Ex Parte Skibinski

Board of Patent Appeals and Interferences

Nov 10, 2009

10160685 (B.P.A.I. Nov. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JAY SKIBINSKI 8
___________ 9
10
Appeal 2009-000646 11
Application 10/160,685 12
Technology Center 3600 13
___________ 14
15
Decided: November 10, 2009 16
___________ 17
18
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 19
BIBHU R. MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE 1
Jay Skibinski (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2
a final rejection of claims 1-6, 8-18, and 20-33, the only claims pending in 3
the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM-IN-PART. 8
THE INVENTION 9
The Appellant invented a way for creating and posting web pages to the 10
internet, and more specifically, developing web pages through the use of a 11
graphical user interface (Specification 1:Field of the Invention). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 1, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed June 1, 2007) and the Examiner’s Answer (“Ans.,” mailed
September 7, 2007).
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1. A supply chain planning enhancement of [a] transaction 1
system 2
that enhances an e-business supply chain planning system 3
applied to a Target Company between a supplier and a 4
customer, 5
the supply chain planning enhancement of [a] transaction 6
system comprising: 7
[1] a demand and operations planner 8
that designs and implements a reliable end-to-end 9
collaborative planning procedure, the demand and 10
operations planner comprising: 11
a supply chain planner, 12
a demand planner, and 13
a spare parts planner; 14
[2] an order planner 15
that provides transparent planning and processing of 16
customer orders, 17
wherein the order planner performs an optimized match 18
between supply and demand within the entire supply 19
chain of the Target Company by 20
retrieving data from the supply chain planner and 21
comparing it to data relating to demand 22
fulfillment; and 23
[3] a delivery monitor 24
for providing 25
the demand and operations planner and 26
order planner component 27
to a customer service level. 28
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THE REJECTIONS 1
The Examiner relies upon the following prior art: 2
Huang US 5,953,707 Sep. 14, 1999
Dellar US 2003/0055753 A1 Mar. 20, 2003
Claims 21-33 stand rejected under 35 U.S.C. § 112, second paragraph, as 3
failing to particularly point out and distinctly claim the invention. 4
Claims 1-6, 8-18, and 20-33 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Huang and Dellar. 6
7
ARGUMENTS 8
Claims 21-33 rejected under 35 U.S.C. § 112, second paragraph, as failing 9
to particularly point out and distinctly claim the invention. 10
The Appellant contends that the Examiner's 35 U.S.C. § 112, ¶ 2 11
rejection appears to allege that the claims improperly combine an apparatus 12
with a method of using that apparatus. The Appellant argues that these 13
claims use permissible functional language to describe the features of the 14
claimed invention, which does not, of itself, render a claim indefinite under 15
35 U.S.C. § 112. The Appellant argues that use of functional language can 16
result in an indefinite claim only if the claim requires an affirmative act to be 17
carried out. App. Br. 20-22. 18
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Claims 1-6, 8-18, and 20-33 rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Huang and Dellar. 2
The Appellant argues that Huang does not explicitly recite the 3
limitations of claim 1, and that even if Dellar recites the claimed spare parts 4
planner, the Examiner has not articulated a reason to apply Dellar to Huang. 5
App. Br. 15-16. The Appellant also argues that the Examiner failed to make 6
any findings to support the rejections of claims 2-6, 8-11, 13-18, and 20, and 7
improperly rejected claims 21-33 because the Examiner gave no patentable 8
weight to functional language they contained. App. Br. 17-19. 9
ISSUES 10
The issue of whether the Appellant has sustained its burden of showing 11
that the Examiner erred in rejecting claims 21-33 under 35 U.S.C. § 112, 12
second paragraph, as failing to particularly point out and distinctly claim the 13
invention turns on whether one cannot determine which of the enumerated 14
categories of patentable subject matter the claims are drawn to. 15
The issue of whether the Appellant has sustained its burden of showing 16
that the Examiner erred in rejecting claims 1-6, 8-18, and 20-33 under 35 17
U.S.C. § 103(a) as unpatentable over Huang and Dellar turns on whether the 18
Examiner has presented a prima facie case. 19
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Huang 5
01. Huang is directed to supporting management decisions 6
associated with manufacturing of service supply chains that span 7
from a point of creation to a point of consumption. Huang allows 8
the various decision makers in the supply chain to view the supply 9
chain from their own perspective, obtain information and evaluate 10
decisions concerning past, current and future performance with 11
respect to a diverse set of often conflicting goals. Huang 1:19-27. 12
02. Huang portrays a process flow of a vendor managed 13
replenishment (VMR) frame in Fig. 23. Huang 31:50-51. 14
03. Huang’s VMR Strategic Planning activity considers the 15
financial and business requirements supplied by the customers, 16
distribution infrastructure, Point Of Sale history and the 17
transportation factors in the Supply Chain Network data table to 18
