Ex Parte Cargille et al

Board of Patent Appeals and Interferences

Nov 20, 2009

09953663 (B.P.A.I. Nov. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN D. CARGILLE,
GIANPAOLO CALLIONI, and
M. ERIC JOHNSON
___________

Appeal 2008-003065
Application 09/953,663
Technology Center 3600
____________

Decided: November 20, 2009
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Brian D. Cargille, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the rejection of claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We REVERSE 1 and enter new grounds of rejection pursuant to 37
C.F.R. § 41.50(b).

THE INVENTION
“This invention relates, in general, to systems and methods for
capacity-driven production planning and, in particular, to a graphical user
interface and a method providing a graphical user interface for a capacity-
driven inventory planning tool.” Specification 2:2-4. For large
manufacturing enterprises (e.g., computer manufacturers),
“the delivery of a finished product to an end customer typically involves a
complex network of suppliers, fabrication sites, assembly locations,
distribution centers and customer locations through which components and
products flow. This network may be modeled as a supply chain that includes
all significant entities participating in the transformation of raw materials or
basic components into the finished products that ultimately are delivered to
the end customer.” Specification 2:11-16. “Each of the steps in a supply
chain involves some uncertainty. For example, for a variety of reasons (e.g.,

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jun. 29, 2007) and Reply Brief (“Reply Br.,” filed Nov. 29,
2007), and the Examiner’s Answer (“Answer,” mailed Oct. 10, 2007).
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changes in product life cycles, seasonal variations in demand, and changing
economic conditions), future end customer demand is uncertain. In addition,
the times at which ordered raw materials and components will be received
from suppliers are uncertain. To handle such uncertainty, many different
statistical production planning models have been proposed to optimize
production at each level of a supply chain while meeting target service level
requirements.” Specification 17-24. “The invention features production
planning systems and methods that enable production planners to see how
capacity decisions affect total production costs and to understand the cost
trade offs between excess capacity and inventory and, thereby, enable them
to make appropriate manufacturing capacity level and inventory level
decisions. The invention features a graphical user interface that separates
the presentation of production planning information from the underlying
representation of production planning calculations and interrelationships.
The inventive graphical user interface frees a production planner from
having to handle the underlying references directly and, thereby, allows the
production planner to focus instead on the contexts and concepts of
production planning (e.g., making strategic decisions regarding excess
capacity levels and inventory levels).” Specification 6-16.
Claims 1 and 11, reproduced below, are illustrative of the subject
matter on appeal.
1. A production planning system, comprising:
a graphical user interface configured to receive
values for one or more capacity attributes
characterizing a manufacturing line configured to
produce one or more products;
at least one computing engine configured to
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compute one or more inventory investment
amounts based upon the received capacity attribute
values and needed to cover expected demand and
expected demand uncertainty for the one or more
products over an exposure period with a target
service level;
wherein the graphical user interface is configured
to display the one or more computed inventory
investment amounts.
11. A production planning method, comprising:
receiving values for one or more capacity
attributes characterizing a manufacturing line
configured to produce one or more products; and
displaying one or more inventory investment
amounts computed based upon the received
capacity attribute values and needed to cover
expected demand and expected demand
uncertainty for the one or more products over an
exposure period with a target service level.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kaneko US 2001/0020230 A1 Sep. 6, 2001
Chopra, Sunil; Peter Meindl; Supply Management: Strategy,
Planning, and Operation, Prentice-Hall, Oct. 2000. [Hereinafter
Chopra]
Greene, James H., Production and Inventory Control Handbook,
McGraw-Hill, 1997. [Hereinafter Greene]
Nelson, Randy A., One Measurement of Capacity Utilization, The
Journal of Industrial Economics, Mar. 1989. [Hereinafter Nelson]

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The following rejections are before us for review:
1. Claims 1-7, 11, 13-17, and 21 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Chopra and Kaneko.
2. Claims 2, 8, 9, 12, 18, and 19 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Chopra, Kaneko, and Greene.
3. Claims 10 and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Chopra, Kaneko, Greene, and Nelson.

ISSUES
The first issue is whether the Appellants have shown that the
Examiner failed to establish a prima facie showing that one of ordinary skill
in the art would have been led by Chopra and Kaneko to the apparatus
recited in claims 1-7 and the method of claims 11, 13-17, and 21.
The second issue is whether the Appellants have shown that the
Examiner failed to establish a prima facie showing that one of ordinary skill
in the art would have been led by Chopra, Kaneko, and Greene to the
apparatus of claims 2, 8, 9 and the method of claims 12, 18, and 19.
The third issue is whether the Appellants have shown that the
Examiner failed to establish a prima facie showing of that one of ordinary
skill in the art would have been led by Chopra, Kaneko, Greene and Nelson
to the apparatus recited in claim 10 and the method of claim 20.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
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Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Chopra’s Microsoft Excel spreadsheet from page 188 is reproduced
below.

