Ex Parte Bruns

Board of Patent Appeals and Interferences

Mar 14, 2011

10309409 (B.P.A.I. Mar. 14, 2011)

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.
10/309,409 12/02/2002 Arno Diego Bruns 6741P015 4934
45062 7590 03/14/2011
SAP/BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
03/14/2011 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte ARNO DIEGO BRUNS 8
___________ 9
10
Appeal 2010-002973 11
Application 10/309,409 12
Technology Center 3600 13
___________ 14
15
16
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. 17
FETTING, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
21
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 14, 2009) and Reply Brief (“Reply Br.,” filed October 15,
2009), and the Examiner’s Answer (“Ans.,” mailed September 4, 2009), and
Final Rejection (“Final Rej.,” mailed December 19, 2008).
Arno Diego Bruns (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-30, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a method for order fulfillment and shipment 6
planning. Specification 1:4-5. 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A method of splitting a line item in an order, comprising: 11
[1] storing a first criteria, for splitting the line item into a 12
plurality of deliveries, and a second criteria in a computer; and 13
[2] generating the plurality of deliveries in the computer 14
according to the first criteria. 15
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The Examiner relies upon the following prior art: 1
Bloom US 6,974,928 B2 Dec. 13, 2005
2
Claims 1-30 stand rejected under 35 U.S.C. § 112, second paragraph, as 3
being indefinite for failing to particularly point out and distinctly claim the 4
subject matter which the Appellant regards as the invention. 5
Claims 1-30 stand rejected under 35 U.S.C. § 102(e) as being anticipated 6
by Bloom. 7
8
ISSUES 9
The issue of whether the Examiner erred in rejecting claims 1-30 under 10
35 U.S.C. § 112, second paragraph, as being indefinite for failing to 11
particularly point out and distinctly claim the subject matter which the 12
Appellant regards as the invention turns on whether there is an antecedent 13
basis for the terms “first criteria” and “second criteria.” 14
The issue of whether the Examiner erred in rejecting claims 1-30 under 15
35 U.S.C. § 102(e) as being anticipated by Bloom turns on whether Bloom 16
describes “splitting the line item into a plurality of deliveries” describing a 17
first criteria. 18
19
FACTS PERTINENT TO THE ISSUES 20
The following enumerated Findings of Fact (FF) are believed to be 21
supported by a preponderance of the evidence. 22
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Facts Related to the Prior Art 1
Bloom 2
01. Bloom is directed to an efficient method for handling the bulk 3
delivery of articles from a depot into an automated article storage 4
and retrieval system at a centralized article pickup location. 5
Bloom 1:9-13. 6
02. Bloom describes that the delivery method can further include 7
consolidating items originating from more than one retailer 8
destined to specific recipients. Bloom 3:1-4. The method further 9
can include receiving items from a single order from more than 10
one fulfillment center. Bloom 3:4-7. 11
03. Following the receipt of an order, the orders are picked, labeled 12
and prepared for shipment. Bloom 13:28-30. Items can be picked 13
in batches at different times throughout the day to prepare the 14
shipment if the shipment proves to be too large to be prepared at 15
one time. Bloom 13:32-35. Items can be further picked by 16
quantity, rather than order by order. Bloom 13:51-53. 17
04. A Pick List Report program creates a report used to guide 18
workers through the fulfillment warehouse to pick cases for 19
shipment to the shipper’s nearest regional distribution center 20
(RDC) or site. Bloom 14:38-41. A shipment of cases picked to 21
go to one site may need to be split into two or more shipments for 22
that site and different times, depending upon the amount of 23
available trailer space on the tractor-trailers bound for that site. 24
Bloom 17:43-53. Furthermore, retailers can make adjustments to 25
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the shipment of an order to split it into two shipments if necessary. 1
Bloom 19:39-44. The program can partially fill orders where the 2
ordered quantity is greater than what can be filled. Bloom 21:19-3
24. Shipments can be done up to the capacity of a trailer and 4
empty trailers can be sent to ensure shipments get transported in a 5
timely manner. Bloom 19:5-13. In situations where a retailer 6
ships to more than one site, the driver can inquire as to other 7
shipments that need to be delivered. Bloom 19:8-20. A retailer 8
can ship to more than one site by using a customized version of 9
the Pick List Report program to create shipment reports for each 10
