Ex Parte Farnes et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10085652 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte CHRISTOPHER D. FARNES, AMY SILVERMAN, STEPHEN P.
BEAR, DAVID J. WONG, and SUZANNE JONAS
____________________
Appeal 2009-002770
Application 10/085,652
Technology Center 3600
____________________
Decided: June 2, 2009
____________________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
KEVIN F. TURNER Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Final
Rejections of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b).

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SUMMARY OF THE DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION UNDER 37 C.F.R. § 41.50(b).1
THE INVENTION
Appellants’ claimed invention relates to a method and system which
provide a set of actions and tools to help identify and model customer
experience requirements (Spec. p. 1, ll. 6-7).
Independent claim 1, which is deemed to be representative,
reads as follows:
1. A method for developing a solution to a
customer experience issue, said method comprising:
a) identifying a target customer including customer
requirements and a customer profile;
b) defining a current customer experience and
comparing it with a customer experience provided by a
competitor;
c) summarizing values and benefits that should be
provided to said target customer;
d) identifying metrics for measuring success of a
solution;
e) identifying gaps between current solutions and
said benefits; and
f) generating solutions for delivering said benefits
and selecting a solution path which delivers the greatest
number of benefits.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jun. 08, 2007) and Reply Brief (“Reply Br.,” filed Mar. 24, 2008),
and the Examiner’s Answer (“Ans.,” mailed Jan. 23, 2008).
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THE REJECTION

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ulwick 6,115,691 Sep. 05, 2000
Bruce 2002/0049621 A1 Apr. 25, 2002

The following rejections are before us for review:
1. Claims 1, 2, 4, 13, 14, 18, 19, 27-30 and 33 are rejected under 35
U.S.C. §102(b) as being anticipated by Ulwick.
2. Claims 3, 5-12, 15-17, 20-26, 31 and 32 are rejected under 35
U.S.C. §103(a) as being unpatentable over Ulwick in view of Bruce.

