11208838 (P.T.A.B. Mar. 19, 2013)

Ex Parte Grigsby et al

Patent Trial and Appeal BoardMar 19, 2013

11208838 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL H. GRIGSBY, TIMOTHY W. LOHR, STEPHEN J. PHILIPSE, and JONATHAN E. WIST ____________________ Appeal 2010-009164 Application 11/208,838 Technology Center 2100 ____________________ Before KRISTEN L. DROESCH, JUSTIN BUSCH, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejections of claims 1-2, 4-11, 15-18, and 22. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 3 1 Real Party in Interest is Lockheed Martin Corporation. 2 Claims 3, 12-14 and 19-21 have been cancelled and are not on appeal. 3 Our decision refers to Appellants’ Appeal Brief filed November 3, 2009 (“App. Br.”); Examiner’s Answer mailed March 18, 2010 (“Ans.”); Final (Footnote continued on next page.) Appeal 2010-009164 Application 11/208,838 2 STATEMENT OF THE CASE Appellants’ Invention According to Appellants, their invention relates to a system and method for improving the design, procurement, placement, and deployment of threat protection resources to counter a specified chemical, biological, radiological, nuclear and explosive (“CBRNE”) threat. See Appellants’ Spec. ¶[0007]. Claims on Appeal Claims 1, 11, and 15 are independent claims on appeal. Claim 1 is representative of the invention, as reproduced below with disputed limitations emphasized: 1. A method comprising: establishing a metric for gauging the performance of a threat-protection system with respect to a site, wherein said metric comprises: (a) at least one measure of an extent of critical mission interruption; (b) a measure of a percentage of non-fatalities; and (c) a measure of cost; iteratively modeling, in a data processing system, a first threat as a function of a plurality of threat-protection elements, wherein said threat-protection elements comprises materiel, and Office Action mailed June 11, 2009 (“FOA.”); and the original Specification filed August 22, 2005 (“Spec.”). Appeal 2010-009164 Application 11/208,838 3 wherein for each iteration, a characteristic of one of said threat- protection elements is changed, and wherein a value for said metric is determined for each iteration; selecting, in the data processing system, the iteration having the most desirable value for the metric; and physically installing, for protection of said site, said threat-protection elements associated with the selected interation [sic]. Evidence Considered The prior art relied upon by the Examiner in rejecting the claims on appeal is: Beverina US 7,130,779 B2 Oct. 31, 2006 Examiner’s Rejection Claims 1-2, 4-11, 15-18, and 22 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Beverina. Ans. 3-6. ISSUE Based on Appellants’ arguments, the dispositive issue on appeal is whether the Examiner erred in rejecting claims 1-2, 4-11, 15-18, and 22 under 35 U.S.C. § 102(e) as being anticipated by Beverina. The issue turns on whether Beverina discloses several limitations of Appellants’ claims 1-2, 4-11, 15-18, and 22. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. Only those arguments actually made Appeal 2010-009164 Application 11/208,838 4 by Appellants in the Appeal Brief have been considered. See 37 C.F.R. § 41.37(c)(1)(vii). We disagree with Appellants’ conclusions as to all rejections. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We also concur with the conclusions reached by the Examiner and further highlight and address specific findings and arguments for emphasis as follows. With respect to independent claim 1, Appellants acknowledge that Beverina discloses a risk management system that allows a user to evaluate the risk of a terrorist attack, determine the vulnerability to a terrorist attack, assess the damage caused by a successful terrorist attack, and select countermeasures to prevent terrorist attacks, via site modeling, simulation of different threat scenarios, and re-run of the simulation to determine the effectiveness of the countermeasures. App. Br. 14-15; also see Beverina col. 3, l. 5 – col. 4, l. 12. Nevertheless, in contrast to Appellants’ characterization of the method as arriving at a discrete solution; namely, an optimum or near-optimum allocation of CBRNE threat-protection resources for a site, Appellants argue that: (1) Beverina does not provide