Ex Parte Kano et al

Patent Trial and Appeal Board

Nov 19, 2014

11881479 (P.T.A.B. Nov. 19, 2014)

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.
11/881,479 07/27/2007 Makoto Kano JP920060066US1 1347
7590 11/19/2014
Anne Vachon Dougherty
3173 Cedar Road
Yorktown Hts, NY 10598
EXAMINER
CALLE, ANGEL J.
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
11/19/2014 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 MAKOTO KANO, AKIO KOIDE, MIKA SAITO,
and TAKEO YOSHIZAWA
____________________

Appeal 2012-006004
Application 11/881,479
Technology Center 2100
____________________

Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1–5, and 7–11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2012-006004
Application 11/881,479
2
Illustrative Claim
The claimed subject matter relates to of the impact of changes in
product development processes. Abst.
Claim 1 is illustrative and is reproduced below:
1. An apparatus for analyzing a change impact that a change in
one piece of design information makes on another piece of
design information in a design and development process,
comprising:
an input unit for receiving an input of a change target
piece of design information and a change scale of a change
target piece;
a change impact computing unit for computing a change
impact on a creation process resulting from creating a piece of
design information that refers to the change target piece of
design information, based on the change target piece of design
information, the change scale, dependency between the pieces
of design information, a dependency level, and a work amount
after making a reference in the creation process; and
an output unit for outputting the change impact to an
external unit.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tyson Rodgers Browning, Modeling and Analyzing Cost,
Schedule, and Performance in Complex System Product
Development (MIT 1998) (“Browning”).

P. A. Oduguwa, R. Roy, and P. J. Sackett, Cost impact analysis
of requirement changes in the automotive industry: a case
study, PROC. IMECHE VOL. 220, PART B: J. ENGINEER
MANUFACTURE (2006) (“Oduguwa”).

Appeal 2012-006004
Application 11/881,479
3
Rejections
The Examiner made the following rejections:
Claims 1–5, 7, 8, 10, and 11
1
stand rejected under 35 U.S.C § 102(b)
as anticipated by Browning. Ans. 5–13.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Browning and Oduguwa. Ans. 14–15.

ANALYSIS
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 set forth in the Answer in response to the Appeal
Brief. We highlight and address specific findings and arguments for
emphasis.
Each of independent claims 1, 10, and 11 broadly recites computation
of “a change impact on a creation process resulting from creating a piece of
design information that refers to the change target piece of design
information” based on five parameters: (1) “the change target piece of
design information”; (2) the “change scale”; (3) “dependency between the
pieces of design information”; (4) “a dependency level”; and (5) “a work
amount after making reference in the creation process.”
The Specification provides explicit definitions for certain of these
terms and provides commentary that informs construction of others. First, a
“change target piece of information” is described as “a piece . . . of design
information to be changed.” Spec., p. 8, ll. 9–12. Second, a “change scale”

1
The Examiner’s rejection of claim 6 has been withdrawn. Ans. 4.
Appeal 2012-006004
Application 11/881,479
4
is defined as “a rework ratio that is a ratio of [(a)] the work amount
becoming useless due to a rework, to [(b)] the work amount carried out.” Id.
at p. 9, ll. 9–12. Third, a “dependency level” is defined as “a rate at which
one piece of design information depends on another piece of design
information.” Id. at p. 9, ll. 12–15. Fourth, a “work amount after making a
reference in the creation process” is described as “the work amount carried
out in a process of creating a piece of design information after referring to
the piece . . . of design information which is to be changed.” Id. at p. 13, ll.
5–9. Appellants do not identify a clear definition of “dependency between
the pieces of design information,” but make reference to a “dependency
storage section” that generates process flow information indicating
dependencies among a plurality of design processes in an exemplary
embodiment. See id. at p. 26, l. 10 – p. 27, l. 14.
The Examiner identifies each of these parameters as disclosed by the
methodology taught by Browning, which generally describes an engineering
design process model “with process activity characteristics as inputs.”
Browning, p. 163. Browning explains that analysis of models that account
for different cost and schedule drivers “allows for the choice of a process
configuration that is robust against a variety of scenarios and the ongoing
examination of ‘what if’ possibilities when conditions and assumptions
change.” Id. Table 1 of Browning provides a list of input data to its model
that include a “[l]ist of activities comprising process” and “[i]mpact as
amount of rework caused by a typical, actualized change in an input.” Id. at
p. 165. Table 2 of Browning provides a list of variables used in the model.
Id. at pp. 171–172.

Appeal 2012-006004
Application 11/881,479
5
The teachings in the prior-art reference need not be ipsissimis verbis.
Structural Rubber Products v. Park Rubber, 749 F.2d 707, 716 (Fed. Cir.
1984). The Examiner finds that Browning’s list of activities identified in
Table 1 and further illustrated for a particular application in Tables 3–6 at
pages 173 and 174 include a “change target piece of design information.”
Ans. 5. We agree with this finding because the identified activities are
design information that is changed by application of Browning’s method.
We also agree with the Examiner’s finding that the “[i]mpact as amount of
rework caused by a typical, actualized change in input” identified in Table 1
of Browning is a “change scale.” See id. at 7. Browning characterizes this
datum as “% of activity to be reworked,” which is equivalent to a ratio of (a)
work amount becoming useless due to a rework to (b) work amount carried
out.
With respect to the “dependency between the pieces of design
information” and the “dependency level,” the Examiner finds that these are
disclosed by Browning’s use of dependency structure matrices (“DSMs”).
Id. As Browning explains, a “DSM is used to represent the process web—
what activities should occur and when, and with what information from
other activities.” Browning, p. 165. It thus expresses dependencies between
the activities identified in Table 1, i.e., dependencies between pieces of
design information, and expresses rates at which one piece of design
information depends on other pieces of design information. We conclude
that the Examiner did not err in making these identifications.
The “work vector” Wn identified in Table 2 of Browning is described
as vector that “indicat[es] work to be done on that activity.” Id. at p. 172.
We agree with the Examiner that this reasonably discloses the “work amount
after making a reference in the creation process” because it describes the
Appeal 2012-006004
Application 11/881,479
6
work amount carried out in a process of creating a piece of design
information. See Ans. 6.
Appellants present several contentions that distinguish between the
claimed apparatus, method, and computer program for “analyzing a change
impact that a change in one piece of design information makes on another
piece of design information” and Browning’s focus on cost and duration
analyses. See Br. 14–30. We are not persuaded by these contentions. In
particular, for the reasons we express above, we disagree with Appellants’
assertions that “[l]isting activities for cost and duration analysis is not the
same as inputting a specific piece of design information which is a change
target” (id. at 18); that “Browning does not analyze change impact, but
simply modifies cost and schedule outcomes with statistical values assigned
to change impact” (id. at 14); and that “Browning does not teach or suggest
changing the activity [because] Browning is just trying to estimate costs and
schedules for a selected activity” (id. at 21). The claims do not recite any
particular methodology for computation of a change impact, only that such
computation be “based on” parameters that are reasonably understood as
disclosed by Browning.
Notably, Appellants’ contention that, in Browning, “no change impact
is being computed for a specific piece of design information” (id. at 22,
emphasis added) is not commensurate with the scope of claim 1. Although
claim 1 recites a “change target piece of design information” (emphasis
added) the scope of claim 1 encompasses the change impact being computed
for changes that simultaneously involve multiple pieces of design
information as taught by Browning.
Appeal 2012-006004
Application 11/881,479
7
In view of the above discussion, we sustain the rejection of
independent claim 1 and independent claims 10 and 11 argued together with
claim 1. Br. 11–32.
Claim 2 depends from claim 1. Appellants contend that Browning has
no teaching or suggestion of “recursively comput[ing] change impact on at
least one successive piece of design information that indirectly refers to the
change target piece of design information,” as recited in claim 2. Br. 32–33.
“A reference must be considered not only for what it expressly teaches, but
also for what it fairly suggests.” In re Bell, 991 F.2d 781, 785 (Fed. Cir.
1993) (quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)). The
Examiner’s identification of the iterative process in Table 3 of Browning
sufficiently supports the Examiner’s finding that the limitation is suggested
by Browning. Ans. 7, 23–24. Accordingly, we sustain the rejection of
claim 2.
Claim 3 depends from claim 1. Appellants argue the Examiner erred
in rejecting claim 3 for the same reasons as claim 1 (Br. 33) and thus, for the
same reasons as claim 1, we sustain the rejection of claim 3.
Claim 4 depends from claim 1. Appellants refer to their previously
presented arguments (Br. 33), and otherwise merely point out what the claim
recites, which is not “considered an argument for separate patentability of
the claim.” 37 C.F.R. §41.37(c)(1)(vii). See In re Lovin, 652 F.3d 1349,
1351 (Fed. Cir. 2011) (sustaining requirement that Appellants articulate
more substantive arguments if they wish for individual claims to be treated
separately). The Examiner’s identification of components of off-diagonal
cells of Browning’s DSM’s for the recited “dependency level” (Ans. 25–26)
provides sufficiently distinct identification of the claim recitation.
Accordingly, we sustain the rejection of claim 4.
Appeal 2012-006004
Application 11/881,479
8
Claim 5 depends from claim 3. Appellants contend that the
probability density function described in Figure 5 of Browning “is not the
same as or suggestive of the claimed use of probability density functions for
actual computed change impact.” Br. 34. But Appellants do not address the
full reasoning articulated by the Examiner explaining Browning’s disclosure
of generating statistical measures of the cumulative cost C and schedule S.
See Ans. 8, 26–27. Accordingly, we sustain the rejection of claim 5.
Claim 7 depends from claim 1. Appellants argue the Examiner erred
in rejecting claim 7 for the same reasons as claim 1 (Br. 35) and thus, for the
same reasons as claim 1, we sustain the rejection of claim 7.
Claim 8 depends from claim 1. Appellants acknowledge that
“Browning collects survey data,” but contend that Browning insufficiently
suggests “using design information which has been accumulated at runtime
in a past project information log.” Br. 36. The Examiner provides sufficient
reasoning to support the finding that Browning discloses data and activity
collection of a previous project via a survey to generate the probability of
rework. Ans. 9, 28 (citing Browning, pp. 154–161). The Examiner further
provides sufficient reasoning relating this finding to the claim limitation. Id.
Accordingly, we sustain the rejection of claim 8.
Claim 9 depends from claim 1 and is rejected over the combination of
Browning and Oduguwa. Appellants argue Oduguwa fails to cure the
alleged deficiencies of Browning as argued with respect to claim 1. Br. 37–
39. Thus, for the same reasons as claim 1, we are not persuaded the
Examiner erred and we sustain the rejection of claim 9.
Appeal 2012-006004
Application 11/881,479
9
For the foregoing reasons, we sustain the Examiner’s rejections of
claims 1–5 and 7–11.
2

DECISION
The Examiner’s decision rejecting claims 1–5 and 7–11 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)(1)(iv).

AFFIRMED

ELD

2
In the event of further prosecution, the Examiner may wish to review the
claims for compliance under 35 U.S.C. § 101 in light of the recently issued
preliminary examination instructions on patent eligible subject matter.
See “Preliminary Examination Instructions in view of the Supreme
Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et
al.,” Memorandum to the Examining Corps, June 25, 2014.