ISSUES
1) Have Appellants shown that the Examiner erred in establishing that
Ulwick teaches or suggests "a customer profile,” a customer experience
provided by a competitor, and identifying gaps between current solutions
and said benefits as recited by Claim 1?
2) Have Appellants shown that the Examiner erred in establishing that
Ulwick teaches or suggests identifying gaps between current solutions and
benefits that should be provided to a target customer, defining a future
customer experience for a selected solution, developing an architecture for
implementing said solution path, and defining use-cases describing task
interactions between participants in said solution path and said solution path
as recited by Claim 27?
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3) Have Appellants shown that the Examiner erred in establishing that
Ulwick and Bruce teach or suggest identifying attributes of said target
customer associated with said customer experience issue to generate a
customer profile, generating a customer experience flow by organizing
components of a current customer experience according to their order of
occurrence, wherein said customer experience flow identifies instances in
which customer requirements are unmet as recited by Claim 20?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1) Ulwick is directed to a system that uses customer related data to
enable individuals and businesses to evolve and optimize their decision
making ability by taking into account substantially all relevant variables and
concerns that can affect a decision. (col. 5, ll. 46-52).
2) Ulwick refers to a mission “…as a particular task, project, or
decision which an individual, employee, or business is contemplating. Upon
selection of a specific mission, the data, including statements that define the
criteria for creating value are retrieved from a database along with other
pertinent facts that are critical to objective decision making.” (col. 1, ll. 31-
37).
3) Ulwick allows “…for each mission that a user may select, all the
individuals, groups of individuals or customers that must be considered in
order to achieve that mission are identified in advance, and presented to the
user.” (col. 6, ll. 7-10).
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4) Ulwick uses predictive metrics to quantify whether an organization
can compete effectively against other organizations as either strong,
moderate, or weak. (Fig. 19a).
5) Ulwick discloses, “[t]he user is presented with a means by which to
quantify the potential value of each alternative solution. This quantitative
value is tied to statistically valid market research which is stored in one or
more databases . . . . The solutions can be evaluated against each other or
some other baseline for comparison. The baseline can be changed by the
user at any time. Hundreds of comparisons can be made. The user can use
this data to reach conclusions and gain a consensus on the value that a
potential solution may deliver.” (col. 7, ll. 63-67 and col. 8, ll. 1-9).
6) Appellants’ Specification discloses, “In step A.7.7 of the present
embodiment, a baseline is established by measuring the success criteria
against the current solution, the value propositions, or the competitive
solution. The baseline can be used to determine the best goal for each
measure.” (Spec. p. 17, ll. 35-36 and p. 18, ll. 1-2).
6) Ulwick discloses, “Since the value of a potential solution can be
determined in advance of its actual development or implementation, the user
saves much time, effort, and money.” (col. 8, ll. 27-30).
7) The Specification does not provide a definition for “architecture.”
8) The ordinary and customary meaning of “architecture” is “4) [t]he
organizational structure of a system or a software item, identifying its
components, their interfaces, and a concept of execution among them.” (See
The Authoritative Dictionary of IEEE Standards Terms (7th Ed. 2000)).
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9) Ulwick discloses that “[t]he software of the present invention for
implementing the process for strategy evaluation and optimization has been
designed and implemented on a personal computer system, however, other
computer systems can also be used to implement the process.” (col. 13, ll.
14-17).
10) Appellants’ Specification is silent as to what the scope of the
“greatest number of benefits” comprises. We interpret this limitation to
include all the possible desired outcomes and their results.
11) Ulwick discloses wherein the computer program is delivered to
the user having desired outcome and predictive metric data pre-loaded. (col.
13, ll. 56-57).
12) Appellants’ Specification describes “use-cases” as, “the specific
interactions the solution will need to support. First, the people ("actors")
who are likely to interact with the solution are identified, and the actors are
then prioritized according to how important their interaction will be to the
success of the solution. Next, the goals and tasks are identified for each
actor.” (Spec. p. 25, ll. 1-7).
13) Appellants’ Specification describes “task interactions” as, “a
sequence of numbered steps performed between the actor and the solution.”
(Spec. p. 25, ll. 13-14).
14) Ulwick discloses when planning a phase of a project, intermediary
steps such as production and delivery are analyzed so that the solution will
be free from production or delivery issues. Ulwick also discloses that the
“desired outcomes obtained are prioritized from importance by
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representatives of the production or delivery organization.” (col. 15, ll. 51-
61).
15) Ulwick discloses
The market may be segmented by what different
customers value. Using customer desired outcomes as
the basis for segmentation enables an organization to
assess market opportunity with precision, and design
products and services that address unique market needs.
The results of the segmentation analysis often reveal the
existence of segments that cut across traditional
classification schemes. Each of these segments
represents a new market opportunity.

(col. 14, l. 67 and col. 15, ll. 1-8).
16) Ulwick defines a desired outcome as, “a benefit of value to a
particular customer. It is what the customer requires to obtain satisfaction.
It is a statement that defines what the customer wants, why they want it, and
how they perceive its satisfaction.” (col. 9, ll. 55-59).
17) Ulwick discloses that, “[t]he user is guided toward solutions that
overcome specific weaknesses and allows them to integrate and combine the
positive elements of that solution into an optimal solution.” (col. 8, ll. 10-
15).
18) Ulwick uses predictive metrics that predict a desired outcome will
occur. (col. 16, ll. 20-23).
19) Bruce is directed towards a method for analyzing business
organizations using metrics where the processes can be defined by
process flows to achieve the desired goals of the business organization
([0002]).
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20) Bruce uses a benchmark or best practices analysis as a
comparison tool to compare related information of two different
projects. ([0465]).
21) Bruce discloses, “[a]nytime during the performance of the
jobs the data sets for each job can be compared and used as a
benchmark against each other. The comparison of the data sets can
show which of the jobs performed is the actual best practice or most
efficient in terms of time and resources consumed. ([0465]).
22) Bruce discloses, “the data collected is organized into
categories of data based upon the type of data being collected. For
example, one category of data relates to the risks/opportunities
inherent in a particular job.” ([0466]).
23) Bruce discloses, “Opportunity data to be collected could be
information on potential sales, potential discovery of new resources,
or the lowering of a defect product rate during manufacturing.”
([0468]).

