Ex Parte Cash et al

Board of Patent Appeals and Interferences

May 6, 2010

10319473 (B.P.A.I. May. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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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
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Decided: May 6, 2010 18
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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
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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).
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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
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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
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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
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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
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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
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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
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