Ex Parte Vo et al

Board of Patent Appeals and Interferences

Mar 1, 2011

11699152 (B.P.A.I. Mar. 1, 2011)

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.
11/699,152 01/26/2007 Trinh Vo ACNR-D06-038/01764-00/US 7132
89713 7590 03/01/2011
Accenture c/o Murabito, Hao & Barned LLP
Two North Market Street, Third Floor
San Jose, CA 95113
EXAMINER
AN, IG TAI
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
03/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte TRINH VO and GREGORY D. RAUPERS
____________________
Appeal 2010-006272
Application 11/699,152
Technology Center 3600
____________________

Before RICHARD M. LEBOVITZ, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-006272
Application 11/699,152

2
STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1, 3-12, and 14-22. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.2

THE INVENTION
Appellants’ claimed invention relates to a computer implemented
method and system for processing expedited orders. The system determines
an existing availability of an order once an expedite order request is
received, and when the order is backordered, allows expedited processing to
the order above other orders or in advance of the standard manufacturing
lead time associated with a material of the order. (Spec. [0006] and Claims
App’x 8.)
Independent claim 1 which is deemed to be representative, reads as
follows:
1. A computer implemented method for
processing expedited orders, the method comprising:
receiving an expedite order request;
determining with a processor in response to the
expedite order request an existing availability of an order
and, when the order is backordered, allowing with the
processor expedited processing to the order above other

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 3, 2009) and Reply Brief (“Reply Br.,” filed Mar. 12, 2010),
and the Examiner’s Answer (“Ans.,” mailed Mar. 23, 2010).
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Application 11/699,152

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orders or in advance of the standard manufacturing lead
time associated with a material of the order by assisting a
user in performance of all of the following:
changing a delivery plant;
changing a requested delivery date;
changing a delivery priority; and
changing a quantity.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Murthy et al. 6,044,356 Mar. 28, 2000
Denton et al. US 2005/0171827 A1 Aug. 4, 2005
Lidow US 2005/0177435 A1 Aug. 11, 2005
Colle et al. US 2007/0156473 A1 Jul. 5, 2007
The Examiner rejected claims 1, 3-9, 12, and 14-20 under 35 U.S.C.
§ 103(a) as being obvious over Murthy and Lidow. (Ans. 4.) Additionally,
the Examiner rejected claims 10 and 21 under 35 U.S.C. § 103(a) as being
obvious over Murthy, Lidow, and Denton.3 (Ans. 8.) Further, the Examiner
rejected claims 11 and 22 under 35 U.S.C. § 103(a) as being obvious over
Murthy, Lidow, and Colle.4 (Ans. 9.)

3 While the Examiner refers to claims 10 and 21 as being rejected by Murthy
and Denton, independent claims 1 and 12, from which these claims depend,
rely on the combination of Murthy and Lidow. As such, the rejection of
dependent claims 10 and 21 would also necessarily rely on the combination
of Murthy and Lidow. Therefore claims 10 and 21 are rejected under the
combination of Murthy, Lidow, and Denton.
4 While the Examiner refers to claims 11 and 22 as being rejected by Murthy
and Colle, independent claims 1 and 12, from which these claims depend,
rely on the combination of Murthy and Lidow. As such, the rejection of
dependent claims 10 and 21 would also necessarily rely on the combination
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Application 11/699,152

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ARGUMENTS
The Examiner found in Murthy that the “manufacturer determines if
there are components such [as] any bottleneck in [the] manufacturing
process, lack of inventory or any other reasons that would delay the order,
then expedites [the] order by changing [a] delivery plant, a requested
delivery date or delivery priority . . . .” (Ans. 11.) Additionally the
Examiner asserts that “[t]here is no such expression in the claim which
mentions ‘expedite order request which determines the backordered order,’”
as Appellants contend. (Ans. 12.)
In response, the Appellants argue that the combination of Murthy and
Lidow fails to teach or suggest a “determination of a backordered order in
response to an expedite order request and, when the order is backordered,
allowing the recited actions that would expedite processing of the order,” as
recited by independent claims 1 and 12. (App. Br. 4.) Specifically,
Appellants argue that “[n]o expedite order request is disclosed or suggested
that triggers determination of a backordered order.” (App. Br. 4.)