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications “not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). We must be careful not
to read a particular embodiment appearing in the written description into the
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claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by explanations contained in
the written description, it is important not to import into a claim limitations
that are not part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment”). The challenge is to
interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls”).
In KSR, the Supreme Court held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
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no more than yield predictable results.” KSR, 550 U.S. at 416. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417.
The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only if
this initial burden is met does the burden of coming forward with evidence
or argument shift to the Appellants. See Oetiker, 977 F.2d at 1445; see also
In re Piasecki, 745 F.2d at 1472. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Oetiker, 977 F.2d at 1445; see also In re Piasecki, 745 F.2d
at 1472.

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ANALYSIS
ISSUE 1
Appellants argue claims 1-19 as a group.2 We treat claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii).

The rejection of claims 1, 2, 4, 13, 14, 18, 19, 27-30 and 33 under 35 U.S.C.
§102(b) over Ulwick.

Claim 1
Appellants argue that Ulwick does not teach or suggest identifying a
target customer including customer requirements and a customer profile.
(App. Br., p. 12). We are not persuaded by Appellants’ argument and we
agree with the Examiner’s finding that Ulwick teaches the step of identifying
a target customer including customer requirements and a customer profile.
(FF 3). For each project, Ulwick presents to its users all relevant variables
and concerns that can affect a decision along with other pertinent facts that
are critical to objective decision making. (FF 1, 2). We interpret all relevant
variables and concerns which can affect a decision to include customer
requirements and customer profiles since this data would be used in order to
complete the project. Accordingly, we find this argument unpersuasive.
Appellants next argue that Ulwick does not teach or suggest a
customer experience provided by a competitor. (App. Br., p. 12).
Specifically, Appellants argue that Ulwick “…make[s] no mention of a

2 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii).
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‘competitor’ let alone a customer experience provided by a competitor.”
(App. Br., p. 13). We agree.
The Examiner finds that Ulwick figure 19a shows a customer
experience provided by a competitor. (Ans., p. 4). While Ulwick does
indeed use predictive metrics to quantify whether an organization can
compete effectively against other organizations as either strong, moderate, or
weak, it does not teach a customer experience provided by a competitor. (FF
4). Therefore, we find the Examiner has erred in finding that Ulwick teaches
or suggests a customer experience provided by a competitor. Accordingly,
we do not sustain the Examiner's rejections of claim 1 rejected under 35
U.S.C. § 102(b) as being anticipated by Ulwick.
Appellants further argue that Ulwick does not teach or suggest
identifying gaps between current solutions and said benefits. Specifically,
Appellants state that “Ulwick says nothing about ‘current solutions’ and
therefore cannot teach or suggest ‘e) identifying gaps between current
solutions and said benefits.’” (App. Br., p. 12). We are not persuaded by
Appellants’ argument and we agree with the Examiner’s finding that Ulwick
teaches the step of identifying gaps between current solutions and said
benefits. (FF 5). Ulwick presents users with alternative solutions which are
tied to market research. (FF 5). These alternative solutions can then be
compared and the baseline for comparison can even be changed to identify
any and all gaps. (FF 5). We interpret the baseline values to be the current
solution which is compared against the alternative solutions. This
interpretation is commensurate with Appellants’ Specification which also
establishes a baseline by measuring the success criteria which we interpret as
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alternative solutions against the current solution. (FF 6). Thus, by
performing these steps, Ulwick performs the step of identifying gaps
between current solutions and said benefits. Therefore, Appellants’
argument is not persuasive as to error in the rejection.

Claims 2, 4, 13, 14, 18, and 19 dependent upon Claim 1
Appellants do not separately argue claims 2, 4, 13, 14, 18, and 19,
depending from claim 1. Appellants sustained their burden of showing error
in the rejection of claim 1 supra, and so has sustained its burden of showing
that the Examiner erred in rejecting claims 2, 4, 13, 14, 18, and 19 under 35
U.S.C. § 102(b) as anticipated by Ulwick for the same reasons we found as
to claim 1 supra.

