Ex Parte Kagan et al

Patent Trial and Appeal Board

Oct 17, 2016

13172822 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/172,822 06/29/2011
11445 7590 10/19/2016
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
FIRST NAMED INVENTOR
Steven M. Kagan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END920050051 US2 8068
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/19/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
endiplaw@us.ibm.com
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. KAGAN and JOHN A. RICKETTS
Appeal2014-004863
Application 13/172,822
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Steven M. Kagan and John A. Ricketts (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-20, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented a way of determining whether an outsourcing
bid is both feasible and efficient. Specification para. 2.
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed October 23, 2013) and the Examiner's Answer ("Ans.," mailed
December 26, 2013), and Final Action ("Final Act.," mailed April 17, 2013).
Appeal2014-004863
Application 13/172,822
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. In a computing device having a processor, a method for
determining whether an outsourcing bid is both feasible and
efficient by establishing Efficient Frontiers (EF) and
Attainment Rates (AR), wherein EF is a maximum service level
achievable at any point in time for a specific business process
area in the enterprise, and wherein AR is a pace at which EF
can be reached from an initial Service Index (SI), where SI is a
service level measurement applicable to the specific business
process area in the enterprise, the method comprising:
[ 1] determining an EF for a particular business process area at
the point in time,
wherein the EF is determined empirically from current
and historical data,
wherein the point in time is one of a past time point,
present time, or a future time point,
and
wherein when the point in time is a future time point the
EF is estimated for future periods and/ or specific client
characteristics via models;
[2] determining an initial SI for the particular business process
area;
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Application 13/172,822
[3] calculating,
and
using the determined EF and determined SI,
an AR for the particular business process area for
reaching the EF from the SI,
wherein when the point in time is a past time point the
AR is a rate of decline or zero,
wherein when the point in time is present time the AR is
an instantaneous rate,
and
wherein when the point in time is a future time point the
AR is one of an overall rate;
[ 4] the processor utilizing the EF, SI and AR to determine
whether a bid is feasible and efficient for the particular business
process area for the point in time,
wherein
when the bid provides an offered EF that is above
the EF,
the bid is tagged as infeasible
and when the bid provides an offered AR that is
below the AR,
the bid is tagged as inefficient
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as not
enabling a person of ordinary skill in the art to make and use the claimed
subject matter from the original disclosure. 2
2 A rejection under 35 U.S.C. § 101 was implicitly withdrawn by the
Advisory Action mailed Oct. 9, 2013, because of the Amendment filed July
29, 2013.
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Appeal2014-004863
Application 13/172,822
Claims 1----20 stand rejected under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure.
ISSUES
The sole issue is whether there is sufficient written description support
for the limitation "determining an EF for a particular business process area
at the point in time[], wherein the EF is determined empirically from current
and historical data." Br. 2.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
"empirical."
02. The plain meaning of "empirical" is verifiable or provable by
means of observation or experiment. 3
Facts Related to Appellants' Disclosure
03. Lines A through E represent the Service Indices (SI) of various
enterprises (A-E) over time (Fig. 1 ). In one embodiment, the data
3 The American Heritage Dictionary of the English Language, Fifth Edition,
Houghton Mifflin Harcourt Publishing Company (2015)
https://www.ahdictionary.com/word/search.html?q=empirical.
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Appeal2014-004863
Application 13/172,822
points that comprises the various lines A-E are compiled and
stored as historical data 1036 (FIG. 10). Spec. para. 38.
04. Enterprise E ultimately attains the highest SI, and it does so at
the fastest rate, so it defines both EF and AR for this business
process area.
05. Optimization is used to generate the efficient frontier- i.e.,
given a set of drivers and constraints, what decisions maximize EF
210 and AR 208? For example, if a client has executed numerous
mergers and acquisitions, migration to a shared service center
maximizes EF 210 and AR 208, then models 208 will factor this
in when computing EF 210 and/or AR 212. Spec. paras. 63----67.
06. The Specification does not describe any examples or algorithms
for optimization computations. As the results of such
computations are readily observable and verifiable, they are
empirical in nature.
ANALYSIS
Claims 1-20 rejected under 35 US.C. § 112,first paragraph, as lacking a
supporting written description within the original disclosure
The sole issue is whether there is sufficient written description support
for the limitation "determining an EF for a particular business process area
at the point in time, wherein the EF is determined empirically from current
and historical data." Br. 2. The claim only narrows the manner of
determining the EF by requiring it to be empirical, i.e. verifiable or provable
by means of observation or experiment. An efficient frontier is an age old
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Appeal2014-004863
Application 13/172,822
concept from portfolio theory and operations research and is the set of
results and their constraint parameter values that are optimal subject to given
constraints. The Specification is consistent with this. FF 05.
Appellants claim a vast genus of optimization in functional terms
