Ex Parte RAJOPADHYE

Patent Trial and Appeal Board

Nov 23, 2018

13026523 (P.T.A.B. Nov. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/026,523 02/14/2011 Nagesh RAJOPADHYE
79340 7590 11/27/2018
MANNA VA & KANG, P.C.
3201 Jermantown Road
SUITE 525
FAIRFAX, VA 22030
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Dl0-161-02384-00-US 5038
EXAMINER
BYRD, UCHE SOW ANDE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/27/2018 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):
ASHOKM@MANNA V AKANG.COM
docketing@mannavakang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAGESH RAJOP AD HYE
Appeal2017-000998
Application 13/026,523 1
Technology Center 3600
Before LARRY J. HUME, JAMES W. DEJMEK, and
SCOTT B. HOWARD, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-21. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellant identifies Accenture Global Services Limited as the real party in
interest. App. Br. 3.
Appeal2017-000998
Application 13/026,523
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention is generally directed to a
brand impact verification (BIV) system to be used during the development
phase of a utilization-related software application (URSA). Spec. ,r 7.
According to the Specification, a utilization-related software application is a
software application that may be used by a company and its customers, but
is not a product in the company product line or a company website. Spec.
,r 23. As an example, a company selling vehicles may develop a software
application that allows its customers to obtain financing online. Spec. ,r 4.
A goal of the disclosed invention is to maintain brand characteristics and
integrity during the development of the URSA. Spec. ,r,r 5---6, 25-26.
Examples of brand characteristics may include logos, color schemes and
visual appearance. Spec. ,r 26.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A system to perform brand impact verification (BIV) for a
utilization-related software application (URSA), associated with
an identity and a software development process (SDP) including
multiple phases, the system comprising:
a requirements-design module to determine modeling data
including brand characteristics of a brand associated with the
identity, software application properties associated with the
URSA, and desired benchmarks for design test results, wherein
the desired brand characteristics comprise a visual desired brand
characteristic, and the visual desired brand characteristic
comprises at least one of a color index, a defined pigmentation
and modalities of chromaticity ranges defining a color; and
a BIV testing engine, executed by a computer system, to
2
Appeal2017-000998
Application 13/026,523
identify design test procedures to produce design
test results associated with a brand impact being verified
based on the determined brand characteristics and the
determined software application properties, and
implement the design test procedures on the URSA
to generate the design test results in an SDP design step
of an SDP of the URSA,
verify the brand impact for the URSA, the verifying
compnsmg:
comparing the generated design test results
with the desired benchmarks associated with the
determined brand characteristics, wherein the
generated design test results include a visual design
test result comprising at least one a color index, a
pigmentation and a modality of chromaticity ranges
determined for the URSA, and the comparing of the
generated design test results with the desired
benchmarks comprises comparing the visual
desired brand characteristic with the visual design
test result, and
comparing the generated design test results
with the determined software application properties,
generate feedback data to select alternate modeling
data responsive to a failure of the generated design test
results to reach the desired benchmarks, and
generate outcome data to report the verification
responsive to the generated design test results reaching the
desired benchmarks,
wherein the design test procedures are implemented in the
SDP in a SDP design step prior to implementing an SDP full
implementation test step testing a full implementation of the
URSA.
3
Appeal2017-000998
Application 13/026,523
The Examiner's Rejections
1. Claims 1-21 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2.
2. Claims 1--4, 6-14, and 16-21 stand rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Gottfried (US 2010/0185520 Al;
July 22, 2010) and Sai et al. (US 2007/0172113 Al; July 26, 2007) ("Sai").
Final Act. 3-15.
3. Claims 5 and 15 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Gottfried, Sai, and Cristol (US 2005/0256844
Al; Nov. 17, 2005). Final Act. 15-17.