evaluate various service contract options. The VMR contract 19
parameters are then written. Huang 31:55-62. 20
04. Huang’s Replenishment Planning activity reviews the sell-21
through information and provides input to the Finished Goods 22
Inventory Management Module to generate the corresponding 23
replenishment requirements. These requirements are refined 24
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according to the VMR Contract. Based on these inventory 1
requirements, the VMR Contract and the order fulfillment activity, 2
the replenishment schedule is generated and written to VMR Data. 3
Huang 31:64 – 32:5. 4
05. At the operational level, Huang’s user can invoke the Frame 5
features to develop sell-through forecasts; obtain suggested 6
replenishment quantities; revise replenishment quantities; and 7
monitor sales and other VMR related statistics. Huang 32:43-46. 8
06. Demand Management involves the development and 9
maintenance of medium-term customer forecasts. Huang’s 10
forecasts are initially developed in periodic joint meetings or 11
communications between the decision makers of the enterprise 12
and the customers. Huang 12:52-58. 13
07. Subsequently, these forecasts are input into the enterprise's 14
supply management system to obtain product allocation approval. 15
Huang 12:59-61. 16
08. Huang’s top-down and bottom-up Forecast Data is obtained by 17
buyers and account managers, who manage the customer’s 18
inventory. Huang 18:49-51. 19
09. Huang’s total systems performance is monitored in aggregation 20
according to various levels such as; nodes, echelons, distribution 21
channels and the total system. 22
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Dellar 1
10. Dellar is directed to the logistics of equipment maintenance, 2
and in particular to the tracking of spare parts, consumables and 3
refurbishables. Dellar ¶ 0004. 4
11. Dellar describes a problem encountered by many industries in 5
providing the correct inventory for spare parts for tools or 6
instruments used in a business. Dellar ¶ 0005. 7
12. Dellar solves this problem with a modular, integrated software-8
based system for tracking spare parts, consumables and 9
refurbishable parts. Dellar ¶ 0014. 10
13. Parts are tracked and managed at the point of use. Dellar ¶ 11
0016. 12
Facts Related To The Level Of Skill In The Art 13
14. Neither the Examiner nor the Appellant has addressed the level 14
of ordinary skill in the pertinent arts of systems analysis and 15
programming or manufacturing and distribution systems design. 16
We will therefore consider the cited prior art as representative of 17
the level of ordinary skill in the art. See Okajima v. Bourdeau, 18
261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific 19
findings on the level of skill in the art does not give rise to 20
reversible error ‘where the prior art itself reflects an appropriate 21
level and a need for testimony is not shown’”) (quoting Litton 22
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 23
(Fed. Cir. 1985). 24
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Facts Related To Secondary Considerations 1
15. There is no evidence on record of secondary considerations of 2
non-obviousness for our consideration. 3
PRINCIPLES OF LAW 4
Obviousness 5
A claimed invention is unpatentable if “the differences between the 6
subject matter sought to be patented and the prior art are such that the 7
subject matter as a whole would have been obvious at the time the invention 8
was made to a person having ordinary skill in the art.” KSR Int’l Co. v. 9
Teleflex Inc., 550 U.S. 398, 399 and 406 (2007); Graham v. John Deere Co., 10
383 U.S. 1, 13-14 (1966). 11
In Graham, the Court held that that the obviousness analysis is 12
bottomed on several basic factual inquiries: “[(1)] the scope and content of 13
the prior art are to be determined; [(2)] differences between the prior art and 14
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 15
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 16
U.S. at 406. “The combination of familiar elements according to known 17
methods is likely to be obvious when it does no more than yield predictable 18
results.” KSR, 550 U.S. at 416. 19
ANALYSIS 20
Claims 21-33 rejected under 35 U.S.C. § 112, second paragraph, as failing 21
to particularly point out and distinctly claim the invention. 22
Claim 21 recites the system of claim 1, wherein implementation of the 23
supply chain planning enhancement of transaction system is carried out by a 24
transformation management organization in accordance with pre-defined 25
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application platforms and in cooperation with certified partners. The 1
remaining claims have similar phrasing. We understand the Examiner’s 2
finding to be that one of ordinary skill would be unable to discern whether 3
these claims are directed to systems or to methods of using the systems. We 4
must disagree with the Examiner. These claims specify the manner in which 5
the structural components are implemented. Simply stated, they further limit 6
the structural context in which the systems are placed. So for example, 7
claim 21 places the system within a transformation management 8
organization using pre-defined application platforms and certified partners to 9
operate the systems. It is clear the claims remain drawn to structural rather 10
than procedural subject matter. 11
Claims 1-6, 8-18, and 20-33 rejected under 35 U.S.C. § 103(a) as 12
unpatentable over Huang and Dellar. 13
Independent claim 1 14
The Appellant devotes pages 9-12 of the Appeal Brief arguing that the 15