ISSUE
Does the combination of Murthy and Lidow teach or suggest a
“determining with a processor in response to the expedite order request an
existing availability of an order and, when the order is backordered, allowing
with the processor expedited processing to the order above other orders,” as
recited by independent claims 1 and 12 under 35 U.S.C. § 103(a)?

of Murthy and Lidow. Therefore claims 11 and 22 are rejected under the
combination of Murthy, Lidow, and Colle.
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Application 11/699,152

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).

Murthy
1. Murthy is directed to a decision support system for recommending
the allocation of resources to orders in regards to manufacturing capacity
and inventory of the user and/or other potential suppliers to increase
manufacturing capacity efficiency. (Col. 5, ll. 24-29 and 51-56.)
2. Murthy’s system “evaluates different possible courses of action
such as filling an order from existing inventory, trading the order or a
portion thereof with a trade partner, producing the order in the future when
manufacturing capacity is available, delaying other orders in an existing
schedule and producing the order immediately to meet a due date.” (Col. 6,
ll. 22-28.)
3. Murthy describes that the purpose of its system is “to determine
whether an order should be rejected, accepted and/or traded, in whole or in
part and the terms upon which trades can be offered to achieve some
increase of efficiency and economic advantage . . . .” (Col. 5, ll. 24-30.)
4. Murthy describes that the overall efficiency of a manufacturing
machine is dependent on how the machine is operated to fill orders
efficiently to reduce manufacturing “bottleneck” associated with the
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production of goods with different specifications using the same machines.
(Col. 1, ll. 28-31, Col. 1, ll. 55-59, and Col. 2, ll. 40-46.)

Lidow
5. Lidow is directed to a supply chain network which includes
modules for planning, order management, logistics, and payment processes
to accommodate the various requirements of customers (manufacturers) and
suppliers (producers) in the supply chain. (¶ [0016].)
6. Lidow describes that when “sales orders (demand) have the same
SPN, price, package, reel labeling, revision number, ship-to location (i.e.,
same cross-dock), shipping service level, part marking, special requirements,
and sold-to customer, sales order quantities and dates can be swapped from
one SO to another. (¶ [0178].)

