Ex Parte Hicks et al

Board of Patent Appeals and Interferences

May 24, 2012

11159914 (B.P.A.I. May. 24, 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.
11/159,914 06/23/2005 Scott Denison Hicks END920050021US1 3763
30449 7590 05/24/2012
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
05/24/2012 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 SCOTT DENISON HICKS
and JAMES A. MARTIN, JR.
1

____________________

Appeal 2011-002513
Application 11/159,914
Technology Center 3600
____________________
Before, MURRIEL E. CRAWFORD, JOSEPH A FISCHETTI, and KEVIN
F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
2

Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 2-10, 14-16, 18-21, 23, 24, 26-29, and 33-42. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1
International Business Machines, Corp. is the real party in interest.
2
Our decision will make reference to the Appellants’ Appeal Brief
(“App. Br.,” filed June 14, 2010) and Reply Brief (“Reply Br.,” filed
November 1, 2010), and the Examiner’s Answer (“Ans.,” mailed
September 1, 2010).
Appeal 2011-002513
Application No. 11/159,914

2
THE INVENTION
Appellants’ disclosure relates to a project management system that
calculates and reports project completion information in a uniform manner.
(Spec. 1.)
Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. A method of reporting earned values (EVs) of progress of a
large-scale project, said method comprising:
defining at least one EV calculation rule for calculating EVs in
terms of components to be combined into the EVs, locations in
which the components are located, and formulae required to
combine the components;
a processor of a computer using the defined at least one EV
calculation rule to calculate the EVs; and
creating an EV report employing the EV s,
wherein said defining at least one EV calculation rule comprises:
said processor identifying the components used to calculate the
EVs;
said processor identifying the locations in which the
components are;
said processor identifying the formulae specifying how the
components are combined to create the EVs; and
said processor storing the at least one EV calculation rule
comprising the components, the locations, and the formulae.
(App. Br., Claims Appendix 77-78.)

Appeal 2011-002513
Application No. 11/159,914

3
PRIOR ART REJECTIONS
The prior art reference relied upon by the Examiner in rejecting the
claims is:
Salwitz et al. 2004/0068419 A1 Apr. 8, 2004

The Examiner rejected the claims as follows:
Claims 3, 18, 23, and 27 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 2, 14-16, 21, and 26 under 35 U.S.C. § 102(b) as anticipated
by Salwitz.
Claims 3-10, 18-20, 23, 24, 27-29, and 33-42 under 35 U.S.C.
§ 103(a) as unpatentable over Salwitz and Official Notice.

ISSUES
3

Did the Examiner err in asserting that claims 3, 18, 23, and 27 fail to
comply with the enablement requirement under 35 U.S.C. § 112, first
paragraph? The issue turns on whether the Examiner met the burden of
establishing lack of enablement.
Does Salwitz disclose or inherently disclose a processor which
1) identifies the locations in which the components are located and 2) stores
at least one EV calculation rule comprising the components, the locations,
and the formula, as generally recited by independent claims 2, 14, 21, and 26

3
We have considered in this decision only those arguments that Appellants
actually raised in the Briefs. Arguments which Appellants could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appeal 2011-002513
Application No. 11/159,914

4
such that it anticipates the subject matter of claims 2, 14-16, 21, and 26
under 35 U.S.C. § 102(b)?

FINDINGS OF FACT
Salwitz
S1. Salwitz is directed to a method for obtaining an earned value for a
project while preserving an original performance baseline for the project.
(¶ [0002].)
S2. Salwitz describes:
process 10 obtains (16) the earned value by referencing
the operative version. Specifically, process 10
determines which tasks (e.g., WBSs) have been
completed in the project’s baseline (e.g., based on user
input or reference to a database), retrieves the stored
values for completed tasks, and sums these stored values
to obtain the earned value. Process 10 may generate a
report to provide the earned value to a project
management professional running the earned value
application described herein.
(¶ [0036].)
S3. Salwitz describes that its system includes “memory 82 to store one
or more applications 84, including, but not limited to, earned value
application 90 and its components to perform baseline maintenance, over
target baseline, and third party software interface functions.” (¶ [0062].)

Appeal 2011-002513
Application No. 11/159,914

5
ANALYSIS
Claims 3, 18, 23, and 27 rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
The Examiner rejected claims 3, 18, 23, and 27 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
(Ans. 4.) Specifically, the Examiner states that claims 3, 18, 23, and 27 are
directed to iterative calculation steps, which are not enabled because they
fail to produce predictable results. (Ans. 4.)
We are not persuaded by the Examiner’s conclusory statement and
find that the Examiner has failed to set forth a reasonable explanation as to
why these claims are not adequately enabled by the Specification. In re
Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi,
439 F.2d 220, 223-24 (CCPA 1971)). Any analysis of whether a particular
claim is supported by the disclosure in an application requires a
determination of whether that disclosure, when filed, contained sufficient
information regarding the subject matter of the claims as to enable one
skilled in the pertinent art to make and use the claimed invention.
Factors to be considered in determining whether a
disclosure would require undue experimentation . . .
include (1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the
claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Appeal 2011-002513
Application No. 11/159,914