site based on an order. Bloom 17:20-35 and Fig. 1. 11
05. An electronic scale can be connected to an outbound package 12
processing work station and can be used to calculate shipping 13
costs based on delivery type, weight, package size, origin location, 14
and destination location. Bloom 110:33-40. 15
16
ANALYSIS 17
Claims 1-30 rejected under 35 U.S.C. § 112, second paragraph, as being 18
indefinite for failing to particularly point out and distinctly claim the subject 19
matter which the Appellant regards as the invention 20
The Examiner found that independent claims 1, 11, and 21 and their 21
respective dependent claims recite the terms “first criteria” and “second 22
criteria” and these terms lack an antecedent basis. Ans. 3. The Appellant 23
contends that each of these terms is properly introduced by “a” prior to 24
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subsequent references to these terms with a “the.” App. Br. 7 and Reply Br. 1
2. We agree with the Appellant. Each of claims 1, 11, and 21 properly 2
introduce “a first criteria” and “a second criteria” before referencing these 3
terms in subsequent limitations. The Examiner has failed to provide any 4
further rationale supporting this rejection. As such, we find that the 5
Examiner erred in rejecting claims 1-30 under 35 U.S.C. § 112, second 6
paragraph. 7
8
Claims 1-30 rejected under 35 U.S.C. § 102(e) as being anticipated by 9
Bloom 10
The Appellant first contends that (1) Bloom fails to describe “splitting 11
the line item into a plurality of deliveries” describing a first criteria, as 12
required by claims 1, 11, and 21. App. Br. 10 and Reply Br. 2-4. The 13
Appellant specifically argues that Bloom describes splitting a shipment, 14
which is not the same as splitting the line item in an order. App. Br. 10-11 15
and Reply Br. 2-4. We disagree with the Appellant. Claims 1, 11, and 21 16
require a first criteria and a second criteria, where the first criteria is for 17
splitting a line item, in an order, into a plurality of deliveries. Claims 1, 11, 18
and 21 do not specifically require any specific criteria, other than the first 19
criteria is used to split a line item of an order. Bloom describes a delivery 20
system for bulk articles. FF 01. Bloom further describes that in fulfilling a 21
customer order, a retailer can pick items in batches at different times if the 22
shipment of the order proves to be too large to be prepared at one time. FF 23
03. The shipment of the orders can be split into two or more shipments if 24
necessary as well. FF 04. Here, Bloom is describing the splitting of an 25
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order for picking and shipment based on a first criteria, where the first 1
criteria is the quantity of the items. Bloom explicitly describes that if the 2
order contains too many items for a single shipment, the retailer or trailer 3
driver can make adjustments to the shipment of an order. FF 04. Although 4
the Appellant argues that Bloom does not explicitly state that the splitting of 5
this order for picking and shipping is the splitting of a line item, a person 6
with ordinary skill in the art would have understood that Bloom describes 7
the ordering of an item and that item would be represented as a line item in 8
an order. As such, Bloom is describing the splitting of that line item in the 9
order for picking and shipment based on the quantity of the items in the 10
order. 11
The Appellant additionally contends that (2) claims 2-10, 12-20, and 22-12
30 depend from claims 1, 11, and 21 and are allowable for the same reasons. 13
App. Br. 14-21. We disagree with the Appellant. The Appellant’s 14
arguments in support of claims 1, 11, and 21 were not found to be persuasive 15
supra and are not found to be persuasive here for the same reasons. 16
The Appellant further contends that (3) Bloom fails to describe a 17
delivery parameter for splitting a line item into a plurality of deliveries, as 18
required by claims 6, 16, and 26. App. Br. 15-16 and Reply Br. 4. The 19
Appellant specifically argues that Bloom fails to describe splitting a line 20
item into a plurality of deliveries and therefore cannot describe splitting a 21
line item based on the criteria comprising a delivery parameter. App. Br. 16. 22
We disagree with the Appellant. As discussed supra, Bloom describes a 23
first criteria for splitting a line item into a plurality of deliveries. Claims 6, 24
16, and 26 further require that the first criteria includes a delivery parameter. 25
A delivery parameter encompasses any value associated with the delivery, 26
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such as a delivery space, a delivery time, or a delivery location. Bloom 1
describes that a line item can be split for two or more shipments going to a 2
