Ex Parte Johnson

Board of Patent Appeals and Interferences

Nov 15, 2011

09769294 (B.P.A.I. Nov. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte RONALD FREDRIK MICHAEL JOHNSON 8
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Appeal 2010-006504 11
Application 09/769,294 12
Technology Center 3600 13
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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Appeal 2010-006504
Application 09/769,294

STATEMENT OF THE CASE1 1
Ronald Fredrik Michael Johnson (Appellant) seeks review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1-3, 9, 10, 12-16, 18, 3
20, and 22-31, the only claims pending in the application on appeal. We 4
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of real-time monitoring and control of 6
inventory involved in on-line purchases (Specification 1: Field of the 7
Invention). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. An inventory status and information system comprising: 12
[1] a database, 13
the database storing at least on-hand, reserved, and 14
ordered inventory quantities 15
associated with a plurality of inventory items; 16
[2] a server, 17
the server providing access to information from the 18
database via a communication interface, 19
the server also pushing out updates to inventory 20
quantities as such inventory quantities change; 21
[3] a client, 22
the client providing a user interface 23

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 18, 2009) and the Examiner’s Answer (“Ans.,” mailed
January 13, 2010).
Appeal 2010-006504
Application 09/769,294

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through which information accessible via the 1
server may be accessed and displayed, 2
the user interface further allowing a user to 3
view inventory quantities associated with a 4
selected inventory item, 5
view inventory quantity updates provided by 6
the server, and 7
place a specified quantity of the selected 8
inventory item on reserve 9
as an order is placed. 10
The Examiner relies upon the following prior art: 11
Salvo US 6,341,271 B1 Jan. 22, 2002
Peachey-Kountz US 6,463,345 B1 Oct. 8, 2002
Claims 26-31 stand rejected under 35 U.S.C. § 101 as directed to non-12
statutory subject matter. 13
Claims 1-3, 9, 10, 12-16, 18, 20, and 22-31 stand rejected under 35 14
U.S.C. § 103(a) as unpatentable over Peachey-Kountz and Salvo. 15
ISSUES 16
The issue of statutory subject matter turns primarily on whether claim 26 17
only describes logic per se. The obviousness issues turn primarily on 18
whether the Specification lexicographically defined the word “reserve.” 19
FACTS PERTINENT TO THE ISSUES 20
The following enumerated Findings of Fact (FF) are believed to be 21
supported by a preponderance of the evidence. 22
Facts Related to Claim Construction 23
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01. The disclosure contains no lexicographic definition of “reserve.” 1
Facts Related to the Prior Art 2
Peachey-Kountz 3
02. Peachey-Kountz is directed to a tool in which production planning 4
information is used to match assets to demands. Peachey-Kountz 5
1:16-19. 6
03. Peachey-Kountz’s customer orders (demands) are treated as inputs 7
to generate a supply line at forecast group level. Each forecast 8
group has supply allocated for it and determines which customers 9
belonging to that group can consume the group's allocated supply. 10
This allocation enables Peachey-Kountz to reserve some output 11
for important customers, to insure that lower priority customers do 12
not consume the output set aside for those important customers. 13
As a result, Peachey-Kountz is superior to prior art available to 14
promise (ATP) systems, which are constrained to allocating 15
supply on a first come first served basis. Peachey-Kountz 6:7-19. 16
04. Peachey-Kountz uses an online server that interfaces directly to 17
the order-entry system and maintains a real time picture of the 18
orders. The order-entry systems are tied to the server using 19
messaging middleware. Peachey-Kountz 6:58 – 7:1. 20
05. Peachey-Kountz uses inventory on-hand, on-order, and reserved 21
quantity fields to compute the unallocated free supply available to 22
meet a customer request. Peachey-Kountz 10:24-31. 23
Salvo 24
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06. Salvo is directed to vendor managed inventory systems and 1
methods. Salvo 1:5-7. 2
07. Salvo describes sending alerts concerning inventory levels to an 3
inventory system from a server. Salvo 8:50-60. 4
ANALYSIS 5
Claims 26-31 rejected under 35 U.S.C. § 101 as directed to non-statutory 6
subject matter. 7
We are persuaded by the Appellant’s argument that these claims recite 8
more than logic per se, the Examiner’s basis for the rejection at Answer 3. 9
Appeal Br. 10. For example, polling a database requires more than logic per 10
se. 11
Claims 1-3, 9, 10, 12-16, 18, 20, and 22-31 rejected under 35 U.S.C. § 12
103(a) as unpatentable over Peachey-Kountz and Salvo. 13
We are unpersuaded by the Appellant’s argument that Peachey-Kountz’s 14
reservations differ from those in each of the independent claims. Appeal Br. 15
11-12. There is no lexicographic definition of “reserve” in the application. 16
FF 01. The Appellant argues that its reservations allow customers to obtain 17
assurance of availability in real-time. Appeal Br. 12. As the Examiner 18
found at Answer 10, Peachey-Kountz does so, at least for some inventory. 19
FF 03-05. We are also unpersuaded by the Declaration of Garrison Reeves 20
Ellam Under 37 C.F.R. § 1.132 for the same reason, as that Declaration, 21
providing evidence of commercial success, fails to show that such success 22
would have occurred as measured relative to the applied prior art. 23
The Examiner failed to make findings as to the Declaration, however, 24
and so, consistent with the recent decision in In re Stepan, -- F.3d --, 2011 25
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WL 4582488 (Fed. Cir. 2011) in which our reviewing court held that such a 1
referral by the Board for the first time to a Declaration was a new ground, 2
we reverse the Examiner’s art rejection, but enter a new ground on the same 3
statutory basis and art under 37 C.F.R. § 41.50(b) to give the Appellant 4
adequate notice. 5
CONCLUSIONS OF LAW 6
The rejection of claims 26-31 under 35 U.S.C. § 101 as directed to non-7
statutory subject matter is improper. 8
The rejection of claims 1-3, 9, 10, 12-16, 18, 20, and 22-31 under 35 9
U.S.C. § 103(a) as unpatentable over Peachey-Kountz and Salvo is improper 10
based on the Examiner’s findings, but proper under a new ground based on 11
the same references and statutory basis. 12
DECISION 13
The Examiner’s rejection of claims 1-3, 9, 10, 12-16, 18, 20, and 22-31 14
is reversed, but those same claims are rejected under 35 U.S.C. § 103(a) as 15
unpatentable over Peachey-Kountz and Salvo as a new ground pursuant to 16
37 C.F.R. § 41.50(b). 17
This Decision contains a new rejection within the meaning of 37 C.F.R. 18
§ 41.50(b) (2007). 19
Our decision is not a final agency action. 20
37 C.F.R. § 41.50(b) provides that Appellant, WITHIN TWO MONTHS 21
FROM THE DATE OF THE DECISION, must exercise one of the 22
following two options with respect to the new rejection: 23
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(1) Reopen prosecution. Submit an appropriate amendment of 1
the claims so rejected or new evidence relating to the claims 2
so rejected, or both, and have the matter reconsidered by the 3
Examiner, in which event the proceeding will be remanded 4
to the Examiner. . . . 5
(2) Request rehearing. Request that the proceeding be reheard 6
under § 41.52 by the Board upon the same record. . . . 7
No time period for taking any subsequent action in connection with this 8
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 9
§ 1.136(a)(1)(iv) (2007). 10
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REVERSED; 37 C.F.R. § 41.50(b) 12
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