Ex Parte Ho

Board of Patent Appeals and Interferences

Sep 25, 2007

09821066 (B.P.A.I. Sep. 25, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KEITH KY TRIEU HO
__________

Appeal No. 2007-2171
Application No. 09/821,066
Technology Center 3600
__________

Decided: September 25, 2007
__________

Before TERRY J. OWENS, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from a decision of the Examiner rejecting claims
1-16. 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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The invention is directed to a computer system for processing product
price requests and placing products orders over the internet. (Specification
1:1-3).
Claims 1-16 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Scheer (US Patent Application Publication 2002/0143669
A1).

We AFFIRM.1

Claims 1, 3, 6, and 13 are the independent claims.
1. A method of grouping parts in inventory, comprising:
defining a database for indicating functional relationships
between a plurality of parts; and
searching the database to identify one or more groups of
functionally interchangeable parts.

3. A method of generating a list of interchangeable parts,
comprising:
defining a first table identifying a plurality of parts;
defining a second table, associated with the first table,
indicating functional relationships between the parts; and
recursively searching the first and second tables to generate the
list of interchangeable parts.

6. A parts inventory system, comprising:
a database for indicating functional relationships between a
plurality of parts; and
a search engine for searching the database to identify one or
more groups of functionally interchangeable parts.

1 Our decision will make reference to Appellant’s Appeal Brief (“Appeal
Br.,” filed Dec. 9, 2005), the Examiner’s Answer (“Answer,” mailed Feb.
15, 2006), and to the Reply Brief (“Reply Br.,” filed Mar. 28, 2006).
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13. A computer program product in a computer-usable medium,
comprising:
means for defining a database for indicating functional
relationships between a plurality of parts; and
means for searching the database to identify one or more groups
of functionally interchangeable parts.

A. Issue
The issue is whether Appellant has shown that the Examiner erred in
holding Scheer anticipates the claimed subject matter.

B. Findings of Fact
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. In the Final Rejection (mailed Aug. 5, 2005; p. 2; reproduced in the
Answer 5-6), The Examiner found that Scheer described the subject matter
of claim 1, stating the follows:
Referring to claim 1.-Scheer discloses a method of grouping parts in
inventory (abstract), comprising:
• Defining a database (Figure 8, "Record Parameters in the
Product Master Data Base") for indicating functional relationships
between a plurality of parts (paragraph 0147 and paragraph 0171): and
• Searching the database (Figure 8, "Record Parameters in the
Product Master Data Base") to identify one or more groups of
functionally interchangeable parts (paragraph 0147 and paragraph
0171).

