Ex Parte Balan et al

Patent Trial and Appeal BoardNov 15, 2012

11177626 (P.T.A.B. Nov. 15, 2012)

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. 11/177,626 07/08/2005 Lee M. Balan 10022/648 7825 28164 7590 11/15/2012 ACCENTURE CHICAGO 28164 BRINKS HOFER GILSON & LIONE P O BOX 10395 CHICAGO, IL 60610 EXAMINER MITIKU, BERHANU ART UNIT PAPER NUMBER 2156 MAIL DATE DELIVERY MODE 11/15/2012 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 LEE M. BALAN and OLIVIER ROUX ____________________ Appeal 2010-005078 Application 11/177,626 Technology Center 2100 ____________________ Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005078 Application 11/177,626 2 STATEMENT OF CASE1 The Appellants seek review under 35 U.S.C. § 134(a) of a final rejection of claims 1-33. 2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. INVENTION The Appellants invented processing systems for managing, tracking, and reporting business opportunities. Specification ¶ 001. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below: 1. A data processing system comprising: an opportunity database comprising opportunity records for both qualified and pre-qualified opportunities, the opportunity database further comprising a progress stage field which distinguishes between at least pre-qualified opportunities and qualified opportunities; a communication interface; 1 Our decision will make reference to the Appellants’ Amended Appeal Brief (“App. Br.,” filed Nov. 17, 2009) and the Examiner’s Answer (“Ans.,” mailed Jun. 8, 2009). 2 We observe that Appellants have demonstrated a clear intent in the Appeal Brief that claims 18-19 and 22-24 are not being appealed, by only appealing and arguing claims 1-17, 20-21, and 25-33. App. Br. 2-10. See Ex Parte Ghuman, 88 USPQ2d 1478 (BPAI 2008) (precedential) (holding that when Appellants are silent in the notice of appeal as to the specific claims being appealed, and then clearly states in the appeal brief that some of the finally rejected claims are not being pursued in the appeal, appellants should cancel those claims not pursued). Therefore, we limit our review to the rejection of claims 18-19 and 22-24. Appeal 2010-005078 Application 11/177,626 3 memory comprising: an import program comprising instructions which: receive qualified opportunity data through the communication interface from a qualified opportunity repository; and create the qualified opportunity records in the opportunity database based on the qualified opportunity data; and an opportunity search program comprising instructions which: accept opportunity search parameters comprising an opportunity type; initiate an opportunity search in the opportunity database across both qualified and pre-qualified opportunities based on the opportunity search parameters; obtain opportunity search results from the opportunity search; and provide the opportunity search results to an opportunity reporting interface; and a processor which executes the import program and the opportunity search program. REFERENCES The Examiner relies on the following prior art: Gozdeck Meggs Lawe US 6,636,852 B2 US 2004/0064360 A1 US 2005/0261994 A1 Oct. 21, 2003 Apr. 1, 2004 Nov. 24, 2005 Appeal 2010-005078 Application 11/177,626 4 REJECTIONS Claims 1-17, 20-21, and 25-29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gozdeck in view of Meggs. Ans. 4-18. Claims 30-33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gozdeck in view of Meggs, further in view of Lawe. Ans. 19-20. APPELLANTS’ CONTENTIONS 1. The Appellants contend that the combination of Gozdeck and Meggs does not teach or suggest qualified and pre-qualified opportunities, as required by independent claim 1. App. Br. 5-7. The Appellants further contend that the combination of Gozdeck and Meggs does not teach or suggest “subdividing the first category into a first set of progress stages” and “subdividing the second category into a second set of progress stages,” as required by independent claim 11. Id. at 7 (emphasis added). The Appellants further contend that the combination of Gozdeck and Meggs does not teach or suggest to “identify an evolved opportunity when a second category opportunity has advanced far enough to qualify as a first category opportunity,” as required by claim 20. Id. at 8 (emphasis added). The Appellants also contend that the combination of Gozdeck, Meggs and Lawe does not teach or suggest “first category data records” and “second category data records,” as required by independent claims 25 and 30. Id. at 8-10 (emphasis added). 2. The Appellants also contend that the combination of Gozdeck, Meggs, and Lawe does not teach or suggest “to import duplicate, read-only copies of the second category data records from the second database into Appeal 2010-005078 Application 11/177,626 5 the first database,” as recited in independent claim 30. Id. at 9-10 (emphasis added). ISSUE The issue of whether the Examiner erred turns on whether the combination of Gozdeck, Meggs, and Lawe teaches or suggests the disputed claim features, i.e. “qualified/pre-qualified opportunities” or “first/second category” (contention 1), and “read-only copies” and “first/second database” (contention 2), as recited in independent claims 1, 11, 20, 25, and 30. ANALYSIS We have reviewed the Examiner’s rejections in light of the Appellants’ contentions that the Examiner has erred. We disagree with the Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to the Appellants’ Appeal Brief. We concur with the conclusion reached