Ex Parte Huber-Buschbeck et al

Patent Trial and Appeal Board

Dec 29, 2015

12723083 (P.T.A.B. Dec. 29, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/723,083 03/12/2010
131475 7590 12/29/2015
Dilworth IP - SAP
2 Corporate Drive, Suite 206
Trumbull, CT 06611
FIRST NAMED INVENTOR
Andreas HUBER-BUSCHBECK
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.
247-104USCON 4474
EXAMINER
HAIDER,FAWAAD
ART UNIT PAPER NUMBER
3627
MAILDATE DELIVERY MODE
12/29/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS HUBER-BUSCHBECK and
HANS-ULRICH VON HELMOL T
Appeal2013-006400 1
Application 12/723,0832
Technology Center 3600
Before JOSEPH A. FISCHETTI, SHEILA F. MCSHANE, and
MATTHEWS. MEYERS, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1, 4---6, 10, 13-15, and 18-22. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
2 According to the Appellants, the real party in interest is SAP, AG. Appeal
Brief filed September 17, 2012, hereafter "App. Br.," 2.
Appeal2013-006400
Application 12/723,083
BACKGROTJND
The invention relates to inventory management within enterprise
systems. Specification, hereafter "Spec.," i-f 1. The invention is directed to
providing a solution to optimize the result of an availability check process
within a supply chain management system to guarantee that the quantity of
products confirmed by an availability check is as near as possible to the
required quantity of products by the use of rounding algorithms. Id. i-fi-1 5, 7.
Representative claim 1 is reproduced from page 1 of the Claims
Appendix (Claims App'x.) of the Appeal Brief as follows, with emphasis
added to relevant claim limitations:
1. A computer-implemented method for optimizing the
result of an availability check of a required quantity of
products, wherein a plurality of rounding algorithms are
provided, the computer-implemented method comprising steps,
prepared by a computer, of:
rounding, according to at least one predetermined
rounding algorithm
impiemented by the computer, the required quantity of
products;
checking, by the computer, the availability of the
rounded quantity of products; and
rounding down, according to the at least one
predetermined rounding algorithm implemented by the
computer, the available quantity of products when the available
quantity of products is lower than the rounded required
quantity of products, wherein the at least one predetermined
rounding algorithm comprises at least one packaging
specification, the packaging specification comprising:
at least one rounding rule;
a plurality of different package sizes; and
tolerance values defining an interval around the package
size of a package unit.
2
Appeal2013-006400
Application 12/723,083
In a Final Rejection, the Examiner rejected claim 15 under 35 U.S.C.
§ 101. Claims 1, 4---6, 10, 13-15, and 18-223 were rejected under 35 U.S.C.
§ 103(a) as obvious over Levine, 4 Colman, 5 and Whitney. 6'7 Final Action,
hereafter "Final Act.," 2-5, mailed April 11, 2012; see, also, Answer,
hereafter "Ans." 3, mailed January 15, 2013.
DISCUSSION
The Appellants argue the obviousness rejections of independent
claims, claims 1, 13, and 15, on the same issues, using claim 1 as
representative, and with dependent claims 4---6. 10, 14, and 18-22 standing
or falling with them. App. Br. 4--10.
Although the Appellants argue the rejections under 35 U.S.C.
§ 103(a), they do not address the rejection of claim 15 under 35 U.S.C.
§ 101. Pursuant to 37 C.F.R. § 41.37(c)(l), any arguments not included in
the Appeal Brief will be deemed waived for purposes of the appeal. 37
3 The Claims Appendix submitted with the Appeal Brief does not contain
copies of claims 21 and 22. We presume the omission was inadvertent and
harmless error. We have reviewed claims 21 and 22 in the form filed on
January 13, 2012 in this Appeal.
4 US Patent 6,721,762 Bl, issued Apr. 13, 2004.
5 US Patent 5,699,259, issued Dec. 16, 1997.
6 US Patent 4,749,008, issued June 7, 1988.
7 If there is further prosecution of this application, the Examiner may wish
to consider reviewing the claims for compliance under 35 U.S.C. § 101
which were not already rejected under this statute by the Examiner in light
of the Office guidance on § 101 found in "2014 Interim Guidance on Patent
Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), which
supplements the "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 MPEP § 2106.
3
Appeal2013-006400
Application 12/723,083
C.F .R. § 41.3 7 ( c )( 1 )(iv); see also Ex parte Frye, 94 USPQ2d 1072, 107 5
(BPAI 2010). The rejections under 35 U.S.C. § 101 of claim 15 and the
claims depending from it, claims 18-20, are therefore summarily sustained.
For the obviousness issues, the Appellants argue that the prior art fails
to teach some of the limitations of claim 1, and therefore cannot render the
claims obvious. App. Br. 6-10. In light of our disposition of this appeal, we
need address only some of the obviousness arguments, that is, the "rounding
down" argument presented for this claim.
After considering each of the Appellants' contentions and the
evidence presented in this Appeal, we are persuaded that the Appellants
identify reversible error in the rejection, and we reverse the Examiner's
§ 103 rejection for the reasons expressed in the Appeal Brief as to the issue
of the teaching of "rounding down." We add the following for emphasis.
Representative claim 1 includes the claim limitation of "rounding
down ... the available quantity of products when the available quantity of
products is lower than the rounded required quantity of products." Claims
App'x. 1.
In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the
initial burden of establishing a prima facie case of obviousness, where a
factual basis must be established to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988); In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
As is relevant to the Appellants' arguments on appeal, the Examiner
finds that "Levine discloses rounding, according to at least one
predetermined rounding algorithm, the required quantity of products; and
rounding down, according to the at least one predetermined rounding
4
Appeal2013-006400
Application 12/723,083
algorithm, the available quantity of products when [[if]] the available
quantity of products is lower than the rounded required quantity of
products." Final Act. 3 (citing Levine, col. 13).
The Appellants argue that the prior art references relied upon do not
teach "rounding down." App. Br. 6. The Appellants contend that "[a]t most,
Levine teaches segregating articles into subgroups based on their 'weights,'
but nowhere does Levine teach or suggest 'rounding down, ... , the
available quantity of products,' as recited in claim 1." Id. at 7. The
Appellants further contend that Colman and Whitney fail to cure the
deficiencies of Levine. Id. at 7-8.
The Examiner replies that Levine teaches "rounding down," and
further states that
[ t Jo do this, the packing system determines the total
dimensions for the articles in each group and for each group the
packing system determines all of the containers that can hold
the articles of that group . . . [ fJor each subgroup, the packing
system determines the totai dimensions of each subgroup and
for each subgroup determines all of the containers that can hold
the articles of that subgroup.
Ans. 3 (citing Levine 13:35--42).
We find the Appellants' argument that the portion of Levine that the
Examiner relies on fails to disclose rounding down the available quantity of
the products is persuasive-although there may be some "rounding down"
suggested in the reference, there is no indication that the "available quantity
of products" is rounded down. We do not find a teaching or suggestion of
that limitation in Levine or the other prior art relied upon. All words in a
claim must be considered in judging the obviousness of the claimed subject
matter, and we therefore cannot sustain the obviousness rejections of claims
5
Appeal2013-006400
Application 12/723,083
1, 4---6, 10, 13-15, and 18-22. See In re vVilson, 424 F.2d 1382, 1385
(CCPA 1970).
SUMMARY
The rejections of claims 15 and 18-20 under 35 U.S.C. § 101 are
affirmed.
The rejections of claims 1, 4---6, 10, 13-15, and 18-22 under 35
U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
em
6