Ex Parte Cash et alDownload PDFBoard of Patent Appeals and InterferencesMay 6, 201010319473 (B.P.A.I. May. 6, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte CHARLES R. CASH, 8 W. DOUGLAS POYNTER, and 9 PHINSUDA TARMY 10 ___________ 11 12 Appeal 2010-003094 13 Application 10/319,473 14 Technology Center 3600 15 ___________ 16 17 Decided: May 6, 2010 18 ___________ 19 20 Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge, 21 HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent 22 Judges. 23 FETTING, Administrative Patent Judge. 24 DECISION ON APPEAL 25 Appeal 2010-003094 Application 10/319,473 2 STATEMENT OF THE CASE 1 Charles R. Cash, W. Douglas Poynter, and Phinsuda Tarmy (Appellants) 2 seek review under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-19 3 and 22-25, the only claims pending in the application on appeal. 4 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5 (2002). 6 SUMMARY OF DECISION1 7 We AFFIRM. 8 THE INVENTION 9 The Appellants invented a type of Management Decision Modeling 10 (MDM), modeling a post office that is called a Post Office Effectiveness 11 Model (POEM) used to predict the impact of changes to an existing or future 12 post office (Specification ¶ 002). 13 An understanding of the invention can be derived from a reading of the 14 sole remaining claim 1, which is reproduced below [bracketed matter and 15 some paragraphing added]. 16 1. A method of quantitatively evaluating alternative post office 17 operations using a simulation model, comprising: 18 [1] presenting a user interface 19 for input of parameter values 20 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed August 31, 2009) and the Examiner’s Answer (“Ans.,” mailed October 1, 2009). Appeal 2010-003094 Application 10/319,473 3 by a user 1 by a computer; 2 [2] receiving parameter values 3 describing post office operations 4 upon entry of the parameter values 5 by a user via the user interface by the 6 computer, 7 parameter values including parameters defining a 8 comprehensive design of a post office, 9 the design including definition and configuration 10 of resources employed in the post office including 11 resources implementing customer 12 service operations of the post office, 13 [2a] resources that may be defined and 14 configured including 15 facilities for managing self service 16 customer transactions and 17 facilities for managing staffed 18 customer transactions, 19 the facilities for managing self 20 service customer transactions 21 including facilities for customer 22 selection and purchase of 23 products and services, 24 including 25 self service dispensing of 26 products and services 27 being conducted under 28 automated control; 29 [3] inputting the parameter values 30 into the simulation model by the computer, 31 the simulation model being able 32 Appeal 2010-003094 Application 10/319,473 4 to define comprehensive details of post office 1 design based on the inputs, and 2 to receive new parameter values entered through 3 the user interface and 4 show the effects of design changes 5 by receiving new parameter values through 6 the user interface and 7 acting on values showing changes to various 8 design elements; 9 [4] running the simulation model by the computer; and 10 [5] outputting results from the simulation model by the 11 computer. 12 THE REJECTION 13 The Examiner relies upon the following prior art: 14 Nguyen US 6,983,232 Jan. 3, 2006 Lord US 2004/0215581 A1 Oct. 28, 2004 Brigham, R.C. and P.D. Burgess, "Generalized Simulation of Post Office 15 Systems", Journal of the ACM, Vo1. 8, Iss. 2 (April 1961), pp. 252-259. 16 Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 17 Brigham, Nguyen, and Lord. 18 ISSUES 19 The issues before us are whether the recitations in portion [2a] of claim 1 20 limitation [2] actually limit the claimed invention and whether Lord 21 discourages the use of postage stamp vending machines, to the point that one 22 of ordinary skill would not have applied Lord with the remaining references 23 to achieve the claimed invention. 24 Appeal 2010-003094 Application 10/319,473 5 FACTS PERTINENT TO THE ISSUES 1 The following enumerated Findings of Fact (FF) are believed to be 2 supported by a preponderance of the evidence. 3 Facts Related to Claim Construction 4 01. Limitation [2a] of claim 1 begins with the phrase “resources 5 that may be defined and configured including” and is flowed by 6 description of such resources. The phrase uses the verb phrase 7 “may be defined and configured” in which “may” is a helping or 8 auxiliary verb expressing how such definition and configuration 9 occurs. The auxiliary verb “may” renders the remaining portion 10 of the verb phrase permissive rather than mandatory. 