Ex Parte Herbst et al

Patent Trial and Appeal Board

Jul 15, 2016

12726251 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121726,251 03/17/2010 Derrick Keller Herbst
36088 7590 07118/2016
KANG LIM
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.
VN-1002 1863
EXAMINER
3494 Camino Tassaj ara #444 CLARK, DA vrn J
Danville, CA 94506
ART UNIT PAPER NUMBER
3628
MAILDATE DELIVERY MODE
07/18/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DERRICK KELLER HERBST, SRI RAGHUP ATHY,
SASTRY KOLACHANA, and RAMESH SESHADRI
Appeal2014-002267 1
Application 12/726,251 2
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("Br.," filed March 28,
2013) and the Examiner's Answer ("Ans.," mailed July 18, 2013) and Final
Office Action ("Final Act.," mailed August 28, 2012).
2 Appellants identify Vendavo, Inc. as the real party in interest. Br. 3.
Appeal2014-002267
Application 12/726,251
CLAIMED fNVENTION
Appellants' claimed invention "relates to business to business market
price control and management systems. More particularly, the present
invention relates to systems and methods for multiple pricing comparisons in
order to guide salespersons in the proper pricing schemes during
negotiations" (Spec. i-f 3).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer implemented method for generating
pricing method comparisons, wherein the pricing method
comparisons facilitates negotiation of a substantially customized
goods and services deal, the method comprising:
receiving negotiated dimensions including total resources,
period allocation, regional distribution, skillset distribution,
inflation rates, and billing hours;
generating a time and materials quote by transforming the
negotiated dimensions into line items;
generating a fixed price quote utilizing the time and
materials quote;
generating a gam share quote utilizing the time and
materials quote;
generating, using a processor, a net present value for the
time and materials quote, the fixed price quote and the gain share
quote by applying interest rates over a deal time period to each
of the quotes; and
generating a customized deal summary comparing the net
present values for the time and materials quote, the fixed price
quote and the gain share quote.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Jacobus (US 2004/0068455 Al, pub. Apr. 8, 2004) and Medina
(US 2002/0116210 Al, pub. Aug. 22, 2002).
2
Appeal2014-002267
Application 12/726,251
ANALYSIS
We are persuaded by Appellants' argument that neither Jacobus nor
Medina, individually or in combination, discloses or suggests "generating a
time and materials quote3 by transforming the negotiated dimensions into
line items," as recited in independent claim 1, and similarly recited in
independent claim 11 (Br. 9--10). The Examiner acknowledges that Jacobus
does not disclose "generating a time and materials quote" and the Examiner
cites Medina to cure the deficiency of Jacobus (Final Act. 5 (citing Medina
i-f 27)). The Examiner, thus, asserts that Medina discloses generating a time
and materials quote as a Statement of Work that outlines the requirements
and details for a project or task including conditions, terms, time schedules,
and the like (id. at 3).
The difficulty with the Examiner's analysis, as Appellants observe, is
that Medina draws a distinction, in paragraph 27, between the statement of
work (i.e., the "SOW"), which Medina describes is prepared by a quote
advisor of a company in consultation with a client, and the price quote that
the company subsequently provides the customer as part of a project
proposal. Medina describes that the SOW outlines the requirements and
details for a project or task (Medina i-f 27), and referencing the flow chart
depicted in Figure 2, states that "[ o ]nee the requirements are inputted into
the SOW, it can be submitted to the company through the system [ ] for
3 A "time and materials contract" is generally understood to refer to "[a Jn
arrangement under which a contractor is paid on the basis of (1) actual cost
of direct labor, usually at specified hourly rates, (2) actual cost of materials
and equipment usage, and (3) agreed upon fixed add-on to cover the
contractor's overheads and profit." See http://www.businessdictionary.com/
definition/time-and-materials-T-M-contract.html.
3
Appeal2014-002267
Application 12/726,251
processing and review. The company receiving the SOW at step 50, initiates
the quote forming process." (id. (emphasis added)). Medina, thus, expressly
differentiates between the SOW prepared in consultation with the client and
the price quote generated by the company upon receipt of the SOW. The
Examiner's contrary finding that the SOW of Medina is equivalent to a time
and materials quote (see Ans. 3) is not adequately supported.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1 and 11 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejection of claims 2-10 and
12-20, which depend from independent claims 1 and 11, respectively.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious").
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
4