Ex Parte Clark et al

Patent Trial and Appeal Board

Dec 31, 2018

12765947 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/765,947 04/23/2010
106095 7590 01/03/2019
Baker Botts LLP/CA Technologies
2001 Ross Avenue
SUITE 900
Dallas, TX 75201
FIRST NAMED INVENTOR
Terrence G. Clark
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.
063170.9344 1472
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TERRENCE G. CLARK, PETER J. GILBERT,
JAMES B. MERCER, and JANNE M.P. KOPONEN
Appeal2017-000609
Application 12/765,947 1
Technology Center 3600
Before TARA L. HUTCHINGS, ROBERT J. SILVERMAN, and
ALYSSA A. FINAMORE Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellants identify CA, Inc. as the real party in interest. Appeal Br. 3.
Appeal2017-000609
Application 12/765,947
ILLUSTRATIVE CLAIM
1. A computer-implemented method for managing
sustainability for an organization, the method comprising:
storing in a computer system a plurality of characteristics
of an activity, the activity contributing to the carbon footprint of
an organization, the plurality of characteristics comprising:
a unit of measurement;
an activity category;
a plurality of geographic hierarchical descriptors;
and
a respective multiplier for each one of the plurality
of geographic hierarchical descriptors, wherein each
respective multiplier is associated with a respective time
stamp;
storing in the computer system characteristics of a
stakeholder object defining a stakeholder of the organization
that is impacted by the activity, the characteristics of the
stakeholder object comprising (1) a first indication of an extent
to which a stakeholder interest actually aligns with an
organizational interest and (2) a second indication of an extent
to which the stakeholder interest could potentially be optimally
aligned with the organizational interest;
receiving from the computer system data representing a
number of the unit of measurement;
receiving from the computer system data representing a
first one of the plurality of geographic hierarchical descriptors;
calculating using a processor of a computer unit a carbon
emission value based at least in part by multiplying the number
of the unit of measurement by the respective multiplier of the
first one of the plurality of geographic hierarchical descriptors;
storing in the computer system the carbon emission
value;
in response to determining that the first indication of the
extent to which the stakeholder interest actually aligns with the
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Application 12/765,947
organizational interest differs from the second indication of the
extent to which the stakeholder interest could potentially be
optimally aligned with the organizational interest by a
predetermined amount, transmitting a progress report regarding
the activity to the stakeholder;
receiving from the computer system data representing a
second one of the plurality of geographic hierarchical
descriptors; and
in response to the received data representing the second
one of the plurality of geographic hierarchical descriptors,
automatically updating the stored carbon emission value with a
recalculated carbon emission value, wherein the automatically
updating comprises:
determining that the respective multiplier of the
second one of the plurality of geographic hierarchical
descriptors is out of date based on the associated time
stamp;
updating the respective multiplier of the second
one of the plurality of geographic hierarchical
descriptors; and
multiplying the number of the unit of measurement
by the respective multiplier of the second one of the
plurality of geographic hierarchical descriptors.
CITED REFERENCES
McConnell et al. US 2007 /0260405 Al Nov. 8, 2007
(hereinafter "McConnell")
Kumar et al.
(hereinafter "Kumar")
US 2008/0270205 Al
Sandor et al. US 2009/0043653 Al
(hereinafter "Sandor")
Chan et al. US 2010/0114836 Al
(hereinafter "Chan")
Oct. 30, 2008
Feb. 12,2009
May 6, 2010
Claire Capon, Understanding Organisational Context (2d ed., 2004)
(hereinafter "Capon")
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Application 12/765,947
REJECTIONS
I. Claims 1-20 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.
II. Claims 1-20 are rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, 2 as failing to comply with the written-description requirement.
III. Claims 1-20 are rejected under 35 U.S.C. § 112 (pre-AIA),
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter regarded as the invention.
IV. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sandor, McConnell, Chan, Kumar, and Capon.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
We begin by addressing the written-description rejection, followed by
the indefiniteness rejection, the subject-matter-eligibility rejection, and the
obviousness rejection.
Written Description
Claims 1-20 stand rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written-description requirement, in
regard to the following features recited in independent claim 1, for example:
storing in the computer system characteristics of a
stakeholder object defining a stakeholder of the organization
2 The pre-AIA version of the statute is applied herein, because the
Application under review was filed before the effective date of§ 4( c) of the
Leahy-Smith America Invents Act (AIA) (September 16, 2012). See, e.g.,
MPEP § 2161(I).
