Ex Parte Schapler et al

Patent Trial and Appeal Board

Feb 4, 2015

10846116 (P.T.A.B. Feb. 4, 2015)

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.
10/846,116 05/14/2004 Daniela Schapler 08020.0004-00 1300
60668 7590 02/04/2015
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
AMSDELL, DANA
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
02/04/2015 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 DANIELA SCHAPLER,
TOBIES ADLER, and JOACHIM EPP
____________________

Appeal 2012-007001
Application 10/846,1161
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of a final
decision of the Examiner to reject claims 1–3, 5–12, 37, 39, 40, 43, 45–49,
51, 52, 55, and 57–60. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

1 According to Appellants, the real party in interest is SAP AG (Appeal
Brief filed December 19, 2011, hereinafter “App. Br.” 1).
Appeal 2012-007001
Application 10/846,116

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BACKGROUND
The claims of the invention relate to a system and method for the
processing of stock, including creation of an initial work order, which may
include several transfer orders, with a handling signal indicating a transfer of
stock bundles by a processing unit, with creation of a new work order based
on the transfers of stock bundles (Abstract; Specification, hereafter “Spec.”
¶¶ 7, 19, 20, 34, 38, 40, 44; App. Br. 5–6).
Claim 1 is representative and is reproduced from page 17 of the
Appeal Brief (Claims App’x) as follows, with emphasis added to the
relevant claim limitations:
1. A computer-based method for processing stock, the
method comprising:

creating, using a processor, an initial work order
comprising a plurality of transfer orders for a plurality of stock
bundles, wherein the plurality of transfer orders are associated
with transfers of the stock bundles by a plurality of processing
units from a first area to a second area;

receiving, from one of the processing units, a handling
signal indicating that the processing unit is transferring a stock
bundle associated with one of the transfer orders from the first
area to the second area according to the transfer order, the
handling signal identifying the processing unit transferring the
stock bundle;

identifying, using the processor from the initial work
order in accordance with the handling signal, the transfer
order being handled by the corresponding processing unit;

creating, using the processor, a new work order reflecting
the transfer of the stock bundle from the first area to the second
area by the corresponding processing unit according to the
identified transfer order; and
Appeal 2012-007001
Application 10/846,116

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deleting, using the processor, the identified transfer order
from the initial work order, when the new work order is
established.

The Examiner rejected all the claims at issue under 35 U.S.C. § 103(a)
as unpatentable over Mountz,2 Nel,3 and Bradley.4 (Final Action mailed
June 15, 2011, hereinafter “Final Act.,” 4–9; Examiner’s Answer mailed
January 25, 2012, hereinafter “Ans.,” 4–12).

DISCUSSION

Appellants argued all the rejected claims, namely claims 1–3, 5–12,
37, 39, 40, 43, 45–49, 51, 52, 55, and 57–60, as part of this Appeal (App.
Br. 11). All of the independent claims were addressed by Appellants on the
same issues, with claim 1 serving as the representative claim (id. at 11–15).
In main part, the dependent claims also rise or fall with claim 1 (id. at 15).
Appellants contended that the Examiner did not establish prima facie
obviousness of the claims at issue over the cited prior art (id. at 11–15).
Appellants alleged that Nel does not disclose a “handling signal identifying
the processing unit transferring the stock bundle,” and given this deficiency,
the subsequent claimed steps of “identifying. . .,” “creating,” and
“deleting. . .” are also not taught (id. at 13–14). Further, Appellants
contended that because there is no teaching of the requisite “handling
signal,” Bradley, therefore, does not teach the step of “creating. . . a new
work order” (Id.).

