Ex Parte Johnson

Patent Trial and Appeal Board

Apr 10, 2017

12376509 (P.T.A.B. Apr. 10, 2017)

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.
12/376,509 02/05/2009 Perry L. Johnson PJI0112PUSA 7452
22045 7590 04/12/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER SHANKER, JULIE MEYERS
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
04/12/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PERRY L. JOHNSON
Appeal 2015-0039061
Application 12/376,5092
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3—8, 10-12, and 14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
September 10, 2014) and Reply Brief (“Reply Br.,” filed February 16,
2015), and the Examiner’s Answer (“Ans.,” mailed December 16, 2014) and
Final Office Action (“Final Act.,” mailed February 10, 2014).
2 Appellant identifies Perry L. Johnson Registrars of Texas, L.P. as the real
party in interest. App. Br. 2.
Appeal 2015-003906
Application 12/376,509
CLAIMED INVENTION
Appellant’s claimed invention “relates to a methodology that enables
a business entity to achieve compliance with governance standards”
(Spec. 1,11. 10-11).
Claim 1, reproduced below, is the sole independent claim, and
representative of the subject matter on appeal:
1. A method for evaluating and achieving compliance
with industrial or governmental standards, the method
comprising:
receiving input defining a client’s business operations
procedures and a client’s needs;
reviewing applicable industrial or governmental standard
particulars;
evaluating the client’s business operations procedures in
view of the industrial or governmental standard particulars and
the client’s needs;
generating output representing a deliverable component
identifying revisions to client business practices to conform to
the industrial or governmental standard particulars;
presenting the deliverable component to the client;
implementing a risk assessment policy for the client based
on the findings of the deliverable component;
providing risk management training to the client based on
the findings of the deliverable component; and
electronically tracking the implementation of the risk
assessment policy.
REJECTIONS
Claims 1, 3—8, 10—12, and 14 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 3—8, 10—12, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over “Internal Control Documentation Maintenance and
Support with Movaris Certainty,” October 2004, available at
2
Appeal 2015-003906
Application 12/376,509
http://web.archive.org/web/20041011202040/www.movaris.com (hereinafter
“Document A”) and Benson et al. (US 2005/0065839 Al, pub. Mar. 24,
2005, hereinafter “Benson”).
ANALYSIS
Non-Statutory Subject Matter
Appellant argues that the Examiner erred in rejecting claims 1, 3—8,
10—12, and 14 under 35 U.S.C. § 101 because the claims satisfy the
transformation prong of the Bilski3 machine-or-transformation test and,
therefore, recite patent-eligible subject matter under § 101 (App. Br. 2—3 and
Reply Br. 2). In this regard, Appellant argues that the transformation prong
is satisfied because “[ijnput defining a client’s business operations
procedures and a client’s needs is transformed to output representing a
deliverable component identifying revisions to client business practices”
(App. Br. 2-3).
We agree with the Examiner that the method steps of claim 1 do not
transform an article or material to a different state or thing (Final Act. 5—6;
see also Ans. 2—3). The transformation of client business operations
procedures and needs to a deliverable component identifying revisions to
client business practices is, at best, merely a manipulation of data, which is
not sufficient to meet the transformation prong under 35 U.S.C. § 101.
Gottschalkv. Benson, 409 U.S. 63, 71—72 (1972) (one may not patent a
computer based algorithm that merely transforms data from one form to
another).
3 Bilski v. Kappos, 130S. Ct. 3218 (2010).
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Appeal 2015-003906
Application 12/376,509
The Examiner further finds that the claims are directed to an abstract
idea, i.e., to “a general concept of evaluating and/or implementing industry
or government compliance standards,” and that none of the method steps
“viewed ‘both individually and as an ordered combination,’ transform[s] the
nature of the claim[s] into patent-eligible subject matter” (Ans. 3 (citing
Alice Corp. Pty Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014)); see also
Final Act. 6). The Examiner reasons that, if allowed, the claims would
effectively grant a monopoly on the concept of compliancy evaluations and
that the “steps of the method, as claimed, could be performed by any
currently known or future manner of evaluating, or even done by human
beings because a human user could perform the steps manually ‘on’ a
computer or similar device” (Final Act. 6). Appellant does not provide any
response to this line of reasoning in either the Appeal Brief or the Reply
Brief.
We are not persuaded on the present record that the Examiner erred in
rejecting claims 1, 3—8, 10-12, and 14 under 35 U.S.C. § 101. Therefore,
we sustain the Examiner’s rejection.
Obviousness
Appellant argues that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) because the combination of Document A
and Benson does not disclose or suggest “providing risk management
training to the client based on the findings of the deliverable component,” as
recited in claim 1 (App. Br. 3—4). More particularly, Appellant asserts that a
person of ordinary skill in the art would not have sought to modify the
teachings of Document A with the teachings of Benson because a software
package, as disclosed in Document A, could not be modified to provide
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Appeal 2015-003906
Application 12/376,509
additional training, as called for in claim 1, inasmuch as the subject matter of
the training would not have been known at the time the software package
was manufactured (id. ). Appellant concedes that some additional training
module could have been incorporated into a software package, like that
disclosed in Document A, but Appellant asserts that such associated training
would necessarily be generic rather than based on the findings of the
deliverable component “because the software package must first be used to
determine the deliverable component” (id. at 4).
Appellant’s argument is not persuasive at least because it is not
commensurate with the scope of claim 1. As the Examiner observes, claim 1
merely recites “providing risk management training to the client based on
the findings of the deliverable component;” the manner of training is not
specified, and there is nothing in the claim language that limits the training
to computerized training (Ans. 3—4). Appellant argues that to the extent a
person skilled in the art would have thought a software package to be
deficient, he or she would have sought to remedy the deficiencies through
modification of the software package (Reply Br. 2). But Appellant does not
adequately explain why, and we fail to see why, it would not have been
obvious, if operational issues requiring additional training were uncovered,
as disclosed in Document A, to provide in-person training, as disclosed in
Benson, to address those issues.4
4 Document A, Part 3, “Movaris Certainty Drives Sarbanes-Oxley
Compliance: Improve,” discloses that “control testing may uncover
operational issues in those organizations, such as a need for additional
training or incomplete business processes” (id. at 1). Benson is directed to a
method for evaluating the internal controls of a business entity for financial
reporting and ensuring compliance of financial records with governmental
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Application 12/376,509
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the
Examiner’s rejection of dependent claims 3—8, 10—12, and 14, which are not
argued separately.
DECISION
The Examiner’s rejection of claims 1, 3—8, 10—12, and 14 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 3—8, 10—12, and 14 under
35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
standards (see, e.g., Benson, Abstract, H 2-4). Benson discloses that “[a]n
[internal audit] professional may provide training to an owning business unit
and notify the business unit if the efficacy of a control fails to meet
expectations to provide the business unit a basis to modify a control” (id.
164).
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