6
In the instant case, the Examiner has not made any analysis in regards
to even one of the Wands factors. (See Ans. 4 and 12.) For example, the
Examiner has not addressed the quantity of experimentation, the nature of
the invention, the state of the prior art, and the relative skill of those in the
art. Thus, we find that the burden of establishing lack of enablement has not
been met.
Accordingly, we cannot sustain the Examiner rejection of claims 3,
18, 23, and 27 under 35 U.S.C. § 112, first paragraph.

Claims 2, 14-16, 21, and 26 rejected under 35 U.S.C. § 102(b) as
anticipated by Salwitz.
Appellants argue that Salwitz fails to disclose “defining at least one
EV calculation rule for calculating EVs in terms of components to be
combined into the EVs, locations in which the components are located, and
formulae required to combine the components” and “said processor storing
the at least one EV calculation rule comprising the components, the
locations, and the formulae,” as generally recited by independent claims 2,
14, 21, and 26. (App. Br. 12-16; Reply Br. 5-11.) Specifically, Appellants
assert that Salwitz does not inherently disclose wherein “said processor
identif[ies] the locations in which the components are located.” (Id.)
In contrast, the Examiner finds that Salwitz discloses these limitations
and further finds that “identifying the locations in which the components are
located” would be inherent. (Ans. 13.) Specifically, the Examiner asserts
that Salwitz discloses retrieving stored values for completed tasks, and as
such, concludes that “[i]n order to retrieve something, one must first know
Appeal 2011-002513
Application No. 11/159,914

7
its location.” (Ans. 13; see also Non-Final Rejection mailed April 17, 2009
at pages 11-12.) We cannot agree.
While we agree with the Examiner that Salwitz discloses retrieving
stored values, we cannot agree with the Examiner that Salwitz discloses that
the processor “identif[ies] the locations in which the components are
located” or “stor[es] . . . the components, the locations, and the formulae,” as
claimed. Moreover, we do not find this step to be inherent based upon the
fact that Salwitz retrieves stored values since the Examiner has not
established that it is the processor in Salwitz which even retrieves the stored
values as opposed to user input. (FF S2.) “To establish inherency, the
extrinsic evidence must ‘make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.”’ “Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted)
(internal quotation marks omitted).
However, for the sake of argument, even if we accepted the
Examiner’s inherency argument, which we do not, Salwitz still fails to
disclose that the processor stores the locations of the components. Again,
while we agree with the Examiner that Salwitz stores an earned value
application and its components (FF S3), we cannot agree with the Examiner
that this language is “sufficiently detailed to comprise a component, the
component location, and a formula,” as the Examiner contends. (Ans. 13.)
Thus, we do not find that the Examiner has made out a prima facie case of
Appeal 2011-002513
Application No. 11/159,914

8
anticipation for the claimed subject matter of independent claims 2, 14, 21,
and 26.
Accordingly, we cannot sustain the Examiner’s rejection of claims 2,
14-16, 21, and 26 as anticipated by Salwitz under 35 U.S.C. § 102(b).

Claims 3-10, 18-20, 23, 24, 27-29, and 33-42 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Salwitz and Official Notice.
Claims 3-10, 18-20, 23, 24, 27-29, and 33-42 depend on independent
claims 2, 14, 21, and 26, respectively, and so we reverse the rejection of
these claims under 35 U.S.C. § 103(a) as unpatentable over Salwitz and
Official Notice for the same reasons as claims 2, 14-16, 21, and 26 discussed
supra.

CONCLUSIONS
We conclude that the Examiner failed to establish a lack of
enablement, and as such, erred in rejecting claims 3, 18, 23, and 27 under 35
U.S.C. § 112, first paragraph.
We conclude that Salwitz does not disclose or inherently disclose a
processor which 1) identifies the locations in which the components are
located and 2) stores at least one EV calculation rule comprising the
components, the locations, and the formula, as generally recited by
independent claims 2, 14, 21, and 26, and as such, we conclude that the
Examiner erred in rejecting claims 2, 14-16, 21, and 26 as anticipated by
Salwitz.
Appeal 2011-002513
Application No. 11/159,914

9
As the obviousness rejection of claims 3-10, 18-20, 23, 24, 27-29, and
33-42 are based on Salwitz as applied to the independent claims, we further
find that the additional obviousness rejection of the dependent claims was
also made in error.

DECISION
We reverse the Examiner’s rejection of claims 2-10, 14-16, 18-21, 23,
24, 26-29, and 33-42 under 35 U.S.C. §§ 112, first paragraph, 102(b), and
103(a).
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).

REVERSED

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