Ex Parte Gupta et al

Board of Patent Appeals and Interferences

Mar 23, 2011

09747647 (B.P.A.I. Mar. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte AMAN GUPTA, AMIT MAHESHWARI, and JAMES A.
YENERICH
____________________

Appeal 2009-010002
Application 09/747,647
Technology Center 3600
____________________

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

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 (2002) from the
Examiner’s non-final rejection of claims 1-21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED INVENTION
Appellants’ claim a method, media, and signal for reporting the status
of shipping readiness of a product being produced (Specification ¶1). Claim
1 is illustrative of the claimed subject matter:
1. A method for reporting status of work in progress,
comprising the steps of:
periodically querying an electronic database that contains
data indicating an order number, a promise date, a request date,
a shipment date, and a product category for a plurality of
products/services offered;
comparing the promise dates and the request dates;
setting a proactive promise alert if a promise date is later
than a request date for a given order; and
displaying the proactive promise alerts with the order
numbers for those given orders that have a promise date that is
later than their respective request date.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Martin
Dietrich
Schoenberg
US 5,809,479
US 6,032,121
US 6,322,502 B1
Sep. 15, 1998
Feb. 29, 2000
Nov. 27, 2001

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REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1-21 under 35 U.S.C. § 103(a) as
unpatentable over Martin, Dietrich, and Schoenberg.
The Examiner rejected claim 4 under 35 U.S.C. § 112 Second
Paragraph as indefinite.
The Examiner rejected claims 15-21 under 35 U.S.C. § 101 as
claiming unpatentable subject matter.

ISSUES
Did the Examiner err in rejecting claims 1-21 under 35 U.S.C.
§ 103(a) as unpatentable over Martin, Dietrich, and Schoenberg since Martin
discloses sending notification to a human scheduler if a customer-requested
arrival date cannot be met by automated scheduling of a ship date?
Did the Examiner err in rejecting claims 15-21 under 35 U.S.C. § 101
as claiming unpatentable subject matter since the claim is for a signal?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification does not define the term alert.
2. The ordinary and customary definition of the term alert, as defined by
Merriam Webster’s Collegiate Dictionary (10th ed.), is: “an alarm or
other signal of danger, or an urgent notice.”
3. Martin discloses determining a promise date based on a customer’s
request date in which the “resulting customer-preferred ship date would
represent the date the customer order would have to leave the supplier’s
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site to arrive at the customer’s site on the date preferred by the
customer.” (Col. 3 ll. 49-55).
4. Martin discloses an alert to a scheduler if the requested date cannot be
met, stating, “it might not be possible for the supplier to meet a
requested or preferred date. Accordingly, the customer order entry is
routed to a human order scheduler for assignment of a targeted ship date
…” (Col. 3 ll. 57-61).
5. The Specification does not define the term proactive, but describes by
example that proactive “is meant to show that an alert may be set while
there is still time to rectify a possible problem in the process, in this
case, shipping.” (Specification 16:3-5).
6. Dietrich discloses “proactive planning” methods which “can provide
advanced warnings to planners and to the corresponding execution
teams, rather than just [providing] reactive responses.” (Col. 2 ll. 57-61).
7. The Specification does not define reactive alerts but describes that the
“reactive alert may not provide the same information [as that provided
by a proactive alert that allows adjustments to avoid a late shipment],
but the information is still useful to ensure that recognized problems do
not occur. (Specification 16:3-8).
8. Schoenberg discloses reactive alerts in the form of an alarm for actions
not performed by their due date, because “[c]ompliance with orders is
tracked as well, and the display screen can indicate an alarm or other
warning indicator which notifies the medical team that an order has not
yet been carried out.” (Col. 5 ll. 44-47).
9. It is our understanding that it is common to organize displays of
information of varying types by the type of information displayed, such
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as through headings or grouping like information together, so that the
detailed information is easier to understand.
10. Schoenberg discloses reactive alerts in the form of reminders of action
to be taken, by way of the system providing “for the entry and
monitoring of action items, such as, for example, orders for drugs or
other treatments. Operational reminders are then generated and
transmitted to the medical team.” (Col. 5 ll. 39-42).