2 US Patent 6,748,292 B2, issued June 8, 2004.
3 US Patent Publication 2003/0036935 A1, published February 20, 2003.
4 US Patent 6,289,260 B1, issued September 11, 2001. 
Appeal 2012-007001
Application 10/846,116

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The Examiner acknowledged that Mountz fails to disclose the
“handling signal” element, and instead relied upon the disclosure of “Nel’s
‘haulage job manager’ as it functional[ly] queries and receives information
back from the processing of units regarding current haulage information, so
as to establish capacity, route and rates for taking on additional jobs
(Abstract); and also Fig[.] 3A as it discloses ‘capacity or freight haulage
job’; thus identifying the work order being transferred” (Ans. 10–11). The
Examiner concluded that one of ordinary skill in the art would combine the
teachings of Nel and Mountz to optimize the real-time logistics of
freight/stock movement, as it would be an obvious modification to facilitate
expansive stock movement and rapid order fulfillment over greater distances
(id. at 11).
Claim 1 includes multiple interrelated steps where the “handling
signal” has to be received from “one of the processing units,” indicating
“that the processing unit is transferring a stock bundle associated with the
one of the transfer orders,” where that handling signal has to also identify
the processing unit that is transferring the stock bundle. In other words, the
“handling signal” has to be indicative of the real time transferring of specific
stock bundles by an identified processing unit. The information provided by
the “handling signal” is then used to identify the transfer order “being
handled,” which is then is used to create a new work order.
To establish prima facie obviousness of a claimed invention, all the
claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974). In KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 415 (2007), while the Supreme Court emphasized “an
expansive and flexible approach” to the obviousness question, it also
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Application 10/846,116

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reaffirmed that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (emphasis added). Here, we find that the claimed element of
“handling signal indicating that the processing unit is transferring a stock
bundle” is not explicitly disclosed in Nel, and the Examiner failed to provide
sufficient evidence and requisite rationale that the element is suggested in
light of the combined references.
The portion of Nel relied upon by the Examiner is directed to
matching new freight haulage jobs with mobile carriers (which are already in
transit) that may have excess capacity to carry new freight haulage jobs.
More specifically, the Examiner identified Nel’s teaching of a “haulage job
manager,” that queries and receives “current haulage information,” and the
teaching of a “freight haulage job” as supporting disclosures (Ans. 10–11).
The “carrier capacity attributes” include real time updates on excess
capacity, routes and rates for the mobile carriers that are in transit, and this
information is provided to the haulage job manager (Nel, Abstract; ¶¶ 31–
39; Fig. 3A, elems. 92, 94). The pending “freight haulage jobs” that require
future transport are matched to a specific carrier already in transit by the
haulage job manager (Nel, Fig. 3A, Fig. 3B; ¶¶ 0031–0049). However, once
the optimal “match” is made between the mobile carrier and the pending
freight haulage job nothing further occurs related to that job—there is no
“signal” then provided from the mobile carrier (“the processing unit”) when
the transfer of the specific freight haulage job (“the stock bundle”) actually
commences. See Nel, Figs. 3A and 3B.
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Application 10/846,116

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Although the “matching step” performed in Nel could imply that the
freight haulage job will, at some future time, be loaded and then transported
by the specific matched mobile carrier, we find that the disclosure of this
Nel “matching step”—absent the real time updating of the actual act of the
initiation of freight transferring—does not sufficiently teach the “handling
signal.” Our finding is informed by the use of the “handling signal” within
the steps of claim 1, whereby the “receiving” of the “handling signal,” with
its conveyed information, causes the identification of a specific work order,
and triggers subsequent steps including the creation of a new work order
reflecting the actual transfer that is occurring at that time. Within this
context, we find that the possible pending future transfer of freight taught by
Nel is insufficient disclosure to one of ordinary skill in the art of the
“handling signal” element.
Accordingly, the evidence of record does not, in our view, support the
Examiner’s finding of prima facie obviousness in view of Mountz, Nel and
Bradley. We therefore reverse the Examiner’s obviousness rejections of
claims 1–3, 5–12, 37, 39, 40, 43, 45–49, 51, 52, 55, and 57–60 over those
references.

SUMMARY
For the above reasons, the Examiner’s rejection of claims 1–3, 5–12,
37, 39, 40, 43, 45–49, 51, 52, 55, and 57–60 is reversed.

REVERSED

mls