Ex Parte Merriam et alDownload PDFPatent Trial and Appeal BoardJul 29, 201311186674 (P.T.A.B. Jul. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAY MERRIAM, KIRK POTHOS, HOLLY TURNER, and CRAIG MALLERY ___________ Appeal 2011-009605 Application 11/186,674 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and NINA L. MEDLOCK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009605 Application 11/186,674 2 STATEMENT OF THE CASE Ray Merriam et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART. 1 THE INVENTION This invention relates to a “method and system for the assessment of the office document production environment(s) in a facility.” Abs. Claim 1, reproduced below, with bracketing matter added, is illustrative of the subject matter on appeal. 1. An assessment method, comprising: [A] capturing, using a computer, a current state of a customer’s office document equipment environment and storing the current state in memory associated with the computer, the environment including office document device inventory, cost of operation and usage information for a plurality of pieces of office document equipment; [B] analyzing the current state of the customer’s office document equipment environment stored in the memory within a plurality of defined areas to characterize at least one cost and usage metric for each area, and 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed November 24, 2010) and Reply Brief (“Reply Br.,” filed May 2, 2011), and the Examiner’s Answer (“Ans.,” mailed March 1, 2011). Appeal 2011-009605 Application 11/186,674 3 aggregating such cost and usage metrics to generate project metrics; [C] the computer further generating a report depicting the current state of the customer’s office document equipment environment in association with the project metrics; and [D] modeling, on the computer, projected operating costs of an optimized office document equipment environment for the customer, said model being based upon the usage metrics for the plurality of defined areas. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Kananghinis Mark US 2004/0059611 A1 US 2006/0085242 A1 Mar. 25, 2004 Apr. 20, 2006 The following rejection is before us for review: 1. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mark and Kananghinis. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below 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). Appeal 2011-009605 Application 11/186,674 4 ANALYSIS The rejection of claims 1-20 rejected under 35 U.S.C. § 103(a) as being unpatentable over Mark and Kananghinis. Independent claim 1 We are not persuaded by the Appellants’ argument that Mark fails to teach “capturing, using a computer, a current state of a customer’s office document equipment environment and storing the current state in memory,” as recited by limitation [A] of claim 1. App. Br. 14-15; Reply Br. 8-9. The Appellants’ argument appears to be based on the assumption that the claimed “office document equipment” is not the same as the computer equipment within a datacenter, disclosed in Mark (see e.g., para. [0008]). However, we find no explicit requirement in claim 1 that “office document equipment” be anything more than general computer equipment, nor do we find anywhere in the Specification where the Appellants have acted as their own lexicographer and specifically defined the term “office document equipment” to require a specific type of equipment. Accordingly, we agree with the Examiner that it is reasonable to construe the “office document equipment” of claim 1 to read on the datacenter computer equipment disclosed in Mark. Ans. 23. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). We do not find this construction to be unreasonably broad, or inconsistent with the Specification. Given this broad, but reasonable interpretation, we agree with the Examiner that Mark teaches “capturing, using a computer, a current state of a customer’s office document equipment environment and storing the current state in memory,” as recited by limitation [A] of claim 1, as the Examiner argues in the first paragraph of page 23 of the Answer. See also Mark at paras. [0084] – [0087]. We also Appeal 2011-009605 Application 11/186,674 5 note, that these same portions of Mark teach or suggest the equipment environment including office document device inventory, cost of operation, and usage information, as presently claimed. Accordingly, Appellants’ argument is not persuasive. We are also not persuaded by the Appellants’ argument that the Examiner’s conclusion of obviousness is unsupported and amounts to impermissible hindsight. App. Br. 13-14; Reply Br. 6-7. Contrary to the Appellants’ argument, we find that the Examiner has provided articulated reasoning with some rational underpinning to support the legal conclusion of obviousness (see KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). On pages 21-22 of the Answer, the Examiner reproduces portions of the rejection which provide the required rationale to support the combination. We note that the Appellants’ arguments do not address whether the improvement described by the Examiner is more than the predictable use of prior art elements according to their established functions nor do they specifically mention or contest the substance of the Examiner’s rationale, but rather generally assert that the combination fails to appreciate limitations which do not appear in the independent claims. See App. Br. 14. Therefore, we are not persuaded by these arguments that the Examiner erred. Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Mark and Kananghinis is affirmed. Independent claims 14 and 19 The Appellants argue against the rejection of independent claims 14 and 19 for the same reasons used to argue against the rejection of claim 1. Appeal 2011-009605 Application 11/186,674 6 App. Br. 24-25, 27; Reply Br. 18-19, 20. To the extent Appellants additionally assert that claims 14 and 19 fail to disclose or suggest certain limitations, the Appellants make no substantive arguments to support their assertions other than to repeat the language of the claims. Accordingly, we affirm the Examiner’s rejection of independent claims 14 and 19 under 35 U.S.C. § 103(a) over Mark and Kananghinis for the same reasons discussed above with regard to the rejection of claim 1. We also affirm the rejection of claim 15 because it was not separately argued with any specificity. Dependent claim 2 We are not persuaded by the Appellants’ argument that Mark fails to teach “analyzing the current state of the customer’s office document equipment environment further comprises characterizing the customer’s costs for document output, and providing at least one metric indicating efficiency of the customer’s office document equipment environment” (App. Br. 16-17; Reply Br. 11), as the Examiner does not rely solely on Mark to address the cost and metric of claim 2 (Ans. 24), but rather relies on the combination of Mark and Kananghinis. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single reference alone does not disclose the recited claimed steps is not persuasive because nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures). To address the cost and metric of claim 2, the Examiner relies on the cost/benefit analysis and performance metrics taught by Kananghinis (paras. [0051] – [0053]). Thus, the Appellants’ argument is not persuasive. Appeal 2011-009605 Application 11/186,674 7 Accordingly, the rejection of claim 2 is affirmed for this reason and the reasons discussed with respect to claim 1. Dependent claim 3 We are not persuaded by the Appellants’ argument that Kananghinis fails to teach “reporting the current state of the customer’s office document equipment environment and an optimized office output device environment” (App. Br. 17-18; Reply Br. 12), as the Examiner does not rely solely on Kananghinis to address the report of claim 3 (Ans. 24), but rather relies on the combination of Mark and Kananghinis. See In re Merck & Co. Inc., 800 F.2d at 1097. Specifically, the Examiner relies on Mark to teach reporting the current state of the customer’s office document equipment, as discussed above with respect to claim 1 (see also para. [0110]). To the extent the Examiner additionally relies on Kananghinis to address this limitation, the Examiner relies on the performance measures and benchmarks disclosed in paragraph [0047] of Kananghinis. Thus, the Appellants’ argument directed to Kananghinis is not persuasive. Accordingly, the rejection of claim 3 is affirmed for this reason and the reasons discussed with respect to claim 1. Dependent claim 4 We are not persuaded by the Appellants’ argument that the combination of Mark and Kananghinis fails to teach or suggest “generating at least one data collection document, said document including a gridded floor map and at least one associated data collection worksheet,” as recited by claim 4. App. Br. 18-19; Reply Br. 12-13. We agree with the Examiner that Kananghinis’s proposed solution teaches the step of generating at least Appeal 2011-009605 Application 11/186,674 8 one collection document (para. [0047]). Kananghinis describes that this document is based on gathered client inputs to create a transition plan for the future information technology environment (para. [0047]). To the extent claim 4 additionally recites that the document includes a “gridded floor map,” we find that this limitation is nonfunctional descriptive material, as it is merely a characterization of the type of “data” and does not affect the document generated. That is, the “gridded floor map” is directed to mere content and bears no functional significance to the steps of the claim. Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). See also In re Xiao, 462 Fed. Appx. 947 (Fed. Cir. 2011) (non-functional descriptive material, being useful and intelligible only to the human mind, is given no patentable weight). Accordingly, the rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Mark and Kananghinis is affirmed. Dependent claims 5-7 We are not persuaded by the Appellants’ argument (App. Br. 19; Reply Br. 13-14) that the Examiner erred in rejecting claims 5-7 as being unpatentable over Mark and Kananghinis. Specifically, the Appellants argue that Mark fails to teach or suggest “a models database, or the operation of downloading a models database to a local computer workstation, said models database including data reflecting office document equipment Appeal 2011-009605 Application 11/186,674 9 specifications and operating costs,” as recited by claim 5. However, we agree with the Examiner that the “models database” recited by claim 5 reads