Ex parte Daks
Appeal 2009007621; Appl. No. 09/966,004; Tech. Center 2100
Decided March 11, 2011
The application involved software for tracking development. of software products. A representative claim on appeal read:
8. A method for tracking the development of software products having a plurality of developmental lines on a computer controlled display comprising:
setting in each of said plurality of developmental lines, a sequence of checkpoints;
tracking each of said developmental lines to determine the reached checkpoints; and
simultaneously displaying said plurality of developmental lines and indicating said reached checkpoints.
During prosecution, the Examiner rejected the independent claims as obvious over the book "Using Microsoft Project 98" in view of a U.S. patent to Song. The Examiner relied on the Microsoft Project book for everything except "plurality of developmental lines." The Examiner then alleged that Song disclosed defining checkpoints for "components or developmental lines" during project execution. The Examiner further alleged that the motivation to combine was the book's teaching of "organizing a project activity or task list into phases."
The Applicant appealed, and in the Appeal Brief argued that the combined references did not disclose simultaneous display of multiple developmental lines. The Applicant acknowledged that Project 98 described a planning tool which simultaneous displayed tasks at the same level in a task hierarchy, but argued that these teachings about task hierarchies are "too vague and unspecific to lead one skilled in the art" to apply them to developmental lines.
The Applicant also argued that the Examiner used hindsight to piece together a rejection from general teachings in a 600 page user guide:
The Examiner has cited sections from the large publication. The Project text does provide a user with software tools for the management of business or manufacturing projects including scheduling, assignment of tasks, allocating resources, and even bench marking which for the purpose of this discussion will be considered as check pointing. The Examiner has picked general elements from the Project text book and proposed combining such general elements, not based upon any suggestion the Project text, but based primarily on Applicants' own teaching. Admittedly, there are probably enough tools and routines disclosed in the cited over 600 page Project text through the use of which the system of the invention could be built. However, Applicants submit that the cited Project text does not provide one skilled in the art with the specific guidance necessary to combine the diverse tools and routines in Project to develop Applicants' claimed invention.
In the Answer, the Examiner revised the rejection to explain that Song was "largely cumulative to the evidence contained in Project." The Examiner then explained how the teachings in "Using Project 98" about tasks corresponded to simultaneous display of multiple developmental lines:
The additional cited teachings of Project shown that has been known to break up large projects into separate phases of functional groups, which form tasks that are individually managed as part of overall project management. These separate tasks and associated resources may be considered developmental lines. .... Project further describes simultaneous display of multiple tasks in the Gantt chart and displaying multiple milestones.
(Internal citations omitted.)
The Examiner attacked the hindsight argument by noting that:
[E]verything disclosed in the Project reference pertains to features found in a single software product, namely the Microsoft Project 98 software product. Thus, the elements of the Project reference relied upon were not combined based on applicant's own teachings through impermissible hindsight as applicant alleges but were instead already combined (by Microsoft Corporation) prior to applicant's filing date.
The Examiner then seized upon a statement made by the Applicant in the Appeal Brief:
Appellants' admission that, "there are probably enough tools and routines disclosed in the cited over 600 page Project text through the use of which the system of the invention could be built," is itself an apparent concession that the claimed invention would have been obvious in view of the Microsoft Project 98 software product described in the Project reference.
The Applicant filed a Reply Brief attacking the motivation to combine. Even if "each of the individual elements could be found in the 600 page Project 98 reference," the Examiner "has failed to show any teaching in this reference that the individual elements could be combined."
The Board affirmed the obviousness rejection. The affirmance appeared to be at least partly based on the Applicant's admission in the Appeal Brief:
We agree with the Examiner that “[A]ppellants’ admission … is itself an apparent concession that the claimed invention would have been obvious in view of the Microsoft Project 98 software product described in the Project reference” That is, we find no error with the Examiner’s conclusion that, in view of Appellants’ admission that all claimed limitations are taught by Project, one of ordinary skill in the art would have found it obvious to apply the claimed limitations.
The Board also noted that the KSR rationale "combination of familiar elements according to known methods ... [to] yield predictable results" was applicable here: a POSITA "would have found it obvious to combine Project’s teaching of tracking and displaying of project development with Song’s teaching of tracking and displaying software development."
My two cents: Everything you say can and will be used against you. Not just in litigation, but as this case shows, also during prosecution.
The Applicant's main focus was "not enough reason to combine these disparate teachings from a really big reference" rather than on the specific elements. And I think the damaging statement made by the Applicant was simply meant to highlight the lack of reason to combine. But the Applicant shot himself in the foot by making what comes very close to an explicit admission that all the elements were taught.
Was it an admission? The only thing that keeps the statement from being a bright line admission is the qualifier "probably." I would have qualified more carefully, with "even if" or "assuming for the sake of argument."
Actually, I wouldn't have made the statement in the first place. While the statement may be an attempt to bolster the no-motivation argument, it does so at the expense of does-not-teach. And we all know that does-not-teach, rather than no-reason-to-combine, is your best chance of winning an obviousness argument.