ANALYSIS 2
Re} ection under 3 5 US. C. § 101
Appellant disputes the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 10-24; Reply
Br. 2-10. In particular, Appellant argues the Examiner erred in concluding
the claims are directed to an alleged abstract idea (see, e.g., Final Act. 2).
App. Br. 12-14; Reply Br. 2-5. Instead, Appellant asserts the claims are
directed to a technical solution of "controlling the inclusion of visual brand
characteristics in a software application during development of the
software." App. Br. 12; Reply Br. 5. Further, Appellant argues the
purported abstract idea is an overgeneralization of the claims and that the
2 Throughout this Decision, we have considered the Appeal Brief, filed
January 22, 2016 ("App. Br."); the Reply Brief, filed October 21, 2016
("Reply Br."); the Examiner's Answer, mailed August 25, 2016 ("Ans.");
and the Final Office Action, mailed April 2, 2015 ("Final Act."), from which
this Appeal is taken.
4
Appeal2017-000998
Application 13/026,523
Examiner does not consider many of the claim limitations. App. Br. 13-18;
Reply Br. 4. Moreover, Appellant asserts the claims recite significantly
more than the alleged abstract idea. App. Br. 19-23; Reply Br. 8-10.
Under the Supreme Court's two-step framework, if a claim falls
within one of the statutory categories of patent eligibility (i.e., a process,
machine, manufacture or composition of matter) then the first inquiry is
whether the claim is directed to one of the judicially-recognized exceptions
(i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). If so, the
second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. As part
of the "directed to" inquiry of step one, we must "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Tex. v.
DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). If the claims are not
directed to an abstract idea, the inquiry ends. See McRO, Inc. v. Bandai
Namco Games Am., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 2. In
particular, the Examiner concludes the claims are directed to the abstract
idea of "comparing data to determine the effectiveness of a brand." Final
Act. 2. The Examiner considers the proffered abstract idea a fundamental
economic practice (i.e., effective advertising) "because the claims are
foundationally related to ecommerce and agreements between people in the
form of contracts, legal obligations, and business relations." Ans. 7.
5
Appeal2017-000998
Application 13/026,523
Additionally, the Examiner considers the claimed invention "a method[] of
organizing human activity ... and comparing new and stored information
and using rules to identify options." Ans. 7. Further, the Examiner
concludes the claims do not recite significantly more to transform the
abstract idea into a patent eligible application. Final Act. 2; Ans. 9. Instead,
the claims recite generic computer functions/elements performing generic
computer functions that are well-understood, routine, and conventional.
Final Act. 2; Ans. 9.
Here, we disagree with the Examiner that the character of the claims
as a whole is directed to a fundamental economic concept, or is merely a
method of organizing human activity. Although the claims collect and
compare information (an abstract idea), "an invention is not rendered
ineligible for patent simply because it involves an abstract concept." Alice,
134 S. Ct. at 2354. Rather, as Appellant contends, the focus of the claims is
on performing testing (i.e., brand impact verification) of software during the
software development process. Also, as recited in the claims, if the test
results indicate a failure (i.e., an incorrect color scheme is determined),
feedback data is provided to select alternate modeling data. See, e.g.,
claim 1. Thus, compliance to visual desired brand characteristics may be
confirmed or corrected during the development process rather than after the
software has been fully implemented or deployed. Accordingly, we
conclude the claims are not directed to an abstract idea.
For the reasons discussed supra, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner's rejection of claims 1-21
under 35 U.S.C. § 101.
6
Appeal2017-000998
Application 13/026,523
Rejections under pre-AJA 35 US.C. § 103(a)
Appellant assert that Gottfried, as relied on by the Examiner, "fails to
teach anything related to brand impact design testing during 'a software
development process (SDP) including multiple phases."' App. Br. 31-34;
Reply Br. 11-13. In particular, Appellant argues that rather than testing
during the development of a software application, Gottfried describes
allowing sponsors to "test new and updated products and services via the
Focus Group/Feedback mode." App. Br. 32 (quoting Gottfried ,r 29). In
other words, the testing described in Gottfried is not testing performed
during the software development process, but rather is in the form of
feedback on software applications that have already been fully implemented.