by the Examiner. We highlight the following arguments for emphasis. Claim 1 requires “qualified and pre-qualified opportunities.” Claim 11 requires “subdividing the first category into a first set of progress stages” and “subdividing the second category into a second set of progress stages.” Claim 20 requires “identify an evolved opportunity when a second category opportunity has advanced far enough to qualify as a first category opportunity.” With respect to the above contention 1 related to qualified and pre-qualified opportunities (and first and second categories), we disagree Appeal 2010-005078 Application 11/177,626 6 with Appellants’ arguments. We note that the Examiner has identified the relevant portions of Gozdeck, Meggs, and Lawe and has provided sufficient explanation with corresponding citations to various parts of the references for teaching the features disputed in Appellants’ contentions (Ans. 4-25). The Examiner finds (Ans. 5-6) Meggs describes: the life cycle of business opportunities as they evolve through their life cycle. Those stages as clearly seen in Figure 1, stage 1 - stage 4 represent the pre-qualified opportunities stages, and the last stage depicts a fully qualified opportunity. Once the pre-qualified opportunity goes through the increasing pipeline progress, it will mature to a qualified opportunity. Ans. 21 (citing Meggs ¶¶ 0037 and 0047); see also Ans. 5-6; Meggs Figure 3. We find that the Examiner’s rejection provides sufficient evidence that the different levels of progress shown in Figure 3 of Meggs meet the qualified/pre-qualified opportunity (and first/second category) limitations which is consistent with Appellants’ own disclosure. The qualified and pre- qualified opportunities (and first category and second category) define entries in a database similar to the progress levels taught in Meggs. The Examiner found that Meggs describes “a forecasted opportunity” that equates to a first category, and a “closed opportunity”, that equates to a second category opportunity. (Ans. 13-14, and 23 (citing Meggs, Figure 3)). We agree with the Examiner. Accordingly, we agree with the Examiner that the combination of Gozdeck, Meggs, and Lawe teaches “qualified/pre-qualified opportunities” and “first/second category.” Appeal 2010-005078 Application 11/177,626 7 As to the “progress stages” limitation recited in claim 11, we agree with the Examiner (Ans. 22) that the combination of Meggs with Gozdeck suggests the limitations of claim 11. Therefore, as stated by the Examiner (Ans. 13) Figure 3 of Meggs teaches database entries related to projects in different opportunities or categories, which demonstrate the progress of the projects. We find that the claimed subdividing categories into stages and distinguishing between the stages is met by Meggs’ disclosure wherein, similar to the claim requirement, the stages from one category in Meggs are distinguished from those of other categories as shown in Figure 3. With regard to “advanced far enough” limitation of claim 20, we find that Figure 3 of Meggs teaches how far the opportunities have advanced. In other words, Meggs teaches the progress report showing the different levels of progress stage fields that distinguish between different types of business opportunities. Meggs’ progress report shows the relationship between two different types of opportunities, which consistent with the Appellants’ Specification (see Spec. ¶¶ 048-050), are based on the level of progress and that level of progress determines whether they are identified as qualified or pre-qualified opportunities, or first category and second category. With regards to contention 2, we agree with the Examiner’s analysis (Ans. 17-18) in response to Appellants’ arguments. The Examiner correctly points out (Ans. 17-18) that Gozdeck explicitly discloses “first database” (database 110, Fig. 1), “second database” (col. 3, ll. 24-29), and “read only copies” (col. 8, ll. 45-56). Appellants do not provide separate and distinct arguments for patentability with respect to dependent claims 2-10, 12-17, 21, 26-29, and 31-33. See App. Br. 5-10. Consequently, dependent claims 2-10, 12-17, 21, Appeal 2010-005078 Application 11/177,626 8 26-29, and 31-33 fall with their corresponding base claims. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-005078 Application 11/177,626 9 CONCLUSIONS3 1. The Examiner did not err in rejecting claims 1-17, 20-21, and 25- 29 under 35 U.S.C. § 103(a) as unpatentable over Gozdeck and Meggs. 2. The Examiner did not err in rejecting claims 30-33 under 35 U.S.C. § 103(a) as unpatentable over Gozdeck in view of Meggs, further in view of Lawe. 3. Claims 1-17, 20-21, and 25-33 are not patentable. DECISION The Examiner’s rejection of claims 1-17, 20-21, and 25-33 is sustained. 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) (2011). AFFIRMED 3 In the event of further prosecution of claims 25-29, the Examiner’s attention is directed to 35 U.S.C. § 101 and U.S. Patent &Trademark Office, Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75 Fed. Reg. 43,922 (July 27, 2010); David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010); U.S. Patent & Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 (Aug. 24, 2009), available at http://www.uspto.gov/web/offices/pac/dapp/opla/2009-08- 25_interim_101_instructions.pdf ; and the recent decision from the U.S. Supreme Court Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012). Appeal 2010-005078 Application 11/177,626 10 msc