Ex Parte Moerdler et al

Patent Trial and Appeal Board

Jun 22, 2016

12337917 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/337,917 12/18/2008
106095 7590 06/24/2016
Baker Botts LLP
2001 Ross Avenue, 6th Floor
Dallas, TX 75201
FIRST NAMED INVENTOR
Mark L. Moerdler
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.
063170.9177 4537
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
PTOmaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK L. MOERDLER, CHRISTOPHER S. BOSWELL,
GALINA DATSKOVSKY, MURALI SWAMINATHAN,
BRYAN R. DIEBOLD, YING DING, JOHN D. BENTON,
THOMAS J. MCHALE, and MICHAEL W. STRICKLEN
Appeal2013---010801
Application 12/337,917
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
JAMES A. WORTH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Mark L. Moerdler, Christopher S. Boswell, Galina Datskovsky,
Murali Swaminathan, Bryan R. Diebold, Ying Ding, John D. Benton,
Thomas J. McHale, and Michael W. Stricklen, (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claims 1-3, 5-10, 12-17, and
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed March 25, 2013) and the Examiner's Answer ("Ans.," mailed June 26,
2013), and Final Action ("Final Act.," mailed October 26, 2012).
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Application 12/337 ,917
19----24, 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 system and method for governance, risk,
and compliance management. Specification 1: 10----12.
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. A method for governance, risk, and compliance
management, comprising:
[ 1] providing an interface for defining a control
to be used to reach a goal of an organization,
the control providing a procedure to be followed
by the organization;
[2] providing the interface for defining a metric
for tracking a progress of the organization
towards reaching the goal using the procedure;
[3] receiving metric data from an external source,
the metric data corresponding to the metric;
[ 4] tracking,
and
by a processor,
the progress of the organization
towards reaching the goal
using at least the metric and the metric data;
[5] providing,
for display,
the progress of the organization towards reaching
the goal.
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Application 12/337 ,917
The Examiner relies upon the following prior art:
Buddle
Jalig
US 6,912,502 Bl
US 2007/0021967 Al
Jun.28,2005
Jan.25,2007
Claims 1-3, 5-10, 12-17, and 19-21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jaligama and Buddle.
ISSUES
The issues of obviousness tum primarily on the breadth of the
limitations allows Jaligama within their scope.
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 the Prior Art
Jaligama
01. J aligama is directed to managing business
processes and to creating a roadmap for one or more of functional
initiatives, enterprise-wide initiatives, cross enterprise wide
initiatives, and ecosystem enterprise initiative. Jaligama para. 1.
02. Jaligama describes developing a process roadmap
for at least one business system by identifying a business process
and determining business goals and key process metrics it.
Jaligama describes measuring process maturity levels of the
business process and identifying business process improvement
initiatives based on the process maturity, and linking at least one
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of the business process, or the business goals and key process
metrics, or the process maturity levels or the business process
improvement initiatives, or combinations thereof for developing
the process roadmap for the business system. Jaligama para. 6.
03. Jaligama's information source module determines
business goals and key process metrics for the business process
module. Business goals include globalization, mergers and
acquisitions, real time enterprise or some combinations thereof.
Key process metrics include order to cash cycle time, faster order
fulfillment, low return orders, forecast accuracy and combinations
thereof. J aligama para. 21.
04. Jaligama's identification module is operable for
measuring process maturity levels of the business process module.
Every business process progresses through various stages of
maturity. These stages may have different timelines and may have
different levels of maturity. These stages take into account the
procedural, systems and data related qualities for any enterprise.
The objective of an enterprise or for that matter any business
process could be achieved by identifying the stage in which they
belong and progressing through these various stages as they
progress through the business process for the business system.
Jaligama para. 24.
05. Jaligama deploys tools and techniques to measure
process maturity. Performance benchmarks and key performance
indicators (KPI) are set up to adhere to desired levels of process
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maturity for business goals. The governance module translates
these KPis to project objectives. Tracking and monitoring
mechanisms are put in place to gauge the progress of process
improvements on a periodic basis. Jaligama para. 27.
06. Jaligama's process connector module links a
business process module to business goals and key process
metrics, the process maturity levels, the business process
improvement initiatives for developing the process roadmap for
the business system. Jaligama para. 30.
07. J aligama' s feedback module constantly monitors
and validates the process maturity level using the process roadmap
and the business goals and key process metrics of the business
process module. This feedback module constantly monitors the
progress of the business process after the implementation of the
process roadmap has begun and measures the levels of maturity to
constantly improve implementation of the process road map.
