Ex Parte Outland

Patent Trial and Appeal Board

Jun 8, 2016

11410678 (P.T.A.B. Jun. 8, 2016)

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.
11/410,678 04/25/2006 Rinsland N. Outland END920050083US1 4153
7590 06/09/2016
Steven Fischman, Esq.
Scully, Scott, Murphy & Presser
400 Garden City Plaza
Garden City, NY 11530
EXAMINER
JACKSON, ERNEST ADEYEMI
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
06/09/2016 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 RINSLAND N. OUTLAND
____________

Appeal 2014-003260
Application 11/410,678
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed Aug.
26, 2013), Reply Brief (“Reply Br.,” filed Jan. 6, 2014), the Examiner’s
Answer (“Ans.,” mailed Nov. 6, 2013), and the Final Rejection (“Final
Act.,” mailed Mar. 27, 2013).
2 Appellant identifies the real party in interest as International Business
Machines Corporation (App. Br. 2).
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CLAIMED INVENTION
The claimed invention “relates to business transformation
management tools” (Spec. ¶ 1). Claims 1, 6, 10, 14, and 17 are independent
and recite substantially similar subject matter (see App. Br. 41–57). Claim
1, reproduced below with bracketed matter added, is illustrative of the
subject matter on appeal.
1. A method of providing a view of a transformation program
to facilitate full team participation in information technology
investment and return on investment planning, execution,
monitoring and reporting, the method comprising the steps of:
[1] providing an integrated and end-to-end set of
processes, analytic tools, and reports that provide an information
technology team with a comprehensive view of an information
technology transformation, said processes including a
requirements management process, a program management
process, a transformation management process, and a knowledge
management process; and
[2] using said set of processes, analytic tools and reports
to provide a visibility to make objective business decisions about
issues, including technology and activity and resource allocation,
including
[3] using a first group of the analytic tools to generate
upstream data,
[4] using a second group of the analytic tools to manage
the information technology transformation,
[5] using one of the analytic tools, functionally between
said first and second groups of the analytic tools, to compile and
analyze the upstream data generated by the first group of the
analytic tools, and to make the compiled and analyzed upstream
data available to the second group of the analytic tools,
[6] showing a display screen to define a solution to a
requirement, including assigning the requirement to a resource
shown on the display screen, said resource developing and
maintaining an action plan to monitor and report progress of on-
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going activities while investigating a solution that meets the
requirement,
[7] using a computer system, executing at least one of the
analytic tools, to generate at least a part of the comprehensive
view; and wherein:
[8] the transformation management process includes a
location ID information sub-process, an IPT LAN Internet
Protocol Telephony Local Area Network (IPT LAN) information
sub-process, an IPT WAN Internet Protocol Telephony Wide
Area Network (IPT WAN) information sub-process, and a
BTMS/BTOP Business Transformation Management
System/Business Transformation Operation Process
(BTMS/BTOP) compliance sub-process;
[9] the location ID information sub-process is used to
provide on-going maintenance of local information;
[10] the IPT LAN information sub-process is used to
provide on-going maintenance of planned and installed
information on a specified LAN;
[11] the IPT WAN information sub-process is used to
provide on-going maintenance of planned and installed
information on a specified WAN; and
[12] the BTMS/BTOP compliance sub-process is used to
provide on-going maintenance of BTMS/BTOP work products.
App. Br. 41–43, Claims App.
REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kananghinis US 2004/0059611 A1 Mar. 25, 2004
Weber
Ahern
Sheppard
US 2004/0243422 A1
US 2005/0043977 A1
US 2005/0159969 A1
Dec. 2, 2004
Feb. 24, 2005
July 21, 2005

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The following rejections are before us for review:
I. Claims 1–19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ahern, Sheppard, and Weber.
II. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ahern, Sheppard, Weber, and Kananghinis.

