Ex Parte Kasravi et alDownload PDFPatent Trial and Appeal BoardFeb 13, 201310818008 (P.T.A.B. Feb. 13, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KASRA KASRAVI, WILLIAM T. RHODES, REINIER J. AERDTS, THOMAS L. HILL, EDWARD W. KETTLER III, JEAN B. LEHMANN, WILLIAM J. MARKHAM, RANDALL F. MEARS, WILLIAM H. PHIFER, DONNA M. STEMMER, and JEFFREY L. WACKER ____________ Appeal 2011-006669 Application 10/818,008 Technology Center 3600 ____________ Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006669 Application 10/818,008 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1, 2, 4-8, 10-14, and 16-181. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention relates to a method, system, and computer program product for measuring and assessing an organization's business adaptability (Spec. 5:6-8). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A method in computer system having a processor and a memory, for measuring and assessing an organization's business adaptability, the method comprising: creating a taxonomy in the memory, the taxonomy comprising a hierarchical list of taxonomy indicators that captures organizational elements that can be used to measure an organization's responsiveness to change wherein the taxonomy indicators are industry specific; assigning a set of weights associated with the elements of the taxonomy, indicating a relevant contribution of each element to an overall adaptability of an organization, wherein the weights are industry specific, wherein the weights are stored in the memory, and wherein the weights are determined from a data comparison of the organizational elements for a predetermined set of agile organizations to the organizational elements for a predetermined set of non-agile organizations; determining an enterprise profile for the organization from a series of organization specific inputs into the computer system; and calculating an adaptability result of the organization from the weights, taxonomy, and enterprise profile with the 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed September 15, 2010) and Reply Brief (“Reply Br.,” filed February 8, 2011), and the Examiner’s Answer (“Ans.,” mailed December 8, 2010). Appeal 2011-006669 Application 10/818,008 3 processor, wherein the adaptability result provides a quantitative assessment of the organization's adaptability, and wherein the adaptability result includes a profile index providing an indication of an enterprise agility, and one assessment index providing an indication of specific factors used in determining the indication of enterprise agility, and a confidence factor providing an indication of completeness of the enterprise profile. The Examiner has rejected under 35 U.S.C. § 103(a) claims 1, 5-7, 11-13, 17 and 18 as unpatentable over Smith (US 2004/0068431 A1, pub. Apr. 8, 2004) and Anderson (US 2003/0065543 A1, pub. Apr. 3, 2003), and claims 2, 4, 8, 10, 14 and 16 as unpatentable over Smith, Anderson, and Stoneking (US 2003/0050814 A1, pub. Mar. 13, 2003). We REVERSE. ANALYSIS We are persuaded the Examiner erred in asserting that a combination of Smith and Anderson discloses or suggests assigning a set of weights associated with the elements of the taxonomy, indicating a relevant contribution of each element to an overall adaptability of an organization, wherein the weights are industry specific, wherein the weights are stored in the memory, and wherein the weights are determined from a data comparison of the organizational elements for a predetermined set of agile organizations to the organizational elements for a predetermined set of non-agile organizations, as recited in independent claim 12 (Appeal Br. 10-12; Reply Br. 4-6). The Examiner asserts that the aggregate value at paragraph [0020] of Smith 2 As Appellants argue them together (App. Br. 9-10, 12), we choose independent claim 1 as representative of independent claims 1, 7, and 13. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-006669 Application 10/818,008 4 corresponds to the recited adaptability result (Ans. 4-5), and cites paragraph [0137] of Smith as disclosing “assigning a set of weights associated with the elements of the taxonomy, indicating a relevant contribution of each element to an overall adaptability of an organization, wherein the weights are industry specific, wherein the weights are stored in the memory” (Ans. 4, 9). However, paragraph [0137] of Smith discloses that the “weighting factors may be applied to each aggregate, according to the industry of the organization” (emphasis added), whereas independent claim 1 recites that the weights are assigned to the elements that make up the adaptability result. The Examiner then cites paragraphs [0011]-[0013] and [0028] of Anderson for disclosing “wherein the weights are determined from a data comparison of the organizational elements for a predetermined set of agile organizations to the organizational elements for a predetermined set of non-agile organizations.” However, while the cited portions of Anderson disclose comparing “resource and/or user qualitative and quantitative information… to corresponding benchmarks and best practices,” they do not disclose weighting itself, let alone weighting individual elements of an adaptability result. DECISION The decision of the Examiner to reject claims 1, 2, 4-8, 10-14, and 16- 18 is REVERSED. REVERSED mls Copy with citationCopy as parenthetical citation