2. In the Final Rejection (p. 4; reproduced in the Answer 6), the
Examiner found that Scheer described the subject matter of claim 3, stating
the following:
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Referring to claim 3-4.-Scheer discloses a method of generating a list
of interchangeable parts, comprising:
• Defining a first table identifying a plurality of parts (Figure 7
and paragraph 0174); Defining a second table, associated with the first
table, indicating functional relationships between the parts (Figure 7
and paragraph 0174);
• Recursively searching the first and second tables to generate the
list of interchangeable parts (Figure 7 and paragraph 0174); and
• Receiving a part identifier (paragraph 0233).
3. In the Final Rejection (p. 4; reproduced in the Answer 6), the
Examiner found that Scheer described the subject matter of claim 6, stating
the following: “Referring to claims 6-9. Claims 6-9 are rejected under the
same rationale as set forth above in claims 1-5.” (Answer 6).
4. In the Final Rejection (p. 4; reproduced in the Answer 6), the
Examiner found that Scheer described the subject matter of claims 13,
stating the following: “Referring to claims 13-14. Claims 13-14 are rejected
under the same rationale as set forth above in claims 1-5.” (Answer 7).
5. The Appeal Brief argues the following Appellants in rebuttal:
The rejection under §102(e) as anticipated by Scheer is
traversed. In order to maintain this anticipation rejection, each and
every claim element must be disclosed by the reference in as great
detail as claimed. Scheer fails to disclose at least “defining a database
for indicating functional relationships between a plurality of parts; and
searching the database to identify one or more groups of functionally
interchangeable parts” as claimed in claims 1, 6, and 13. At most,
Scheer discloses that an agent may determine if a distributor has
access to any equivalent products. See, Scheer, para. 0147. Scheer
does not disclose the existence of any database for indicating
functional relationships between a plurality of parts. Therefore,
Scheer cannot anticipate claims 1, 6 or 13.
Furthermore, since Scheer does not disclose a database
indicating functional relationships between a plurality of parts, Scheer
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likewise cannot disclose searching the database, as further claimed in
claims 1, 6, and 13.
Additionally, Scheer does not disclose “defining a first table
identifying a plurality of parts; defining a second table, associated
with the first table, indicating functional relationships between the
parts; and recursively searching the first and second tables to generate
[a] list of interchangeable parts” as claimed in claim 3. Claims 4 and 5
depend directly or indirectly from claim 3 and are therefore allowable
over Scheer for at least the same reasons.
Claims 2, 7-12, 14 and 16 depend directly or indirectly from
claims 1, 6, and 13 and are therefore allowable over Scheer for at least
the same reasons.
(Appeal Br. 9).
6. This rebuttal argument was originally presented in Appellant’s
response (filed January 23, 2004) to the Office action mailed October 23,
2002.
7. The Final Rejection (pp. 4-5; reproduced in the Answer at p. 7)
responded to this rebuttal argument as follows:
Applicant's arguments filed January 27, 2004 have been fully
considered but they are not persuasive.
The Attorney argues that Sheer [sic] does not disclose at least
defining a database for indicating functional relationships between a
plurality of parts; and searching the database to identify one or more
groups of functionally interchangeable parts.
The Examiner notes, Sheer [sic] does disclose an intelligent
order fulfillment planning process, wherein for each order the
distributor has access to data relating to equivalent products. An
equivalent product can be a product that has the same functions and
features as a specified product. The equivalency of functions and
features is determined as a function of product definitions provided by
the distributor. This action of substitution utilizes the Intelligent Agent
as shown in Figure 2. Also shown in Figure 2 is a linkage between the
lntelligent Agent and the distributor whereby the Intelligent Agent can
locate the product definitions. The product definitions is how the
Agent Identifies groups of functionally interchangeable parts,
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whereby these definitions are stored on the Distributor Collaboratory
Server.
The Attorney argues that Sheer [sic] does not disclose defining
a first table identifying a plurality of parts, defining a second table,
associated with the first table, indicating functional relationships
between the parts, and recursively searching the first and second
tables to generate a list of interchangeable parts.
The Examiner notes, Sheer [sic] does disclose a system that is
implemented using a high degree of table-driven and parameter driven
software engineering techniques (Sheer [sic]: paragraph 0174).
8. The Appeal Brief does not address this response set forth in the Final
Rejection and therefore does not traverse the findings set forth therein.
9. The Appeal Brief does not address the disclosure in paragraph 0171
and Fig. 8 of Scheer that the Examiner relied upon to show that the subject
matters of claims 1, 6, and 13 are described in Scheer.
10. Fig. 8 of Scheer explicitly describes a “Data Base.”
11. The Appeal Brief does not address the disclosure in paragraphs 0174
and 0233 and Fig. 7 of Scheer that the Examiner relied upon to show that the
subject matter of claim 3 is described in Scheer.
12. Paragraph 0174 of Scheer explicitly describes inventory managing
processes “using a high degree of table-driven and parameter driven
software engineering techniques.”
13. The Examiner responded to the arguments made in the Brief by
arguing essentially the points made in the Final Rejection is response to the
rebuttal argument presented in Appellant’s response to the Office action
mailed October 23. (See above at FF 7.)(Answer 7.)
14. The Reply Brief responded as follows:
The Examiner has failed to prove a case of anticipation under
§102(e). Despite all the Examiner's allegations, the Examiner's burden
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to prove anticipation is clear - each and every element of the claim
must be disclosed by the reference in as great detail as claimed.
Claim 1 requires defining a database for indicating functional
relationships between a plurality of parts; and searching the database
to identify one or more groups of functionally interchangeable parts.
Each of the Examiner's attempts to show either element fails, as
Scheer never discloses any such database, and does not disclose any
such detail in as great detail as claimed.
The Examiner cites to paragraphs 147 and 171:
….
The Examiner has not proven his alleged anticipation At most,
Scheer discloses determining if the distributor has access to any
equivalent products (¶147), but does not say how. Scheer discloses
that a customer can be provided with an option to take a substitute
(¶171) but does not disclose how to determine what products are
substitutes.
It is quite well settled that 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, 2 USPQ2d
1051, 1053 (Fed. Cir. 1987) and The identical invention must be
shown in as complete detail as is contained in the … claim."
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d
1913, 1920 (Fed. Cir. 1989). See, MPEP § 2131. Without disclosing a
database for indicating functional relationships between a plurality of
parts; and searching the database to identify one or more groups of
functionally interchangeable parts, Scheer cannot anticipate
these claims.
(Reply Br. 2-3).
15. The Appeal Brief does not address the disclosure at Fig. 8 of Scheer
that the Examiner relied upon to show that the subject matters of claims 1, 6,
and 13 are described in Scheer.

