to changes in product line due to competitive pressure and ever-changing customer preferences" (Ans. 8-9) is not supported by adequate reasoning or evidence. Duplaga discloses assessing the assembly sequencing procedure and how Hyundai's heuristic procedure provides a more efficient mixed-model sequencing approach by balancing delay problems and part usage issues. See Duplaga, pp. 20-21. The Examiner has not established that one of ordinary skill in the art would understand that Duplaga discloses measuring the adaptability of the organization based on external factors, calculating an adaptability index of the organization, or determining recommendations for improving the organization's responsiveness to changes in external factors. 7 Appeal2013-009975 Application 10/818,013 Thus, we do not sustain the Examiner's rejection of claim 6. Claim 11 recites similar limitations to claim 6, and thus, we do not sustain the Examiner's rejection of claim 11. We also do not sustain the rejection of claims 7-10, 12-15, 32, 33, 35, and 36, each of which ultimately depends from one of independent claims 6 and 11. Cf In re Fritch, 972 F.2d. 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Claims 37 and 38 depend from independent claim 6. The Examiner's rejection of claims 37 and 38 based on Thompolous, in combination with Duplaga and Brody, does not cure the deficiency in the Examiner's rejection of claim 6. Therefore, we do not sustain the rejection of claims 37 and 38. DECISION The Examiner's rejection of claims 11-15, 35, and 36 under 35 U.S.C. § 112, second paragraph is AFFIRMED. The Examiner's rejections of claims 6-15, 32, 33, and 35-38 under 35 U.S.C. § 103(a) are REVERSED. 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-IN-PART 8 Copy with citationCopy as parenthetical citation