Ex Parte Bogdan

Patent Trial and Appeal Board

Aug 16, 2016

12327008 (P.T.A.B. Aug. 16, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/327,008 12/03/2008 Pamela A. M. Bogdan 2008-1152 (40147/07801) 4463
83719 7590 08/16/2016
AT & T Legal Department - FKM
AT & T LEGAL DEPARTMENT,
ATTN: PATENT DOCKETING ROOM 2A-207
BEDMINSTER, NJ 07921
EXAMINER
WU, JUNCHUN
ART UNIT PAPER NUMBER
2191
MAIL DATE DELIVERY MODE
08/16/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAMELA A. M. BOGDAN
___________________

Appeal 2015-0020821
Application 12/327,008
Technology Center 2100
____________________

Before JEAN R. HOMERE, BRUCE R. WINSOR, and
JOHN R. KENNY, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–4, 6–12, and 14–20. Claims 5 and 13
have been canceled. Claims App’x. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 Appellant identifies the real party in interest as AT&T Intellectual Property
I, LP. App. Br. 2.

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Appellant’s Invention
Appellant’s invention is directed to a generic benefits calculator (110)
for assessing the financial and operational costs of an information
technology (IT) project based on descriptive parameters input by a user.
Spec. ¶ 4, Fig. 1. In particular, upon receiving from the user non-financial
input parameters via an end-user input module (112) and a core input
module (114), a core analysis module (116) converts the parameters into
financial information based on financial translation values. Id. at ¶¶ 17–19,
22.
Illustrative Claim
Independent claim 1 is illustrative, and reads as follows:
1. A method, comprising:
receiving user input corresponding to parameters of an information
technology project;
retrieving information corresponding to the information technology
project, wherein the parameters and the information are non-financial;
calculating, based on the parameters, updated information
corresponding to the information technology project;
creating a summary of the updated information corresponding to the
information technology project; and
converting the parameters and information into financial information
based on financial translation values.

Prior Art Relied Upon
Muckley US 6,550,053 B1 Apr. 15, 2003
Rosnow US 2003/0106039 A1 June 5, 2003
Eckart US 2005/0240467 A1 Oct. 27, 2005
Angermeier US 2006/0136328 A1 June 22, 2006

Rejections on Appeal
Appellant requests review of the following Examiner’s rejections:
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Claims 1, 9, and 17 stand rejected under 35 U.S.C. § 112, first
paragraph as being failing to comply with the written description
requirement.
Claims 1–4, 6, 8–12, and 14–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Angermeier,
Rosnow, and Eckart.2
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Angermeier, Rosnow, Eckart, and
Muckley.

ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 3–10, and the Reply Brief, pages 2–12.3

Written Description Rejection
Appellant argues the Examiner erred in concluding that the recitation
of converting non-financial parameters and information into financial
information based on translation values, as recited in independent claim 1, is

2 Although the Examiner’s statement of the rejection only sets forth claims
1–4, 6, and 8, the body of the rejection discusses claims 9–12, and 14–20.
Final Act. 3–9.
3 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed June 24, 2014), the Reply Brief (filed
December 1, 2014) and the Answer (mailed October 1, 2014) for their
respective details. We have considered in this Decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2012).
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not supported by the original Specification. App. Br. 3–4. According to
Appellant, the disclosure in the Specification of inputting into a core module
“factory process” benefits, high-level IT project cost estimations, and
scheduling into an end-user input module supports inputting in the module
both financial and non-financial parameters of an IT project. Reply Br. 4
(citing Spec. ¶ 23). Likewise, Appellant argues the disclosure of inputting
into the core input module official forecast data, IT scheduling and monetary
translations resulting statistical information into dollar values also supports
the input of both financial and non-financial parameters in the module. Id.
(citing ¶ 24). This argument is persuasive.
Although the Examiner correctly concludes that the disclosure of
project cost estimations and statistical information are not directed to non-
financial parameters, we agree with Appellant that the input modules also
accept non-financial user inputs such as forecasting and scheduling
information. Ans. 10–11. Because the input modules support the entry of
both financial and non-financial parameters, we agree with Appellant that
the originally-filed Specification supports the conversion of non-financial
data into financial data. We, therefore, do not sustain the written description
rejection of claims 1, 9, and 17.

Obviousness Rejections
Appellant argues that the combination of Angermeier, Rosnow, and
Eckart does not teach or suggest converting non-financial parameters and
information into financial information translation values. App. Br. 5–8. In
particular, Appellant argues that Eckart’s disclosure of converting to a
standard format business performance information including account labels
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(account numbers, names, balance) does not teach the disputed limitations.
Reply Br. 7. According to Appellant, although the business performance
information includes non-financial information (account numbers, names),
the conversion itself is performed on the balance field, which is financial
data, and not non-financial data. Id. 7–8 (citing Eckart ¶¶ 43, 51, 52, 77).
Accordingly, Appellant submits that Eckart does not cure the admitted
deficiencies of Angermeier. This argument is not persuasive.
As acknowledged by Appellant, Eckart discloses converting to a
standard format the business performance text file including non-financial
data (account name, number fields) and financial data (balance field) by
generating one or more performance reports for subsequent financial
analysis. Eckart ¶ 43. In particular, Eckart discloses a conversion module
that uses a conversion map to associate the values of business performance
classifications with corresponding values of the standard business
performance classifications. Id. at ¶¶ 77–78. This conversion and analysis
process creates a dashboard with financial information. Ans. 11–12; Eckhart
¶ 52, Fig. 7. And with this conversion and analysis, non-financial
information is used to create financial data (e.g., used to aggregate financial
data.) Ans. 5; Eckhart Figs. 5 and 7. Furthermore, we agree with the
Examiner that such conversion of input parameters complements
Angermeier’s explicit disclosure of non-financial input parameters (e.g.,
duration, schedule for a project) to predictably result in an executive report
that evaluates the non-financial input parameters describing a project as a
way to generate a cost based analysis therefor. Id. at 3–5 (citing Angermeier
¶¶ 15, 23, 29).
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KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Therefore,
we concur with the Examiner that the proposed combination of Angermeier,
Rosnow, and Eckart teaches or suggests the disputed limitations.
For at least the aforementioned reasons, we find Appellant has not
provided arguments or evidence persuasive of error in the Examiner’s
rejection of representative claim 1. It, therefore, follows that Appellant has
not shown error in the Examiner’s obviousness rejection of claim 1.
Regarding claims 2–11, 23–24, 6–12, and 14–20, because Appellant
reiterates substantially the same arguments as those previously discussed for
patentability of claim 1 above, claims 4, 6–12, and 14–20 fall therewith. See
37 C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s prior art rejections of claims 1–4, 6–12, and
14–20. However, we reverse the Examiner’s written description rejection of
claims 1, 9, and 17.4
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

4 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101, as potentially being directed to non-
statutory subject matter, i.e., an abstract idea, in light of the two-step
framework set out in the Supreme Court decision in Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347 (2014).
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AFFIRMED