Ex Parte Kagan et alDownload PDFPatent Trial and Appeal BoardOct 17, 201613172822 (P.T.A.B. Oct. 17, 2016) Copy Citation 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; 2 Appeal2014-004863 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. 3 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. 4 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 5 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 6 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. 7 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 8 Appeal2014-004863 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 9 Copy with citationCopy as parenthetical citation