Ex Parte Ahern et al

Board of Patent Appeals and Interferences

Jun 8, 2012

10643987 (B.P.A.I. Jun. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte MARYBETH AHERN and MICHAEL J. LAW 8
___________ 9
10
Appeal 2011-001090 11
Application 10/643,987 12
Technology Center 3600 13
___________ 14
15
16
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 17
MICHAEL W. KIM, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 1, 2010) and Reply Brief (“Reply Br.,” filed October 14,
2010), and the Examiner’s Answer (“Ans.,” mailed August 17, 2010).
Marybeth Ahern and Michael J. Law (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1-8, 10, 32-41, and 52-3
63, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a decision-making system to evaluate enterprise 6
decisions (Specification ¶ 0002). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A method for managing and tracking changes in an 11
organization, the method comprising the steps of: 12
[1] defining at least one customer requirement 13
for an enhancement to an enterprise architecture; 14
[2] identifying at least one capability 15
to provide the enhancement to the enterprise architecture; 16
[3] estimating at least one of 17
a revenue increase 18
and 19
a cost saving 20
associated with the at least one capability; 21
[4] determining a value 22
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provided by the at least one capability 1
based upon 2
an implementation cost 3
and 4
the at least one of the revenue increase and the cost 5
saving; 6
[5] using a database 7
to store a hierarchical relationship of 8
a goal, 9
the value, 10
the at least one capability, 11
and 12
a resource, 13
the hierarchical relationship having a plurality of levels 14
with one or more dynamic links 15
that differ between the plurality of levels; 16
[6] displaying the hierarchical relationship between 17
the goal, 18
the value which is associated with the goal, 19
the at least one capability 20
which represents critical functions for ensuring 21
delivery of the value, 22
and 23
one or more resources 24
which enables the at least one capability; 25
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[7] capturing and linking process measurements 1
from one or more external modeling tools 2
to the database 3
to allow process performance to be accessed by the 4
system; 5
[8] using a system implemented on a computer platform 6
to partition information 7
relevant to enterprise decision making for 8
evolutionary change 9
by 10
creating categories of the information 11
and 12
relating these categories to one another, 13
the information being defined by at least one of 14
the value, 15
the at least one capability, 16
and 17
operational resources; 18
and 19
[9] using an automated system to manage the categories of the 20
information, 21
wherein the method further comprises one or both of: 22
(i) 23
capturing and displaying 24
current resources of the organization 25
and 26
how they relate to the organizations’ mission 27
in real-time, 28
directly tracking 29
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which specific resources 1
directly support the capabilities, 2
and 3
illustrating and quantifying 4
a value of transforming an enterprise 5
business model of the organization 6
from a current “as-is” state 7
to a proposed “to-be” business model; 8
and 9
(ii) 10
defining the goal 11
as a corporate directive 12
establishing a final end point 13
of an enterprise change, 14
defining the value 15
as a customer value, 16
the at least one capability is a strategic capability 17
that represents critical functions 18
that the organization must be capable of 19
performing 20
to insure delivery of the customer value, 21
and 22
defining the resource 23
as a physical component 24
that must be present 25
and 26
supports the at least one capability. 27
28
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The Examiner relies upon the following prior art: 1
Golightly US 2003/0046130 A1 Mar. 6, 2003
Buchanan and Soley, Aligning Enterprise Architecture and IT 2
Investments with Corporate Goals, OMG and Metagroup Whitepaper 3
(2002) (hereafter “Buchanan”). 4
Frank, Multi-Perspective Enterprise Modeling (MEMO) - Conceptual 5
Framework and Modeling Languages, Proceedings of the 35th Annual 6
Hawaii International Conference on System Sciences (2002) (hereafter 7
“Frank”). 8
Chalmeta, et al., References Architectures for Enterprise Integration, 57 9
Journal of Systems and Software 175-91 (2001) (hereafter “Chalmeta”). 10
Claims 1-8, 10, 32-41, and 52-62 stand rejected under 35 U.S.C. § 11
103(a) as unpatentable over Buchanan, Frank, and Golightly. 12
Claim 63 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 13
Buchanan, Frank, Golightly, and Chalmeta. 14
ISSUES 15
The issues of obviousness turn primarily on whether the limitations in 16
each of the step [9] alternatives are to be afforded patentable weight, and if 17
so, whether they are sufficiently broad to encompass Buchanan and Frank. 18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
Facts Related to the Prior Art 22
Buchanan 23
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01. Buchanan is directed to an approach to strategic planning, 1
architecture development and software project management that is 2
based on research undertaken by META Group, Inc. 3
(www.metagroup.com). It describes META Group's Enterprise 4
Architecture Planning Process (EA Process) that provides IT 5
organizations with a systematic approach to aligning IT projects 6
with corporate goals and priorities, thus providing organizations 7
with a comprehensive approach to the management and 8
development of IT environments. Buchanan 1. 9
02. Enterprise Architecture represents a process that will result in 10
the creation and iterative refinement of many artifacts that 11
collectively define a future enterprise architecture, and it will 12
identify the gaps between the current state and this future 13
architecture. The enterprise architecture, in effect, describes the 14
logical linkages between the enterprise business, information and 15