ANALYSIS
Claims 1-8, Rejection under 35 U.S.C. § 103(a)
We affirm the rejection of claims 1-8. Appellants do not provide a
substantive argument as to the separate patentability of claims 2-8 that
depend from claim 1, which is the sole independent claim among those
claims. Therefore, we address only claim 1. Claims 2-8 fall with claim 1.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants assert, “Martin et al. does not disclose the generation of
any alert as called for in claim 1 nor is there a need or motivation to generate
or display any alert in the system of Martin et al.” (Appeal Br. 14).
We are not persuaded by Appellants’ arguments because we find that
Martin attempts to schedule promise dates to satisfy request dates (FF 3), but
that if a promise date would not satisfy the request date, an alert is sent to a
human scheduler (FF 4), thus meeting the claim requirement.
More specifically, we find that the Specification does not define the
term alert (FF 1), so we rely on the ordinary and customary meaning as “an
alarm or other signal of danger, or an urgent notice” (FF 2). We thus
interpret the claim term alert to include communication which causes an
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alarm or causes one to be put on notice. The claim also requires a proactive
promise alert, and the Specification describes by example that proactive “is
meant to show that an alert may be set while there is still time to rectify a
possible problem in the process, in this case, shipping” (FF 5).
We thus find that Martin’s alert informs a scheduler at the time of
order entry (FF 4), and therefore Martin’s alerts are proactive and pertain to
the promise date. We therefore find that Martin discloses the generation and
displaying of proactive promise alerts that identify orders which cannot be
delivered by a request date according to a present schedule, meeting the
claim language.
Since the Examiner cites to Dietrich for its disclosure of a proactive
alert and Schoenberg for a reactive alert, but since we find that Martin
discloses a proactive alert, and the claim contains no requirement for a
reactive alert, we find that for this claim feature, Dietrich is a cumulative
reference. We also find that since Examiner grouped claims in the rejection
(Answer 4-5), Schoenberg is applied only to claims requiring a reactive
alert, which does not include claim 1.
Appellants also argue that there is no motivation to combine
references, submitting, “Dietrich et al. suggests scheduling a new scheduling
event when a plan cannot be satisfied, whereas Martin et al. teaches
notifying users of late deliveries for gauging on-time delivery performance.”
The combination thus defeats the purpose of the reference.” (Appeal Br. 9).
We disagree with Appellants because as found above, Martin notifies
a scheduler by alert when a request date can not be met by a promise date,
and thus does not merely notify users of late deliveries. Additionally, we
find that Dietrich discloses a system that “can provide advance warnings to
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planners and to the corresponding execution teams” (FF 6), such that Martin
and Dietrich each address common problems associated with schedule
planning, and thus it is reasonable to combine their teachings and is
congruent with the rationale provided by the Examiner for making the
combination (Answer 5).
Claims 9-14, Rejection under 35 U.S.C. § 103(a)
We affirm the rejection of claims 9-14. Appellants do not provide a
substantive argument as to the separate patentability of claims 10-14 that
depend from claim 9, which is the sole independent claim among those
claims. Therefore, we address only claim 9. Claims 10-14 fall with claim 9.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Claim 9 covers a computer-executable medium that includes
substantially all the limitations of the method of claim 1, and requires the
computer to set a reactive alert if the shipment date exists and the request
date is less than a user-defined number of days prior to a current date.
To the extent that Appellants argue deficiencies in the references with
respect to proactive alerts, we restate our arguments made to those
addressing proactive promise alerts of claim 1, and thus find Appellants’
arguments unpersuasive.
Appellants also argue that the claim requires the request date
associated with a reactive alert be “prior to a current date” (Appeal Br. 20)
but “[a]s stated by Schoenberg et al., the alarm disclosed therein is generated
and displayed after a medication time has been missed.” (Appeal Br. 21).
We disagree with Appellants because we find the Specification
describes that reactive alerts, in contrast with proactive alerts, do not allow
enough time to rectify a problem (FF 5, 7). We understand this to mean that
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the reactive alert identifies a problem, as opposed to identifying a shipment
that went out on time, or an order that is near a ship date, but not yet late.
The claim language requires that the request date be before the current date,
and therefore we interpret this to mean that the alert identifies an order past
its request date that has not shipped or been acted upon, and is therefore late.
We interpret a request date to be associated with a reactive alert that has
already past without action, but only by a specified period or less, such as
with a request date that was recently missed.
Based on this interpretation, we find that Schoenberg discloses a
reactive alert in the form of a warning to a medical staff that is sent when
the current date is past a request date, occurring when medication or other
treatment has not been administered as requested (FF 8). It is common sense
that a medical treatment past due would not be allowed to go unanswered for
too long, and thus we find that Schoenberg discloses a warning for an order
that is past its request date by a short period of time, meeting the claim
limitation as to reactive alerts.
