Ex Parte Kasravi et al

Patent Trial and Appeal Board

Mar 23, 2016

10818013 (P.T.A.B. Mar. 23, 2016)

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
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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.
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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).
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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
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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
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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.
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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
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