Ex Parte Huettl et al

Patent Trial and Appeal Board

Mar 14, 2013

10210718 (P.T.A.B. Mar. 14, 2013)

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.
10/210,718 07/31/2002 Bernd-Josef M. Huettl FIS920020035US1 7860
7590 03/15/2013
H. Daniel Schnurmann
Intellectual Property Law, IBM Corporation
Dept. 18G, Building 300-482
2070 Route 52
Hopewell Junction, NY 12533
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
03/15/2013 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 BERND-JOSEF M. HUETTL and GEORGE W. DOERRE
____________

Appeal 2011-007010
Application 10/210,718
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J.
HOFFMANN, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007010
Application 11/210,718

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-181. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates to a method for performing a portfolio analysis
of design automation tools of integrated chips and electronic systems in view
of market, technology and competitive considerations (Spec. 1, ll. 8-11).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A method for allocating resources comprising the
steps of:
a) mapping tools according to a first set of predetermined
parameters and rating options;
b) mapping a set of competitive market factors in
accordance with a second set of predetermined parameters and
rating options;
c) deriving a decision based on the mapped tools and the
mapped competitive market factors; and
d) allocating resources as a function of the derived
decision.

REJECTIONS2
The Examiner rejected under 35 U.S.C. § 103(a) claims 1-9 and 11-18
as unpatentable over Forman (US 6,850,891 B1, iss. Feb. 1, 2005) and
Ginsberg (US 6,236,976 B1, iss. May 22, 2001); and claim 10 as
unpatentable over Forman, Ginsberg, and Stiegler (US 5,774,121, iss. Jun.
30, 1998).

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 18, 2007) and the Examiner’s Answer (“Ans.,” mailed
December 27, 2010).
2 The Examiner withdrew the rejection of claims 1, 2, 5, 7-9, 12-14, and 16
for indefiniteness under 35 U.S.C. § 112, second paragraph (Ans. 2-3).
Appeal 2011-007010
Application 11/210,718

3
We AFFIRM.

ISSUES
Did the Examiner err in asserting that a combination of Forman and
Ginsberg renders obvious independent claim 1?
Did the Examiner err in asserting that a combination of Forman and
Ginsberg renders obvious dependent claims 2-7?
Did the Examiner err in asserting that a combination of Forman and
Ginsberg renders obvious independent claim 8?
Did the Examiner err in asserting that a combination of Forman,
Ginsberg, and Stiegler renders obvious dependent claim 10?

ANALYSIS
Independent Claim 1
We are not persuaded the Examiner erred in asserting a combination
of Forman and Ginsberg renders obvious independent claim 1 (App. Br. 8-
10). The Examiner has cited and set forth a combination of Forman and
Ginsberg which corresponds to steps a), b), c), and d) of independent claim 1
(Ans. 4, 13-14). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(during examination, the examiner bears the initial burden of establishing a
prima facie case of obviousness). Appellants then generally assert that “the
Final Office Action fails to show where the combination of Forman and
Ginsberg teaches, suggests or mentions” steps a), b), c), and d), as recited in
independent claim 1 (App. Br. 9-10), without setting forth any specific
arguments as to why or how the Examiner’s cited portions of Forman and
Ginsberg, and their resulting combination, are deficient. For example, the
Appeal 2011-007010
Application 11/210,718

4
Examiner cites the Abstract of Forman as corresponding to “mapping a set
of competitive market factors in accordance with a second set of
predetermined parameters and rating options,” as recited in independent
claim 1 (Ans. 4, 13). The Abstract of Forman discloses that ratings or step
scale intervals (predetermined parameters and ratings options) can be
mapped into a preference scale for alternatives (competitive market factors),
which at least facially appears to meet the aforementioned aspects of
independent claim 1. Appellants have not adequately articulated any
deficiency in the Examiner’s logic. Accordingly, Appellants have not met
their burden of persuasion of overcoming the Examiner’s prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[o]nce a
prima facie case of obviousness [is] established..., the burden shift[s] to
appellant to rebut it”).

Dependent Claims 2-7
We are not persuaded the Examiner erred in asserting that a
combination of Forman and Ginsberg renders obvious dependent claims 2-7
(App. Br. 10-11). Appellants again generally assert that a combination of
Forman and Ginsberg does not disclose or suggest various aspects of
independent claims 2-7, without setting forth any specific arguments as to
why or how the Examiner’s cited portions of Forman and Ginsberg, and
their resulting combination, are deficient. Accordingly, we sustain the
rejection of dependent claims 2-7.

Independent Claim 8
We are not persuaded the Examiner erred in asserting that a
Appeal 2011-007010
Application 11/210,718

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combination of Forman and Ginsberg renders obvious independent claim 8
(App. Br. 12). Appellants assert that “the final Office Action is moot with
respect to the recitation in steps a) and b) mapping objects according to
[respectively] first and second weighted parameters” (Id.). However, the
abstract of Forman discloses mapping increasing and decreasing functions in
conjunction with various scales and scores, which would correspond to the
“mapping objects according to [respectively] first and second weighted
parameters” (App. Br. 12).

Dependent Claim 10
We are not persuaded the Examiner erred in asserting that a
combination of Forman, Ginsberg, and Stiegler renders obvious dependent
claim 10 (App. Br. 12-15). Appellants assert that “Stiegler teaches
generating criteria weights that are normalized (See Figure 9). Generating a
criteria (i.e., rating) based on a normalized rating teaches away from what
Appellants deem to be their invention” (App. Br. 13). However, neither
dependent claim 10, nor independent claim 8 from which it depends,
includes any aspect that would exclude normalization.
Appellants also assert that
Stiegler[] formats his weighted criteria in a simple Table as
shown in Figures 3, 4, and 5 which he uses to store the numbers
he obtains. In contradistinction, Appellants use predefined
parameters which are used for mapping purposes and used to
form a multi-dimensional matrix or grid, and not in a single
dimension, as taught by Stiegler
(App. Br. 13). However, at least Figure 3 of Stiegler discloses a two-
dimensional grid.

Appeal 2011-007010
Application 11/210,718

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DECISION
The decision of the Examiner to reject claims 1-18 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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