Ex Parte Clarke

Board of Patent Appeals and Interferences

May 17, 2012

11267698 (B.P.A.I. May. 17, 2012)

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.
11/267,698 11/04/2005 Hernan J. Clarke 153308.90011 4601
7590 05/18/2012
Robert D. Atkins
Quarles & Brady LLP
One Renaissance Square
Two North Central Avenue
Phoenix, AZ 85004
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
05/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HERNAN J. CLARKE
____________________

Appeal 2010-005973
Application 11/267,698
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005973
Application 11/267,698

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-4, 7-11, and 13-22. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

BACKGROUND
Appellant’s invention is directed to an enterprise project management
system and method having multiple structural modules for assigning and
tracking work progress (Spec., para. [0002]).
Claim 1 is illustrative:

1. A computer implemented method of project management,
comprising:
retrieving project tasks from a database using a
distributed computer network, each project task having a cost
center, account number, job identification (ID), description,
type, work duration, start time, and priority, each project task
describing an activity to be performed by available resources,
the available resources including personnel, equipment, parts
and tools;
displaying the project tasks using a user interface, the
user interface allowing a user to create a work breakdown
structure of dependencies between the project tasks by defining
dependency chains between related project tasks and wherein
the work breakdown structure is organized as a set of
hierarchical related project tasks using the user interface;
providing a resource breakdown structure of the available
resources, the resource breakdown structure being stored in the
database and describing the personnel, equipment, parts and
tools, each personnel entry in the resource breakdown structure
describing a cost center, account number, resource type, ID,
description and skill number;
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providing a calendar breakdown structure of availability
of the resources;
optimizing allocation of the resources to the project tasks
within constraints of the resources in accordance with the work
breakdown structure and calendar breakdown structure using an
earned value of each of the personnel, equipment, parts and
tools of the resource breakdown structure to correlate an
efficiency of each of the available resources, the earned value
of the personnel being dependent upon the skill number of the
personnel;
scheduling the resources to complete the project tasks by:
sorting the project tasks by priority in accordance with any
defined dependency chains, and
allocating resources to each of the project tasks in
accordance with the earned value of each of the personnel,
equipment, parts and tools of the resource breakdown structure;
and
displaying a resource schedule using the user interface
for assignment of tasks to one or more resources by the user.

Appellant appeals the following rejections:
1. Claims 13-18 under 35 U.S.C. § 112, First Paragraph.
2. Claims 1-4, 7-11, and 13-22 under 35 U.S.C. § 101 as reciting
unpatentable subject matter.
3. Claims 1-4, 7-11, and 13-22 under 35 U.S.C. § 103(a) as
unpatentable over Blackmon (US 2005/0171790 A1, pub. Aug. 4,
2005), Cahill (US 7,266,570 B2, iss. Sep. 4. 2007), and Oliver (US
2002/0082889 A1, pub. Jun. 27, 2002).

Appeal 2010-005973
Application 11/267,698

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ANALYSIS
Rejection of claims 13-18 under 35 U.S.C. § 112
At the outset, we note that it is not entirely clear whether the rejection
is directed to enablement or written description requirement of 35 U.S.C. §
112, since the discussion of both are intertwined.
In any case, in order to determine if the claims meet the requirement
of the first paragraph of 35 U.S.C. § 112, a claim construction must first be
conducted. The proper analysis of claims in means-for form must begin by
consulting the Specification to determine claim scope. In this case, the
Examiner has not included the necessary analysis. See, e.g., In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc) (“[T]he PTO
was required by statute to look to Schuler's specification and construe the
‘means' language recited in the last segment of claim 1 as limited to the
corresponding structure disclosed in the specification and equivalents
thereof.[]”) (footnote omitted).
In addition, an enablement rejection requires setting out the analysis
under the Wands factors, but the Examiner did not do this analysis.
Further, the factual inquiry for determining whether a specification
provides sufficient written description for the claimed invention is whether
the specification conveys with reasonable clarity to those skilled in the art
that, as of the filing date sought, applicant was in possession of the invention
as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991). The Specification discloses the structure for the means-for claim
limitations as follows at page 7 of the Appeal Brief: Figures 3, 6, 9, 12, and
13; pages 7:10-23, 14:10-22, 15:12-23, 16:30-17:17, and 19:1-6.
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We therefore reverse the rejection of claims 13-18 under 35 U.S.C. §
112, First Paragraph.
Obviousness – Claims 13-18
We are persuaded of error by the Examiner, because the Examiner did
not construe the meaning of the means-for claims by analyzing the structure
disclosed in the Specification, as required, as explained above. We therefore
reverse the rejection of claims 13-18 under 35 U.S.C. § 103(a) for failure by
the Examiner to perform the required claim construction because the scope
of the claims has not been determined. As such, in our view a prima facie
case of obviousness has not been established
Patentable Subject Matter under 35 U.S.C. § 101 – Claims 13-18
We are persuaded of error on the part of the Examiner that the system
claims recite ineligible subject matter, because, as with the 35 U.S.C. §
103(a) rejection of these claims, the Examiner did not perform the proper
analysis to construe the meaning of the means-for claim requirements under
35 U.S.C. § 112, Sixth Paragraph. Without this analysis, it is not clear what
the claim covers and thus a determination of patentable subject matter
cannot be made. We therefore reverse the rejection of claims 13-18 under
35 U.S.C. § 101.
Patentable Subject Matter under 35 U.S.C. § 101 – Claims 1-4 and
7-11
We are persuaded of error on the part of the Examiner that the method
claims recite unpatentable subject matter. This is because the use of a
computer and its database is inextricably required throughout the retrieving,
displaying, and identifying steps of the method. We therefore reverse the
rejection of claims 1-4 and 7-11 under 35 U.S.C. § 101.
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Obviousness – Claims 1-4, 7-11, and 19-22
Independent claims 1, 7, and 19 each require allocating, or optimizing
allocation of, human resources on a project “using an earned value of each
of the personnel, equipment, parts and tools of the resource breakdown
structure to correlate an efficiency of each of the available resources, the
earned value of the personnel being dependent upon the skill number of the
personnel.” We construe this to require allocating personnel based on
personnel efficiency.
The Examiner directs us to Blackmon, paragraphs [0024], [0028],
[0033], [0037], [0038], [0041], [0046], [0047], [0055], [0059], and [0064]
(Ans. 10-11), and Oliver, abstract and paragraphs [0022] (Ans. 11).
However, we do not find at these portions any discussion of allocation of
personnel based on personnel efficiency. The Examiner does not show how
a person with ordinary skill in the art would use what is disclosed in the
sections to meet the claim requirements.
We therefore reverse the rejection of claims 1-4, 7-11, and 19 to 22
under 35 U.S.C. § 103(a).
DECISION
We reverse the decision of the Examiner to reject claims 13-18 under
35 U.S.C. § 112, First Paragraph.
We reverse the decision of the Examiner to reject claims 1-4, 7-11,
and 13-22 under 35 U.S.C. § 101.
We reverse the decision of the Examiner to reject claims 1-4, 7-11,
and 13-22 under 35 U.S.C. § 103(a).
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REVERSED

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