Ex Parte Chen et al

Patent Trial and Appeal Board

Jul 25, 2016

12786899 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121786,899 05/25/2010 Kay-Yut Chen
56436 7590 07/27/2016
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.
82262261 3461
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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
Exparte KAY-YUT CHEN,
JHILMIL JAIN, and
BENJAMIN I. DEMPSTER
Appeal2014-002554
Application 12/786,899 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kay-Yut Chen et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-7 and 11-23. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Hewlett-Packard Development Company, LP as
the real party in interest. App. Br. 1.
Appeal2014-002554
Application 12/786,899
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of planning a project, comprising
receiving a plurality of project requirements associated with a
project;
assigning, by a system having a processor, scores to the project
requirements to generate a numerical project model; and
matching, by the system, the project requirements to offerings
of a plurality of vendors based on an optimization of the numerical
project model, wherein the matching results in selection of an offering
of at least one of the plurality of vendors to use for the project.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Aycock
Ruffin
Chakraborty
us 5,765,138
US 6,249,769 Bl
US 2008/0040281 Al
Jun.9, 1998
Ju, 19,2001
Feb. 14,2008
"In addition, the Examiner takes Official Notice that it is old and well
known to re-run an analysis when new information has been provided which
may affect the results of the analysis." Final Act. 5 ("Official Notice").
The following rejections are before us for review:
1. Claims 1-7, 14--18, and 19-23 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ruffin and Chakraborty. 2
2 We treat the Examiner's mistaken reference to 35 U.S.C. § 102(b) at
page 2 of the Final Office Action as inadvertent.
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Application 12/786,899
2. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ruffin, Chakraborty, and Official Notice.
3. Claims 11-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ruffin, Chakraborty, and Aycock.
ISSUES
Did the Examiner err in rejecting claims 1-7, 9, 10, 14--18, and
19-23 under 35 U.S.C. § 103(a) as being unpatentable over Ruffin,
Chakraborty, and Official Notice?
Did the Examiner err in rejecting claims 11-13 under 35 U.S.C.
§ 103(a) as being unpatentable over Ruffin, Chakraborty, Official Notice,
and Aycock?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-7, 14-18, and 19-23 under 35 USC§ 103(a) as
being unpatentable over Ruffin andChakraborty.
The rejection of claims 9 and 10 under 35 USC§ 103(a) as being
unpatentable over Ruffin, Chakraborty, and Official Notice.
Claims 1-7 and 21
The Appellants argued claims 1-7 and 21 as a group (App. Br. 5).
We select claim 1 as the representative claim for this group, and the
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Appeal2014-002554
Application 12/786,899
remaining claims 2-7 and 21 stand or fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(l)(iv).
Claim 1 involves a project having a plurality of requirements.
Claim 1 describes a method whereby "scores" are assigned to the
requirements and then the requirements are matched "to offerings of a
plurality of vendors." The result is a "selection of an offering of at least one
of the plurality of vendors to use for the project."
According to claim 1, the assigning of scores generates "a numerical
project model." An optimization of the "numerical project model" is used to
match the requirements "to offerings of a plurality of vendors." The
Specification provides no definition for either a "numerical project model"
or its "optimization." Neither the claims nor the Specification place any
limit on the design of the "numerical project model." Apparently, the
"numerical project model" covers any desired scoring arrangement,
including one designed to fit a desired outcome. Optimization covers
adjusting said scoring arrangement to satisfy a "client" (see para. 25).
Putting it all together, claim 1 reasonably, broadly covers giving a
score to a project's requirements and then adjusting said score to match an
offering to use for the project.
The Appellants' main argument is that Ruffin discloses "a single
vendor attempting to sell products/solutions to qualified customers" in
contrast to the "matching project requirements associated with a project to
offerings of a plurality of vendors, as recited in claim 1." Reply Br. 2-3
(emphasis original). If we understand it correctly, the Appellants are
arguing that a project (i.e., a customer) in search of a matched vendor (as in
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Application 12/786,899
claim 1) is patentably distinct from a vendor in search of a qualified
customer (as in Ruffin). We disagree. In either case, a match is sought and
a selection made - either for a vendor as in claim 1 or a customer as in
Ruffin. Although the labels are different, both the claimed method and
