Ex Parte Rivera et al

Patent Trial and Appeal Board

Feb 12, 2013

11237411 (P.T.A.B. Feb. 12, 2013)

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.
11/237,411 09/28/2005 Theodore Froilan Rivera RSW920050089US1 6779
87048 7590 02/13/2013
Jordan IP Law (IBM-RSW)
12510 Prosperity Dr., Suite 320
Silver Spring, MD 20904
EXAMINER
COYER, RYAN D
ART UNIT PAPER NUMBER
2197
MAIL DATE DELIVERY MODE
02/13/2013 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 THEODORE FROILAN RIVERA, DAVID LLOYD SCHMIDT,
ADAM TATE, and SCOTT ALLEN WILL
____________

Appeal 2010-008730
Application 11/237,411
1

Technology Center 2100
____________

Before JEFFREY S. SMITH, STANLEY M. WEINBERG, and
JOHN A. EVANS, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims to
business processes to predict quality of software using objective and
subjective criteria. The Examiner has rejected the claims as obvious,
indefinite, and as directed to non-statutory subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
The real party in interest is International Business Machines Corporation.
Appeal 2010-008730
Application 11/237,411

2
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed Jan. 19, 2010) and the Examiner’s
Answer (mailed Mar. 2, 2010). We have considered in this decision only
those arguments Appellants actually raised in the Briefs. Any other
arguments which Appellants could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2013).

STATEMENT OF THE CASE
The claims relate to systems and methods for providing predictive
quality analysis during software development. (Abstract). Claims 1-12 are
on appeal Claims 1, 5, and 9 are independent. An understanding of the
invention can be derived from a reading of exemplary claim 1, which is
reproduced below:
1. A computer-implemented method comprising:
tracking a process for a software development, said process
comprising at least one phase and action items associated with the at least
one phase that are individually quantifiable;
dynamically assigning a point total, up to a pre-established maximum
total, for each of the action items based on a subjective analysis of the
quality value associated with each action during the development process,
wherein the subjective analysis corresponds to receipt of one or more
relative values received via a user interface and which indicates a non-
empirical value assigned to one or more of the action items;
Appeal 2010-008730
Application 11/237,411

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a measurement instrument determining a final quality level of the
software developed via the development process by adding together each
point total for each of the action items, wherein the subjective analysis is
utilized to provide a more accurate quality result than an objective analysis
not based on entries received via the user interface.
The claims are rejected as follows:
1. Claims 1-8 are rejected under 35 U.S.C. § 112, second paragraph, as
Indefinite. (Ans. 3-4).
2. Claims 5-8 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. (Ans. 4).
3. Claims 1-12 are rejected under 35 U.S.C. § 103(a) as obvious over
White (US 5,446,895, issued Aug. 29, 1995, filed Mar. 31, 1994) and
Ohyama (US 7,152,016 B2, issued Dec. 19, 2006, filed Feb. 10,
2003). (Ans. 5-12).

THE INDEFINITENESS REJECTIONS
ISSUE AND ANALYSIS
The Examiner has rejected claims 1-8 under 35 U.S.C. § 112, second
paragraph, as indefinite. (Ans. 3-4). The Examiner finds that the claim 1
recitation “more accurate” is a relative term which renders the claims
indefinite because it is undefined. (Ans. 3).
Appellants present no arguments pertaining to this ground of
rejection, we, therefore, summarily sustain these rejections. See MPEP §
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Application 11/237,411

4
1205.02, 8th ed., Rev. 8, July 2010 (“If a ground of rejection stated by the
examiner is not addressed in the appellant's brief, that ground of rejection
will be summarily sustained by the Board.”).

THE NON-STATUTORY SUBJECT MATTER REJECTIONS
ISSUE AND ANALYSIS
The Examiner has rejected claims 5-8 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. (Ans. 4). Appellants do not respond
to this ground of rejection. We, therefore, summarily affirm.

THE OBVIOUSNESS REJECTIONS
CONTENTIONS AND ISSUE
The Examiner has rejected claims 1-12 under 35 U.S.C.
§ 103(a) as obvious over White and Ohyama. The Examiner finds that White
as modified by Ohyama teaches each claimed limitation. (Ans. 5-12).
Appellants argue claims 1-8 as a first group and claims 9-12 as a
second group. However, with respect to claims 9-12, Appellants advance the
same arguments urged in favor of claims 1-8. Therefore, we analyze claims
1-12 as a group. With respect to claims 1-8, Appellants contend that White

and Ohyama fail to teach or suggest “dynamically assigning a point total, up
to a pre-established maximum total, for each of the action items based on a
subjective analysis.” (App. Br. 11). Appellants contend that White teaches
that certain characteristics, such as “Installation Ease” and “Facilitate
Appeal 2010-008730
Application 11/237,411

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Change,” are “general processing characteristics of applications that affect
productivity” and are not the claimed “action items.” (App. Br. 11 (citing
White, col. 7:64-66; Table V).
The Examiner’s finds that White teaches a “measurement analysis
repository for software development and maintenance processes.” (Ans. 13
(citing White, 1:10-13)). The Examiner finds that White teaches that his
method “captures all process model information at the project and
application level.” (Ans. 13 (citing White, 4:48-52)). The Examiner further
finds that White teaches that a project is “a collection of work tasks ... that
creates new applications or maintains existing ones.” (Ans. 13 (citing White,
4: 56-58)). The Examiner finds that the overall scope of the White reference
encompasses the measurement and assessment of software development
processes. (Ans. 13 (citing White, 16: 27-29)). Accordingly, the Examiner
finds that White addresses both the measurement of the quality software
application development processes per se and the measurement of the
quality of the software applications themselves. The Examiner finds that the
claims require that a subjective quality value be assessed to action items
corresponding to actions taken during the development process, which
White discloses. (Ans. 13). Appellants do not reply to the Examiner’s
Answer.
The issue is whether White’s teachings of “general processing
characteristics of applications that affect productivity,” are distinct from
Appellants’ “action items.”
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Application 11/237,411

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ANALYSIS
Appellants have not persuasively argued that the claimed “action
items” are distinct from White’s “general processing characteristics of
applications that affect productivity,” as found by the Examiner. We adopt
as our own, the Examiner’s findings that White addresses both the
measurement of the quality software application development processes per
se and the measurement of the quality of the software applications
themselves and that the claims require that a subjective quality value be
assessed to action items corresponding to actions taken during the
development process, which White discloses. (Ans. 13).

SUMMARY

We affirm the rejection of claims 1-12 as obvious. We summarily
affirm the rejection of claims 1-8 as indefinite and of claims 5-8 as directed
to non-statutory subject matter.
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

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