Appellants further argue that the references do not disclose displaying
alerts by type of alert (Appeal Br. 18-19).
We are not persuaded because we find one of ordinary skill in the art,
upon combining the proactive alert of Martin with the reactive alert of
Schoenberg, would also include the type of alert being displayed, because
this is a common technique when multiple types of information are
displayed so that the information is easier to understand (FF 8).
Appellants finally argue there is a lack of motivation to combine
Martin and Dietrich, and Schoenberg, and that there is no reasonable
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expectation of success from combining them (Appeal Br. 12-13, 16-18, 21-
23).
We are not persuaded by Appellants’ arguments because the
Examiner has provided some articulated reasoning with the following
rational unpinning for why a person with ordinary skill in the art would
combine Martin, Dietrich, and Schoenberg as follows:
The Examiner found that “early warning system reduces the chance
that undesired events will occur” (Answer 5) and that “the user of reactive
alerts are helpful management tools for correcting problems when undesired
activities have already occurred" (Answer 5).
Martin discloses alerts to planners in a proactive manner when
requested dates cannot be met (FF 4).
Dietrich also notifies planners when a request cannot be
accommodated by a planned schedule (FF 6).
Schoenberg discloses sending reminders before missing a schedule
and warnings after a schedule has not been met (FF 8, 10).
We thus find Martin, Dietrich, and Schoenberg deal with the common
fields of scheduling (FF 3, 4, 6, 8, 10), and the common problems of creating
schedules including when a request cannot be met by a planned schedule (FF
3, 4, 6), and when a schedule has been missed (FF 8). Therefore, we find
there would be a motivation to combine and a reasonable likelihood of
success in combining the references because they disclose almost identical
approaches to the same problems. For obviousness under § 103, all that is
required is a reasonable expectation of success. Wyers v. Master Lock Co.,
616 F.3d 1231, 1242 (Fed. Cir. 2010).
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Claims 15-21, Rejection under 35 U.S.C. § 103(a)
We affirm the Section 103 rejection of claims 15-21. Appellants do
not provide a substantive argument as to the separate patentability of claims
16-21 that depend from claim 15, which is the sole independent claim
among those claims. Therefore, we address only claim 15. Claims 16-21
fall with claim 15. See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants argue:
Claim 15 defines the reactive alert as occurring, in part, when a
request date is less than a user-defined number of days prior to
a current date. That is, a delivery has not yet been missed, but
delivery cannot be made in accordance with the request date if
the user-defined number of days is fixed. The alert of
Schoenberg et al. indicates that a late delivery has already
occurred.
(Appeal Br. 24-25).
Appellants’ argument fails at the outset, because it argues a limitation
not part of the claim, in that the claim is silent on whether or not a delivery
has been missed, or whether a number of days is fixed. The claim only
recites that, a shipment date exists and a user-defined number of days. As
we found above with claim 9 and its reactive alert limitation, Shoenberg
discloses a reactive alert when a shipment is past due (FF 8) which meets
these limitations. In addition, we find Schoenberg discloses a reactive alert
in the form of a reminder, which takes place when an order performance
date has not yet been missed (FF 10), additionally meeting the claim
language. Therefore, even if the claim implies a missed shipment, we find
Schoenberg discloses the reactive alert consistent with the claim language.
For the remaining arguments, we sustain the rejection of claim 15 for
the same reasons set forth above at claim 9.
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Claim 4 Rejection under 35 U.S.C. § 112
Appellants respond that claim 4 “calls for, in part, displaying the
proactive promise alerts with the order numbers by product category and
type of alert. No reactive shipment alert is called for in claim 1 as the
Examiner asserts, and thus, there is no confusion as to what claim 4 calls
for.” (Appeal Br. 4). We agree with Appellants, because we find the term
proactive promise alerts in claim 4 refers to the same term in claim 1 and
cannot be confused with any other term, such as reactive shipment alerts,
which does not appear in either claim 1 or 4. Thus, even if the only type of
alert present is proactive promise alerts, requiring the display of this type of
alert is not ambiguous. We therefore do not sustain the rejection of claim 4
under 35 U.S.C. § 112 Second Paragraph.
Claims 15-21 Rejection under 35 U.S.C. § 101
Claims 15-21 recite a computer data signal. The Specification does
not define or describe a signal so we broadly interpret the claim scope to
include a transient, propagating signal. We therefore sustain the rejection of
claims 15-21 as claiming unpatentable subject matter. In re Nuitjen, 500
F.3d 1346, 1357 (Fed. Cir. 2007).

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-21 under 35 U.S.C.
§ 103(a) as unpatentable over Martin, Dietrich, and Schoenberg .
The Examiner did not err in rejecting claims 15-21 under 35 U.S.C.
§ 101 as claiming unpatentable subject matter.
The Examiner erred in rejecting claim 4 under 35 U.S.C. § 112
Second Paragraph as indefinite.
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DECISION
The Examiner’s rejection of claims 1-21 under 35 U.S.C. § 103(a) is
AFFIRMED.
The Examiner’s rejection of claims 15-21 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner’s rejection of claim 4 under 35 U.S.C. § 112 Second
Paragraph is REVERSED.

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) (2010).

AFFIRMED

MP

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