Ex Parte Grettve et al

Patent Trials and Appeals Board

May 7, 2013

10446528 - (D) (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PER GRETTVE, HANS WOHRMAN, and
STEFFEN ABRAHAMSSON
____________________

Appeal 2011-007740
Application 10/446,528
Technology Center 3600
____________________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007740
Application 10/446,528

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 28-30, 32, 33, 35-38, 40, and 41. We have jurisdiction
under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to a method and system for logistics and
more particularly to a method and system for supply chain or network
control of the flow and balance of goods and related information from point
of origin to point of consumption (Spec. 1, ll. 7-11).
Claim 28, reproduced below, is representative of the subject matter on
appeal:
28. A logistics system for controlling the flow and balance of
goods and related information in a supply chain, comprising:
a first supplier that is connectable simultaneously to a
number of customers and that is connectable to a number of
second suppliers for supplying said first supplier;
means for receiving customer product information
including at least customer product balance data and customer
outflow demand data from at least one of said customers; and
means for creating at least one separate delivery
suggestion including demand time, delivery time, and demand
quantity data for at least one of said second suppliers for said

1 Our decision will make reference to the Appellants’ Appeal Brief
(“App. Br.,” filed August 12, 2010) and Reply Brief (“Reply Br.,” filed
January 18, 2011) and the Examiner’s Answer (“Ans.,” mailed
November 16, 2010).
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first supplier based on said customer product information, or
supplier product balance data and supplier outflow demand data
of said first supplier;
wherein said customer product information includes
customer’s customer product information from at least one of
said customers, said customer’s customer product information
including customer’s customer product balance and customer’s
customer outflow demand data.

THE REJECTIONS
The following rejections are before us for review:2
Claims 28-30, 32, and 33 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 28-30, 32, 33, 35-38, 40, and 41 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 28, 29, 32, 33, 35-37, 40, and 41 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Huang (US 5,953,707, iss.
Sep. 14, 1999) in view of Ginter (US 7,165,174 B1, iss Jan. 16, 2007).
Claims 30 and 38 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Huang in view of Ginter and further in view of Ettl
(US 5,946,662, iss. Aug. 31, 1999).