Ruffin operate within a one-to-many relationship. The difference in labels
for the entities that comprise the one-to-many relationship are best
characterized as nonfunctional descriptive material. The claimed and Ruffin
selection processes operate the same way, irrespective of the entities' labels.
The Appellants make a similar argument with respect to the claimed
"optimization" of a "numerical model."
It appears that the Examiner is relying on Ruffin as purportedly
disclosing an optimization of a numerical project model. However,
even if such a numerical project model were to exist in Ruffin,
Appellant notes that any such model in Ruffin would be a model for
identifying qualified customers for an individual vendor. Therefore,
any such model in Ruffin would not be useable to match project
requirements to offerings of a plurality of vendors.
Reply Br. 4. This argument is unpersuasive as to error in the rejection. As
we stated, neither the claims nor the Specification place any limit on the
design of the "numerical project model" and, therefore, it reasonably broadly
covers any scoring arrangement. And, in light of the Specification,
"optimization" broadly covers adjusting the scoring arrangement to satisfy a
client. We do not see how a project (i.e., a customer) in search of a matched
vendor (as in claim 1) rather than a vendor in search of a qualified customer
(as in Ruffin) functionally affects a selection process involving a "numerical
project model" reasonably broadly covering any scoring arrangement
adjusted to satisfy a client.
The remaining arguments are unpersuasive.
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For the foregoing reasons, the rejection of claims 1-7 and 21 is
sustained.
Claim 9
The Appellants separately challenge the rejection of claim 9. App.
Br. 9.
The Examiner took "Official Notice that it is old and well known to
re-run an analysis when new information has been provided which may
affect the results of the analysis." Final Act. 5. The Appellants' argument is
that "[t]his general assertion of 'Official Notice' does not address the actual
specific elements of claim 9, namely automatically updating the matching
(of project requirements to offerings of a plurality of vendors) in response to
receipt of a new project requirement." App. Br. 9. We disagree. The
Examiner not only takes Official Notice that it is old and well known to
re-run an analysis when new information has been provided which may
affect the results of the analysis, but also provides a common example. See
Final Act. 5-6. The Examiner further found that
it would have been obvious to a person having ordinary skill in the
pertinent art at the time the invention was made to modify Ruffin to
include receiving a new project requirement after completing the
matching; automatically updating the matching in response to receipt
of the new project requirements; and updating the numerical project
model in response to receipt of the new project requirement in order to
ensure that the results of the matching process is accurate.
Final Act. 6. A prima facie case of obviousness has been made out in the
first instance by a preponderance of the evidence. The Appellants have not
shown error in the prima facie case.
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Claim 10
The Appellants separately challenge the rejection of claim 10 but on
the same ground used to challenge the rejection of claim 9. App. Br. 10.
For the same reason that the argument is unpersuasive as to error in the
rejection of claim 9, it is also unpersuasive as to error in the rejection of
claim 10.
Claims 14-18 and 22
The Appellants separately challenge the rejection of claims 14--18 and
22 but on the same grounds used to challenge the rejection of claim 1. App.
Br. 10-11. For the same reason that the arguments are unpersuasive as to
error in the rejection of claim 1, they are also unpersuasive as to error in the
rejection of claims 14--18 and 22.
Claims 19, 2 0, and 2 3
The Appellants separately challenge the rejection of claims 19, 20 and
23, but on the same grounds used to challenge the rejection of claim 1. App.
Br. 11. For the same reason that the arguments are unpersuasive as to error
in the rejection of claim 1, they are also unpersuasive as to error in the
rejection of claims 19, 20 and 23.
The rejection of claims 11-13 under 35 US.C. § 103(a) as being
unpatentable over Ruffin, Chakraborty, and Aycock.
There is no substantive challenge to this rejection. Accordingly, it is
sustained.
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CONCLUSIONS
The rejection of claims 1-7, 14--18, and 19-23 under 35 U.S.C.
§ 103(a) as being unpatentable over Ruffin and Chakraborty is affirmed.
The rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Ruffin, Chakraborty, and Official Notice is affirmed.
The rejection of claims 11-13 under 35 U.S.C. § 103(a) as being
unpatentable over Ruffin, Chakraborty, and Aycock is affirmed.
DECISION
The decision of the Examiner to reject claims 1-7 and 11-23 is
affirmed.
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
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