without providing sufficient examples or structural directions to show
possession of the entire genus.
[A] generic claim may define the boundaries of a vast genus of
chemical compounds, and yet the question may still remain
whether the specification, including original claim language,
demonstrates that the applicant has invented species sufficient
to support a claim to a genus. The problem is especially acute
with genus claims that use functional language to define the
boundaries of a claimed genus. In such a case, the functional
claim may simply claim a desired result, and may do so without
describing species that achieve that result. But the specification
must demonstrate that the applicant has made a generic
invention that achieves the claimed result and do so by showing
that the applicant has invented species sufficient to support a
claim to the functionally-defined genus.
Ariad Pharmaceuticals v. Eli Lilly and Co., 598 F.3d 1336, 1349 (Fed.
Cir. 2010).
[A] sufficient description of a genus instead requires the
disclosure of either a representative number of species falling
within the scope of the genus or structural features common to
the members of the genus so that one of skill in the art can
"visualize or recognize" the members of the genus .... We
explained that an adequate written description requires a precise
definition, such as by structure, formula, chemical name,
physical properties, or other properties, of species falling within
the genus sufficient to distinguish the genus from other
materials .... We have also held that functional claim language
can meet the written description requirement when the art has
established a correlation between structure and function ....
But merely drawing a fence around the outer limits of a
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Appeal2014-004863
Application 13/172,822
purported genus is not an adequate substitute for describing a
variety of materials constituting the genus and showing that one
has invented a genus and not just a species.
Id. at 1350. See also LizardTech, Inc. v. Earth Resource Mapping, Inc.,
424 F.3d 1336, 1345 (Fed. Cir. 2005) for holding such written description
requirements in electrical and computer technology claims.
Here, Appellants simply state that frontier is efficient and that
performance is empirical. There is no guidance in the form of examples or
structure as to how a processor performs optimization. The only example is
selecting optimal points by direct observation. FF 04. As these are
disclosed as being variable and context dependent, at least some examples
from a sufficient number of contexts or some structural description of how
to accomplish these in various contexts is needed to show possession of the
entire genus of such determining. In particular, optimization techniques are
highly dependent on the nature of the problems to be solved, and there is no
showing that Appellants had possession of all the techniques that would be
appropriate or necessary for different sets of data or even how to distinguish
which form of optimization would be suitable or which sets of data would be
unsolvable. 4
Appellants argue that the affidavits filed Feb. 15, 2013, show that one of
ordinary skill would have been able to practice the invention and had
possession of the invention. App. Br. 11.
The Board has broad discretion as to the weight to give to
declarations offered in the course of prosecution. See Velander
4 For example, linear programming, non-linear programming, integer
programming, branch and bound, search and destroy, would be only some
possible algorithms that might be employed depending on context.
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Appeal2014-004863
Application 13/172,822
v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)
("[A ]ccord[ing] little weight to broad conclusory statements [in
expert testimony before the Board] that it determined were
unsupported by corroborating references [was] within the
discretion of the trier of fact to give each item of evidence such
weight as it feels appropriate."); cf. Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)
("Opinion testimony rendered by experts must be given
consideration, and while not controlling, generally is entitled to
some weight. Lack of factual support for expert opinion going
to factual determinations, however, may render the testimony of
little probative value in a validity determination." (citations
omitted)). Although there is "no reason why opinion evidence
relating to a fact issue should not be considered by an
examiner," In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir.
1996), the Board is entitled to weigh the declarations and
conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations, see
Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294.
In re American Academy of Science 367 F.3d 1359, 1368 (Fed. Cir. 2004).
The lack of supporting evidence causes us to attribute little weight to these
affidavits. Also, the fact that the first Affiant is one of the named inventors
makes his affidavit self-serving and diminishes credibility. More to the
point, the affidavits purport to show that one of ordinary skill would have
been enabled to practice some embodiment of the invention, but not that
Appellants showed possession of the entire genus of ways of determining an
efficient frontier from within the four comers of the Specification with
sufficient examples or structural analysis.
Claims 1-20 rejected under 35 US.C. § 112,first paragraph, as not
enabling a person of ordinary skill in the art to make and use the claimed
subject matter from the original disclosure
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Application 13/172,822
As the claims are rejected for lack of written description, we do not
reach the cumulative rejection of enablement.
CONCLUSIONS OF LAW
The rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure is
proper.
The rejection of claims 1-20 under 35 U.S.C. § 112, first paragraph, as
not enabling a person of ordinary skill in the art to make and use the claimed
subject matter from the original disclosure is not reached.
DECISION
The rejection of claims 1-20 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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