App. Br. 32-33.
In response, the Examiner states that "data identifying the
development process and test plan is simply a label for the development
process and test plan and adds little, if anything, to the claimed acts or steps
and[,] thus[,] does not serve to distinguish over the prior art." Ans. 10-11.
Further, the Examiner interprets the claimed software development process
(SDP) "as a procedure for applying steps that can be functional to any
process for measuring the effect or impact of various entities." Ans. 11.
Moreover, the Examiner explains "[t]he claims are not interpreted as
disclosing the development of a software, but more of an implementation for
steps for measuring the effects of a brand." Ans. 12. Accordingly, the
Examiner finds Gottfried teaches brand verification testing to determine the
impact of the brand amongst customers. Ans. 11-12.
Contrary to the Examiner's proffered explanations, the claims have a
temporal limitation in that the design test procedures are implemented "in
7
Appeal2017-000998
Application 13/026,523
a[ n] SDP design step prior to implementing an SDP full implementation test
step testing a full implementation" of the software being developed.
Claim 1. Additionally, in a section of Appellant's Specification entitled
Definition, Appellant defines the term "software development process
(SDP), as used herein, [as] a structured approach to developing and/or
constructing a software application [that] may occur in stages prior to
completion of the SDP defined by the attainment of a completed software
application." Spec. ,r 1 7.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, the broadest reasonable interpretation differs from the broadest
possible interpretation. In re Smith Int'!, Inc., 871 F.3d 1375, 1383 (Fed.
Cir. 2017). The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is "an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is 'consistent with the
specification."' Smith, 871 F.3d at 1382-83 (quoting In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997)).
Here, the Examiner's interpretations of claim language are not
consistent with the Specification. In particular, the claimed software
development process describes the process ( or model) of software
development, often defined by specific phases of development (e.g.,
planning, design, coding, testing, and deployment). See Spec. ,r 17. The
8
Appeal2017-000998
Application 13/026,523
claims also require the brand impact verification design test procedures to be
implemented during the software development process-i.e., prior to
deployment.
Gottfried describes an interactive, web-based interface to allow
consumers to interact with a sponsor's brand information (i.e., a
GraffitiWall®). Gottfried ,r,r 12-14, Fig. 4, Abstract. According to
Gottfried, among the benefits of the described system are to allow
companies to reinforce their brand equities, interact with their target
audience, and test new and updated products and services. Gottfried ,r 29.
Gottfried also describes interacting with consumers via customized brand
avatars. Gottfried ,r 61.
We agree with Appellant that Gottfried, as relied on by the Examiner,
does not teach implementing design test procedures in an SDP design step
prior to full implementation of the software application to produce design
test results associated with a brand impact being verified on determined
brand characteristics as claimed. Additionally, neither Sai not Cristol is
relied on by the Examiner to cure this deficiency. Because it is dispositive
that the prior art, as relied on by the Examiner, does not teach or suggest
implementing the design test procedures in an SDP design step prior to
testing a full implementation of the software application, we need not
address other issues raised by Appellant's arguments.
For the reasons discussed supra, we do not sustain the Examiner's
rejection of independent claim 1 under pre-AIA 35 U.S.C. § 103(a). For
similar reasons, we do not sustain the Examiner's rejection under pre-AIA
35 U.S.C. § 103(a) of independent claims 11 and 21, which recite similar
limitations. Further, we do not sustain the Examiner's rejections under pre-
9
Appeal2017-000998
Application 13/026,523
AIA 35 U.S.C. § 103(a) of claims 2-10 and 12-20, which depend directly or
indirectly therefrom.
DECISION
We reverse the Examiner's decision rejecting claims 1-21 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-21 under pre-
AIA 35 U.S.C. § 103(a).
REVERSED
10