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that is impacted by the activity, the characteristics of the
stakeholder object comprising (1) a first indication of an extent
to which a stakeholder interest actually aligns with an
organizational interest and (2) a second indication of an extent
to which the stakeholder interest could potentially be optimally
aligned with the organizational interest; [ and]
in response to determining that the first indication of the
extent to which the stakeholder interest actually aligns with the
organizational interest differs from the second indication of the
extent to which the stakeholder interest could potentially be
optimally aligned with the organizational interest by a
predetermined amount, transmitting a progress report regarding
the activity to the stakeholder.
See Final Action 9--10.
The Appellants argue that the Specification adequately describes the
identified limitations, referring to the following passage of the Specification:
The stakeholder object may further enable a user or
manager application 150 to score the extent to which
stakeholder interests align with organizational interests and/or
the extent to which such interests may be optimally aligned. In
some cases, this information may indicate the volatility of
particular stakeholder relationships. For example, if a
stakeholder is rated as important and the delta between actual
and optimal interest alignment is high, then manager
application 150 may suggest taking action to improve the
relationship. Manager application 150 may be capable of
generating reports that indicate organization activities that have
a significant impact on stakeholder interests. Thus, step 218
may include generating a variety of reports logically linked to
particular stakeholders, which may be used, for example, to
help shape the perception of sustainability efforts and
objectives.
In various embodiments, stakeholder objects may be
linked to one or more projects. In this manner, stakeholder
interests may be a factor considered during the portfolio
identification of step 210. Additionally, during the course of a
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project, various progress reports and/or dashboards may be
generated in step 218 and automatically communicated to
stakeholders. The relevant stakeholder identities for each
project may be readily determined using the linked stakeholder
objects. In addition, as shown in FIGURE 9, the nature of
various relationships between stakeholders and projects may be
defined. For example, the stakeholder "Building Technologies,
Inc." is shown as having or expected to have a very strong
influence over the "building insulation" project. As another
example, the stakeholder "Employees" are impacted only
minimally by the "several consolidation" project.
Appeal Br. 19 ( quoting Spec. 22, 11. 5-26).
To satisfy the written description requirement, the patent disclosure
must "reasonably convey[ ] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). The Specification must describe the claimed subject matter, although
it need not contain the exact wording used in the claim. See Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
According to the Examiner, the disclosure of the identified portion of
the Specification is inadequate:
While the [S]pecification describes the stored 'indications' as
scores (see [S]pecification Pg. 22, Ln. 5-15 and FIG. 2),
'indication' is broad enough to cover any type of data. There is
no discussion of what the indications are based upon or how
Appellants contemplated comping [sic] up with them other than
the indications may indicate volatility of particular stakeholder
relationships. The disclosure does not [sic] a sufficient
description of the indications to support such a broad claim for
any and all indications. There is also no discussion of how
differences in the indications (which could be any type of data)
would be determined.
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Answer 7. Yet, the purported frailties that the Examiner describes do not
stem from any uncertainty about whether the Appellants "had possession of
the claimed subject matter as of the filing date." Ariad, 598 F.3d at 1351.
Rather than possession of the claimed subject matter, the Examiner's
determination that the Specification fails to show "what the indications are
based upon" (Answer 7), for example, speak more directly to an inquiry into
claim definiteness, under 35 U.S.C. § 112 (pre-AIA), second paragraph,
because the Examiner's concern is whether a person of ordinary skill in the
art would be able to understand the meaning of this claim language.
Therefore, we are persuaded that the Examiner has not shown
sufficiently that independent claim 1 fails to comply with the
written-description requirement. The same reasoning applies to the other
independent claims in the Appeal ( claims 8 and 15). Accordingly, we do not
sustain the rejection of claims 1-20 under 35 U.S.C. § 112 (pre-AIA), first
paragraph.
Indefiniteness
During the Office's evaluation, under 35 U.S.C. § 112 (pre-AIA),
second paragraph, a proposed patent "claim is indefinite when it contains
words or phrases whose meaning is unclear," i.e., "ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention." In re Packard, 751 F.3d 1307, 1310-11 (Fed. Cir.
2014) (per curiam); see also In re McAward, No. 2015-006416, 2017 WL
3669566, at *3, *5-*6 (PTAB Aug. 25, 2017) (precedential).
The Examiner rejects claims 1-20, for being indefinite - specifically
pointing to the following features of exemplary independent claim 1, as
problematic:
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( 1) a first indication of an extent to which a stakeholder interest
actually aligns with an organizational interest and (2) a second
indication of an extent to which the stakeholder interest could
potentially be optimally aligned with the organizational interest.