single location at different times depending on available delivery space. FF 3
04. That is, if there is not enough delivery space on a trailer, the order is 4
split into two or more deliveries. As such, Bloom describes multiple 5
delivery parameters for the first criteria of quantity, including the delivery 6
space parameter, delivery time parameter, and delivery location parameter. 7
The Appellant acknowledges that Bloom describes these features (App. Br. 8
16), but fails to provide any additional rationale as to how the claimed 9
invention is distinguished from these features. 10
The Appellant also contends that (4) Bloom fails to describe a delivery 11
parameter that comprises units of weight with respect to splitting a line item 12
into a plurality of deliveries, as per claims 7, 17, and 27. App. Br. 17-18 and 13
Reply Br. 4-5. Here we agree with the Appellant. Bloom describes splitting 14
a line item into a plurality of deliveries based on several delivery parameters, 15
as discussed supra. However, Bloom fails to describe that the delivery 16
parameter used to determine the splitting of a line item is units of weight. 17
The Examiner found that Bloom describes a scale that measures the weight 18
of a package (Ans. 8), however, the weight of packages is only used in 19
Bloom to determine shipping costs and not the splitting of a line item of an 20
order for a plurality of deliveries. As such, Bloom fails to anticipate claims 21
7, 17, and 27. 22
The Appellant additionally contends that (5) Bloom fails to describe a 23
delivery parameter that comprises a quantity with respect to splitting a line 24
item into a plurality of deliveries, as per claims 8, 18, and 28. App. Br. 18-25
19 and Reply Br. 5. The Appellant specifically argues that Bloom describes 26
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identifying an order quantity, but fails to describe quantity as a criterion to 1
split a line item in an order. Reply Br. 5. We disagree with the Appellant. 2
As discussed supra, Bloom describes that items can be picked in batches at 3
different times throughout the day to prepare the shipment if the shipment 4
proves to be too large to be prepared at one time. FF 03. Furthermore, 5
Bloom describes that a shipment of cases picked to go to one site may need 6
to be split into two or more shipments for that site and different times, 7
depending upon the amount of available trailer space on the tractor-trailers 8
bound for that site. FF 04. That is, if the quantity is too large to fit on space 9
available, the line item is split into two or more shipments. As such, Bloom 10
describes this feature of claims 8, 18, and 28. 11
The Appellant further contends that (6) Bloom fails to describe at least 12
one shipment in an increment equal to the delivery parameter with respect to 13
splitting a line item into a plurality of deliveries, as per claims 9, 19, and 29. 14
App. Br. 20. We disagree with the Appellant. As discussed supra, Bloom 15
describes splitting a line item into a plurality of deliveries according to a first 16
criteria, where the first criteria comprises a delivery parameter. As also 17
described supra, Bloom describes delivery parameters that include a 18
delivery space parameter, a delivery time parameter, and a delivery location 19
parameter. Bloom describes that the quantity of items that can be shipped 20
are based on the available space of trailers. FF 03. Here, the delivery 21
parameter is the available space on the trailer to transport goods. As such, 22
an increment of this delivery parameter is merely just one trailer of goods. 23
Bloom describes a delivery of at least one trailer of items and therefore 24
Bloom describes at least one shipment in an increment equal to that delivery 25
parameter. 26
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The Appellant also contends that (7) Bloom fails to describe splitting a 1
line item into a plurality of deliveries when the line item satisfies a second 2
criteria, as per claims 10, 20, and 30. App. Br. 21-22 and Reply Br. 6-7. We 3
disagree with the Appellant. As discussed supra, Bloom describes splitting 4
the line item based on a first criteria, where the first criteria is the quantity of 5
items ordered. Bloom further describes that a retailer can submit shipments 6
of an item in an order to multiple regional distribution centers or sites by 7
using a customized version of the Pick List Report Program. FF 04. That is, 8
a retailer can split the line item of an order based on a second criteria, where 9
the second criteria is the delivery destination or location of the items. As 10
such, Bloom describes this feature of claims 10, 20, and 30. 11
12
NEW GROUND OF REJECTION 13
The following new ground of rejection is entered pursuant to 14
37 C.F.R. § 41.50(b). Claims 7, 17, and 27 are rejected under 35 U.S.C. § 15
103(a) as unpatentable over Bloom. 16