The spreadsheet depicts numbers which are inputted and computer
numbers which are displayed.
2. Chopra’s Table 8.1 is reproduced below.

The Table depicts the formulas used to compute the quantities
depicted in the spreadsheet.

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3. Chopra define throughput (R) as “the rate at which sales to the end
consumer occur.” Chopra 52.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
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Obviousness
Section 103 forbids issuance of a patent
when ‘the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The Examiner’s rejections of claims 1-21 under 35 U.S.C. 103(a).
The Appellants and the Examiner disagree on whether the Chopra
reference contains a “capacity attribute value” as recited in the claims; that
is, whether Chopra discloses a capacity attribute value “characterizing a
manufacturing line configured to produce one or more products” (claim 1).
See Answer 12 and Reply Br. 3-4. The Examiner asserts that Chopra
teaches this limitation and points to Example 8.1 of Chopra. Answer 12.
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The Examiner equates the claimed inventory amount to the “Average
Inventory” of Example 8.1 and the capacity attribute value to “production
throughput values, where the throughput value is the required capacity time
to make a product.” Id. The Appellants argue that none of the equations in
Example 8.1, including the equation for “Average Inventory” of Chopra
contain the claimed capacity attribute value as the Examiner asserts. See
Reply Br. 3-4 and FF 1. The Appellants further point out that the equation
for “Average Flow Time” has a “throughput” but that this throughput is the
amount R, which is defined as the “average demand per week” in Example
8. 1. Id. Further, the Appellants argue that Chopra previously define the
“throughput” as “the rate at which sales to the end consumer occur.” Reply
Br. 4. FF 3.
We have reviewed the record and find that we are in agreement with
the Appellants that Chopra does not expressly teach a capacity attribute
value characterizing a manufacturing line configured to produce one or more
products as the Examiner asserts. The Examiner failed to construe the claims
so as to explain how the Examiner reached the conclusion that Chopra’s
throughput values equates to the capacity attribute value as claimed.
Furthermore, in support of that position, the Examiner first cited Example
8.1 in the Answer. But the Appellants’ rebuttal argument in the Reply Brief
was not responded to. Accordingly, we find that the Appellants are
persuasive in showing that the Examiner has failed to establish as prima
facie case of obviousness in making the rejecting of claim 1, and dependent
claims 2-10, over Chopra as first set forth in the Answer. We note that the
other independent claim 11 was likewise rejected (Answer 6) and also
recites a capacity attribute value. Accordingly we find that the Appellant
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has shown that the Examiner has failed to establish a prima facie case of
obviousness for claim 11, and dependent claims 12-21, as well.
However, we note that neither the Examiner nor the Appellant has
construed the limitation at issue in claim 1, but merely disagree as to
whether Example 8. 1 of Chopra discloses the claimed capacity attribute
value. See Answer 3-4 and 12-13, App. Br. 8-14, and Reply Br. 3-4.
Accordingly, we take the opportunity below to provide a construction of the
limitations at issue. In doing so, as further explained below, we find that the
subject matter of claims 1-14 read on Chopra and therefore enter a new
ground of rejection of claim 1-14 under § 102 as being anticipated by
Chopra. Due to our construing the claims, the reasoning used to reject the
claims differs from that of the Examiner’s and, therefore, we designate the
rejection under § 102 as a new ground of rejection.