J aligama para. 3 1.
08. Jaligama provides a feedback loop constantly
monitoring and validating the progress towards attaining the
desired process maturity levels based on the implementation of the
process roadmap and the goals and key process metrics of the
business process. Feedback is obtained from the governance
module. The above feedback mechanism helps to constantly
monitor and validate the process roadmap and helps to guide the
business system to identify the need for further improvement of
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the business process through the various levels of maturity. In
addition to this, the feedback mechanism also helps in monitoring
real-time improvements in the business process for any business
system. Jaligama para. 84.
09. Inputs to J aligama' s process assessment include
process documentation of all enterprise processes; process
performance metrics; organizational goals process performance
goals; and timeframe over which the organization wants the goals
to be attained. Jaligama paras. 91-96.
Buddle
10. Buddle is directed to managing compliance issues
in a regulated industry and more specifically to managing
compliance issues in the financial services industry. Buddle 1 :6-
9.
11. Buddle describes getting information from external
sources. Buddle 4:62-5:8.
ANALYSIS
Claim 1 has five steps, viz. providing two interfaces, receiving metric
data, using that metric data to track progress, and providing that progress.
As the claim does not recite or narrow the interface provision
implementation, any manner of data entry is within the scope. Similarly,
any manner of progress output display is within the claim scope. The first
two steps do not recite defining the control or metric, only providing an
interface that can somehow be used in doing so. Those two steps also do not
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include actually using the control, providing a procedure, tracking progress
using a procedure, although each of these is recited as aspirational uses
toward which the interfaces might be put. Similarly, the final step provides
data and recites the data is for a display, but the display is aspirational.
So claim 1 recites entering data that in some manner might be used in
defining a control and a metric, receiving metric data and using it to track
progress, and providing the progress. As an aside, any project management
software package would be within this scope.
So the Examiner primarily applies Jaligama, directed to managing
business processes. Jaligama enters controls such as performance
benchmarks and metrics such as key performance indicators. FF 05. Such
entry implies some interface for accomplishing the entry. Jaligama's
feedback module constantly monitors and validates the process using metric
data from Jaligama's process connector module linking a business process
module to business goals and key process metrics. All of this ultimately
provides indications of progress. The Examiner applies Buddle only to
show it was known to get data from an external source. Final Act. 5-8.
We are not persuaded by Appellants' argument that J aligama and
Buddle do not disclose, teach, or suggest providing, for display, the progress
of the organization towards reaching the goal. Br. 19-20. Appellants
contend that display of maturity levels is not the display of progress toward
goals. Again, the last limitation is "providing, for display, the progress of
the organization towards reaching the goal." The manner and
implementation of such provision or even of how the progress is measured
and how the progress is related to the goals is neither recited nor narrowed.
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Given that an organization has fairly generalized goals, any data describing
progress is in some fashion describing progress towards its goals. As
Jaligama describes one goal as managing an organization through its
maturity levels, any output related to those levels is to some degree an
indication of progress toward the goal of such management.
We are not persuaded by Appellants' argument that Jaligama and
Buddle do not disclose, teach, or suggest providing an interface for defining
a control to be used to reach a goal of an organization. Br. 21. Appellants
contend that Jaligama's globalization program is not a control. Even if true,
again, this step only requires an interface in which a control might be
entered. Further, Appellants have not shown why a globalization program
would not be used to reach any goal. An obvious exemplary goal would be
international sales.
As to claim 22, reciting "providing the interface for defining a
warning threshold; and communicating a warning when the metric data falls
below the warning threshold," we are not persuaded by Appellants'
argument that Azvine describes warning for exceeding rather than falling
below a threshold. Br. 23. One of ordinary skill in operations research arts
knows that optimization may be implemented as either maximization or
minimization, and thresholds may be either ceilings or floors. When there
are two possibilities known to one of ordinary skill, each is a predictable
variation of the other. "[E]ven if one possible obvious combination falls
outside of the claims, it fails to undercut the fact that the other possible
obvious combination lies within their scope." ACCO Brands v. Fellowes,
813 F.3d 1361 (Fed. Cir. 2016).
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CONCLUSIONS OF LAW
The rejection of claims 1-3, 5-10, 12-17, and 19-21under35 U.S.C.
§ 103(a) as unpatentable over Jaligama and Buddle is proper.
DECISION
The rejection of claims 1-3, 5-10, 12-17, and 19-24 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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