Ex Parte Menninger

Patent Trial and Appeal Board

Oct 28, 2013

10959307 (P.T.A.B. Oct. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/959,307 10/07/2004 Anthony F. Menninger 062834-0231 2056
22428 7590 10/29/2013
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
10/29/2013 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 ANTHONY F. MENNINGER
___________

Appeal 2011-010210
Application 10/959,307
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK,
and JAMES A. TARTAL, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/959,307

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STATEMENT OF THE CASE
Anthony F. Menninger (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-53. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE and enter a new ground of rejection pursuant to 37
C.F.R. §41.50(b). 1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.

1. A computer readable program product storing machine-
readable program code for causing, when executed by a
computer, a machine to perform the following method for a
supply chain management system utilizing a network:
collecting sales data from the network regarding the sale
of at least one product from a plurality of entities in the supply
chain management system over a period of time;
maintaining an electronic database of products, with each
product having associated therewith in the database one or more
items of equipment used to produce the product;
if a criteria is met, performing a calculation to obtain
usage data at a particular entity for an item of equipment of a
particular type using, at least in part, the collected sales data for
products produced by the particular type of equipment at the
particular entity;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 18, 2011) and Reply Brief (“Reply Br.,” filed May 20,
2011), and the Examiner’s Answer (“Ans.,” mailed Apr. 28, 2011).

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accessing at least one equipment supplier electronic
catalogue that contains the particular type of equipment
represented by the item of equipment, with each of a plurality
of catalogue items of equipment under this type of equipment
having a different characteristic;
selecting at least one of the items of equipment in the
catalogue based on the usage data for the item of equipment and
the characteristics; and
displaying the selected one of the catalogue items of
equipment.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Dworkin
Schick
Abendroth
Abrams
US 4,992,940
US 2002/0065698 A1
US 2002/0087371 A1
US 2005/0033593 A1
Feb. 12, 1991
May 30, 2002
Jul. 4, 2002
Feb. 10, 2005

The following rejections are before us for review:
1. Claims 1-11, 14-30, 33-49, and 52-53 are rejected under 35
U.S.C. §103(a) as being unpatentable over Schick and
Abendroth.
2. Claims 12, 31, and 50 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Schick, Abendroth, and Dworkin.
3. Claims 13, 32, and 51 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Schick, Abendroth, and Abrams.
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ISSUE
The issue is whether the Examiner has applied an unreasonably broad
construction of the term “product” in finding that Schick combined with
Abendroth renders the claims obvious.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification states: “Accordingly, for purposes of the present
invention, the term ‘sales’ is to be interpreted to include movement
of product, either through retail sales of the product, or an
inventory shipment out of a supplier.” ¶ [0041].
2. The Specification does not include a lexicographic definition of
“product.”
3. A definition of “product” is “something that is produced by nature
or made by industry or art.” See Webster’s New World Dictionary
1162. (College Ed. 1964.)
4. The Specification paragraph [0031] states:
Such machine-readable media can be any available
media which can be accessed by a general purpose
or special purpose computer or other machine with
processor. By way of example, such machine-
readable media can comprise . . . any other
medium which can be used to carry or store
desired program code in the form of machine-
executable instructions or data structures . . . When
information is transferred or provided over a
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network or another communications connection
(either hardwired, wireless, or a combination of
hardwired or wireless) to a machine, the machine
properly views the connection as a machine-
readable medium. Thus, any such a connection is
properly termed a machine readable medium.

ANALYSIS
The rejection of claims 1-11, 14-30, 33-49, and 52-53 under §103(a) as
being unpatentable over Schick and Abendroth
We are persuaded by the Appellant’s argument (App. Br. 18-21 and
Reply Br. 3-4) that the Examiner erred in rejecting claim 1 under 35 U.S.C.
§ 103 as being unpatentable over Schick and Abendroth. We find that the
Examiner’s construction of “product” as encompassing a service, such as
“the delivery of goods” (Ans. 21) to be unreasonably broad as the ordinary
and customary meaning of the term is “something that is produced by nature
or made by industry or art” (FF 3; see also FF 2). Further, we disagree that
the Specification’s definition of “sales” (FF 1) supports the Examiner’s
construction the term “product.” The fact that the Specification defines
“sales” as including “the movement of product” (id.) does not expand the
ordinary and customary meaning of “product” to include delivery services.
Independent claims 14, 20, 33, 39, 51, and 52 recite similar
limitations. Accordingly, the rejection of claims 13, 14 20, 32, 33, 39, 51,
and 52, and claims 2-11, 15-19, 21-30, 34-38, 40-49, and 53, dependent
thereon, under 35 U.S.C. §103(a) as being unpatentable over Schick and
Abendroth is reversed.

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The rejection of claims 12, 31, and 50 under 35 U.S.C. §103(a) as being
unpatentable over Schick, Abendroth, and Dworkin; and the rejection of
claims 13, 32, and 51 under 35 U.S.C. §103(a) as being unpatentable over
Schick, Abendroth, and Abrams
Claims 13, 31, 32, and 51
Independent claim 13, 31, 32, and 51 contain limitations similar to the
limitation at issue above with respect to claim 1. For the same reasons as
provided for claim 1, we find that the Examiner has not established a prima
facie case of obviousness of claim 13, 31, 32, and 51.

Claims 12 and 50
These rejections are directed to claims dependent on claims 1 and 39,
whose rejection we have reversed above. For the same reasons, we will not
sustain the rejections of claims 12 and 50 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.").

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. §41.50(b), we enter a new ground of rejection
on claims 1, 13, and 14. We reject claim 1, 13, and 14 under 35 U.S.C. §101
as being directed to non-statutory subject matter.
Claims 1, 13, and 14 are directed to “a computer readable program
product storing machine-readable program code.” Giving this claim the
broadest reasonable construction in light of the Specification, we find that
these claims encompass the code being disposed on transitory propagating
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signals. A signal does not fit within at least one of the four statutory subject
matter categories under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357
(Fed. Cir. 2007). See also Ex parte Mewherter, 2013 WL 3291360 (PTAB
May 8, 2013) (precedential) (finding a machine readable storage medium
non-statutory under §101). We note that the Specification is silent as to
what “a computer readable program product” encompasses, but does suggest
that machine-readable media can include media that is communicated over a
wireless network. See FF 4.
Since claims 1, 13, and 14 encompasses subject matter which does not
fit within any of the four statutory categories of subject matter, we reject
claim 16 under 35 U.S.C. §101.
We have exercised our discretion in entering a new ground of
rejection on independent claims 1, 13, and 14. However, no inference
should be drawn from our failure to exercise that discretion with respect to
the remaining claims. Upon any further prosecution, we leave it up to the
Examiner to evaluate the remaining claims for patentability under 35 U.S.C.
§101.

DECISION
The decision of the Examiner to reject claims 1-53 is reversed. We
enter a new ground of rejection on claims 1, 13, and 14.
The decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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).

REVERSED; 37 C.F.R. §41.50(b)

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