NEW GROUNDS OF REJECTION
Claims 1-14 are rejected under 35 U.S.C. § 102(a) as being anticipated by
Chopra.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
on claims 1-14. Claims 1-14 are rejected under 35 U.S.C. §102(a) as being
anticipated by Chopra. We will address independent claims 1 and 11 below.
Taking claim 1 as representative for claims 1-10, claim 1 recites an
apparatus, which includes a graphical user interface and a computing engine.
First, claim 1 recites a graphical user interface. The graphical user
interface is configured to receive values, which are described as one or
more capacity attributes. The Specification describes the capacity
attributes for example, as shifts per day, which is a number. See
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Specification 4:27-5:2 and 25:1-3 and Fig. 6C. The graphical user
interface is also configured to display amounts, which are describes as
computer inventory investment amounts. The Specification also describes
the computer inventory investment amounts as a number. See
Specification 35:23-25. Giving claim 1 the broadest reasonable meaning in
light of the Specification, claim 1 requires a graphical user interface that is
structured to be capable of receiving numbers and displaying numbers.
Cf. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional
language does not confer patentability if prior art structure has capability of
functioning in the same manner).
We find that Chopra describes a graphical user interface that is
capable of receiving numbers and displaying numbers. Chopra depicts a
graphical user interface, which is a Microsoft Excel® spreadsheet that has a
space for inputting numbers. FF 1. Chopra’s Spreadsheet also displays
computed numbers. FF 2.
Next, claim 1 recites a computing engine. The computing engine is
recited as configured to compute one or more inventory investment amounts
based upon the received capacity attribute values. We note that the
inventory investment amounts are described as “needed to cover expected
demand and expected demand uncertainty for the one or more products over
an exposure period with a target service level”, but that the claim does not
require computing the inventory investment amounts as a function of the
expected demand, expected demand uncertainty, exposure period or target
service level. Further, claim 1 does not specifically recite a function, but
only broadly describes an engine that has a structure that is configured to
compute one or more amounts based on capacity attribute values, and as
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discussed above, the Specification describes the capacity attribute value as a
number. Therefore, giving claim 1 the broadest reasonable meaning in light
of the Specification, claim 1 requires a computing engine that is structured to
be capable of computing a number based on a number.
We find that Chopra describes a computing engine that is capable of
computing a number based on another number. Chopra’s describes that the
spreadsheet includes formulas used to compute certain quantities. See FF 1
and FF 2. Accordingly we find that Chopra anticipates claim 1.
Taking claim 11 as representative of claims 11-14, claim 11 recites a
method including a step of receiving values and displaying an inventory
investment amount. We note that claim 11 does not recite a step of
computing, but merely describes the inventory investment amount as being
“computed based upon the received capacity attribute values.” For the same
reasons as discussed above with regard to claim 1 and giving claim 11 the
broadest reasonable construction in light of the Specification, we find that
the claim 1 requires receiving a number and displaying a number. Also, as
discussed above, we find that Chopra describes a spreadsheet receiving a
number and displaying a number. FF 1. Accordingly, we find that Chopra
anticipates claim 11.
Further, we note that the Appellants argue that Chopra does not
describe a number which is characterized as a capacity attribute value, such
as a shift length. See Reply Br. 3-4. As discussed above, we found that
Chopra describes a graphical user interface that receives and displays
numbers (i.e. information). The claims recite that the numbers are capacity
attribute values and an investment inventory amount. However, these
aspects of the numbers are properly considered to be nonfunctional and
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descriptive. See Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005)
(informative) (“Common situations involving nonfunctional descriptive
material are: - a computer-readable storage medium that differs from the
prior art solely with respect to nonfunctional descriptive material, such as
music or a literary work, encoded on the medium, - a computer that differs
from the prior art solely with respect to nonfunctional descriptive material
that cannot alter how the machine functions (i.e., the descriptive material
does not reconfigure the computer), or - a process that differs from the prior
art only with respect to nonfunctional descriptive material that cannot alter
how the process steps are to be performed to achieve the utility of the
invention. Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to be well
within the level of ordinary skill in the art at the time the invention was
made. The difference between the prior art and the claimed invention is
simply a rearrangement of nonfunctional descriptive material.).” See also Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative).

Claims 11-21 are rejected under 35 U.S.C. §101 as not being drawn to
statutory subject matter.
Pursuant to 37 C.F.R. § 41.50(b), we reject claims 11-21 under 35
U.S.C. § 101. We take claim 11 as representative. Claim 11 recites two
steps, which we have construed above as receiving a number and displaying
a number.
The method recites steps and is thus nominally drawn to a process.
However,
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the proper inquiry under § 101 is not whether the
process claim recites sufficient “physical steps,”
but rather whether the claim meets the machine-or-
transformation test. [fn]25 As a result, even a
claim that recites “physical steps” but neither
recites a particular machine or apparatus, nor
transforms any article into a different state or
thing, is not drawn to patent-eligible subject
matter. Conversely, a claim that purportedly lacks
any “physical steps” but is still tied to a machine or
achieves an eligible transformation passes muster
under § 101.
In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc). Claim 11 does
not transform a particular article into a different state or thing nor does claim
11 recite a particular machine or apparatus. Accordingly, we find that claim
11 is not drawn to statutory subject matter under 35 U.S.C. § 101.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting:
claims 1-7, 11, 13-17, and 21 under 35 U.S.C. §103(a) as unpatentable
over Chopra and Kaneko;
claims 2, 8, 9, 12, 18, and 19 under 35 U.S.C. §103(a) as unpatentable
over Chopra, Kaneko, and Greene; and
claims 10 and 20 under 35 U.S.C. §103(a) as unpatentable over Chopra,
Kaneko, Greene, and Nelson.
We enter a new grounds of rejection of claims 1-14 under 35 U.S.C. §
102(a) and claims 11-21 under 35 U.S.C. § 101.

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DECISION
The decision of the Examiner to reject claims 1-21 is reversed. We
enter a new grounds of rejection on claims 1-14 under 35 U.S.C § 102(a)
and 11-21 under 35 U.S.C. §101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

REVERSED; 37 C.F.R. 41.50(b)

mev
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