Ex Parte Plumer et al

Board of Patent Appeals and Interferences

Jun 9, 2010

10983874 (B.P.A.I. Jun. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD S. PLUMER,
ROBERT S. GOLIGHTLY,
GRAHAM GAYLARD, and
RALPH BRUCE FERGUSON
____________

Appeal 2009-012001
Application 10/983,874
Technology Center 3600
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Decided: June 9, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Edward S. Plumer, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-62. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

We REVERSE and add a new ground of rejection under 35 U.S.C.
§ 112, second paragraph..1
Claim 1 is illustrative:
1. A computer-implemented method for performing
dynamic cost accounting for an enterprise, wherein the enterprise
comprises a costing system and a process, the method comprising:
programmatically retrieving input information for the costing
system, wherein the costing system comprises one or more cost
models, and wherein the input information comprises a series of state
conditions of the process, comprising one or more of:
historical process conditions;
current process conditions; and
projected process conditions; and
the costing system executing the one or more cost models using
the series of state conditions, thereby calculating one or more cost
outputs, wherein the one or more cost outputs are usable in managing
the enterprise.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 12, 2006) and Reply Brief (“Reply Br.,” filed Nov. 16,
2006), and the Examiner’s Answer (“Answer,” mailed Oct. 2, 2006).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Eder
Bruce
Booth
Martin
US 2001/0041995 A1
US 2002/0049621 A1
US 2002/0123945 A1
US 2003/0144932 A1
Nov. 15, 2001
Apr. 25, 2002
Sep. 5, 2002
Jul. 31, 2003
Jay S. Holmen, ABC vs. TOC: It’s a matter of time, Management
Accounting, vol. 76, Iss. n7, pp. 37-40, Jan. 1995, [ABC]
The following rejections are before us for review:
1. Claims 1-4, 6-10, 15, 16, 22-30, 32-34, 36-41, 45-49, 51-54, and 56-
62 are rejected under 35 U.S.C. §102(b) as being anticipated by
Booth.
2. Claims 5 and 35 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Booth in view of ABC.
3. Claims 11 and 12 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Booth and Martin.
4. Claims 13, 14, 18, 31, 42-44, and 50 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Booth, ABC, and Eder.
5. Claims 19-21 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Booth and Bruce.

ISSUE
The issue is the construction to be given the claim phrase
a series of state conditions of the process, comprising one or
more of the following:
historical process conditions;
current process conditions; and
projected process conditions . . . .
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See claim 1 supra. The phrase is present in all the claims on appeal.

ANALYSIS
The independent claims are rejected solely under §102(b). “A
determination that a claim is anticipated under 35 U.S.C. § 102(b) involves
two analytical steps. First, the Board must interpret the claim language,
where necessary. Because the PTO is entitled to give claims their broadest
reasonable interpretation, our review of the Board's claim construction is
limited to determining whether it was reasonable. In re Morris, 127 F.3d
1048, 1055 (Fed. Cir. 1997). Secondly, the Board must compare the
construed claim to a prior art reference and make factual findings that “‘each
and every limitation is found either expressly or inherently in [that] single
prior art reference.’ Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d
1354, 1360 (Fed. Cir. 1998).” In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004).
The Examiner construed the claim phrase “a series of state conditions
of the process, comprising one or more of: historical process conditions ...”
as including a “historical process condition,” such as a number of units sold
as Booth discloses. See Answer 16. The Appellants dispute that
construction, arguing that “historical process conditions” must be “a series
of state conditions of the process.” App. Br. 10-11; Reply Br. 5. A number
of units sold, would not be a “historical process condition” under that
construction.
The Examiner and the Appellants are, therefore, at odds over the
construction to be given the claim phrase “a series of state conditions of the
process, comprising one or more of: historical process conditions ... .” The
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analysis, to determine whether the independent claims are anticipated under
35 U.S.C. § 102(b), cannot proceed until the construction to be given the
phrase at issue is resolved.
In our view, based on a plain meaning of the claims, the Examiner and
the Appellants have advanced equally plausible constructions. In order to
resolve which construction should apply, we turn to the Specification. 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 interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). In that regard, the Specification discloses the phrase “a series of state
conditions of the process” only on page 28. But there is no mention of
“historical process conditions” in relation to that phrase. In fact, the phrase
“historical process conditions” does not appear to be mentioned anywhere in
the Specification. The Specification provides insufficient insight into the
meaning to be given the claim phrase “historical process conditions.” That
is, the Specification does not guide one of ordinary skill in the art to interpret
“historical process conditions” as “a series of state conditions of the process”
as the Appellants urge or as discrete occurrences as the Examiner urges. In
our view “those skilled in the art would [not] understand what is claimed
when the claim is read in light of the specification.” Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
Accordingly, we find the claims on appeal are amenable to the two
plausible claim constructions that the Examiner and the Appellants have
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advanced; which we have been unable to resolve given the present record
before us. “[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211-1212 (BPAI
2008)(precedential). Accordingly, we enter below a new ground or rejection
of the claims under 35 U.S.C. §112, second paragraph.
Claims 1-62 are indefinite for the reasons discussed. “The prior art
rejections must fall, pro forma, because they necessarily are based on
speculative assumption as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862-63 (CCPA 1962). It should be understood, however, that
our decision in this regard is based solely on the indefiniteness of the
claimed subject matter and does not reflect on the adequacy of the prior art
evidence applied in support of the rejections.” Id. at 1217.

NEW GROUND
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
of claims 1-62 under 35 U.S.C. § 112, second paragraph, as being indefinite
for the reasons discussed above.

DECISION
The decision of the Examiner to reject claims 1-62 is reversed pro
forma. We enter a new ground of rejection of claims 1-62 under 35 U.S.C. §
112, second paragraph.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of 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) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

mev

SUSAN M. DONAHUE
ROCKWELL AUTOMATION, INC./FY
1201 SOUTH SECOND STREET
E-7F19
MILWAUKEE WI 53204