Ex Parte Chuang

Board of Patent Appeals and Interferences

Jan 27, 2009

10691286 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS C. CHUANG
____________________

Appeal 2008-2081
Application 10/691,286
Technology Center 3600
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Decided: January 27, 2009
____________________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a Final
Rejection of claims 23, 24, 28, and 29 which are the only claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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Appellant invented a computer implemented method for managing 1
inventory of a disk rental system (Specification 1). 2
Claim 23 under appeal reads as follows: 3
4
23. A computer implemented method for 5
managing inventory of a disk rental system 6
comprising: 7
generating a user queue data structure 8
comprising: 9
a list of ordered disk identifiers associated 10
with user selected disks; 11
a status identifier for each disk identifier, the 12
status identifiers including a checked out status, 13
available status, and unavailable status; 14
maintaining a database of user queue data 15
structures corresponding to a plurality of users; 16
generating an optimized purchase price for a 17
disk identifier with a checked out status 18
comprising searching the database of user queue 19
data structures to identify the frequency of 20
appearance of the disk identifier in all user queue 21
data structures; and 22
storing the optimized purchase price in the 23
user queue data structure and displaying the 24
optimized purchase price to the user. 25
26
The Examiner rejected claims 23, 24, 28, and 29 under 35 27
U.S.C. § 112, first paragraph as failing to comply with the written 28
description requirement. 29
The Examiner rejected claims 23, 24, 28, and 29 under 35 U.S.C. § 30
112, first paragraph as failing to comply with the enablement requirement. 31
The Examiner rejected claims 23, 24, 28, and 29 under 35 U.S.C. 32
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§ 112, second paragraph as being indefinite for failing to particularly point 1
out and distinctly claim the subject matter which Appellant regards as the 2
invention. 3
4
ISSUES 5
Has Appellant shown that the Examiner erred in holding that there is 6
no written description support as required by 35 U.S.C. § 112, first 7
paragraph, for the recitation in claims 23 and 29 of (1) generating a user 8
queue comprising status identifiers including available and unavailable 9
status and (2) generating an optimized purchase price comprising searching 10
the database of user data structures to identify the frequency of appearance 11
of the disk identifier in all user queue data structures and for the recitation in 12
claim 24 of sending a query to determine whether the user wishes to receive 13
additional packaging associated with the disk identifier? 14
Has the Appellant shown that the Examiner erred in holding that 15
claim 23 does not comply with the enablement requirement of 35 U.S.C. § 16
112, first paragraph because it is not clear how the optimized purchase price 17
is generated? 18
Has the Appellant shown that the Examiner erred in holding that 19
claim 23 does not comply with the requirements of 35 U.S.C. § 112, second 20
paragraph because the Specification does not disclose an available and an 21
unavailable status and therefore the claims are unclear? 22
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FINDINGS OF FACT 1
1. Appellant discloses a method of managing an inventory of a disk 2
rental system which includes generating a user queue data structure which 3
includes a list of ordered disk identifiers and a status identifier for each disk 4
identifier [0027]. The status identifier includes a “Checked Out” list, a 5
“DVD in Queue” list and an “Awaiting Release” list [0027]. Appellant’s 6
Specification discloses that the DVDs in the “Awaiting Release” list are “not 7
yet available” [0070]. The Specification also discloses that once the DVDs 8
are released or become “available” they are placed on the bottom of the 9
rental queue [0070]. 10
2. Appellant’s Specification discloses that a price generation process 11
includes the step 510 of evaluating the inventory resources ([0051], Figure 12
5B). The rental pattern, both historical and current of the DVD across all 13
users is also evaluated at step 512 to determine the inventory use [0051]. 14
3. In order to determine a price for the DVD, the method first 15
determines a baseline used price which may be the wholesale price paid by 16
the website plus the desired profit or the current market rate [0050]. 17
4. The method then determines whether the inventory resources 18
exceeds the inventory use for the DVD and thus whether an excess capacity 19
