Ex Parte Corrigan et al

Patent Trial and Appeal Board

Jun 7, 2016

12824699 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/824,699 06/28/2010 Kiara Groves Corrigan
56436 7590 06/09/2016
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.
82263047 1356
EXAMINER
MOONEYHAM, JANICE A
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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
Ex parte KIARA GROVES CORRIGAN and AMIP J. SHAH
Appeal2013-007442
Application 12/824,699
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1, 2, 4---6, 8, 9, 11, and 14--20. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Feb.
11, 2013), ReplyBrief("ReplyBr.," filed May 18, 2013), and the
Examiner's Answer ("Ans.," mailed Mar. 29, 2013).
2 Appellants identify the real party in interest as "Hewlett-Packard
Development Company, LP." App. Br. 1.
Appeal2013-007442
Application 12/824,699
CLAIMED INVENTION
Appellants' claimed invention relates to determining the
environmental impact and assessing the environmental footprint of an
organization (Spec. if 1 ). Claim 1, reproduced below with bracketed matter
added, is illustrative of the subject matter on appeal.
1. A computing system, comprising:
a storage configured to store:
[ 1] first environmental information indicative of an aggregate
environmental impact of an activity performed by multiple
entities; and
[2] first financial information related to an entity's association
with the activity;
[3] second environmental information indicative of aggregate
environmental impact of support activities performed by
multiple entities; and
[ 4] second financial information related to support activities of
the entity; and
a processor configured to:
[5] determine the environmental impact of the entity's
association with the activity based on the first environmental
information and the first financial information;
[6] determine the environmental impact of the entity's support
activities based on the second environmental information and
the second financial information; and
[7] determine the environmental impact of the entity based on
the environmental impact of the entity's association with the
activity and the environmental impact of the entity's support
activities.
App. Br. 20, Claims Appendix.
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Application 12/824,699
REJECTIONS
Claims 11 and 14--20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. 3
Ans. 4--6.
Claims 1, 2, 4--6, 8, 9, 11, and 14--20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Xu (US 2011/0119115 Al, pub. May 19,
2011) and Waibel (US 2011/0119199 Al, pub. May 19, 2011). Id. at 6-16.
ANALYSIS
Written Description
Claims 11and16-20
Appellants argue that the Examiner failed to establish a prima facie
case for the rejection of claims 11, 14, and 16-20 under 35 U.S.C. § 112,
first paragraph. App. Br. 9-10. Whether a specification complies with the
written description requirement of 35 U.S.C. § 112, first paragraph, is a
question of fact. The Examiner has the initial burden of presenting evidence
or reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
We agree with Appellants that the Examiner has not met that initial burden
by failing to provide any explanation or reasoning in support of the rejection
of these claims. See Ans. 5---6, 16-17. Therefore, to the extent that a prima
facie case has not been established, we do not sustain the rejection of claims
11, 14, and 16-20 for lack of written description.
3 The rejection of claims 1, 2, 4--6, 8, and 9 under 35 U.S.C. § 112, first
paragraph, is withdrawn. Ans. 4.
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Appeal2013-007442
Application 12/824,699
Claim 15
The Examiner finds that Appellants' Specification fails to disclose
"adjust[ing] the environmental information to account for differences in the
entity's performance of the activity compared to the multiple organizations
performance of the activity" as recited in claim 15. Ans. 5. In particular, the
Examiner explains that"[ w ]hile other forms of 'adjusting' are taught in the
[S]pecification, there is no stated 'adjusting' to account for differences in the
entities' performance of the activity when compared to multiple
organizations. The act of 'adjusting' in the [S]pecification is not shown to be
a factor of a comparison." Id. at 17 (citing Spec. i-f 28).
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. The disclosure, as originally filed, need
not literally describe the claimed subject matter in order to satisfy the written
description requirement. But the Specification must convey with reasonabie
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention.
We agree with Appellants that paragraph 26 of the Specification,
which describes the environmental information as reflecting the
environmental impact of an activity when performed using practices
common across an industry, and adjusting the environmental information to
account for an entity's differing practices, conveys with reasonable clarity to
those skilled in the art that Appellants were in possession of the invention at
the time of filing, as recited in claim 15. Therefore, we do not sustain the
Examiner's rejection of claim 15 for lack of written description.
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Appeal2013-007442
Application 12/824,699
Obviousness
Claims 1, 2, and 5
In rejecting independent claim 1, the Examiner finds that Xu discloses
limitations [ 1]-[4] but fails to disclose "how the data is broken down per
activity per entity, however [the Examiner finds that] Waibel teaches the
association of a portion of the value associated with the activity of a specific
entity," as recited in limitations [5]-[7]. Ans. 6-7. Thus, the Examiner
concludes:
It would have been obvious for one of ordinary skill in the
art at the time of the invention to combine the teachings of Xu
and Waibel because of the motivation to provide accurate
environmental data for an organization. Xu and Waibel teach
emission management. Xu teaches a centralized system which
