Ex Parte Macy et al

Board of Patent Appeals and Interferences

Aug 4, 2011

11161139 (B.P.A.I. Aug. 4, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/161,139 07/25/2005 Barbara Macy 014033-000045 2138
69603 7590 08/04/2011
MOORE & VAN ALLEN, PLLC FOR BOFA
430 DAVIS DRIVE, SUITE 500
POST OFFICE BOX 13706
RESEARCH TRIANGLE PARK, NC 27709
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
08/04/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARBARA MACY, KENNETH R.
DAFFORN, and ALINE YOUNG
____________

Appeal 2009-012293
Application 11/161,139
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012293
Application 11/161,139

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 5-22 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a method and system
to enable the operationalizing of process excellence (Spec. 3). Claim 13,
reproduced below, is representative of the subject matter of appeal.

13. Apparatus to facilitate operationalizing process excellence, the
apparatus comprising:
an instruction execution platform operable to store and execute
computer program code instructions for characterizing a former
process and a future process using a plurality of lean tools including at
least a cost-of-poor-process (COPPO) tool, a takt-o-meter, and
an operating efficiency model; and
a data store operatively connected to the instruction execution
platform to supply historical data and store results from the plurality
of lean tools to enable comparative evaluation of the future process
relative to the former process using the results.

Appeal 2009-012293
Application 11/161,139

3
DISPOSITION OF THE APPEAL
The Examiner entered a new ground of rejection in the Examiner’s
Answer against claims 5-121 under 35 U.S.C. §101 as being directed to
nonstatutory subject matter and also to claims 21-22 under 35 U.S.C. § 112,
second paragraph. (Answer 4-7). The Examiner properly gave notice of the
new ground of rejection (Answer 4-7) and the Technology Center Director
approved it (Answer 23). As the Answer indicated (Answer 22), the
Appellants were required to respond to the new ground within two months in
either of two ways: 1) reopen prosecution (see 37 CFR 41.39(a)(2)(b)(1)); or
2) maintain the appeal by filing a reply brief as set forth in 37 CFR 41.41
(see 37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua sponte dismissal of the appeal
as to the claims subject to the new ground of rejection.” According to the
record before us, neither option appears to have been exercised.
Accordingly, the appeal as to claims 5-12 subject to the new ground of
rejection under §101 as being directed to nonstatutory subject matter and to
claims 21-22 under 35 U.S.C. § 112, second paragraph stands dismissed.
Upon return of the application to the Examiner, the Examiner should (1)
cancel claims 5-12 and 21-22 subject to the new ground of rejection and (2)
notify the Appellants that the appeal as to claims 5-12 subject to the new
ground of rejection under §101, as being directed to nonstatutory subject
matter and claims 21-22 under 35 U.S.C. § 112, second paragraph, is
dismissed and that claims 5-12 and 21-22 are cancelled. See Manual of
Patent Examining Procedure (MPEP) § 1207.03, 8th ed., Rev. 7, Jul. 2008.

1 We note that the Examiners Answer at page 4 lists this rejection as
including claims 1-4 but this is considered to be a typographical error since
claims 1-4 are of record as being cancelled.
Appeal 2009-012293
Application 11/161,139

4
Given that the appeal as to claims 5-12 and 21-22 stands dismissed, the
rejections before us for review are reduced to those listed in the section that
follow below.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
MacKenzie US 2002/0065709 A1 May 30, 2002
Pate US 2005/0033468 A1 Feb. 10, 2005
Schweizerhof US 7,006,878 B2 Feb. 26, 2006

The following rejections are before us for review:
1. Claims 13-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schweizerhof and Pate.
2. Claims 17-18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schweizerhof, Pate, and MacKenzie.
3. Claims 15-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schweizerhof, Pate, and Official Notice.
4. Claims 19-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schweizerhof, Pate, MacKenzie, and Official Notice.

THE ISSUES
With regards to claim 13 and its dependent claims the issue turns on
whether Schweizerhof discloses the claimed “takt-o-meter”.