See Final Action 11. See also Answer 8-9. According to the Examiner, the
circumstances in which a "stakeholder interest" "actually aligns with an
organizational interest" and in which it "could potentially be optimally
aligned with the organizational interest" are not clearly defined, and the
Specification discloses no technique for measuring these characteristics or
for ascertaining whether these limitations might be satisfied. See Final
Action 11. See also Answer 8-9.
The Appellants argue that the identified language of claim 1 is
sufficiently clear, pointing out that "[ a ]ctual alignment describes a current
state of alignment or the state of alignment at the last measurement date,
while potential optimal alignment is that maximum possible alignment
between the stakeholder and organizational interests." Appeal Br. 20.
Further, the Appellants contend that the Specification clearly describes the
claim language in question:
For example, the Application as filed, Page 22, Lines 5-26
describes an "extent to which stakeholder interests align with
organizational interests and/or the extent to which such interests
may be optimally aligned." The Specification continues to state
that "if a stakeholder is rated as important and the delta between
actual and optimal interest alignment is high," then the manager
application can suggest taking an action "to improve the
relationship." Id. at 22:9-11[.] "[T]he nature of various
relationships between stakeholders and projects may be
defined." Id. at 22:22-24.
Id. at 20-21.
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The Appellants' arguments are not persuasive of error in the rejection
of claim 1. The Appellants offer alternative expressions for some of the
identified claim language - i.e., "a current state of alignment" or "the state
of alignment at the last measurement date" (for the recited "actual
alignment"), and "maximum possible alignment" (for the recited "potential
optimal alignment"). Id. at 20. Yet, the Appellants' proposed alternative
expressions are no clearer than their corresponding phrases in claim 1. Nor
do the Appellants' alternative expressions and citations to the Specification
address the Examiner's point that a person of ordinary skill in the art would
not be able to evaluate the claimed "align[ment]," so as to determine the
scope of the claim. See Final Action 11. See also Answer 8-9.
In view of the foregoing, we are not persuaded that the rejection of
independent claim 1, as being indefinite, is erroneous. This determination
also applies to independent claims 8 and 15, which contain language similar
to that discussed above, and which the Appellants do not argue separately.
Accordingly, we sustain the rejection of claims 1-20 under 35 U.S.C. § 112
(pre-AIA), second paragraph.
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
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them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply"' these basic tools of scientific and technological work.
Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under this
judicial exclusion, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim in
question is directed to judicially excluded subject matter (such as a so-called
"abstract idea"); the second step determines whether there are any
"additional elements" recited in the claim that ( either individually or as an
"ordered combination") amount to "significantly more" than the identified
judicially excepted subject matter itself. Id. at 2355.
Although "claim construction is not an inviolable prerequisite" to an
analysis under § 101, "a full understanding of the basic character of the
claimed subject matter" is, nevertheless, needed to evaluate questions of
subject-matter eligibility. Bancorp Servs., LLC v. Sun Life Assur. Co. of
Canada (US.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012). See also McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016)
("As an initial matter, we note that, in this case, claim construction is helpful
to resolve the question of patentability under § 101.")
In the present Appeal, we are unable to ascertain such an
understanding of the claimed subject matter and, therefore, we do not assess
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the merits of the rejection under§ 101. For the reasons given above, we
determine that the claims are indefinite under 35 U.S.C. § 112 (pre-AIA),
second paragraph- a problem that affects both the Examiner's
identification of an abstract idea (i.e., the judicial exclusion to which the
claims are said to be directed), as well as claim elements that the Appellants
allege to constitute significantly more than the abstract idea.
According to the Examiner, in regard to the first Alice step, the claims
are directed to an abstract idea, described variously as "a method for
measuring an activity of an organization and measuring stakeholder
interests" (Final Action 3) and "managing organization activities and
stakeholders" (id. at 6). These characterizations invoke the very claim
recitations - i.e., claim 1 's "align[ ment ]" of "stakeholder" and
"organizational" "interests," as well as the "extent to which" these
"interest[ s ]" "could potentially be optimally aligned" - that engender
indefiniteness.
