Ex Parte Gau et al

Board of Patent Appeals and Interferences

Mar 23, 2010

09965174 (B.P.A.I. Mar. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MIKIHIRO GAU, MITSUHIKO OSANAI, TAKASHI ANDO,
HIDENOBU CHIBA, and HIDEAKI KADOWAKI
____________

Appeal 2009-011166
Application 09/965,174
Technology Center 3600
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Decided: March 23, 2010
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Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-011166
Application 09/965,174

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 7-12 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Oral
arguments were presented on March 18, 2010.

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to an information
processing system and a method of managing a business process (Spec. 1:7-
10). Claim 7, reproduced below with some numbering in brackets added, is
representative of the subject matter of appeal.

7. An information processing system for managing performance
of a business process, said information processing system having a
storage apparatus, and a data processing apparatus, said information
processing system comprising:
a first table stored on said storage apparatus, said first table for
registering demand information related to request instructions, said
demand information being expressed as a combination of 5Wl H-
format elemental information comprising 5W information and t H
information, said 5W information consisting of who, whom, when,
where, and what information and said t H information consisting of
how information; and
a second table stored on said storage apparatus, said second
table for registering supply information related to results information,
said supply information being expressed as a combination of the
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5WIH-format elemental information, said supply information being
generated by execution and completion of said demand information;
[1] wherein said data processing apparatus executes said
business process based on a generation sequence determined by said
1H information of said demand information.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Wilson US 2002/0133387 A1 Sep. 19, 2002

The following rejections are before us for review:
1. Claims 7-12 are rejected under 35 U.S.C. § 102(e) as
anticipated by Wilson.

THE ISSUES
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
With regards to claim 1 this issue turns on whether Wilson discloses
claim limitation [1].
With regards to claims 8-12 this issue turns on whether Wilson
discloses claim limitation [1] and the other claim limitations that have been
specifically argued by the Appellants.

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Application 09/965,174

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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Wilson has disclosed a system for end-to-end fulfillment and supply
chain management (Title).
FF2. Wilson discloses that a client generates an order on behalf of a
customer with the order including location data corresponding to the
customer geographical location. A promising engine identifies a warehouse
based in part on the location data for the nearest warehouse to the customer
that has the ability to ship within a specified timeframe. (Abstract).
FF3. Wilson in [0013] has disclosed that the promising engine reviews the
order. Wilson also discloses that item data may include customer shipment
terms such as delivery date and desired type of delivery. After the customer
has submitted at least one order, the method may include notifying the
customer that the at least one item will ship. The shipping warehouse may
operate in a first-in, first-out manner (FIFO) such that items ship in the order
that ship items are received.
FF4. Wilson in paragraph [0039] discloses that an advanced planning and
scheduling (APS) application provides inventory and order management.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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PRINCIPLES OF LAW
Principles of Law Relating Claim Construction
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction 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). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to 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. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim.

ANALYSIS
The Appellants argue that the rejection of claim 7 is improper because
Wilson does not disclose “said generation sequence determined by said 1H
information of said demand information” (Br. 9-10).
In contrast the Examiner has determined that the cited claim limitation
for “said generation sequence determined by said 1H information of said
demand information” is met by Wilson. The Examiner has determined that
“a generation sequence is simply an order in which things take place” and
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that “Wilson[‘s] process takes steps (sequence) to the request (1H) of the
consumer” which could be for example, overnight delivery (Ans. 7).
We agree with the Examiner. Claim 7 includes limitation [1] which
requires “said generation sequence determined by said 1H information of
said demand information”. Given the broadest reasonable interpretation in
light of the Specification this requires that there is some generation of a
sequence based on 1H information (which is “how” information). Wilson
has disclosed a system for end-to-end fulfillment and supply chain
management (FF1). Wilson has disclosed that the process may include
customer shipment terms such as the delivery date and the desired type of
delivery (FF3). In Wilson, after the customer has submitted at least one
order, the method may include notifying the customer that the at least one
item will ship and a FIFO system is used for the shipment of orders (FF3).
Thus, Wilson meets the cited claim limitation because there must be a
sequence for the order to be placed, the delivery date to be determined, and
the notification to the customer that the item will ship. Clearly, the FIFO
system also determines a sequence for the shipment of orders. Further,
Wilson discloses that an advanced planning and scheduling (APS)
application provides order management (FF4) which would imply that some
level of a sequence being generated in the planning and scheduling. For
these reasons, the rejection of claim 7, and dependent claim 8 which has not
been separately argued, is sustained.
With regards to claims 9-12 the Appellants also argue that Wilson
fails to disclose the claim limitations for “said business procedure defining a
generation sequence” and for “a business flow defining a relationship among
a plurality of sets of said business procedure” (Br. 10-12, Reply Br. 1-3).
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The Examiner has also determined that Wilson discloses these claimed
features as well (Ans. 8-9).
We agree with the Examiner. Wilson has disclosed that the process
may include customer shipment terms for the delivery date, the desired type
of delivery and that after the customer has submitted an order, notifying the
customer that the at least one item will ship, and FIFO delivery (FF3). Thus
each of those steps (determining the delivery date, specifying the delivery
type, notifying the customer that the item will ship, and FIFO delivery) is a
“business procedure” that would have a sequence at least including receiving
the request from the customer, filling the need, and delivering the need.
Further, the combined procedures (determining the delivery date, specifying
the delivery type, notifying the customer that the item will ship, and FIFO
delivery) together would constitute a “business flow defining a relationship
among a plurality of sets of said business procedure”. Clearly notifying the
customer that delivery will take place and the FIFO delivery for example
each would have a set sequence. For these reasons the rejection of claims 9-
12 is sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 7-12 under 35 U.S.C. § 102(e) as anticipated by Wilson.

DECISION
The Examiner’s rejection of claims 7-12 is sustained.
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AFFIRMED

MP

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