a discrete solution for a site (App. Br. 14); (2) Beverina does not provide a single, optimal or near- optimal solution for a site (App. Br. 17); (3) Beverina does not establish a metric for gauging the performance of a threat protection system in which the metric comprises: (a) at least one measure of an extent of critical mission Appeal 2010-009164 Application 11/208,838 5 interruption; (b) a measure of a percentage of non-fatalities; and (c) a measure of cost (App. Br. 20); and (4) Beverina does not iteratively model the threat and select the iteration having the most desirable value for the metric, thereby providing an optimum/near-optimum allocation of threat-protection resources for a site (App. Br. 20). However, we are not persuaded by Appellants’ arguments. At the outset, we note that nowhere in Appellants’ independent claim is there any definition or reference to “a discrete solution” or “a single, optimal or near- optimal solution for a site” as advanced by Appellants. App. Br. 14-15. As such, we find Appellants’ arguments unpersuasive because they are not commensurate in scope with the actual claim language. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Unclaimed features cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). Moreover, and as correctly found by Examiner, Beverina discloses establishing a metric for gauging the performance of a threat protection system, including (1) a measure of mission interruption (Ans. 9 citing Beverina, col. 17, ll. 36-37; FIGS. 5, 18, 22, 33, and 34); (2) a measure of a percentage of non-fatalities (Ans. 10 citing Beverina, FIGS. 23-24); and (3) a measure of cost (Ans. 10 citing Beverina, col. 8, ll. 8-10, 51-67; FIG. 5, FIGS. 18, 22, 33, and 34). In addition, Beverina further discloses a computational engine 230, shown in FIG. 2 and FIG. 22, to interpret threat data and recommend countermeasures to the user that should be used to reduce the threat or the consequences of an attack. (Ans. 11-12 citing Beverina, col. 8, ll. 36-44; col. 14, ll. 29-56; FIGS. 8, 16, 18, 22 and 33-34). Appeal 2010-009164 Application 11/208,838 6 As such, we find the Examiner’s factual findings regarding Beverina are supported by a preponderance of evidence. For the reasons set forth above, we do not find error in the Examiner’s findings and conclusions, and, therefore, sustain the Examiner’s anticipation rejection of independent claim 1, as well as claims 2 and 4-10, which were not separately argued and fall therewith. With respect to claims 11, 15-18 and 22, Appellants contend that Beverina does not disclose “performing all of the claimed operations” (App. Br. 23-25). Appellants simply quote claim limitations and allege that Beverina does not disclose or suggest these limitations. Appellants’ Brief is otherwise silent as to why this is the case. Appellants present no substantive arguments as to why the Examiner’s factual findings regarding Beverina are incorrect. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Moreover, based upon our review of the record, we find the Examiner’s factual findings regarding Beverina are supported by a preponderance of evidence (Ans. 7-22), and that Appellants have not shown the Examiner erred in rejecting claims 11, 15-18 and 22. Accordingly, we sustain the Examiner’s rejection of claims 11 and 15 and claims 16-18 and 22 that fall therewith. Appeal 2010-009164 Application 11/208,838 7 CONCLUSION On the record before us, we conclude that the Examiner has not erred in rejecting claims 1-2, 4-11, 15-18, and 22 under 35 U.S.C. § 102(e). 4 DECISION We affirm the Examiner’s final rejection of claims 1-2, 4-11, 15-18, and 22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED ELD 4 In the event of further prosecution, we leave it to the Examiner to evaluate claim 1 for compliance with 35 U.S.C. § 101 in view of Bilski v Kappos, 130 S.Ct. 3218 (2010), MPEP revised § 2106.01 (August 2012), and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (holding that a method for verifying the validity of a credit card transaction over the Internet to be nonstatutory as an abstract idea capable of being performed in the human mind or by a human using a pen and paper). In addition, we also leave it to the Examiner to evaluate claims 11 and 15 for compliance with 35 U.S.C. § 112, 1 st and 2 nd paragraphs.