threshold has been met [0051 to 0052]. Inventory use is calculated by 20
determining the frequency of appearance of the DVD on all user queues 21
[0051]. 22
5. The inventory use is used to calculate a price modification factor 23
which is applied to the baseline used price. This modification factor may be 24
proportional to the extent of the excess capacity and reduces the baseline 25
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used price by 10 to 30 percent or reduces the baseline used price 1
proportional to the extent of excess capacity [0053]. 2
6. The user may elect to purchase a DVD which is in the users 3
possession [0067]. The user may elect to receive the jewel case for an 4
additional price ([0068], Figure 4). 5
6
PRINCIPLES OF LAW 7
Written Description 8
The test for determining compliance with the written description 9
requirement of 35 U.S.C. § 112, first paragraph, is whether the disclosure of 10
the application as originally filed reasonably conveys to the artisan that the 11
inventors had possession at that time of the later claimed subject matter, 12
rather than the presence or absence of literal support in the specification for 13
the claim language. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). 14
The content of the drawings may also be considered in determining 15
compliance with the written description requirement. Id. 16
17
Enablement 18
An analysis of whether the claims under appeal are supported by an 19
enabling disclosure requires a determination of whether that disclosure 20
contained sufficient information regarding the subject matter of the appealed 21
claims as to enable one skilled in the pertinent art to make and use the 22
claimed invention. The test for enablement is whether one skilled in the art 23
could make and use the claimed invention from the disclosure coupled with 24
information known in the art without undue experimentation. See United 25
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States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988), cert. denied, 1
490 U.S. 1046 (1989); In re Stephens, 529 F.2d 1343, 1345 (CCPA 1976). 2
Some enablement experimentation, even a considerable amount, is not 3
“undue” if, e.g., it is merely routine, or if the specification provides a 4
reasonable amount of guidance as to the direction in which the 5
experimentation should proceed. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 6
1988). The “undue experimentation” component examines (1) the quantity 7
of experimentation; (2) the amount of direction or guidance present; (3) the 8
presence or absence of working examples; (4) the nature of the invention; 9
(5) the state of the prior art; (6) the relative skill of those in the art; (7) the 10
predictability or unpredictability of the art; and (8) the breadth of the claims 11
(hereinafter, “the Wands factors.” ) Id. at 737. The Examiner's analysis of 12
the “undue experimentation” component must consider all the evidence 13
related to each of the Wands factors, and any conclusion of non-enablement 14
must be based on the evidence as a whole. Id. at 737, 740; see the Manual 15
of Patent Examining Procedure (MPEP) § 2164.01(a). 16
17
Indefiniteness 18
The second paragraph of 35 U.S.C. § 112 requires claims to set out 19
and circumscribe a particular area with a reasonable degree of precision and 20
particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In making 21
this determination, the definiteness of the language employed in the claims 22
must be analyzed, not in a vacuum, but always in light of the teachings of 23
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the prior art and of the particular application disclosure as it would be 1
interpreted by one possessing the ordinary level of skill in the pertinent art. 2
Id. 3
The examiner's focus during examination of claims for compliance 4
with the requirement for definiteness of 35 U.S.C. § 112, second paragraph, 5
is whether the claims meet the threshold requirements of clarity and 6
precision, not whether more suitable language or modes of expression are 7
available. Some latitude in the manner of expression and the aptness of 8
terms is permitted even though the claim language is not as precise as the 9
examiner might desire. If the scope of the invention sought to be patented 10
cannot be determined from the language of the claims with a reasonable 11
degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second 12
paragraph, is appropriate. 13
14
ANALYSIS 15
Written Description 16
We agree with the Appellant that the Specification provides written 17
description support for the recitation in claims 23 and 29 for a status 18
identifier that includes an available status and an unavailable status. In our 19
view, the Specification clearly discloses that DVD’s that are not yet released 20
