Ex Parte Drew et al

Patent Trial and Appeal Board

Feb 22, 2016

11047227 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111047,227 0113112005 Julie Ward Drew
56436 7590 02/24/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
82202606 5807
EXAMINER
FEENEY, BRETT A
ART UNIT PAPER NUMBER
2822
NOTIFICATION DATE DELIVERY MODE
02/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE WARD DREW, QI FENG, and BIN ZHANG1
Appeal2013-010351
Application 11/04 7 ,227
Technology Center 3600
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1-24. Appeal Br. 5. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "methods and apparatuses ...
that reduce the number of products included in a product portfolio to a set of
1 Appellants indicate that the real party in interest is Hewlett-Packard
Development Company, LP, a wholly-owned affiliate of Hewlett-Packard
Company. Appeal Br. 3.
Appeal2013-010351
Application 11/047,227
products that is expected to cover most, or at least a substantial amount of
order revenue." Spec. i-f 8. Claim 1 is illustrative and recites:
1. A method for selecting products for a portfolio,
compnsmg:
solving, by a computer, a maximal s-t flow in a bipartite
graph to obtain a minimum cut for the bipartite graph;
selecting, by the computer, products bounded by the
minimum cut; and
computing, by the computer, a net order benefit coverage
for selected products by computing, based on historical product
order data, an order benefit coverage minus the product of a
portfolio size penalty and a portfolio size;
wherein said order benefit coverage is a total benefit of
orders that contain only products from the selected products and
do not contain products that were not selected.
THE REJECTION ON APPEAL
The Examiner rejected claims 1-24 under 35 U.S.C. § 103(a) as
unpatentable over Chalermkraivuth (US 2004/0186814 Al; pub. Sept. 23,
2004), Dorit S. Hochbaum, Selection, provisioning, shared fixed costs,
maximum closure and implications on algorithmic methods today (2004)
(hereinafter "Hochbaum"), and Dimitris Bertsimas et al., Portfolio
construction through mixed integer programming (1998) (hereinafter
"Bertsimas").
ANALYSIS
Our disposition of this Appeal requires us to construe the term
"order," which is recited in the claims in regard to "order benefit coverage."
In construing a claim term, we apply "the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
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Application 11/047,227
contained in the applicant's specification." Jn re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). In using the Specification, however, we "only limit
the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition." In re Bigio, 381 F.3d
1320, 1325 (Fed Cir. 2004) (citation omitted).
The Specification does not provide an express definition for the term
"order," but does provide an illustrative example of an order, namely "in the
personal computer (PC) business, a customer's order can comprise a
particular set of products such as a chassis, processor, memory card,
graphics card, monitor, mouse, keyboard and power cable." Spec. ,-r 9.
Further, the term "order" or "orders" is often used in the Specification along
with the term "covered" (e.g., Spec. i-fi-19, 10, 12), and the Specification
defines "covered order" as "[a]n order is said to be 'covered' by a product
set if every product in the order is included in the set." Id. ,-r 9. Accordingly,
in view of the Specification, we understand that the term "order" means
something apart from a mere compilation of products because an order
includes one or more products requested by a customer. Indeed, as used in
the Specification, an order is a request for a distinct product or set of
products. See id.
Each of independent claims 1, 9, 13, 16, 21, and 24 includes the
limitation "wherein said order benefit coverage is a total benefit of orders
that contain only products from the selected products and do not contain
products that were not selected." Appellants argue that Chalermkraivuth
does not disclose the concept of"order benefit coverage." Appeal Br. 15-
17; Reply Br. 2.
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Application 11/047,227
In response, the Examiner points out that "order benefit coverage" is
not defined in the Specification; and that "order benefit coverage" means
any benefit from a set of products in a portfolio. Ans. 11-12. According to
the Examiner, "Chalermkraivuth explicitly teaches a calculated 'maximum
return' from 'security allocations in a portfolio' which clearly meets the
claimed 'order benefit coverage.'" Ans. 12. The Examiner further explains:
a return calculated on a portfolio of products implicitly excludes
products that are not included in the portfolio. This is simply
how portfolio benefits [returns, risks, etc.] are calculated; which
is logical because for example, one does not calculate a return on
a particular portfolio by including the performance of products
that are not in that portfolio.
Ans. 12-13.
Although we agree with the Examiner that the term "order benefit
coverage" is not defined in the written description, the claims themselves
include a definition of this claim phrase. In particular, each of the
independent claims expressly defines "order benefit coverage" as "the total
benefit of orders that contain only products from the selected products."
The claims make clear that "order benefit coverage" is the benefit
associated with orders containing certain products, not the benefit from a
particular set of products, as the Examiner suggests. See also Spec. ,-r 25
("Instead of maximizing order revenue, the same method can be applied to
maximize order profit, number of orders, or any other metric/benefit
associated with individual orders."). The Examiner's interpretation of
"order benefit coverage" as "any benefit from a set of products in a
portfolio" (see Ans. 12) is unreasonably broad because the Examiner's
interpretation excludes the term "order." See, e.g., Bicon Inc. v. Straumann
Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (Claims are to be construed with an
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Appeal2013-010351
Application 11/047,227
eye toward giving effect to all terms in the claim.); see also Stumbo v.
Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing
claim constructions which render phrases in claims superfluous).
As noted by Appellants, the Examiner does not make any findings
regarding the benefit associated with orders. See Appeal Br. 16-17; see also
Reply Br. 2. Instead, the Examiner's findings relate to the benefit associated
with a set of products in a portfolio. See Ans. 12 ("Chalermkaivuth [sic]
explicitly teaches a calculated 'maximum return' from 'security allocations
in a portfolio' which clearly meets the claimed 'order benefit coverage.'").
Although Chalermkraivuth deals with determining what products to include
in a portfolio, Chalermkraivuth does not contemplate products included in an
order or the benefit associated with a particular order. Thus, the Examiner's
finding that Chalermkraivuth teaches "order benefit coverage" is not
supported by a preponderance of the evidence. Accordingly, we do not
sustain the Examiner's rejection of independent claims 1, 9, 13, 16, 21, and
24, as well as the claims that depend therefrom. 2
DECISION
We reverse the Examiner's rejection of claims 1-24 under 35 U.S.C.
§ 103(a) as unpatentable over Chalermkraivuth, Hochbaum, and Bertsimas.
2 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the preliminary examination
instructions on patent eligible subject matter. See "Preliminary Examination
Instructions in view of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Bank International, et al." (Memorandum to the Examining
Corps) (June 25, 2014); see also July 2015 Update on Subject Matter
Eligibility, 80 Fed. Reg. 45429 (July 30, 2015).
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Application 11/047,227
REVERSED
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