ISSUE 2
Appellants argue claims 27-33 as a group.3 We treat claim 27 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 27
Appellants argue that Ulwick does not teach or suggest identifying
gaps between current solutions and benefits that should be provided to a
target customer. (App. Br., p. 14). We are not persuaded by Appellants’
argument and we agree with the Examiner’s finding that Ulwick teaches the
step of identifying gaps between current solutions and said benefits. (FF 5).
Ulwick presents users with alternative solutions which are tied to market

3 A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii).
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research. (FF 5). These alternative solutions can then be compared and the
baseline for comparison can even be changed to identify any and all gaps.
(FF 5). With regard to the benefits that should be provided to a target
customer, Ulwick allows the alternative solutions tied to market research to
be compared. (FF 5). We interpret these alternative solutions to be the
benefits which would be identified as gaps between the current solution and
benefits that should be provided to the target customer. Thus, by performing
these steps, Ulwick performs the step of identifying gaps between current
solutions benefits that should be provided to a target customer. Therefore,
Appellants’ argument is not persuasive as to error in the rejection.
Appellants next argue that Ulwick does not teach or suggest the step
of defining a future customer experience for a selected solution.
Specifically, Appellants state that Ulwick, “say[s] nothing about ‘a future
customer experience,’ let alone teach ‘defining a future customer experience
for a selected solution.’” (App. Br., p. 14). We are not persuaded by
Appellants’ argument and we agree with the Examiner’s finding that Ulwick
teaches the step of defining a future customer experience for a selected
solution. (FF 6). Ulwick discloses that a potential solution can be
determined in advance of its actual development or implementation. (FF 6).
Although Ulwick does not explicitly state wherein the potential solution is a
future customer experience, it would be implicit within the reference that the
solutions identified and generated in Ulwick may be defined for a future
customer experience for a selected solution. Therefore, Appellants’
argument is not persuasive as to error in the rejection.
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Appellants further argue that Ulwick does not teach or suggest
developing an architecture for implementing said solution path.
Specifically, Appellants state that, “[a]lthough Ulwick provides software
that implements a process for evaluating and optimizing strategies Ulwick
does not teach ‘d) developing an architecture for implementing said solution
path’ where said solution path ‘delivers the greatest number of benefits’ as
recited by Claim 27.” (App. Br., p. 15). Ulwick discloses wherein the
process for strategy evaluation and optimization has been designed and
implemented on a personal computer system. (FF 9). Since Appellants’
claim does not provide clear boundaries as to the scope of what an
“architecture” comprises and the Specification provides no clear definition
(FF 7), we construe the limitation according to its broadest reasonable
interpretation as a software item. (FF 8). Thus, Ulwick discloses wherein
the process is implemented by software. (FF 9). With regard to Appellants’
argument “where said solution path delivers the greatest number of
benefits”, Appellants’ Specification is silent as to what the metes and bounds
of this limitation comprises. (FF 10). Under the broadest reasonable
interpretation, we interpret the limitation where solution path “delivers the
greatest number of benefits” to include all the possible desired outcomes and
results. (FF 10). Ulwick discloses wherein the computer program is
delivered to the user having desired outcome and predictive metric data pre-
loaded. (FF 11). Thus, Ulwick delivers all of the possible desired outcomes
and results. Therefore, since Appellants’ have not provided their own
lexicographic definition in the Specification for “architecture” and given the
breadth of the claim, Ulwick teaches developing an architecture for
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implementing said solution path. Accordingly, we find this argument
unpersuasive.
Lastly, Appellants’ argue that Ulwick does not teach or suggest
defining use-cases describing task interactions between participants in said
solution path and said solution path. In particular, Appellants state that
Ulwick “say[s] nothing about ‘use-cases’ or ‘task interactions,’ let alone say
anything about ‘defining use-cases describing task interactions between
participants in said solution path and said solution path.’” (App. Br., p. 15).
We are not persuaded by Appellants’ arguments and we agree with the
Examiner’s finding that Ulwick discloses the step of defining use-cases
describing task interactions between participants in said solution path and
said solution path (FF 14), albeit Ulwick says nothing about “use-cases” or
“task interactions”. However, consistent with Appellants’ Specification, we
interpret “use-cases” as the interactions the solution will need to support (FF
12) and “task interactions” as the steps necessary to achieve the solution. (FF
13). Thus, when planning a phase of a project, Ulwick defines and analyzes
intermediary steps such as production and delivery so that the solution will
be free from production or delivery issues. Therefore, when performing
these steps, Ulwick defines the interactions the solution will need to support
and the steps necessary to achieve the solution. (FF 14). Accordingly,
Ulwick teaches defining use-cases describing task interactions between
participants in said solution path and said solution path, and we find this
argument unpersuasive.

