Ex Parte Cohn et al

Patent Trial and Appeal BoardAug 29, 2014

11684004 (P.T.A.B. Aug. 29, 2014)

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. 11/684,004 03/08/2007 David L. Cohn YOR920050357US1 1945 45773 7590 08/29/2014 WHITHAM, CURTIS, CHRISTOFFERSON & COOK, P.C. 11491 SUNSET HILLS ROAD, SUITE 340 RESTON, VA 20190 EXAMINER FIELDS, BENJAMIN S ART UNIT PAPER NUMBER 3624 MAIL DATE DELIVERY MODE 08/29/2014 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 DAVID L. COHN, ROBERT DELAMARTER DILL, GEORGE M. GALAMBOS, ROBERT H. GUTTMAN, RAMAN HARISHANKAR, DAVID ROBERT KRESS, CLIFFORD ALAN PICKOVER, SIMON PLACKETT, GUY JONATHAN RACKHAM, SHANKER RAMAMURTHY, JOHN R. SMITH, STEPHEN MICHAEL SMITH, and JOHN GEORGE VERGO ____________________ Appeal 2011-011467 Application 11/684,0041 Technology Center 3600 ____________________ Before ANTON W. FETTING, NINA L. MEDLOCK, and THOMAS F. SMEGAL, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 The real party in interest, identified by Appellants, is International Business Machines Corporation. App. Br. 3. Appeal 2011-011467 Application 11/684,004 2 THE CLAIMED INVENTION Appellants’ claimed invention is directed generally to using a component business model as a tool for analyzing business value drivers. (Spec. 1:17–20). Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal: 1. A computer implemented method for using value drivers to create value for a business, comprising: [(a)] selecting priority value drivers for a business; [(b)] developing an influence model showing how the selected value drivers influence one another; [(c)] structuring by a computer the influence model to provide a link from a measure of overall business value through levels of branches to a plurality of leaf value drivers; [(d)] distributing by the computer to the leaf value drivers a relative contribution to the overall business value; and [(e)] mapping by the computer the leaf value drivers to a component map of the business, wherein the relative contributions of the leaf value drivers are aggregated by component, the business components having the highest aggregate relative contributions being highlighted on the component map for management attention. THE REJECTION The following rejection is before us for review: Claims 1–20 are rejected under 35 U.S.C. § 102(e) as anticipated by Eder (US 7,580,848 B2, iss. Aug. 25, 2009). 2 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Apr. 4, 2011) and Reply Brief (“Reply Br.,” filed June 30, 2011), and the Examiner’s Answer (“Ans.,” mailed May 17, 2011). Appeal 2011-011467 Application 11/684,004 3 ANALYSIS Appellants argue claims 1–20 as a group. We select claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We are not persuaded by Appellants’ argument that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(e) because Eder does not disclose “developing an influence model showing how the selected value drivers influence one another,” as recited in claim 1. (App. Br. 32–34; see also Reply Br. 2–3). Instead, we agree with the Examiner that Eder discloses this feature (Ans. 4, 9). Eder is directed to a system and method for analyzing, modeling, and valuing elements of a business enterprise, and describes that the performance of the elements is analyzed using search and induction algorithms to determine the value drivers associated with each element. Predictive models are then used to determine the correlation between the value drivers and the revenue, expense, and capital components of enterprise value (see, e.g., Eder, Abstract). Eder describes that the predictive model functions by statistically modeling the relationships between sets of data using neural networks (id. at col. 24, ll. 56–61), and describes that its system “checks the value drivers to determine if there is any interaction between drivers for different elements.” (Id. at col. 34, ll. 54–56). We find that the use of neural networks to perform predictive modeling that determines interactions between value drivers, as disclosed in Eder, meets the claim language, i.e., “developing an influence model showing how the selected value drivers influence one another,” as recited in claim 1. Appeal 2011-011467 Application 11/684,004 4 We also are not persuaded of error on the part of the Examiner by Appellants’ argument that Eder’s use of value drivers is “not the same thing as a value driver according to the claimed invention.” (App. Br. 32). Appellants assert that the term “value driver” is defined in the Specification on page 9, starting at line 17, with examples of value drivers shown in Figure 3B. (Reply Br. 2). However, the Specification does not lexicographically define the term “value driver;” instead, the Specification provides non-limiting examples only: A “value driver” for the purposes of the present invention has a number of characteristics. It is a variable which may act or be acted upon. It has a value which varies up or down over time. It has a clear (but not necessarily direct) link to the creation of value for the business. Further, it should be expressed as a noun or noun phrase, such as “customer satisfaction[,”] “quality of product[,”] or other such designations as shown on Figures 3B and 5A. (Spec. 9, ll. 17–26). There is a heavy presumption that claim terms take on their “plain, ordinary, and accustomed meaning to one of ordinary skill in the relevant art.” See Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148 (Fed. Cir. 2003). Although Appellants may overcome that presumption by acting as their own lexicographer so as to assign a special definition to each claim term, that definition must be “clearly set forth” and “explicit.” Id. We find here that a person of ordinary skill in the art would understand from the Specification that the term “value driver” refers to a variable, expressed as a noun or noun phrase, which represents a value. Eder discloses software that “identifies the item variables and item performance indicators that drive revenue, expense and changes in capital by element for all defined enterprises,” and describes that “[t]he item variables Appeal 2011-011467 Application 11/684,004 5 and item performance indicators identified during this processing are collectively referred to as ‘value drivers[.’]” (Id. at col. 23, l. 65 – col. 24, l. 5). Eder discloses one category of value driver as encompassing “the cost of raw materials, the cost of manufacture or delivery of service, the cost of selling, the cost of support and the cost of administration.” (Id. at col. 10, ll. 52–55). These items are variables that are expressed as noun or noun phrases and affect the value of the business that Eder seeks to measure; therefore, they constitute “value drivers,” within the meaning of claim 1, under a broad, but reasonable, interpretation. Finally, we are not persuaded by Appellants’ argument that Eder fails to disclose a component map of a business where the highest relative contributions of various leaf drivers are highlighted, i.e., limitation (e), as recited in claim 1. (Reply Br. 3). Eder discloses producing reports, (Eder, col. 6, ll. 14–42; see Ans. 4, 9), and further discloses displaying the “primary management report, the Value MapTM report, [that] summarizes information about the elements and sub-elements of business value on the valuation date.” (Id. at col. 43, ll. 36–38). An example of a portion of the Value Map is shown below, from Eder’s Figure 14: Appeal 2011-011467 Application 11/684,004 6 A portion of Figure 14 of Eder showing a component map The Eder Value MapTM shows the relative dollar importance of various value drivers, aggregated by component and, thus, constitutes a “component map of the business, wherein the relative contributions of the leaf value drivers are aggregated by component, the business components having the highest aggregate relative contributions being highlighted on the component map for management attention,” as called for in claim 1, under a broad, but reasonable, interpretation. In view of the foregoing, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 102(e). We also sustain the Examiner’s rejection of claims 2–20, which fall with claim 1. Appeal 2011-011467 Application 11/684,004 7 DECISION The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 102(e) is affirmed. 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 hh