As discussed supra, Bloom describes the splitting of a line item of an 17
order into a plurality of deliveries based on a first criteria, where the first 18
criteria comprises a delivery parameter, as required by claims 6, 16, and 26. 19
As also discussed supra, Bloom fails to explicitly describe that the delivery 20
parameter comprises units of weight, as required by claims 7, 17, and 27. 21
However, Bloom does describe the use of a scale to measure the weight of 22
packages in a shipment order. FF 05. A person with ordinary skill in the art 23
would have known that a trailer’s capacity is based on size and/or weight 24
and therefore would have comprehended that a trailer can only carry a 25
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certain amount of weight and line items that exceed a threshold weight 1
would require the line item to be split into a plurality of shipments. Since 2
Bloom describes the need to split a line item into a plurality of deliveries on 3
the basis of truck capacity and Bloom further describes collecting package 4
weight data, it would have been predictable to a person with ordinary skill in 5
the art to use the collected weight data as a basis for splitting a line item into 6
a plurality of deliveries. 7
8
CONCLUSIONS OF LAW 9
The Examiner erred in rejecting claims 1-30 under 35 U.S.C. § 112, 10
second paragraph, as being indefinite for failing to particularly point out and 11
distinctly claim the subject matter which the Appellant regards as the 12
invention. 13
The Examiner did not err in rejecting claims 1-6, 8-16, 18-26, and 28-30 14
under 35 U.S.C. § 102(e) as being anticipated by Bloom. 15
The Examiner erred in rejecting claims 7, 17, and 27 under 35 U.S.C. § 16
102(e) as being anticipated by Bloom. 17
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). 18
Claims 7, 17, and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable 19
over Bloom. 20
21
DECISION 22
To summarize, our decision is as follows. 23
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• The rejection of claims 1-30 under 35 U.S.C. § 112, second 1
paragraph, as being indefinite for failing to particularly point out and 2
distinctly claim the subject matter which the Appellant regards as the 3
invention is not sustained. 4
• The rejection of claims 1-6, 8-16, 18-26, and 28-30 under 35 U.S.C. § 5
102(e) as being anticipated by Bloom is sustained. 6
• The rejection of claims 7, 17, and 27 under 35 U.S.C. § 102(e) as 7
being anticipated by Bloom is not sustained. 8
• New grounds of rejection are entered pursuant to 9
37 C.F.R. § 41.50(b). 10
o Claims 7, 17, and 27 are rejected under 35 U.S.C. § 103(a) as 11
unpatentable over Bloom. 12
13
Our decision is not a final agency action. 14
In addition to affirming the Examiner's rejection(s) of one or more 15
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. 16
§ 41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection 17
pursuant to this paragraph shall not be considered final for judicial review.”18
This Decision contains a new rejection within the meaning of 37 19
C.F.R. § 41.50(b) (2007). 20
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO 21
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 22
the following two options with respect to the new rejection: 23
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(1) Reopen prosecution. Submit an appropriate amendment of 1
the claims so rejected or new evidence relating to the claims 2
so rejected, or both, and have the matter reconsidered by the 3
Examiner, in which event the proceeding will be remanded 4
to the Examiner. . . . 5
(2) Request rehearing. Request that the proceeding be reheard 6
under § 41.52 by the Board upon the same record. . . . 7
Should the Appellant elect to prosecute further before the examiner 8
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek 9
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 10
the effective date of the affirmance is deferred until conclusion of the 11
prosecution before the Examiner unless, as a mere incident to the limited 12
prosecution, the affirmed rejection is overcome. 13
If the Appellant elects prosecution before the Examiner and this does 14
not result in allowance of the application, abandonment or a second appeal, 15
this case should be returned to the Board of Patent Appeals and Interferences 16
for final action on the affirmed rejection, including any timely request for 17
rehearing thereof. 18
No time period for taking any subsequent action in connection with this 19
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 20
1.136(a)(1)(iv) (2007). 21
22
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) 23
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mls 1
2
SAP/BSTZ 3
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 4
1279 OAKMEAD PARKWAY 5
SUNNYVALE, CA 94085-4040 6