PRINCIPLES OF LAW
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
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considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
Claims 1, 3-9, 12, and 14-20 rejected under 35 U.S.C. § 103(a) as being
obvious over Murthy and Lidow.
Appellants argue that the combination of Murthy fails to teach or
suggest a “determination of a backordered order in response to an expedite
order request and, when the order is backordered, allowing the recited
actions that would expedite processing of the order,” as recited by
independent claims 1 and 12, and that Lidow fails to fill the gaps. (App. Br.
4.) Specifically, Appellants argue that “[n]o expedite order request is
disclosed or suggested that triggers determination of a backordered order.”
(App. Br. 4.)
In response, the Examiner found “Murthy discloses that [the]
manufacturer determines if there are components such [as] any bottleneck in
[the] manufacturing process, lack of inventory or any other reasons that
would delay the order, then expedites [the] order by changing delivery plant,
a requested delivery date or delivery priority . . . .” (Ans. 11.) Additionally
the Examiner asserts that “[t]here is no such expression in the claim which
mentions ‘expedite order request which determines the backordered order,’”
as Appellants contend. (Ans. 12.) We do not agree.
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While we agree with the Examiner that Murthy’s system teaches
changing an order’s delivery plant, requested delivery date, and delivery
priority (FF 1, 2), we do not agree with the Examiner that Murthy teaches or
suggests that these changes occur after determining, in response to an
expedite order request, an existing availability of an order, and when the
order is backordered, allowing the claimed changes to the order to expedite
its processing. Additionally, we do not agree with the Examiner that the
“bottleneck” in the manufacturing process, which it appears the Examiner is
relying on to address a “backordered order,” is indeed a “backordered
order,” as claimed. (Ans. 11.)
Instead, we find that Murthy’s system makes changes to orders when
filling the orders based on manufacturing capacity for the purpose of
increasing a manufacturer’s manufacturing capacity efficiency. (FF 1, 2).
Murthy describes that its system determines whether an order should be
rejected, accepted and/or traded to another manufacturer to increase a
manufacturer’s economic advantage by avoiding a manufacturing
“bottleneck” which results from the required setup time (i.e., lost production
capacity) between the production of goods with different specifications. (FF
3, 4.) Claim 1, however, comprises a processor with the ability to determine
a backorder, i.e., when “the order is not in stock” (Spec. [00166]) in
response to a receipt of an “expedite order,” i.e., an order with a required
delivery date (Spec. [00161] & [00165]). The changes made in Murthy are
performed when filling an order, and not triggered after a receipt of an
expedite order and determination of a backorder. Murthy and Lidow are
otherwise silent as to a “backordered order.”
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Thus, contrary to the Examiner’s contention that “[t]here is no such
expression in the claim which mentions ‘expedite order request which
determines the backordered order,’” we disagree, and find that the claims do
indeed require this determination of a backorder step. Specifically, we find
that Appellants’ claim 1 requires a determination of a backordered order in
response to the expedite order request, and then when, and only when, the
order is backordered, allowing the recited actions that would expedite
processing of the order. (Claim App’x 8.) Claim 12 recites the same
limitation. Therefore, in construing Appellants’ independent claims 1 and
12, if an existing order is not a backordered order, there are no changes
made to expedite the order’s processing. Lidow does not cure the
deficiencies of Murthy.
Accordingly, we find that the combination of Murthy and Lidow fails
to teach or suggest the “determining with a processor in response to the
expedite order request an existing availability of an order and, when the
order is backordered, allowing with the processor expedited processing to
the order above other orders,” as recited by independent claims 1 and 12. As
indicated above, Murthy does not describe or suggest determining a
backorder in combination with the recited “changing” steps. Therefore, we
do not sustain the Examiner’s rejection of independent claims 1 and 12, and
for these same reasons, the rejection of their dependent claims 3-9, 12, and
14-20, as obvious over Murthy and Lidow under 35 U.S.C. § 103(a).

Claims 10 and 21 rejected under 35 U.S.C. § 103(a) as being obvious over
Murthy, Lidow, and Denton.
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Application 11/699,152

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We find that the rejection of claims 10 and 21 which depend from
claims 1 and 12, respectively, was also made in error for the same reasons
discussed supra. Therefore, we cannot sustain the Examiner’s rejection of
10 and 21 rejected as obvious over Murthy, Lidow, and Denton under 35
U.S.C. § 103(a).

Claims 11 and 22 rejected under 35 U.S.C. § 103(a) as being obvious over
Murthy, Lidow, and Colle.
We find that the rejection of claims 11 and 22 which depend from
claims 1 and 12, respectively, was also made in error for the same reasons
discussed supra. Therefore, we cannot sustain the Examiner’s rejection of
11 and 22 rejected as obvious over Murthy, Lidow, and Colle under 35
U.S.C. § 103(a).

CONCLUSION OF LAW
We conclude that the combination of Murthy and Lidow fails to teach
or suggest a “determining with a processor in response to the expedite order
request an existing availability of an order and, when the order is
backordered, allowing with the processor expedited processing to the order
above other orders,” as recited by independent claims 1 and 12 under 35
U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1, 3-12, and 14-22 is
REVERSED.
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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

ack

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Accenture c/o Murabito, Hao & Barned LLP
Two North Market Street, Third Floor
San Jose, CA 95113