Ex Parte von Helmolt et al

Patent Trial and Appeal Board

Dec 18, 2014

11607948 (P.T.A.B. Dec. 18, 2014)

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.
11/607,948 12/04/2006 Hans-Ulrich von Helmolt 08020.0048-00 9958
60668 7590 12/19/2014
SAP / FINNEGAN, HENDERSON LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
12/19/2014 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 HANS-ULRICH VON HELMOLT, CARSTEN KREUELS,
and WOLFRAM SCHICK
____________

Appeal 2012-006528
Application 11/607,9481
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, MEREDITH C.
PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Hans-Ulrich von Helmolt et al. (Appellants) seeks our review under
35 U.S.C. § 134 of the final rejection of claims 1–25. We have jurisdiction
under 35 U.S.C. § 6 (b).

1 The real parties in interest, identified by Appellants, are SAP AG. App.
Br. 3.

Appeal 2012-006528
Application 11/607,948
2
SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
Claim 1, reproduced below with some marking, is illustrative of the
subject matter on appeal.
1. A computer-implemented method for processing, within a
supply chain management system, a product order received
from a customer, the method comprising:
[A] determining, by a processor, at least one
consolidation location for products of the received order based
on at least one of a plurality of available-to-promise rules;
[B] determining, by a processor, at least one supplier
location for the products based on at least one of the available-
to-promise rules;
[C] performing, by a processor, an availability check for
the products based on the available-to-promise rules, the
availability check including:
[D] performing, by the processor, an availability
check for at least a part of the products at the at least one
consolidation location before performing an availability
check for the part of the products at any other location;
and
[E] performing, by a processor, an availability
check for at least a part of the products at the at least one
supplier location;
[F] shipping the products found to be available at a
location other than the consolidation location to the
consolidation location; and
[G] processing the products at the consolidation location.

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 21, 2011), Appellants’ Reply Brief (“Reply Br.,” filed Mar.
9, 2012), and Examiner’s Answer (Ans.,” mailed Jan. 17, 2012).

Appeal 2012-006528
Application 11/607,948
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THE EVIDENCE
The Examiner relies upon the following as evidence of
unpatentability:
Helmolt US 2003/0172007 A1 Sep. 11, 2003
Stowe US 2006/0041481 A1 Feb. 23, 2006

THE REJECTIONS
The following rejections are before us for review:
claims 1–25 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention;
claims 1, 6, 8, 10–13, 17, 21, and 23–25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Helmolt3; and
claims 2–5, 7, 9, 14–16, 18–20, and 22 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Helmolt and Stowe.

ISSUES
The first issue is whether claims 1–25 are indefinite because it is
unclear whether the recitation of “other location,” in the step marked D
above, refers to the claimed supplier location or some other location.
The second issue is whether Examiner established a prima facie
showing in determining that independent claims 1, 13, and 17 are obvious
over Helmolt.

3 Examiner explained that the Final Rejection, mailed Mar. 21, 2011,
inadvertently omitted a heading referencing Stowe for the rejection of claims
2–5, 7, 9, 14–16, 18–20, and 22. Ans. 11–12.

Appeal 2012-006528
Application 11/607,948
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ANALYSIS
Claims 1–25 under 35 U.S.C. § 112, second paragraph
Examiner rejected claims 1–25 as indefinite because, according to
Examiner, it is unclear whether the recitation of “other location,” in the
limitation marked D above (“limitation D”), refers to the claimed supplier
location or some other location. Ans. 4–5, 12–13. Independent claims 13
and 17 recite limitations similar to limitation D. Appellants argue that it is
clear that “other location” refers to ‘any location other than “consolidation
location” at which the “availability check” is performed.’ App. Br. 13;
Reply Br. 1–2.
We agree with Appellants. The plain language of the limitation D
clearly recites and refers to “any other location” (i.e., any location other than
the consolidation location). Further, this is consistent with the Specification
which describes first checking the consolidation location before checking
other locations. Spec. ¶¶ 40, 63–64. Accordingly, the rejection of claims 1–
25 under 35 U.S.C. § 112, second paragraph, is reversed.

Claims 1, 6, 8, 10–13, 17, 21, and 23–25 under 35 U.S.C. § 103(a) over
Helmolt
Appellants argue that Examiner has failed to establish a prima facie
showing in rejecting independent claims 1, 13, and 17 as obvious over
Helmolt. App. Br. 14–18; Reply Br. 2–3. Specifically, Appellants argue
that one of ordinary skill would not have led by Helmolt alone to limitation
D. Id.

Appeal 2012-006528
Application 11/607,948
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In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting sufficient evidence in support of the
conclusion that one of ordinary skill in the art given the prior art would have
been led to the claimed subject matter.
In the rejection of claims 1, 13, and 17, Examiner admits that Helmolt
does not disclose limitation D but argues that one of ordinary skill in the art
would have been led by a statement in Helmolt’s paragraph 52 to limitation
D. Ans. 7. The pertinent portion of paragraph 52 states that a fulfillment
coordination engine “determines whether the order should be fulfilled
entirely within the organization of the recipient of the order and/or by using
external organizations entirely or in part.” We agree with Appellants that
this statement does not teach limitation D, as asserted by Examiner (see Ans.
14–15). This statement does not teach performing an availability check at
all, much less, performing an availability check at a consolidation location
before performing an availability check at any other location.
Apparently, recognizing the deficiency of paragraph 52, in their
Answer, Examiner points to Helmolt’s paragraph 71’s description of the
fulfillment coordination engine connecting a supplier purchase order to a
customer order, when it is “necessary” fulfill the customer order with
external procurement. Ans. 15. As for paragraph 52, Helmolt’s paragraph
71 does not teach performing an availability check at all, much less,
performing an availability check at a consolidation location before
performing an availability check at any other location.

Appeal 2012-006528
Application 11/607,948
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Examiner has not provided sufficient evidence to establish that
limitation D was known in the prior art or in the knowledge generally
available to one of ordinary skill in the art to support their conclusion that
the addition of limitation D to Helmolt would have been obvious.
Appellants do not provide separate arguments for dependent claims 6,
8, 10–12, 21, and 23–25. See 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, the
rejection of independent claims 1, 13, and 17, and dependent claims 6, 8,
10–12, 21, and 23–25 under 35 U.S.C. § 103(a) over Helmolt is reversed.

Claims 2–5, 7, 9, 14–16, 18–20, and 22 under 35 U.S.C. § 103 over Helmolt
and Stowe
Claims 2–5, 7, 9, 14–16, 18–20, and 22 depend from claims 1, 13, and
17. We reversed the rejection of claims 1, 13, and 17 as unpatentable over
Helmolt, above, and, for the same reason, we reverse this rejection of these
claims. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.”) Examiner does not rely upon Stowe to cure
the deficiency discussed above.

DECISION
The decision of the Examiner to reject claims 1–25 is reversed.

REVERSED

Ssc