technical architectures and the enterprise solutions architecture. 16
Buchanan 2. 17
03. In a well-aligned company, the IT organization would derive its 18
goals and priorities from the corporate strategy and planning 19
groups. This would insure that IT projects routinely supported 20
corporate goals. Buchanan 2. 21
04. The enterprise architecture does not represent a series of static 22
documents, but an ongoing process. The business architecture is 23
constantly being refined or revised as strategists and corporate 24
planners identify environmental trends that require new corporate 25
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responses or priorities. Similarly, as corporate responses are 1
modified, the information and technical architectures must be 2
modified. Buchanan 3. 3
05. An enterprise business architecture is simply a more precise 4
description of an organization's business strategy. It identifies (in 5
a very targeted, pragmatic way) which assets will engage in what 6
processes in support of the forward business strategy. Buchanan 7
5. 8
06. Once new opportunities and threats are identified, the strategy 9
and planning group must decide if they warrant changes in the 10
company's strategies. This results in a new or refined business 11
vision, which in turn, results in a new business strategy. 12
Buchanan 5. 13
07. The goal is not to “model the world” but to concentrate on 14
those aspects of the business process that will need to be changed 15
in order to deliver the new corporate values and priorities. 16
Buchanan 6. 17
08. As specific models emerge from the information and technical 18
architectures, they are fed “downstream” into the organization's 19
Program Management function. Any change in principles or in 20
models results in an analysis of the gap between what already 21
exists and what is called for by the changed strategy and the 22
redefined enterprise architecture. Buchanan 7. 23
24
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Frank 1
09. Frank is directed to enterprise models that provide various 2
abstractions that help with the design of corporate information 3
systems which are in line with a company's organization and its 4
long term strategy. They promise to provide a common 5
conceptual foundation to foster the communication between 6
people with different professional backgrounds. Frank introduces 7
a model for enterprise modeling that is based on an extendable set 8
of special purpose modeling languages, e.g. for describing 9
corporate strategies, business processes, resources or information. 10
The visual languages provide intuitive abstractions for various 11
observers. Frank 1:Abstract. 12
10. MEMO (“Multi Perspective Enterprise Modelling”) is a method 13
for enterprise modelling ([7]) that offers a set of specialized visual 14
modelling languages together with a process model as well as 15
techniques and heuristics to support problem specific analysis and 16
design. The languages allow to model various interrelated aspects 17
of an enterprise. They are integrated on a high semantic level. 18
MEMO models are to serve two goals. Firstly, they are an 19
instrument to develop information systems that are well integrated 20
with a company's strategy and its organization. Secondly, they 21
can be used as the foundation of an “enterprise schema.” Its 22
instantiation would allow for a permanent representation of all 23
relevant aspects of an enterprise (strategy, business processes, 24
organizational structure, business entities, business rules etc.), 25
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hence serving as an “organizational memory” [1] or a corporate 1
knowledge base. Frank 2:Introduction. 2
11. As an introduction to more detailed abstractions, and as a 3
medium to foster cross-disciplinary discourses, MEMO offers a 4
generic conceptual framework that corresponds to common 5
abstractions of business firms. It differentiates three so called 6
perspectives - strategy, organization and information system - 7
each of which is structured by four aspects: structure, process, 8
resources, goals. A participant in a discussion can literally point 9
to the focus of his concern by selecting a particular aspect within a 10
perspective. Frank 3: Generic Framework. 11
12. MEMO is implemented with Smalltalk, a visual object oriented 12
programming language. Frank 4: Tool Environment and 13
Reference Models. 14
Golightly 15
13. Golightly is directed to a real-time enterprise optimization 16
(REO) system. The enterprise may relate to one or more of: 17
manufacturing, polymer production, chemical production, energy 18
production, energy distribution, financial services, and 19
engineering, among others. For example, embodiments of the 20
invention may be used in various fields, including chemicals, 21
polymers, energy generation and distribution, pulp and paper, 22
consumer goods, cement, minerals, mining, and service 23
enterprises, including, for example, financial, management, 24
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diagnostic, analysis, distribution, and engineering services, among 1
many others. Golightly ¶ 0039. 2
ANALYSIS 3
Claim 1 is a process of 9 steps obtaining and using information 4
describing some business aspect. The first 6 steps identify a customer 5
requirement, a capability, a revenue and cost estimate, and some other value 6
associated with the capability, and then store and display some hierarchical 7
relationship among that value and capability, and a goal and a resource. The 8
next 2 steps measure process performance somehow, and partition decision 9
making information defined by that value, capability, or resource. None of 10
these steps are contested. 11
The sole step contested is the ninth step, which is recited as being one of 12
two alternative limitations. In alternative (i), resources are displayed and 13
tracked, and some value transforming an as-is model to a to-be model is 14
quantified. In alternative (ii), a resource that must be present is defined that 15
supports a critical function capability in the context of the goal being a 16