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Claims 28-30 and 33 dependent up on Claim 27
Appellants do not separately argue claims 28-30 and 33 depending
from claim 27. Appellants have not sustained their burden of showing error
in the rejection of claim 27 supra, and so have not sustained its burden of
showing that the Examiner erred in rejecting claims 28-30 and 33 under 35
U.S.C. § 102(b) as anticipated by Ulwick for the same reasons we found as
to claim 27 supra.

ISSUE 3
The rejection of claims 3, 5-12, 15-17, 20-26, 31 and 32 under 35 U.S.C.
§103(a) over Ulwick and Bruce.
Claim 20
Appellants argue that that neither Ulwick nor Bruce, alone or in
combination, teach or suggest, identifying attributes of said target customer
associated with said customer experience issue to generate a customer
profile. Specifically, Appellants’ say that Ulwick “say[s] nothing about
generating a customer profile let alone teach or suggest ‘c) identifying
attributes of said target customer associated with said customer experience
issue to generate a customer profile.’” (App. Br., p. 18). We are not
persuaded by Appellants’ argument and we agree with the Examiner’s
finding that Ulwick teaches the step of identifying attributes of said target
customer associated with said customer experience issue to generate a
customer profile. (FF 15). For each project, Ulwick presents to its users all
relevant variables and concerns that can affect a decision along with other
pertinent facts that are critical to objective decision making. (FF 1, 2). We
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interpret all relevant variables and concerns which can affect a decision to
include attributes of said target customer associated with said customer
experience issue. With regard to generating a customer profile, Ulwick uses
customer desired outcomes as the basis for segmentation which enables an
organization to assess market opportunity with precision, and design
products and services that address unique market needs. (FF 15, 16). Thus,
when analyzing customer desired outcomes to access market opportunity,
the result of this analysis would generate a customer profile of the new target
customer associated with this new market opportunity. (FF 15). Therefore,
this segmentation would identify attributes of said target customer associated
with said customer experience issue to generate a customer profile. (FF 15).
Accordingly, we find this argument unpersuasive.
Additionally, Appellants argue that that neither Ulwick nor Bruce,
alone or in combination, teach or suggest, generating a customer experience
flow by organizing components of a current customer experience according
to their order of occurrence, wherein said customer experience flow
identifies instances in which customer requirements are unmet. (App. Br., p.
18). Ulwick guides users toward solutions that overcome specific
weaknesses and allows them to integrate and combine the positive elements
of that solution into an optimal solution. (FF 17). In performing this step,
Ulwick identifies instances in which customer requirements are unmet by
overcoming specific weaknesses. (FF 17). Since the desired outcomes in
Ulwick are defined as what the customer requires to obtain satisfaction, a
customer requirement which is not met would be considered to be a
weakness. (FF 16). Thus, while guiding a user to an optimal solution,
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Ulwick generates a customer experience flow by organizing components of
a current customer experience according to their order of occurrence using
predictive metrics. (FF 18). Therefore, Ulwick teaches generating a
customer experience flow by organizing components of a current customer
experience according to their order of occurrence, wherein said customer
experience flow identifies instances in which customer requirements are
unmet. Accordingly, we find this argument unpersuasive.

Claims 3, 5-12 and 15-17 dependent upon Claim 1
Appellants do not separately argue claims 3, 5-12 and 15-17
depending from claim 1. Appellants have sustained their burden of showing
error in the rejection of claim 1 supra, and so have sustained its burden of
showing that the Examiner erred in rejecting claims 3, 5-12 and 15-17 under
35 U.S.C. § 103(a) as unpatentable over Ulwick in view of Bruce for the
same reasons we found as to claim 1 supra.

Claims 21-26 dependent upon Claim 20
Appellants do not separately argue claims 21-26 depending from
claim 20. Appellants have not sustained their burden of showing error in the
rejection of claim 20 supra, and so have not sustained its burden of showing
that the Examiner erred in rejecting claims 21 -26 under 35 U.S.C. § 103(a)
as unpatentable over Ulwick in view of Bruce for the same reasons we found
as to claim 20 supra.