rejection should be reversed because the Examiner was unclear as to how the 16
references were applied. The Examiner thereupon clarified how the 17
Examiner found that Huang and Dellar rendered claim 1 obvious, as 18
presented by the claim chart at Answer 7. This chart matches each structural 19
element in claim 1 to the structural element in the references that the 20
Examiner found to describe the claim element. We adopt the findings of 21
fact in this chart and incorporate them in our findings of fact. The Appellant 22
did not respond with an argument contending these facts. 23
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The first substantive argument is that Huang fails to provide an end-to-1
end collaborative planning procedure. App. Br. 14. The Appellant contends 2
that Huang’s vendor unilaterally determines when to replenish stock. Id. 3
The Examiner found that Huang described such a procedure by virtue of 4
collaboration between the vendor and customer specified in a contract and 5
the flow between customer and replenishment. Ans. 4 and Ans 7. 6
Claim limitation [1] calls for a planner that designs and implements a 7
reliable end-to-end collaborative planning procedure. The limitation does 8
not specify the scope or manner of collaboration and does not specify the 9
end points of such end-to-end collaboration. The Appellant’s argument is 10
therefore one of denying any degree of collaboration in Huang based on the 11
vendor’s scope of work. We find that in view of the breadth of the degree of 12
collaboration that the claim limitation would encompass, it cannot be said 13
there is no collaboration. As the Examiner found, there is at least the 14
collaboration required to form Huang’s contract between the customer and 15
vendor, and there is also the simple fact that Huang’s replenishment 16
procedure relies upon the customer’s usage data (FF 03 and 04). 17
The Appellant goes on to argue that the Examiner relied on 18
embodiments in the Specification to construe the claims. App. Br. 15. In 19
this, the Examiner was simply following legal precedent. 20
During examination, “claims ... are to be given their broadest 21
reasonable interpretation consistent with the specification, and 22
... claim language should be read in light of the specification as 23
it would be interpreted by one of ordinary skill in the art.” 24
[quoting] In re Bond, 910 F.2d 831, 833 (Fed.Cir.1990) 25
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In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 2004). 1
The Appellant next argues that Huang fails to describe a delivery 2
monitor for providing the planners to a customer service level. App. Br. 15. 3
The Examiner found that Huang described that at the operational level, 4
Huang’s user can invoke the Frame features to develop sell-through 5
forecasts; obtain suggested replenishment quantities; revise replenishment 6
quantities; and monitor sales and other VMR related statistics. Ans. 7. See 7
also FF 05. The Appellant argues that Huang’s user is not a customer. App. 8
Br. 15-16. 9
We find that since Huang’s system is used to plan goods for a customer, 10
the operational level is necessarily a customer level, irrespective of whether, 11
the customer, or the vendor acting as customer’s agent is at the keyboard. In 12
any event, the claim does not specify the nature of such a customer service 13
level or how such a level applies to the claimed system. Because Huang’s 14
system performs planning for the benefit of a customer, such a planner 15
performance is inherently provided at some customer level. Again, the 16
Examiner made findings as to the demand and operations planner and order 17
planner themselves that are provided to such a level in the claim chart at 18
Answer 7. 19
The Appellant then argues that the Examiner has not explained how one 20
of ordinary skill would have looked to Dellar to find the spare parts planner 21
limitation from Huang. App. Br. 16. We find that Dellar states the problem 22
directly in that a problem encountered by many industries in providing the 23
correct inventory for spare parts for tools or instruments used in a business. 24
FF 11. Dellar solves this problem with a modular, integrated software-based 25
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system for tracking spare parts, consumables and refurbishable parts in 1
which parts are tracked and managed at the point of use. FF 12 -13. 2
Huang’s system is clearly among the domain of systems Dellar points to as 3
experiencing the problem as Huang uses inventory in a manufacture 4
environment. 5
Appellant finally repeats the contention that the Examiner failed to show 6
where the art describes the structural elements of claim 1. App. Br. 16-17. 7
Again, the Examiner provided an explicit mapping at Answer 7, which the 8
Appellant has not contested. 9
Dependent claims 2-6 10
The Appellant separately argues claims 2-6. Claim 2 requires a 11
collaboration planner for obtaining a collaborative and stable plan for a fixed 12
period between all parties involved in the e-business supply chain. The 13
Appellant argued Huang failed to disclose this. The Examiner found 14
Huang’s structures that create its contract described such a planner. Ans. 6. 15
We agree that Huang creates such a contract (FF 04) and that an e-business 16
supply contract as in Huang would generally obtain a collaborative and 17
stable plan for a fixed period between all parties involved in the e-business 18
supply chain by the very nature of a contract. 19