ANALYSIS
Rejection I
Claim 1
It is well settled that:
[The USPTO] satisfies its initial burden of production by
adequately explain[ing] the shortcomings it perceives so that the
applicant is properly notified and able to respond. In other
words, the PTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies 35 U.S.C. § 132, in
notify[ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.
[Thus,] all that is required of the office to meet its prima facie
burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of § 132.
In re Jung, 637 F.3d 1356, 1362–1363 (Fed. Cir. 2011) (internal citations
and quotation marks omitted).
In rejecting claim 1, the Examiner makes explicit findings regarding
the elements taught by the prior art, and explains how the elements are
mapped to the respective claim elements (see Final Act. 3–7). The
Examiner finds that Ahern discloses limitations [1] and [3]–[7], Sheppard
discloses limitation [2], and Weber discloses limitations [8]–[12] (id.).
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As explained in Jung, the Examiner’s findings and explanations
would have put any reasonable applicant on notice of the rejection, and
provided ample information with which to counter the grounds of rejection,
which is all that is required to establish a prima facie case of unpatentability.
In short, the Examiner satisfied the initial burden of production by
combining the references to establish a case of obviousness. The burden
then shifts to Appellant to rebut the Examiner’s case.
In order to rebut a prima facie case of unpatentability, Appellant must
distinctly and specifically point out the supposed Examiner errors, and the
specific distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(vii) (2010) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
Appellant has failed to carry its burden. Appellant contends that there
is no disclosure in the prior art of “the transformation management process
that is used in Appellants’ invention” (App. Br. 34–35). Regarding
limitation [9], Appellant asserts that although Weber discloses “an
identification or identification information, that information is not used to
provide on-going maintenance of local information, as it is in Appellants’
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invention” (id. at 36). However, Appellant does not offer any explanation as
to why “on-going maintenance of local information” does not encompass the
“event identification process that scans network resources” as disclosed in
Weber. Regarding limitation [11], Appellant provides a description of
paragraph 47 of Weber, and concludes—without adequate analysis—that
“there is no disclosure of the OPT/WAN [sic - IPT WAN] information sub-
process used in Appellants’ invention” (id. at 36). Regarding limitation
[12], Appellant provides a description of paragraph 54 of Weber, and
concludes that “[t]here is no disclosure, however, of the BTMS/BTOP
compliance sub-process used in Appellants’ invention” (id.). Appellant
provides no analysis of the scope of the argued claim limitations or specific
reasons as to why these limitations do not encompass the prior art disclosure
cited by the Examiner. We note that paragraph 48 of the Specification, cited
by Appellant as support for limitations [8]–[12] (see id. at 4–5), does not
provide any definitions or guidance for interpretation of the claimed subject
matter.
Additionally, Appellant fails to persuade us of reversible error
because for each of the claims, although the cited text does not repeat the
recited claim limitation verbatim, one skilled in the art would understand
that the recited claim limitation encompasses the disclosure cited by the
Examiner. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (whether a
reference teaches a claim limitation “is not an ‘ipsissimis verbis’ test”).
We note that Appellant uses the Reply Brief to introduce new
arguments with respect to claim 1. “Any bases for asserting error, whether
factual or legal, that are not raised in the principal brief are waived.” Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see also
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Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (“[A]n issue not raised by an appellant in its opening brief . . . is
waived.”) (citing Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792,
800 (Fed. Cir. 1990)). The Examiner’s findings with regards to claim 1 in
the Answer are identical to those in the Final Rejection, from which the
instant appeal was taken. In fact, the Examiner only addresses the
insufficiency in Appellant’s arguments presented in the Appeal Brief (See
Ans. 2–6). Appellant could have presented the newly introduced arguments
in the Appeal Brief. However, Appellant may not present arguments in a
piecemeal fashion, holding back evidence and arguments until an examiner
answers the original brief. In the Reply Brief, for instance, Appellant
presents additional arguments that it would not have been obvious to modify
Ahern and Sheppard to include the features disclosed in Weber (Reply Br.
7–8). This basis for asserting error is waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Ahern, Sheppard, and Weber.

Claims 2–19
Appellant relies on arguments presented with respect to claim 1 in
contesting the rejection of independent claims 6, 10, 14, and 17 (App. Br.
36–37). Therefore, we sustain the rejection of claims 6, 10, 14, and 17 for
the same reasons as claim 1. We also sustain the rejection of dependent
claims 2–5, 7–9, 11–13, 15, 16, 18, and 19, which are not separately argued
except for their dependency on their respective independent claims (see id.).

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Rejection II
Claim 20
The Examiner finds that Sheppard discloses a project milestone sub-
process as recited in claim 20 (Final Act. 16–17) (citing paragraphs 7, 185,
192, 194, 198, 204, and 876 of Sheppard).
Appellant contends that “[t]here is no mention of any milestones,
though, and there is no suggestion of using any of this information in a
milestone sub-process, as described in Claim 20” (App. Br. 38). According
to Appellant, “[p]aragraph [185] of Sheppard uses the word ‘status’;
however, this refers to an employment status, not to the status of a
milestone” (id.).
We disagree. Sheppard discloses in paragraph 192, for example, that
“[a] schedule of milestones may be created, which encompasses the
activities for a site within the lifecycle of the site.” Appellant fails to
address this finding in Sheppard. Accordingly, we are not apprised of
reversible error on the part of the Examiner, and thus, we sustain the
rejection of claim 20.

DECISION
The Examiner’s decision to reject claims 1–20 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