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Claims 31 and 32 dependent upon Claim 27
Appellants do not separately argue claims 31 and 32 depending from
claim 27. Appellants have not sustained their burden of showing error in the
rejection of claim 27 supra, and so have not sustained its burden of showing
that the Examiner erred in rejecting claims 31 and 32 under 35 U.S.C. §
103(a) as unpatentable over Ulwick in view of Bruce for the same reasons
we found as to claim 27 supra.

CONCLUSION OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1, 2, 4, 13, 14, 18 and 19 under 35 U.S.C. § 102(b) as
anticipated by Ulwick and claims 3, 5-12, 15-17 under 35 U.S.C. §103(a)
over Ulwick and Bruce. We conclude that Appellants have not shown that
the Examiner erred in rejecting claims 27-30 and 33 under 35 U.S.C.
§102(b) over Ulwick. We conclude that Appellants have not shown that the
Examiner erred in rejecting claims 20-26, 31 and 32 under 35 U.S.C.
§103(a) over Ulwick and Bruce.

NEW GROUNDS OF REJECTION
The following new grounds of rejection are entered pursuant to 37
C.F.R. § 41.50(b).
Claims 1, 2, 4, 13, 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ulwick in view of Bruce. Ulwick describes all of the
limitations of claim 1 except for comparing a current customer experience
with a customer experience provided by a competitor. However, Bruce
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teaches a method for analyzing business organizations using metrics (FF 19)
which compares related information of two different projects (FF 20) using
data related to the risks and opportunities inherent in a particular project. (FF
21, 22). We find that one of ordinary skill in the art would have found the
comparison of opportunity data such as potential sales data in Bruce to be
analogous to the step of comparing a customer experience provided by a
competitor. (FF 23) Thus, it would have been obvious to one of ordinary
skill in the art at the time of the invention to have incorporated the
comparison between the opportunity data of two different projects, disclosed
in Bruce with the decision making system described in Ulwick in order to
compare one company’s current customer experience against its competition
in an effort to develop a solution to a customer experience issue. Therefore,
a person of ordinary skill in the art would have known from Bruce to
compare the customer experience provided by a competitor and applied this
technique to the current customer experience defined in Ulwick. (FF 3, 4).
Since none of the Examiner’s findings regarding claims 2, 4, 13, 18
and 19 are in dispute, we adopt those Examiner’s findings and apply them to
the claims at issue.
We also reject claims 1-33 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. We take claim 1 as representative.
The issue is whether the process as claimed is patent eligible under
35 U.S.C. § 101. Claim 1 recites a method for developing a solution
comprising identifying, defining, summarizing, and generating steps. The
method claimed recites steps and is thus nominally drawn to a process.
However,
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the proper inquiry under § 101 is not whether the
process claim recites sufficient "physical steps,"
but rather whether the claim meets the machine-or-
transformation test.[] As a result, even a claim that
recites "physical steps" but neither recites a
particular machine or apparatus, nor transforms
any article into a different state or thing, is not
drawn to patent-eligible subject matter.
Conversely, a claim that purportedly lacks any
"physical steps" but is still tied to a machine or
achieves an eligible transformation passes muster
under § 101.
In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc) (footnote omitted.)
Here, the claimed method is not tied to a machine nor does it
transform a particular article into a different state or thing. Claim 1 does not
recite a machine or apparatus. The method of claim 1 also does not
transform a particular article into a different state or thing. Claim 1 does not
transform any other particular article. We reach the same conclusion for the
other method claims 2-33. Therefore, we reject claims 1-33 under 35 U.S.C.
§ 101 as being drawn to nonpatentable subject matter.

DECISION
The decision of the Examiner to reject claims 1, 2, 4, 13, 14, 18 and
19 under 35 U.S.C. § 102(b) as anticipated by Ulwick is not affirmed. The
decision of the Examiner to reject claims 27-30 and 33 under 35 U.S.C.
§102(b) over Ulwick is affirmed. The decision of the Examiner to reject
claims 3, 5-12, 15-17, 20-26, 31 and 32 under 35 U.S.C. §103(a) over
Ulwick and Bruce is affirmed. We enter new grounds of rejection of claims
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1, 2, 4, 13, 18 and 19 under 35 U.S.C. § 103(a) as unpatentable over Ulwick
in view of Bruce and claims 1-33 under § 101 under 37 C.F.R. §41.50(b).

Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board."

In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."

37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

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(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. . . .

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.

If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART
41.50b

saw

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