Claim 3 requires the demand and operations planner collecting at least 20
one a regular forecast from either a sales region or a key customer. The 21
Appellant argued Huang failed to disclose this. The Examiner found 22
Huang’s sales forecast and planning structures described creating such a 23
forecast. Ans. 6. We agree. Huang’s demand management sales forecasts 24
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are initially developed in periodic joint meetings or communications 1
between the decision makers of the enterprise and the customers. FF 06. 2
Claim 4 requires the demand and operations planner allocating total 3
demands to certain production sites. The Appellant argued Huang failed to 4
disclose this. The Examiner found Huang’s production sites were the very 5
customer locations the vendors served and therefore allocated demand to. 6
Ans. 6. We agree. Huang’s system inputs the demand forecasts to obtain 7
product allocation for the customer. FF 07. 8
Claim 5 requires the demand and operations planner providing a rolling 9
forecast to a supplier or an outsourcing partner. The Appellant argued 10
Huang failed to disclose this. The Examiner found Huang’s bottom up 11
forecast data described such a rolling forecast. Ans. 6. We agree. Huang’s 12
top-down and bottom-up Forecast Data is obtained by buyers and account 13
managers, who manage the customer’s inventory and are therefore suppliers. 14
FF 08. 15
Claim 6 requires the order planner employ different order management 16
channels to reduce reaction and delivery time and communicate realistic 17
confirmation dates to the customer. The Appellant argued Huang failed to 18
disclose this. The Examiner found Huang’s production, sales, and inventory 19
module described such different channels. Ans. 6. We agree. Huang 20
explicitly refers to using multiple distribution channels. FF 09. The use of 21
multiple channels is known to those of ordinary skill provide redundancy 22
that reduces reaction and delivery time due to unexpected bottlenecks and 23
thus communicating realistic confirmation dates to the customer. 24
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Dependent claims 21-30 1
Claim 21 recites the system of claim 1, wherein implementation of the 2
supply chain planning enhancement of transaction system is carried out by a 3
transformation management organization in accordance with pre-defined 4
application platforms and in cooperation with certified partners. Claims 21-5
30 depend from claim 21 and recite further structural limitations as to the 6
context in which the system of claim 1 operates. The Examiner made no 7
factual findings as to these limitations, but instead found as a matter of claim 8
construction that the limitations were method steps and intended use phrases. 9
Ans. 5. The Appellant argues the limitations are structural in nature and the 10
Examiner erred in not giving those limitations weight. App. Br. 18-19. 11
We understand the Examiner’s finding to be that these claims recite 12
intended usage of the structure in claim 1 and those intended usage 13
limitations are accorded no patentable weight. We must disagree with the 14
Examiner. These claims specify the manner in which the structural 15
components are implemented. Simply stated, they further limit the structural 16
context in which the systems are placed. So for example, claim 21 places 17
the system within a transformation management organization using pre-18
defined application platforms and certified partners to operate the systems. 19
It is clear the claims recite additional structural context limitations that the 20
Examiner has made no factual findings to. Thus we agree that the Examiner 21
has not provided a prima facie case as to claims 21-30. 22
Dependent claims 8-18 and 20 23
Claim 12 is the only other independent claim and it is directed to the 24
method performed by the system of claim 1. The Appellant does not 25
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separately argue claim 12 and so it falls for the same reasons as claim 1. 1
Claim 8 depends from claim 1 and claims 12-18 and 20 depend from claim 2
12. The Appellant does not argue claims 8-18 and 20 separately and so they 3
fall with the above claim 1 in this rejection. 4
CONCLUSIONS OF LAW 5
The Appellant has sustained its burden of showing that the Examiner 6
erred in rejecting claims 21-33 under 35 U.S.C. § 112, second paragraph, as 7
failing to particularly point out and distinctly claim the invention. 8
The Appellant has not sustained its burden of showing that the Examiner 9
erred in rejecting claims 1-6, 8-18, and 20-33 under 35 U.S.C. § 103(a) as 10
unpatentable over Huang and Dellar. 11
The Appellant has sustained its burden of showing that the Examiner 12
erred in rejecting claims 21-33 under 35 U.S.C. § 103(a) as unpatentable 13
over Huang and Dellar. 14
DECISION 15
To summarize, our decision is as follows. 16
• The rejection of claims 21-33 under 35 U.S.C. § 112, second 17
paragraph, as failing to particularly point out and distinctly claim the 18
invention is not sustained. 19
• The rejection of claims 1-6, 8-18, and 20 under 35 U.S.C. § 103(a) as 20
unpatentable over Huang and Dellar is sustained. 21
• The rejection of claims 21-33 under 35 U.S.C. § 103(a) as 22
unpatentable over Huang and Dellar is not sustained. 23
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 2
3
AFFIRMED-IN-PART 4
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Siemens Corporation 11
Intellectual Property Department 12
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