Appeal 2009-012293
Application 11/161,139

5
FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence2. Additional facts may appear in
the Analysis section below.
FF1. The Specification at page 8 states that “A takt time calculator, which
can be referred to as a takt-o-meter or takt-o-meter tool, can be used to
determine the pace of production needed to produce a unit to meet customer
demand requirements at a level necessary to drive the to-be state or optimize
the as-is state”.
FF2. The Specification at Fig. 7 shows a “Basic TAKT Calculator” with
entries for Demand (706), Daily Time Available to Process (702), a
Calculate Takt button (714), and the displayed TAKT (716).
FF3. Takt Time can be defined as the time interval between consecutive
items in a production system that must be achieved to meet customer
demand. If the daily customer demand is 40 items and there are 400
minutes of production time then the takt time is 10 minutes. The takt time is
the 'heartbeat' for a Just in Time production system ('takt' is the German
word for a conductor's baton). Obtained from the website:
http://www.processexcellencenetwork.com/glossary/takt-time/ on July 18,
2011.
FF4. Schweizerhof has disclosed a computer implemented method for
analyzing a problem statement based on an integration of six sigma, lean
manufacturing, and kaizen techniques. (Title).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2009-012293
Application 11/161,139

6
FF5. Schweizerhof at 3:18-32 and 14:1-47 does not disclose a “takt-o-
meter”.

ANALYSIS
The Appellants argue that the rejection of claim 13 is improper
because Schweizerhof fails to disclose the claimed “takt-o-meter” (Br.5). In
contrast, the Examiner has determined that Schweizerhof discloses this
claim limitation at 3:18-32 and 14:1-47 (Ans. 11, 18).
We first construe the meaning of the term “takt-o-meter” as used by
the Appellants in the claims. We determine the scope of the claims in patent
applications “not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction ‘in light of the specification as
it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). We must be
careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim. For
example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.”) The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
Appeal 2009-012293
Application 11/161,139

7
The Appellant’s Specification states that a “takt time calculator” can
be referred to as a “takt-o-meter” and “can be used to determine the pace of
production needed to produce a unit to meet customer demand requirements
at a level necessary to drive the to-be state or optimize the as-is state” at
page 8 and in Fig. 7 shows a “Basic TAKT Calculator” with entries for
Demand (706), Daily Time Available to Process (702), a Calculate Takt
button (714), and the displayed TAKT (716) (FF1-2). Another definition for
takt time obtained from another technical source defines “takt time” as “the
time interval between consecutive items in a production system that must be
achieved to meet customer demand” (FF3). We thus construe the term “takt-
o-meter” to refer a “takt time calculator” of some kind as referenced in the
Specification at page 8 and Fig. 7.
The rejection of record asserts that the “takt-o-meter” is disclosed by
Schweizerhof at 3:18-32 and 14:1-47. We have determined that
Schweizerhof at these cited portions does not disclose a “takt-o-meter”
(FF2) and for this reason the rejections of record are not sustained. While
Schweizerhof at 3:18-32 does disclose fields for cost, delivery and quality,
this is not a specific disclosure of a “takt-o-meter” of some kind as claimed.
Schweizerhof at 14:1-47 does discloses that a timeline is created to apply
Waste elimination tools within a 3-5 day window but this is not a specific
disclosure of a “takt-o-meter” as claimed since the timeline and window are
not specifically shown to be related to “takt-o-meter” or the specific
calculation of takt time in some manner.
The citations to Schweizerhof at 3:18-32 and 14:1-47 do not disclose
a “takt-o-meter” beyond probabilities or possibilities. “To establish
inherency, the extrinsic evidence must make clear that the missing
Appeal 2009-012293
Application 11/161,139

8
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.’” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted) (internal quotation marks omitted). For these
reasons above the rejection of claim 13 and its dependent claims is not
sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 13-20.

DECISION
The Examiner’s rejection of claims 13-20 is reversed.

REVERSED

MP