corporate directive and the value being a customer value. 17
In alternative (i), Appellants contest whether the art shows to be 18
predictable capturing and displaying current resources and how they relate to 19
mission and illustrating and quantifying a value transforming the model 20
from as-is to to-be. In alternative (ii), Appellants contest whether the art 21
shows defining the goal as a corporate directive. We are not persuaded by 22
the Appellants’ arguments. In the Reply Brief, Appellants essentially argue 23
that the art is broader than the limitations. We find instead that the claims 24
are broader than argued. 25
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As an initial matter, we find that step [9], in each alternative, merely 1
identifies or displays data that is only perceptible by the human mind. There 2
is no functional relationship between this data and the steps recited. Thus, 3
the contents of the data may not distinguish the claims over the prior art. 4
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). As explained in 5
Miller, “what is significant here is not structural but functional relationship” 6
between the printed matter and the substrate. In re Miller, 418 F.2d 1392, 7
1396 (CCPA 1969). See also In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 8
1994) (describing printed matter as “useful and intelligible only to the 9
human mind”) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). 10
Second, as a set of two alternate limitations, it is sufficient for either part 11
(i) or part (ii) to be described by the art to defeat Appellants’ arguments. 12
Third, the Examiner made specific findings of fact and analysis relative to 13
claim 1 at Answer 5-11 and 20-24, which we adopt. These findings provide 14
substantial evidence that the limitations under contention are described, or at 15
least made predictable by the art. 16
We are not persuaded by the Appellants’ argument that Buchanan fails 17
to disclose (1) whether the link between current resources of the 18
organization and the mission of the organization is an important aspect that 19
needs to be modeled and displayed; and (2) how the display would be 20
implemented. Reply Br. 3. Claim 1 does not recite how the display would 21
be implemented either, and Buchanan describes how an enterprise business 22
architecture is simply a more precise description of an organization's 23
business strategy that identifies (in a very targeted, pragmatic way) which 24
assets (resources) will engage in what processes in support of the forward 25
business strategy (mission). FF 05. 26
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We are not persuaded by the Appellants’ argument that “the MDA 1
approach illustrates a current state and/or a future state of processes that 2
provide IT organizations with a systematic approach for aligning IT projects 3
with corporate goals and priorities. However, the models illustrated in Figs. 4
3, 4, 5 and 6 all fail to disclose illustrating the value or the benefit that the 5
enterprise achieves by reorganizing the IT projects. Instead, the models are 6
simply concerned with illustrating how the IT projects are performed in a 7
current state and how the IT projects will be performed in a future state. 8
There is no comparison of the two states that is illustrated to provide a sense 9
of value of the transformation.” Reply Br. 5. 10
The limitation at issue merely recites “illustrating and quantifying a 11
value of transforming an enterprise business model of the organization from 12
a current ‘as-is’ state to a proposed ‘to-be’ business model.” It is not the 13
states or even the model that must be illustrated or quantified; only some 14
unspecified value somehow related to transforming the enterprise. 15
Buchanan describes how as specific models emerge from the information 16
and technical architectures, they are fed “downstream” into the 17
organization's Program Management function. Any change in principles or 18
in models results in an analysis of the gap between what already exists and 19
what is called for by the changed strategy and the redefined enterprise 20
architecture. FF 08. Such an analysis by a computer necessarily involves 21
computation, which results in a value. As this value is between current and 22
changed states, it is necessarily related to transforming the enterprise. Thus, 23
at least step [9] alternative (i) is found described by the art. 24
We are not persuaded by the Appellants’ argument that Buchanan's 25
modeling to realign IT projects with corporate goals does not teach or 26
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suggest that any of those corporate goals are themselves the end point of an 1
enterprise change. Reply Br. 7. 2
The limitation at issue merely recites “defining the goal as a corporate 3
directive establishing a final end point of an enterprise change.” It does not 4
require that the goal be the end point, but only that the goal in some way 5
establish an end point. Buchanan describes how the goal is to concentrate 6
on those aspects of the business process that will need to be changed in order 7
to deliver the new corporate values and priorities. FF 07. Such a goal 8
necessarily establishes the values and priorities as end points. Thus, at least 9
step [9] alternative (ii) is also found described by the art. 10
The remaining independent claims 32 and 52 have similar limitations 11
and the arguments made are similar to those in support of claim 1. The 12
remaining claims are argued only on the basis of their parent independent 13
claims. 14
CONCLUSIONS OF LAW 15
The rejection of claims 1-8, 10, 32-41, and 52-62 under 35 U.S.C. § 16
103(a) as unpatentable over Buchanan, Frank, and Golightly is proper. 17
The rejection of claim 63 under 35 U.S.C. § 103(a) as unpatentable over 18
Buchanan, Frank, Golightly, and Chalmeta is proper. 19
DECISION 20
The rejection of claims 1-8, 10, 32-41, and 52-63 is affirmed. 21
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED 5
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