are unavailable and DVD’s that are released are available (FF 1). 21
In regard to the step of generating an optimized purchase price, the 22
Examiner is of the view that Appellant’s Specification does not include a 23
written description that the price is generated by identifying the frequency of 24
appearance of a disk identifier. However, the Specification teaches that the 25
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price for a DVD is calculated by first determining a baseline used price and 1
then determining whether there is an excess capacity. The determination of 2
whether there is an excess capacity is made by identifying the frequency of 3
appearance of the DVD on all user queues (FF 4). If there is an excess 4
capacity, the market used price is discounted by a chosen amount. 5
Therefore, there is written description support for the step of generating an 6
optimized purchase price by identifying the appearance of the disk identifier 7
in all user queue data structures. 8
There is also written description support for the recitation in claim 24 9
of sending a query to determine whether the user wishes to receive 10
additional packaging associated with the disk identifier. The Specification 11
teaches that the user may elect to receive the jewel case for an additional 12
price (FF 6). 13
In view of the forgoing, we will not sustain the Examiner’s rejection 14
of claims 23, 24, 28, and 29 under 35 U.S.C. § 112, first paragraph as failing 15
to comply with the written description requirement. 16
17
Enablement 18
The Examiner held that it is not clear how the optimized purchase 19
price is generated. The Examiner concludes that undue experimentation 20
would be involved in practicing the generating the optimized purchase price 21
step. However, the Examiner has not discussed the Wands factors. For 22
example, the Examiner has not discussed the level of skill in the art and the 23
direction provided in the Specification to generate an optimized price and 24
thus has failed to establish a prima facie case of nonenablement. 25
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We note that the Specification discloses that a baseline used price 1
which is the wholesale price paid by the website plus the desired profit or 2
the current market rate is first calculated (FF5). Then the claimed method 3
determines whether there is an excess capacity of the DVD in the inventory 4
and if so the DVD is discounted by a price modification factor (FF 4 and FF 5
5). As such, in our view, the Appellant has explained how the optimized 6
purchase price is generated. We note that claim 23 calls for the generating 7
an optimized purchase price step to comprise searching the database of user 8
queue data structures to identify the frequency of appearance of the disk 9
identifier in all user quest data structures. As such, the claim recites that one 10
of the steps in the optimizing purchase price generating step is searching the 11
data queue structures of all users not, as the Examiner has stated, that the 12
number of times the DVD appears in users’ queues alone is used to 13
determine the optimized price. As is clear from the specification, this 14
searching step is used to determine if there is an excess capacity. If there is 15
an excess capacity, the price of the DVD is determined. 16
In view of the forgoing, we will not sustain the Examiner’s rejection 17
of claims 23, 24, 28, and 29 under 35 U.S.C. § 112, first paragraph as failing 18
to comply with the enablement requirement. 19
20
Indefiniteness 21
The Examiner concluded that claims 23, 24, 28, and 29 are indefinite 22
under 35 U.S.C. § 112, second paragraph because the Specification does not 23
disclose an available and an unavailable status and therefore the claims are 24
unclear. As we discussed above in regard to the rejection under 35 U.S.C. § 25
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112, first paragraph, the Specification discloses that when the DVDs have 1
not been released, the DVDs are unavailable and that after release the DVDs 2
are available. Therefore, we find the recitation of an available and 3
unavailable state in claims 23, 24, 28, and 29 to be clear. As such, we will 4
not sustain the Examiner’s rejection under the second paragraph of 35 5
U.S.C. § 112. 6
7
CONCLUSION OF LAW 8
On the record before us, Appellant has shown that the Examiner erred 9
in rejecting the claims under 35 U.S.C. § 112, first and second paragraphs. 10
11
DECISION 12
The decision of the Examiner is reversed. 13
14
REVERSED 15
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hh 21
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IP LAW OFFICE OF THOMAS CHUANG 23
P.O.BOX 77174 24
SAN FRANCISCO, CA 94107-7174 25
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