compares the performance metrics of an entity against one or
more benchmarks, while Waibel teaches portioning data per
entity in an interface.
Id. at 8.
Appellants argue that the emission management system of Waibel
estimates the environmental impact "not based on 'first environmental
information indicative of an aggregate environmental impact of an activity
performed by multiple entities"' (App. Br. 13, (citing Waibel i-fi-f 19, 31, and
42)), as recited in limitation [1]. Appellants further argue that "Waibel does
not even hint that the environmental impact of an entity's association with
an activity could be determined based on an aggregate environmental impact
of an activity performed by multiple entities." Id.
We are not persuaded by Appellants' arguments. Appellants' first
argument fails at least because the Examiner does not rely on Waibel to
reject limitation [ 1] of claim 1. See Final Act. 5; see also Ans. 6 (citing
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Appeal2013-007442
Application 12/824,699
Xu). Appellants' second argument is unpersuasive at least because claim 1
is rejected as obvious over the combination of Xu and Waibel, and not over
any one of them alone. By attacking Waibel individually, Appellants fail to
respond to the rejection of record. As the Examiner correctly points out,
non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. See Ans. 17-18. Thus, we sustain the rejection of independent
claim 1, including claims 2 and 5, which are argued based on their
dependency on claim 1. See App. Br. 14.
Claim 4
Claim 4 recites "determining the environmental impact of the entity is
further based on a production share associated with the entity's association
with the activity." App. Br. 21, Claims Appendix. The Examiner finds that
Xu in combination with Waibel renders claim 4 obvious. Ans. 8-9, 18-19
(citing Waibel iii! 14, 24, Fig. 3, claim 10). Appellants argue that the
Examiner mischaracterizes Waibel, because "the 'adjustment' recited in
claim 10 has nothing [to do] whatsoever with 'the portion of the financial
information related to the entity's production share;' instead, the
'adjustment' refers to a client-supported adjustment that the system adds or
subtracts from the estimated resource consumption." Reply Br. 6.
Appellants' argument is not persuasive of error because it is not
commensurate with the scope of claim 4. Claim 4 recites determining the
environmental impact of an entity based on a production share associated
with the entity's association with an activity; it does not require a
determination based on the portion of financial information related to the
entity's production share. Moreover, Appellants do not dispute the
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Application 12/824,699
Examiner's further findings in support of the rejection. See supra.
Therefore, because we are not apprised of reversible error on the part of the
Examiner, we sustain the rejection of claim 4.
Claim 6
We disagree with Appellants' contention that the emission
management system of Xu determines environmental impact for a client
from input resource and output product quantities entered by the client, "not
based on 'environmental information indicative of an aggregate
environmental impact of an activity performed by multiple entities."' App.
Br. 15; see also Reply Br. 7. Instead, we agree with the Examiner that
Figures 1 and 2 of Xu show that the emission management software is able
to present information to the client on a per facility or aggregated basis. See
Xu i-f 16. Xu discloses that benchmarks may be generated from clients that
are related, in the same industry, or in the same region. Id. at i-f 22.
We are not persuaded by Appeiiants' argument that "Xu in view of
Waibel does not disclose or suggest the second 'determining' elements of
claim 6." Id. Although Appellants address the Examiner's reliance on claim
10 of Waibel as discussed above, Appellants however do not explain why
information related to costs of various resources or facility revenue disclosed
in paragraph 17 of Xu cannot reasonably suggest Appellants' claimed
financial information. See, e.g., Spec. i-f 17 ("The financial information 120
may be any suitable financial information related to an entity, such as
revenue information.").
Therefore, we sustain the rejection of claim 6, including claims 8 and
9, which are argued based on their dependency on claim 6. See App. Br. 17.
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Appeal2013-007442
Application 12/824,699
Claim 11
We are not persuaded by Appellants' argument that "Xu does not
even hint that the environmental impact of an entity could be determined
based on the combined environmental footprint of multiple organizations
performing an activity" (App. Br. 18) for the reasons discussed above with
respect to claim 6. Xu is directed to an emission management system that
utilizes a comparison of the performance metric of an entity against one or
more benchmarks in order to provide initiatives to the entity for reducing
environmental impact. Xu, Abstract. Waibel is directed to an emission
management system that can estimate the resource consumption of an entity
based on comparable entities and determine a measure of environmental
impact from that estimate. Waibel, Abstract. Appellants' assertions in the
Reply Brief do not persuasively rebut the Examiner's conclusion of
obviousness by addressing insufficiencies or errors with the Examiner's
rationaie and reasoning for the combination based on the teachings of Xu
and Waibel. Therefore, we sustain the rejection of claim 11, and claims 14--
20, which are argued based on the dependency on claim 11. See App. Br.
18; see also Reply Br. 10.
DECISION
The rejection of claims 11 and 14--20 under 35 U.S.C. § 112, first
paragraph, is reversed. The rejection of claims 1, 2, 4--6, 8, 9, 11, and 14--20
under 35 U.S.C. § 103 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).
AFFIRMED
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