Furthermore, the Appellants argue, under the second Alice step, that
the same questionable claim language amounts to something "significantly
more" than the identified abstract idea:
[ A ]dditional limitations are recited in the claims such that they
amount to significantly more than the mathematical operation
itself. For example, Claim 1 recites additional steps of
determining that the first indication of the extent to which the
stakeholder interest actually aligns with the organizational
interest differs from the second indication of the extent to which
the stakeholder interest is optimally aligned with the
organizational interest by a predetermined amount, and
transmitting a progress report regarding the activity to the
stakeholder. Thus, the claim as a whole does not simply
describe the calculation of a pollutant quantity, but combines
steps regarding selection of an acceptable pollutant factor for
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the location based on the time stamp to calculate the emission
value with management of stakeholder interests. The claim
goes beyond the mere concept of simply retrieving and
combining data using a computer.
Appeal Br. 1 7-18 ( emphasis added).
Under the present circumstances, the rejection under § 101 must fall,
proforma, because it is necessarily based upon a speculative assumption as
to the meaning of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA
1962) (addressing an obviousness rejection). This determination does not
reflect on the merits of the underlying rejection based upon§ 101.
Therefore, notwithstanding the merits of the rejection, we do not
sustain the rejection of claims 1-20 under 35 U.S.C. § 101.
Obviousness
The Appellants advance two arguments alleging error in the
obviousness rejection of claims 1-20.
In the first argument, the Appellants contend that independent claim 1
stands rejected erroneously, because the cited prior art references do not
teach or suggest the limitations emphasized below:
storing in the computer system characteristics of a
stakeholder object defining a stakeholder of the organization
that is impacted by the activity, the characteristics of the
stakeholder object comprising (1) a first indication of an extent
to which a stakeholder interest actually aligns with an
organizational interest and (2) a second indication of an extent
to which the stakeholder interest could potentially be optimally
aligned with the organizational interest;
receiving from the computer system data representing a
number of the unit of measurement;
receiving from the computer system data representing a
first one of the plurality of geographic hierarchical descriptors;
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calculating using a processor of a computer unit a carbon
emission value based at least in part by multiplying the number
of the unit of measurement by the respective multiplier of the
first one of the plurality of geographic hierarchical descriptors;
storing in the computer system the carbon emission
value;
in response to determining that the first indication of the
extent to which the stakeholder interest actually aligns with
the organizational interest differs from the second indication
of the extent to which the stakeholder interest could
potentially be optimally aligned with the organizational
interest by a predetermined amount, transmitting a progress
report regarding the activity to the stakeholder[,]
as recited in claim 1, and similarly recited in claims 8 and 15. Appeal Br.
21-22 (Appellants' emphasis).
The Appellants' first non-obviousness argument turns on claim
language giving rise to claim indefiniteness, as discussed above. Because
evaluating this nonobviousness argument would necessarily be based upon
speculation as to the meaning of the claims, the rejection cannot stand and is
reversed, proforma, herein. See Steele, 305 F .2d at 862---63. This
determination does not reflect on the merits of the underlying rejection based
upon§ 103(a).
As to the Appellants' second argument, the Appellants contend that
neither McConnell nor Sandor teach or suggest the following limitation:
automatically updating the stored carbon emission value
with a recalculated carbon emission value, wherein the
automatically updating comprises:
determining that the respective multiplier of the second
one of the plurality of geographic hierarchical descriptors is out
of date based on the associated time stamp;
updating the respective multiplier of the second one of
the plurality of geographic hierarchical descriptors; and
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multiplying the number of the unit of measurement by the
respective multiplier of the second one of the plurality of
geographic hierarchical descriptors.
See Appeal Br. 24--25.
Critical to the Appellants' position are the assertions that "McConnell
does not disclose, teach, or suggest each respective multiplier is associated
with a respective time stamp" and that "Sandor does not cure this
deficiency," such that the claimed features of "determining that the
respective multiplier ... is out of date" and "updating the respective
multiplier" are not taught or suggested by the prior art of record. Id. at 25.
The Appellants' second argument is unpersuasive, because the
Examiner relies upon Chan for the "time stamp" feature - not McConnell
or Sandor. See Final Action 16-18. See also Answer 13-18.
For the reasons provided above - and notwithstanding the merits of
the rejection and the unpersuasiveness of the Appellants' second argument
-we do not sustain the rejection of claims 1-20 under 35 U.S.C. § 103(a).
DECISION
We REVERSE, proforma, the Examiner's decision rejecting claims
1-20 under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written-description requirement.
We AFFIRM the Examiner's decision rejecting claims 1-20 under 35
U.S.C. § 112 (pre-AIA), second paragraph, for failing to particularly point
out and distinctly claim the subject matter regarded as the invention.
We REVERSE, proforma, the Examiner's decision rejecting claims
1-20 under 35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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