Ex Parte Smith et al

Board of Patent Appeals and Interferences

Jul 17, 2012

11025716 (B.P.A.I. Jul. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAURENCE T. SMITH, DAVID J. ADAMS,
and JULIAN P. WRIGHT
____________

Appeal 2011-000872
Application 11/025,716
Technology Center 3600
____________

Before: BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000872
Application 11/025,716

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-18. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention relates to improving methods of business
change (Spec. 1:7-10). Claim 1, reproduced below, is further illustrative of
the claimed subject matter.
1. A method of determining and implementing
business changes, the method comprising:
defining a set of stages in a business change process that
are performed sequentially wherein each stage defines a
recognizable phase in a business change lifecycle;
for each stage, defining a set of at least one element
corresponding to that stage,
wherein each element groups a set of related activities
and deliverables together;
defining for each element at least one work product,
wherein the work product comprises a group of closely related
transformation activities that produces a client-recognizable
product and wherein a work product may span more than one
element;
presenting the at least one stage to a user as selectable
components in a graphical user interface; and
responsive to selection of [a] component by a user,
presenting the user with a display showing greater detail of the
corresponding component wherein successive selection of
components results in presenting the user with a display of
greater detail about the corresponding component thereby
enabling the user to ensure that all aspects of a proposed
business change are considered in formulating a project to
affect that business change1.

1 The wording of independent claim 1 differs between page 10 of the Appeal
Brief filed May 15, 2009, and page 2 of the Amendment filed July 22, 2008,
which was the last Amendment entered by the Examiner. We will refer to
the wording set forth the Amendment.
Appeal 2011-000872
Application 11/025,716

3
Claims 11-16 stand rejected under 35 U.S.C. § 112, 2nd paragraph, for
indefiniteness; and claims 1-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mangan (US 2006/0095309 A1, pub. May 4, 2006) in
view of Davies (US 2003/0033191 A1, pub. Feb. 13, 2003).
We AFFIRM-IN-PART.

ISSUES
Did the Examiner err in asserting that claims 11-16 are indefinite,
because the Specification does not provide any software instructions or
algorithms for implementing the recited means on machines?
Did the Examiner in asserting that Mangan is properly cited against
this application, given the provisions of 35 U.S.C. § 103(c)?

ANALYSIS
Indefiniteness Rejection
We are not persuaded the Examiner erred in asserting that claims 11-
16 are indefinite, because the Specification does not provide any software
instructions or algorithms for implementing the recited means on machines
(Reply Br. 2-3). While Appellants may have identified several structures in
the Specification that may correspond to the recited means, Appellants have
not identified sufficient software instructions or algorithms in the
Specification to perform the recited functions. See Aristocrat Tech.
Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008)
(the written description must at least disclose the algorithm that transforms
the general purpose microprocessor to a special purpose computer
programmed to perform the claimed function).
Appeal 2011-000872
Application 11/025,716

4
For example, Appellants cite page 15, lines 5-8 of the Specification
for allegedly disclosing software instruction or algorithms to perform the
“second means” for “defining a set of at least one element corresponding to
a stage, wherein each element groups a set of related activities and
deliverables together,” as recited in independent claim 11 (Reply Br. 3).
However, the cited portion of the Specification reads as follows:
Each Stage is further subdivided into “Elements” that group the
related activities and deliverables into a smaller
program/project sub-phase that is clearly identifiable to the
client.

The aforementioned disclosure does not provide the required software
instructions or algorithms for performing the recited functions.

Mangan Reference
We are persuaded the Examiner erred in asserting that Mangan is
properly cited against this application, given the provisions of 35 U.S.C. §
103(c) (App. Br. 7). Appellants have provided adequate evidence to show
that both this application and the Mangan reference were assigned to or
subject to be assigned to Electronic Data Systems, Inc. (EDS) at the time of
the filing of this application. Accordingly, under the provisions of § 103(c),
as Mangan is only prior art to this application under § 102(e), Mangan is
disqualified from being used in a § 103(a) rejection of this application.
The Examiner asserts that even if “the aforementioned statements are
true[,] the real party in interest in the Appellant’s application is Hewlett-
Packard…. [t]he Mangan reference was not owned by Hewlett Packard”
(Exam’r’s Ans. 16). However, the real-party in interest is not relevant to an
analysis under § 103(c). All that is relevant are the owners of this
Appeal 2011-000872
Application 11/025,716

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application and the Mangan reference at the time of the filing of this
application.
As Mangan is disqualified as prior art, the Examiner has not
established a prima facie case of obviousness. We do not sustain the
rejections of claims 1-18 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claim 11-16 is AFFIRMED.
The decision of the Examiner to reject claims 1-10, 17, and 18 is
REVERSED.
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-IN-PART

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