C. Principles of Law
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1. Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
2. It is well settled that in order for the examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1431; Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ 1315, 1317
(Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. American Hoist
and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).

D. Analysis
The issue is whether the Examiner erred in rejecting the claims under
35 U.S.C. § 102 on the ground that Scheer anticipates the claimed subject
matter.
We have carefully reviewed the Appeal Brief and Reply Brief and
find that Appellant has not met his burden of showing that the Examiner has
failed to make a prima facie case of anticipation.
The Examiner made an element-by-element analysis of the claims
showing where in Scheer each element of the claims is described.
Appellant’s response has been to selectively address, and in isolation, a
portion of the Examiner’s position and to leap to the conclusion that the
Examiner has failed to show that Scheer anticipates the claimed subject
matter.
For example, with respect to claims 1, 6, and 13, the Examiner has
clearly stated that Fig. 8 of Scheer describes a database. That is evident to
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anyone reading the reference. The Examiner relied on Fig. 8 as the principal
support for showing that Scheer describes defining a database and searching
the database. Appellant has never addressed Fig. 8 or the Examiner’s
reliance thereon. Arguments which Appellant could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). Accordingly, we find that
Scheer at Fig. 8 describes defining a database and searching the database.
The question then becomes whether, in light of Fig. 8, Scheer
anticipates defining the database for indicating functional relationships
between a plurality of parts and searching the database to identify one or
more groups of functionally interchangeable parts. In that regard, the
Examiner not only relied on paragraphs 0147 and 0171 but also stated that
Sheer does disclose an intelligent order fulfillment planning process,
wherein for each order the distributor has access to data relating to
equivalent products. An equivalent product can be a product that has
the same functions and features as a specified product. The
equivalency of functions and features is determined as a function of
product definitions provided by the distributor. This action of
substitution utilizes the Intelligent Agent as shown in Figure 2. Also
shown in Figure 2 is a linkage between the lntelligent Agent and the
distributor whereby the Intelligent Agent can locate the product
definitions. The product definitions is how the Agent Identifies groups
of functionally interchangeable parts, whereby these definitions are
stored on the Distributor Collaboratory Server. [FF 7.]
This latter discussion was provided in the Final Rejection but Appellant has
never responded to it. Accordingly, the Examiner’s position that Scheer
describes defining functional relationships between a plurality of parts and
identifying one or more groups of functionally interchangeable parts has not
been traversed.
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Similarly, with respect to the subject matter of claim 13, the Examiner
relied upon paragraphs 0174 and 0233 and Fig 7 of Scheer to show that
Scheer anticipated the subject matter of claim 13 (FF 11). Paragraph 0174 of
Scheer, for example, explicitly describes inventory managing processes
“using a high degree of table-driven and parameter driven software
engineering techniques” (FF 12). The Appeal Brief does not address any of
this disclosure but simply argues that Scheer does not disclose “defining a
first table identifying a plurality of parts; defining a second table, associated
with the first table, indicating functional relationships between the parts; and
recursively searching the first and second tables to generate the list of
interchangeable parts” as claimed in claim 3 (FF 5). A general allegation that
the art does not teach a claim limitation is no more than merely pointing out
the claim limitation. In that regard, a statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii).
We decline to accept Appellant’s conclusion that the Examiner has
failed to show that Scheer anticipates the claimed subject matter given that
much of the Examiner’s case in making the prima facie case of anticipation
remains unchallenged. To do so would put us in the position of acting as an
advocate for Appellant. Ernst Haas Studio, Inc. v. Palm Press, Inc., 164
F.3d 110, 112, 49 USPQ2d 1377, 1379 (2d Cir. 1999) ("Appellant's Brief is
at best an invitation to the court to scour the record, research any legal
theory that comes to mind, and serve generally as an advocate for appellant.
We decline the invitation.")
We find that the Examiner has satisfied his burden of showing that
Scheer describes the claimed subject matter and all its limitations. Appellant
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for his part has not shown that the Examiner erred in holding Scheer
anticipates the claimed subject matter.

DECISION
The decision of the Examiner rejecting claims 1-16 under 35 U.S.C. §
102(e) as being anticipated by Scheer is 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

hh

Frank C. Nicholas
CARDINAL LAW GROUP
1603 Orrington Avenue, Suite 2000
Evanston, IL 60201