on the database in Mark (paras. [0084] – [0087]), which includes “data reflecting office document equipment specifications and operating costs,” as the claim requires. Additionally, Mark teaches that each asset displayed on the graphical user interface (GUI) is linked to a record in a central database (paras. [0083] - [0084]). Thus, the Appellants’ argument is not persuasive. Accordingly, we affirm the rejection of claim 5, as well as claims 6 and 7 that were not argued separately under 35 U.S.C. § 103(a). Dependent claims 8 and 9 We are not persuaded by the Appellants’ argument that the combination of Mark and Kananghinis fails to teach or suggest the subject matter of claims 8 and 9 because Mark “does not contemplate ‘usage’ as the term has been applied in the instant application” and neither Mark nor Kananghinis is directed to “office document equipment,” as presently claimed. App. Br. 20; Reply Br. 15. However, these arguments are based on Appellants’ mistaken belief that “office document equipment,” as presently claimed, does not read on the computer equipment at the datacenter disclosed in Mark. Therefore, contrary to Appellants’ assertion (App. Br. 20), we do not find the Examiner erred in declining to construe the term “usage” to be related to printer equipment usage (e.g., measured black usage, measured color usage, or paper usage). Although Appellants may have intended for the usage information to be data solely related to printer equipment, as opposed to the broader computer equipment within the datacenter disclosed in Mark, such an aspect of the limitations is not set Appeal 2011-009605 Application 11/186,674 10 forth in the claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for proper context of a claim term, limitations from the specification will not be imported into the claims). Accordingly, for these reasons and the reasons discussed with respect to claim 1, we affirm the rejection of claims 8 and 9 under 35 U.S.C. § 103(a). Dependent claims 10 and 11 We are persuaded by the Appellants’ argument that the combination of Mark and Kananghinis fails to disclose “the entry of financial data relating to the cost of operation of at least one piece of equipment,” as generally recited by claim 10. App. Br. 21; Reply Br. 17. In the rejection, the Examiner cites to paragraphs [0066]2 and [0084] of Mark to teach this limitation. Ans. 11. However, we agree with the Appellants that “the longer an asset is out of use then the higher the costs associated therewith and the greater the inconvenience caused” fails to address “the entry of financial data relating to the cost of operation of at least one piece of equipment,” as the claim requires. Accordingly, we find that the Examiner has failed to establish a prima facie showing of obviousness in rejecting claim 10, and claim 11 from which it depends, and as such, we reverse the Examiner’s rejection of claims 10 and 11 under 35 U.S.C. § 103(a). 2 While page 11 of the Examiner’s Answer cites to paragraph [0067] of Mark, we find this citation to be a typographical error given that the text portion of Mark copied into the Answer is from paragraph [0066]. Appeal 2011-009605 Application 11/186,674 11 Dependent claim 12 We are not persuaded by the Appellants’ argument that the combination of Mark and Kananghinis fails to teach or suggest “collecting usage data for at least one piece of equipment over a period of time.” App. Br. 23; Reply Br. 18. As discussed supra with respect to claims 1 and 8, this argument is based on aspects of the limitations which are not set forth in the claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d at 1231. Accordingly, for these reasons and the reasons discussed with respect to claims 1 and 8, we affirm the rejection of claim 12 under 35 U.S.C. § 103(a). Dependent claim 13 We are not persuaded by the Appellants’ argument that the combination of Mark and Kananghinis fails to teach or suggest “the operation of modeling projected operating costs comprises the characterization of at least one metric from the listed group.” App. Br. 23; Reply Br. 18. In making this determination, we find that Appellants’ argument fails to address the Examiner’s conclusion that “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to include infrastructure cost per employee or any other indexed cost ratio” given that Kananghinis teaches project costs and infrastructure capability. See Ans. 13. We agree with the Examiner’s conclusion and in the absence of any persuasive evidence to the contrary, we affirm the rejection of dependent claim 13 under 35 U.S.C. § 103(a). Appeal 2011-009605 Application 11/186,674 12 Claims 16-18 The Appellants argue against the rejection of claims 16-18 and 20 for the same reasons used to argue against the rejection of claims 4, 5, 13, and 8, respectively. App. Br. 25-26. Because we found the Appellants’ argument unpersuasive as to those rejections, we find them equally unpersuasive as to error in the rejection of claims 16-18 and 20. Accordingly, the rejection of claims 16-18 under 35 U.S.C. § 103(a) is affirmed. DECISION The decision of the Examiner to reject claims 1-9 and 12-20 under 35 U.S.C. § 103(a) is affirmed. The decision of the Examiner to reject claims 10 and 11 under 35 U.S.C. § 103(a) is 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation