Ex Parte Lavoie et al

Board of Patent Appeals and Interferences

Aug 16, 2012

11138748 (B.P.A.I. Aug. 16, 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.
11/138,748 05/26/2005 James Richard Lavoie 1016-8 8821
7590 08/17/2012
Ryan, Mason & Lewis, LLP
Suite 205
1300 Post Road
Fairfield, CT 06824
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
08/17/2012 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JAMES RICHARD LAVOIE, 8
IAN MITCHELL, 9
THOMAS SANTOS, 10
and DONALD L. STANFORD 11
___________ 12
13
Appeal 2011-002326 14
Application 11/138,748 15
Technology Center 3600 16
___________ 17
18
19
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 20
MEREDITH C. PETRAVICK, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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Application 11/138,748

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 25, 2010) and Reply Brief (“Reply Br.,” filed October 15,
2010), and the Examiner’s Answer (“Ans.,” mailed August 19, 2010).
James Richard Lavoie, Ian Mitchell, Thomas Santos, and Donald L. 2
Stanford (Appellants) seek review under 35 U.S.C. § 134 (2002) of a final 3
rejection of claims 1-21, the only claims pending in the application on 4
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
The Appellants invented an enterprise management system for 7
recording, managing and evaluating intellectual capital. (Specification 1:5-8
7). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
1. A method for managing intellectual capital in an enterprise, 13
comprising: 14
[1] obtaining a description 15
of a plurality of innovations 16
of said enterprise; 17
[2] providing said descriptions 18
to a plurality of employees; 19
[3] assigning a limited pool of investment units 20
to each of said plurality of employees; 21
[4] allowing said plurality of employees 22
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Application 11/138,748

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to invest said pools of investment units 1
in one or more of said plurality of innovations, 2
wherein each investment is based on 3
a perceived value 4
of said corresponding innovation 5
to said employee; 6
and 7
[5] prioritizing said plurality of innovations 8
based on said investments, 9
[6] wherein one or more of said steps are performed by a 10
processor. 11
The Examiner relies upon the following prior art: 12
Sabourian US 2001/0027430 A1 Oct. 4, 2001
Sorensen US 2003/0101197 A1 May 29, 2003
Buchmiller US 2003/0187706 A1 Oct. 2, 2003
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable 13
over Buchmiller, Sabourin, and Sorensen. 14
ISSUES 15
The issue of obviousness turns primarily on whether it was predictable 16
for one to use Sabourin’s investment administration techniques to administer 17
the investments made in Buchmiller’s employee innovations. 18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
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Application 11/138,748

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Facts Related to the Prior Art 1
Buchmiller 2
01. Buchmiller is directed to an enterprise-wide knowledge 3
management system with an innovation engine portal that can link 4
each user to any needed expertise, throughout an enterprise, in a 5
consistent manner. The entire innovation life cycle is made 6
accessible to all employees, consisting of the initial demand for 7
innovation, searches for innovation, spark of innovation creation, 8
innovation collaboration and investment, and innovation reporting 9
and communications. The enterprise-wide knowledge 10
management system provides a system of business processes and 11
tools, which are designed to collect, enhance, and leverage the 12
organization's intellectual capital. Buchmiller ¶ 0007. 13
02. The ideas that have the most pilot success and effective designs, 14
sufficient scalability, and most efficient delivery of value are 15
adopted as organization-wide solutions and/or are delivered as 16
solutions to the organization's clients. The process inherently 17
prioritizes the ideas on merit, so that those ideas having the 18
highest priority receive the most attention and funding. 19
Buchmiller ¶ 0037. 20
03. An idea workflow development process can begin by having 21
the originator of an idea submit the idea into the organization's 22
idea development workflow. Once the idea is completely defined 23
and properly formed, it can be presented to a seed-funding 24
committee for evaluation and prioritization. If the seed-funding 25
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Application 11/138,748

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committee determines that the idea has merit and a high enough 1
priority, seed funding can be provided. The seed funding can 2
provide the time, money, and other required resources to prove the 3
business opportunity presented by the idea. The results of this 4
"proof-of-concept" effort, which can include, for example, a fully 5
developed business plan, can be presented to a build funding 6
committee. The build funding committee can determine if the 7
idea has ongoing, large-scale merit, and a high enough priority. If 8
so, the build funding committee can provide build funding for the 9
idea. The build funding can provide the time, money, and other 10
required resources needed to build the solution presented by the 11
idea, into its final form. The finalized solution can be integrated 12
into the organization's overall business systems and/or delivered to 13
clients as a commercial offering. Buchmiller ¶ 0051. 14
Sabourin 15
04. Sabourin is directed to financial investment in stocks and shares 16
or other financial entities, using a host website, by offering a sum 17
of money to any person willing to register on the website and 18
permitting the registered participant to issue instructions to invest 19
that sum of money in a portfolio of said financial entities. 20
Sabourin ¶ 0004. 21
Sorensen 22
05. Sorensen is directed to management of ideas accumulated in a 23
computer database. The accumulated ideas may include needs, 24
problems, solutions, requirements, discoveries and/or inventions. 25
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A discovery of a problem, need or requirement calling for a 1
solution is commonly an integral idea-component of an invention. 2
Sorensen ¶ 0001. 3
06. Selected ideas are rated according to cast votes. Sorensen ¶ 4
0089-0092. 5
ANALYSIS 6
We are not persuaded by the Appellants’ argument that Sabourin fails to 7
describe using employees and innovations and Sorenson only allows votes 8
based on 0-10 scale allowing votes on all potential investments. 9
The Appellants contention does not persuade us of error on the part of 10
the Examiner because the Appellants respond to the rejection by attacking 11
the references separately, even though the rejection is based on the 12
combined teachings of the references. Nonobviousness cannot be 13
established by attacking the references individually when the rejection is 14
predicated upon a combination of prior art disclosures. See In re Merck & 15
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 16
Buchmiller shows one of ordinary skill knew to make investments 17
in employee innovation ideas. Sabourin merely shows one known 18
implementation for administering the investments Buchmiller requires. As 19
to Sorenson allowing votes on all potential investments, the claim does not 20
preclude this, but only requires some way of prioritizing. As the claim is 21
silent as to how such prioritizing is used, this is equivalent to sequencing, 22
which a 0-10 scale inherently does. 23
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As to claims 2-5 and 9 nominally argued separately, all of the arguments 1
rely on the contentions regarding claim 1. 2
CONCLUSIONS OF LAW 3
The rejection of claims 1-21 under 35 U.S.C. § 103(a) as unpatentable 4
over Buchmiller, Sabourin, and Sorensen is proper. 5
DECISION 6
The rejection of claims 1-21 is affirmed. 7
No time period for taking any subsequent action in connection with this 8
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 9
§ 1.136(a)(1)(iv) (2007). 10
11
AFFIRMED 12
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JRG 14
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