10426071 (B.P.A.I. May. 31, 2012)

Ex Parte Trumbly et al

Board of Patent Appeals and InterferencesMay 31, 2012

10426071 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JAMES E. TRUMBLY and REINIER J. AERDTS ____________ Appeal 2010-006344 Application 10/426,071 Technology Center 3600 ____________ Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006344 Application 10/426,071 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 9-11, 13-19, and 21-24 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellants’ claimed invention is directed to a method for determining a business level metric for assessing the impact of performance degradation of IT components upon a revenue stream (Spec. 3:6-10). Claim 9, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 9. A computer program product in a computer readable media for use in a data processing system for determining a business level metric for information technology, the computer program product comprising: first instructions for determining business functions that comprise a revenue stream for a line of business; [1] second instructions for assigning weights to each business function, wherein the weights indicate the relative importance of each business function in relation to the other business functions; [2] third instructions for each business function, for determining business processes that enable the completion of a specific business function and assigning weights of relative importance to each of the business processes; [3] fourth instructions for each business process, for determining critical service points for measuring the performance of Appeal 2010-006344 Application 10/426,071 3 supporting information technology components for the business process and assigning weights of relative importance to each of the critical service points; fifth instructions for monitoring the critical service points for specified events; and sixth instructions, responsive to the occurrence of a specified event, for determining a partial business level metric raw score, wherein determining a partial business level metric raw score comprises: determining an impact level for a measurement point impacted by the specific event, identifying associated business processes and associated applications that are associated with the measurement point impacted, determining associated weighting factors for each identified business process and identified associated application, and multiplying the impact level by each of the associated weights for the associated business processes and associated applications. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Chung US 2003/0167180 A1 Sep. 4, 2003 Cole US 2004/0034552 A1 Feb. 19, 2004 Budd, Mark and Christine Malcolm. "An effective metrics program can ensure IT performance success." Healthcare Financial Management, Westchester, Nov. 2001, Vol. 55, Iss. 11, p. 84. Burkett, M Alison. "Clarifying roles and responsibilities." CMA. Hamilton, Mar. 1995, Vol. 69, Iss. 2, p. 26. The following rejections are before us for review: 1. Claims 9, 13-14, 17, and 21-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cole. Appeal 2010-006344 Application 10/426,071 4 2. Claims 10 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cole and Burkett. 3. Claims 11 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cole, Burkett, and Budd. 4. Claims 15-16 and 23-24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cole and Chung. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:1 Additional facts may appear in the Analysis section below. FF1. Cole at [0044] discloses in reference to Fig. 2 that for each sub process A, B, C, D, E an assigned value indicates the implementation worth of each sub process in the context of the overall business process. FF2. Cole at [0053] discloses that for a service 305 has sub processes 310 and 315 and assigning a value which enables each process to be aware of its place in the overall business process. FF3. Cole at [0041], [0044], [0046], [0053], [0054], [0067], and [0082] does not disclose together both of: 1) assigning weights to each business function, wherein the weights indicate the relative importance of each business function in relation to the other business functions and 2) instructions for each business function, for determining business processes 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2010-006344 Application 10/426,071 5 that enable the completion of a specific business function and assigning weights of relative importance to each of the business processes. ANALYSIS The Appellants argue that the rejection of claim 9 is improper because the cited prior art fails to disclose elements of claim limitations [1] and [2] for “assigning weights to business functions and instructions to assign weights of relative importance to the business processes of each business function” (Br. 11-13, emphasis added). Similar arguments are presented in the Reply Brief at pages 1-2. In contrast, the Examiner has determined that the argued claim limitations are shown by Cole at [0041], [0044], [0046], [0053], [0054], [0067], and [0082] (Ans. 4, 9-11). We agree with the Appellants. Claim limitation [2] and [3] require not just assigning weights to not business functions, but also to assigning weights of relative importance to business processes that enable completion of the business function. Support for these claim limitations are found in Specification at Fig. 4A and col. 11:14-12:1 as has been outlined in the Brief at page 7. We agree with the Examiner that Cole at [0044] shows assigned weights for business functions (FF1) in reference to Fig. 2 but this does not show assigning weights of relative importance to the business processes as well as required by claim limitation [3] the claimed function of such processes is to enable the completion of a specific business function. We also agree that Cole at [0053] shows sub processes 310 and 315 and assigning a value which enables each process to be aware of its place in the overall business process (FF2) which meets the requirements of claim Appeal 2010-006344 Application 10/426,071 6 limitation [1] but does not disclose claim limitation [2]. The cited portions of Cole which have been cited by the Examiner fail to disclose together all the elements of claim limitations [1] and [2] (FF3) and for this reason the rejection of record of claim 1 and its dependent claims is not sustained. Claim 17 contains similar limitations and the rejection of this claim and its dependent claims is not sustained for these same reasons. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims listed in the Rejection section above. DECISION The Examiner’s rejection of claims 9-11, 13-19, and 21-24 is not sustained. REVERSED MP