Ex Parte Scheer

Patent Trial and Appeal Board

Dec 5, 2016

12536777 (P.T.A.B. Dec. 5, 2016)

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.
12/536,777 08/06/2009 Robert H. Scheer 31083.05US6 4019
34018 7590 12/07/2016
GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
EXAMINER
BUCHANAN, CHRISTOPHER R
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/07/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
j arosikg @ gtlaw .com
chiipmail @ gtlaw .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. SCHEER
Appeal 2014-007801
Application 12/536,777
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING,
and BIBHU R. MOHANTY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 7—13 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE and ENTER A NEW GROUND OF REJECTION
under 37 C.F.R. § 41.50(b).
Appeal 2014-007801
Application 12/536,777
THE INVENTION
The Appellant’s claimed invention is directed to managing inventory
in a supply chain (Spec., page 1, lines 11-12). Claim 7, reproduced below, is
representative of the subject matter on appeal.
7. A computer-readable media having computer-executable
instructions for managing inventory of an item within a supply chain
having a plurality of geographically distinct distribution points,
the instructions performing steps comprising:
providing a forecast of demand over a forecast period for the
item;
using the forecast of demand for the item to establish a critical
stocking ratio for the item, the critical stocking ratio indicating a total
quantity of the item which can be held in inventory over the forecast
period;
using the critical stocking ratio for the item to apportion the
total quantity of the item which can be held in inventory over the
forecast period in shares to the plurality of geographically distinct
distribution points in the supply chain by assigning over the forecast
period a base stock level for the item at each of the plurality of
geographically distinct distribution points in the supply chain and a
reorder point for the item at each of the plurality of geographically
distinct distribution points in the supply chain;
using an ontology which includes data indicative of restrictions
and allowable locations within the supply chain for the item to
determine a shipping method for replenishing the item at
each of the plurality of geographically distinct distribution points in
the supply chain; and
executing the shipping method when any of the plurality of
geographically distinct distribution points in the supply chain fails to
have a base stock level for the item thereby causing inventory within
the supply chain to be managed in accordance with the critical
stocking ratio.
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Appeal 2014-007801
Application 12/536,777
THE REJECTIONS
The following rejections are before us for review:
Claims 7—13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Caveney (US 5,608,621, iss. Mar. 4, 1997) and Tsukishama (US
6,535,773B1, iss. Mar. 18, 2003).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 is improper because
for failure to disclose elements of the claim limitation for
using an ontology which includes data indicative of restrictions and
allowable locations within the supply chain for the item to determine
a shipping method for replenishing the item at each of the plurality of
geographically distinct distribution points in the supply chain.
(Appeal Br. 4-8, Reply Br. 3, 4, emphasis added).
In contrast, the Examiner has determined that argued claim limitations
are shown by Caveney at columns: 1:20-40, 3:10+, 4:1-8, 5:36+; Tsukishima
at Figure 2, col 1:15-25, col. 1:33, col. 7:41; and the well-known method of
selecting shipping in the replenishment process (Final Rej. 3, Ans. 3).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2014-007801
Application 12/536,777
We agree with the Appellant. The Appellant argues that Caveney
fails to “determine a shipping method for replenishing the item at each of the
plurality of geographically distinct distribution voints in a supply chain”
(App. Br. 5). While we agree with the Examiner’s analysis that determining
a shipping method in the combination was well known or obvious, the
Appellant has also argued that the this shipping was not shown for
replenishing at each of the plurality of geographically distinct distribution
points in the supply chain (App. Br. 5, Reply Br. 3).
The Examiner has determined that “each of the plurality of
geographically distinct distribution points in the supply chain” is shown by
Tsukishima at Figure 2, col 1:15-25, col. 1:33, col. 7:41, and that each of
parts in the inventory is considered to be in a different manufacturing
workstation showing geographically distinct distribution points (Final Rej. 3,
Ans. 3). We disagree in this regard. Tsukishima at col. 1:15-25 discloses
“material requirements planning” (MRP) for determining the “types or
species of parts required for manufacturing an article to be manufactured in
accordance with a schedule, [and] time points at which .. .parts.. .are
required””. However, there is no specific disclosure at this citation of a
different workstations as all the parts could be delivered to a single assembly
point. As another example, in Figure 2, the different “MRP arithmetic
apparatuses” (10-1, 10-2, and 10-3) are not shown at these citations to
different workstations where parts are received but rather arithmetic
apparatuses to perform arithmetic for the inventory allotments (see col. 7:49-
8:10). Since the above citations to Tsukishima fail to specifically show the
different workstations with geographically distinct distribution points as
asserted, this rejection of claim 7 and its dependent claims is not sustained.
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Appeal 2014-007801
Application 12/536,777
NEW GROUND OF REJECTION
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “laws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 7 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine assess whether the additional elements
“transform the nature of the claim” into a patent-eligible application of the
abstract idea. Id. This is a search for an “inventive concept” an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id. The Court also stated
that “the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention”. Id. at 2358.
Here, we find that the claim is directed to the concept of forecasting
and replenishing product supply chains. This is a fundamental economic
practice long prevalent in our system of commerce, and is an abstract idea
beyond the scope of § 101.
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Appeal 2014-007801
Application 12/536,777
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. Here, the claim is directed to the abstract idea of calculating when an
item should shipped in the supply chain that can be performed mentally or
with generic computer components. Further, the mere shipping of the item
at the end of that calculation fails to transform the method into patent
eligible subject matter. For this reason claim 7 is rejected under 35 U.S.C.
§101. Claim 8—13 contain limitations that are also directed to the same
abstract idea and also fail to transform the nature of the claim and are
rejected under this grounds as well.
CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.
DECISION
The Examiner’s rejections of claims 7—13 are reversed. A new
ground of rejection of claims 7—13 is applied under 35 U.S.C. § 101.
NEW GROUND
This decision contains a new ground 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 Appellant, WITHIN
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Appeal 2014-007801
Application 12/536,777
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 ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED: 37 C.F.R, $ 41.50(b)
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