11 Facts Related to the Prior Art 12 Lord 13 02. Lord is directed toward securely and economically dispensing 14 postage stamps. Lord ¶ 0002. 15 03. Lord describes an alternative to providing postage stamps at 16 point of sale terminals as that of postage stamp vending machines. 17 Lord adds to its analysis examples of offsetting postage stamp 18 vending machines disadvantages. Postage stamp vending 19 machines must be stocked with both money and postage stamps, 20 increasing the security risks to the machines due to the stored 21 money and postage stamps, which may be costly due to the 22 additional hardware and/or software required to process money 23 received and dispensed by the vending machines, and may require 24 Appeal 2010-003094 Application 10/319,473 6 frequent servicing due to their intricate mechanical design. Lord ¶ 1 0004. 2 04. Lord describes actively using such postage stamp vending 3 machines in the form of a stamp provision at a self-service 4 checkout counter. Lord ¶ 0032 and 0035. 5 Nguyen 6 05. Nguyen is directed to tools for modeling customer benefit for 7 electronic assembly system configurations. Nguyen 1:26-29. 8 Brigham 9 06. Brigham is directed to describing an IBM simulation program 10 for a U.S. Post Office. Brigham 252: Abstract. 11 ANALYSIS 12 The Appellants contend that the art fails to describe claim 1’s limitation 13 [2] and in particular limitation [2a] supra. The Appellants specifically argue 14 that the references, particularly Lord, fail to describe self service customer 15 transactions, or the configuration of resources directed to both self service 16 and staffed customer transactions. Appeal Br. 5. The Appellants also 17 contend that Lord discourages the use of postage stamp vending machines; 18 as such, one of ordinary skill would not have applied Lord with the 19 remaining references to achieve the claimed invention. Appeal Br. 6. 20 The Examiner responds by pointing out where the references specifically 21 describe entering parameters regarding the simulation of a post office design 22 and running the simulation. Ans. 6. The Examiner then goes on to find that 23 limitation [2a] is optional, and so art can read on the claim without including 24 Appeal 2010-003094 Application 10/319,473 7 limitation [2a]. Id. Thus, the issue is whether limitation [2a] must be given 1 patentable weight. 2 We agree with the Examiner that limitation portion [2a] is written in 3 permissive rather than mandatory form (FF 01). This portion of limitation 4 [2] describes what might constitute part of the parameter data that can be 5 entered into a simulation. Limitation [2] itself is simply that of receiving 6 parameters describing post office operations. There is no contention that the 7 references do not describe receiving parameters describing post office 8 operations; rather the argument is that the parameters described as being 9 received in the art are not those in portion [2a] of limitation [2]. As 10 limitation [2a] recites exemplary rather than required content, we agree that 11 these specific forms of parameters need not be given patentable weight, as 12 the parameters describing post office operations in the art applied are 13 sufficient to read on limitation [2]. 14 As to whether Lord discourages the use of postage stamp vending 15 machines, the Examiner found that Lord simply provided reasons that one 16 might not choose to use such machines, but did not suggest that they were 17 not fit for the purpose of the invention. Rather, the Examiner found that 18 Lord simply provided an analysis of the benefits and costs of using such 19 machines and that rather than discouraging the use of such machines, Lord 20 specifically described embodiments with such machines. Ans. 8. We agree 21 that Lord simply provided such a cost benefit analysis and described using 22 self service stamp purchase embodiments. FF 03 - 04. Lord therefore 23 simply provided an analysis and examples and did not discourage the use of 24 self service machines in the sense they would be unsuitable for the context 25 of the invention. 26 Appeal 2010-003094 Application 10/319,473 8 CONCLUSIONS OF LAW 1 The Examiner did not err in rejecting claim 1 under 35 U.S.C. § 103(a) 2 as unpatentable over Brigham, Nguyen, and Lord. 3 DECISION 4 The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over 5 Brigham, Nguyen, and Lord is sustained. 6 No time period for taking any subsequent action in connection with this 7 appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 8 AFFIRMED 9 10 11 12 mev 13 14 Address 15 PAUL W. MARTIN 16 NCR CORPORATION, LAW DEPT. 17 3097 SATELLITE BLVD., 2ND FLOOR 18 DULUTH GA 30096 19 Copy with citationCopy as parenthetical citation