2 The rejections of claims 35-38, 40, and 41 under 35 U.S.C. §§ 101 and
112, second paragraph, have been withdrawn (Ans. 4).
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ANALYSIS
Indefiniteness
We are persuaded that the Examiner erred in rejecting claims 28-30,
32, and 33 under 35 U.S.C. § 112, second paragraph, as being indefinite
(App. Br. 9-10 and Reply Br. 3-4).
The Examiner found that the “means for receiving customer product
information . . . .” and “means for creating at least one separate delivery
suggestion . . . .,” as recited in independent claim 28, are means-plus-
function limitations under 35 U.S.C. § 112, sixth paragraph, and that the
only disclosed structure in the Specification is computer hardware, software
and/or a combination thereof (Ans. 5-6 and 10-11). The Examiner thus
concluded that claim 28 is indefinite under § 112, second paragraph, because
the Specification “fails to import sufficient structure, material, or acts
necessary to support the recitation of this means-plus-function limitation”
(Ans. 6).
Appellants admit that claim 28 recites means-plus-function limitations
(App. Br. 3-4). However, Appellants maintain that the indefiniteness
rejection is improper and should be withdrawn because the disclosure in the
Specification provides adequate § 112 support (App. Br. 9-10 and Reply Br.
2-4). We agree.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In
the context of a means-plus-function limitation, if one skilled in the art
would be able to identify the structure, material, or acts for performing the
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claimed function, then the requirements of 35 U.S.C. § 112, second
paragraph, are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198
F.3d 1374, 1381 (Fed. Cir. 1999); see also In re Dossel, 115 F.3d 942,
94647 (Fed. Cir. 1997).
The corresponding structure of a means-plus-function limitation must
be more than simply a general-purpose computer or microprocessor to avoid
pure functional claiming. Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game
Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). However, where the disclosed
structure is a computer programmed to implement an algorithm, “the
disclosed structure is not the general purpose computer, but rather the
special purpose computer programmed to perform the disclosed algorithm”
WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir.
1999), which may be expressed in any understandable terms, including as a
mathematical formula, in prose, see In re Freeman, 573 F.2d 1237, 1245
(CCPA 1978), or as a flow chart, or in any other manner that provides
sufficient structure. See Finisar Corp. v. The DirectTV Group, 523 F.3d
1323, 1340 (Fed. Cir. 2008).
Here, we conclude that the Specification, including the flowcharts in
Figures 2-4, provide the requisite level of specificity needed to inform
persons skilled in the art of the specific structure corresponding to the
recited means in claim 28.
Therefore, we will not sustain the Examiner’s rejection of claim 28
under 35 U.S.C. § 112, second paragraph. We also will not sustain the
Examiner’s rejections of claims 29, 30, 32, and 33, which depend from
claim 28.
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Written Description
The Examiner maintains that the rejection of claims 28-30, 32, 33,
35-38, 40, and 41 under 35 U.S.C. § 112, first paragraph, for allegedly
failing to comply with the written description requirement is proper because
“[t]he written description fails to link or associate particular structure,
material or acts to the function recited in the means-plus-function
limitations, and it would not be clear to one of ordinary skill in the art what
structure, material or acts perform the function recited in the means-plus-
function limitations” (Ans. 6-7). However, where the Specification fails to
link or associate particular structure, material or acts to the function recited
in a means-plus-function limitation, the claims are properly rejected under
35 U.S.C. § 112, second paragraph, as indefinite, not under § 112, first
paragraph, for failing to comply with the written description requirement.
The Examiner does not assert that the claims contain subject matter
that, in the Examiner’s view, is not described in the Specification in such a
way as to reasonably convey to one skilled in the relevant art that the
inventor had possession of the claimed invention at the time of the
application. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63
(Fed. Cir. 1991) (The function of the written description requirement is to
ensure that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later claimed by him).
Therefore, we will not sustain the Examiner’s rejection of claims
28-30, 32, 33, 35-38, 40, and 41 under 35 U.S.C. § 112, first paragraph.
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Obviousness
Independent claim 28
We are not persuaded that the Examiner erred in rejecting claim 28
under 35 U.S.C. § 103(a) by Appellants’ argument that neither Huang nor
Ginter discloses or suggests “creating at least one separate delivery
suggestion including demand time, delivery time, and demand quantity data .
. . based on said customer product information, or supplier product balance
data and supplier outflow demand data of said first supplier,” as recited in
the claim (App. Br. 11-13 and Reply Br. 6-7). Instead, we agree with the
Examiner that Huang discloses this feature at column 2, lines 20-25 and
column 33, lines 30-48 (Ans. 8).
Appellants argue that the cited portions of Huang only relate to a
system for inventory control and are “completely silent regarding claim 28’s
‘creating at least one separate delivery suggestion including demand time,
delivery time, and demand quantity data . . . based on said customer product
information, or supplier product balance data and supplier outflow demand
data of said first supplier’” (App. Br. 11-12 and Reply Br. 6-7). However,
we agree with the Examiner that the nature of the informational content of
the delivery suggestion, i.e., that it includes demand time, delivery time, and
demand quantity data, does not functionally affect the structure or operation
of the claimed system (Ans. 11). As such, it constitutes non-functional
descriptive material that may not be relied on to distinguish over the cited
prior art. See, e.g., In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (mere
informational content of non-functional descriptive material is not entitled to
patentable weight); see also Ex parte Mathias, 84 USPQ2d 1276, 1279
(BPAI 2005) (informative).
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For much the same reasons, we also are not persuaded that the
Examiner erred in rejecting claim 28 under 35 U.S.C. § 103(a) by
Appellants’ argument that neither Huang nor Ginter discloses or suggests
“wherein said customer product information includes customer’s customer
product information from at least one of said customers, said customer’s
customer product information including customer’s customer product
balance and customer’s customer outflow demand data.” The specific type
of customer product information does not functionally affect the structure or
operation of the claimed logistics system. Therefore, it constitutes non-
functional descriptive material that will not distinguish the invention from
the prior art in terms of patentability.
Finally, we are not persuaded that the Examiner erred in rejecting
claim 28 under 35 U.S.C. § 103(a) by Appellants’ argument that neither
Huang nor Ginter discloses or suggests “a first supplier that is connectable
simultaneously to a number of customers and that is connectable to a
number of second suppliers for supplying said first supplier,” as recited in
the claim (App. Br. 13-14 and Reply Br. 5-6). Instead, we agree with the
Examiner that Ginter discloses this feature at column 102, lines 36-48, with
reference to Figure 60 (Ans. 8 and 11). The Examiner’s determination that it
would have been obvious to a person skilled in the art “to modify the
logistics system of Huang by adding a first supplier connectable to a
plurality of customers and second suppliers as taught by Ginter for purposes
such as supporting any number of commerce and communications models”
also is adequately supported by rational underpinning (Ans. 8).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 28 under 35 U.S.C. § 103(a).
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Independent claim 35
Appellants argue that the Examiner erred in rejecting claim 35 under
35 U.S.C. § 103(a) with reference to the arguments with respect to claim 28
(App. Br. 14-15 and Reply Br. 5-7). Because we found Appellants’
arguments unpersuasive with respect to claim 28, we find them equally
unpersuasive with respect to claim 35.
Therefore, we will sustain the Examiner’s rejection of claim 35 for the
same reasons as set forth above with respect to claim 28.
Dependent claims 29, 32, 33, 36, 37, 40, and 41
Each of dependent claims 29, 32, 33, 36, 37, 40, and 41 depends from
one of claims 28 and 35. Appellants did not present any arguments in
support of the separate patentability of these claims. Therefore, we will
sustain the Examiner’s rejection of claims 29, 32, 33, 36, 37, 40, and 41
under 35 U.S.C. § 103(a).
Claims 30 and 38
Claim 30 depends from claim 28 and recites that the separate delivery
suggestion is “created as an order at said first supplier for product delivery
from one of said second suppliers to said first supplier.” Claim 38 depends
from claim 35 and includes substantially identical language.
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claims 30 and 38 under 35 U.S.C. § 103(a) (App. Br. 15-16
and Reply Br. 8-9). Instead, we agree with the Examiner that Ettl discloses
this feature at column 5, lines 52-65, where Ettl describes placing a
“replenishment order” (Ans. 9 and 11). The Examiner’s obviousness
determination also is adequately supported by rational underpinning:
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It would have been obvious to a person having ordinary skill in
the art at the time of the invention to modify the logistics
system of Huang in view of Ginter by adding the ability for a
separate delivery suggestion to be created as an order at a first
supplier as taught by Ettl for purposes such as capturing the
complex dynamics of a large supply chain (see Ettl, column 1,
lines 60-63).
(Ans. 10).
Therefore, we will sustain the Examiner’s rejections of claim 30 and
38 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 28-30, 32, and 33 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The Examiner’s rejection of claims 28-30, 32, 33, 35-38, 40, and 41
stand rejected under 35 U.S.C. § 112, first paragraph, is reversed.
The Examiner’s rejections of claims 28-30, 32, 33, 35-38, 40, and 41
under 35 U.S.C. § 103(a) are affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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