Ex Parte Wang et al

Patent Trial and Appeal Board

Apr 16, 2013

11074175 (P.T.A.B. Apr. 16, 2013)

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.
11/074,175 03/07/2005 Weitao Wang EH-10817 9066
54549 7590 04/17/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
04/17/2013 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 WEITAO WANG, THOMAS W. GANNON,
KEVIN J. KIRKPATRICK, RUMEN EFREMOV,
and MATTHEW J. MCGARRY
____________

Appeal 2011-007250
Application 11/074,175
Technology Center 3600
____________

Before: BIBHU R. MOHANTY, MICHAEL W. KIM, and
PHILLIP J. HOFFMANN, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007250
Application 11/074,175

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-19 and 25-341.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a method of and apparatus for
generating a demand forecast. More particularly, the present invention
relates to a method of and apparatus for utilizing information regarding a
plurality of parts to generate a short-term and a long-term demand forecast
(Spec., para. [0002]).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A method of forecasting demand, comprising the
steps of:
providing a database containing information regarding a
plurality of parts;
accessing the database to create a first demand forecast
for at least one of the plurality of parts;
identifying a group from the plurality of parts; and
accessing the database to create a second demand
forecast for the group.

Claims 1 - 19 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.

Claims 1 - 13, 25 and 26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yang (US 2001/0034673 A1, publ. Oct. 25, 2001)
in view of Lidow (US 7,003,474 B2, iss. Feb. 21, 2006).

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 2, 2010) and Reply Brief (“Reply Br.,” filed January
21, 2011), and the Examiner’s Answer (“Ans.,” mailed November 23, 2010).
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Application 11/074,175

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Claims 14 - 16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Yang in view of Lidow and further in view of Benbassat (US 6,985,872
B2, iss. Jan. 10, 2006).

Claims 17 - 19 and 27 - 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yang view of Lidow and further in view of
Chakraborty (US 2006/0167760 A1, publ. Jul. 27, 2006).

We AFFIRM.

ISSUES
Did the Examiner err in asserting that claims 1-19 fail to recite
statutory subject matter as set forth in 35 U.S.C. § 101?
Did the Examiner err in asserting that a combination of Yang and
Lidow renders obvious independent claim 12?
Did the Examiner err in asserting that a combination of Yang and
Lidow renders obvious claims 7-11, 25, and 26?

FINDINGS OF FACT
Yang
1. Yang is directed to generating a current service parts inventory
according to the status data, a service parts demand forecast, and a supply
chain model, the inventory plan including target stocking levels for service
parts at stocking locations (para. [0007]).
2. According to the inventory plan of Yang, one or more services

2 As Appellants present the same arguments for claims 1, 2-6, 12-19, 27-29,
and 30-34 (App. Br. 5-8, 14), we select independent claim 1 as
representative. 37 C.F.R. § 41.37(c)(1)(vii).
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Application 11/074,175

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are initiated to attempt to resolve service parts excesses or needs at stocking
locations (para. [0007]).
3. Yang discloses that a manager application may access
information stored in database in connection with one or more services
initiated to resolve service parts inventory excesses or needs (para. [0032]).
4. Yang discloses that an aircraft service parts distributor that
supplies service parts to airline customers might find itself with service parts
needs at one or more stocking locations, according to the inventory plan
generated (para. [0043]).
5. Yang discloses that in response, manager application might
initiate one or more services, automatically or in response to input from
distributor to attempt to obtain the needed service parts (para. [0043]).
6. Yang discloses that demand forecasts may be provided
according to product, geography, time, or other dimensions (para. [0032]).

Lidow
7. Lidow discloses grouping all customer forecasts into one large
demand file based on customer part and number (col. 15, ll. 52-54).
8. Lidow also discloses that verifying that a forecast is complete
ensures that every part number exists in the supply chain server system,
and/or that all required information is complete and accurate (col. 7, ll. 63-
66).
ANALYSIS
Statutory Subject Matter Rejection of Claims 1-19
We are not persuaded the Examiner erred in asserting that claims 1-19
fail to recite statutory subject matter as set forth in 35 U.S.C. § 101 (App.
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Application 11/074,175

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Br. 4-5; Reply Br. 1-2). Appellants assert that compliance with the machine-
or-transformation test is not required for patent eligibility under Bilski (App.
Br. 4). While the Supreme Court did find that machine-or-transformation
test is not the sole test for deciding whether an invention is a patent-eligible
“process,” it also found that the machine-or-transformation test is a useful
and important clue, an investigative tool, for determining whether some
claimed inventions are processes under § 101. Bilski v. Kappos, 130 S.Ct.
3218, 3226 (2010). Thus, the Examiner’s consideration of this test is not
inaccurate.
Appellants assert that claim 1 meets the transformation prong of the
machine-or-transformation test, because a portion of the database is
transformed into a first demand forecast (App. Br. 4; Reply Br. 2).
However, data transformation does not make a claim patent eligible.
Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972) (prevents the patenting of a
computer based algorithm that merely transforms data from one form to
another).
Appellants assert that “providing a database” is not a mental step
(App. Br. 5; Reply Br. 2). However, a database may exist solely in the
human mind.
Appellants assert that the claim language “to create a… forecast”
actually results in a forecast (Reply Br. 2). However, even if this is correct,
the forecast, as claimed, is met by a creation of the forecast in the human
mind.

Obviousness Rejection of Independent Claim 1
We are not persuaded the Examiner erred in asserting that a
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combination of Yang and Lidow renders obvious independent claim 1 (App.
Br. 4-8; Reply Br. 3). Appellants assert that Yang’s forecasted demand is
created by collaborating with distributors and suppliers, and not by accessing
a database, as recited in independent claim 1 (App. Br. 5-6). Appellants’
assertions are misplaced. Independent claim 1 does not positively recite
creating a demand forecast. Instead, independent claim 1 recites “accessing
the database to create a first demand forecast for at least one of the plurality
of parts” (emphasis added). As an initial matter, we agree with the
Examiner that it is unclear as to how accessing a database creates a demand
forecast (Ans. 14). However, even assuming arguendo that the
aforementioned claim limitation is clear, the creation of the demand forecast
is a result of the database access. Accordingly, if a reference discloses
“accessing the database,” it also meets the rest of the claim limitation. To
that end, Yang discloses that a manager application may access information
stored in database in connection with one or more services initiated to
resolve service parts inventory excesses or needs (para. [0032]). Thus, this
portion of Yang, by itself, is sufficient to meet the aforementioned aspect of
independent claim 1.
Appellants also assert that there is no connection in Yang between
databases 52 and 72 and the forecasted demand (App. Br. 6-7). We
disagree. A discussion concerning why Yang discloses the recited database
with forecasted demand is set forth above.
Appellants further assert that databases 52 and 72 of Yang do not
store information about a plurality of parts (App. Br. 6-7). We disagree.
The databases set forth in the Abstract and paragraphs [0032] and [0043] of
Yang do disclose information about a plurality of service parts. Moreover,
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Lidow also discloses databases with a plurality of service parts (col. 7, ll. 63-
66; col. 15, ll. 52-54).
Appellants additionally assert that there is no relationship between the
forecasts communicated in Lidow and the forecasts set forth in Yang, and
thus the combination does not suggest related first and second forecasts, as
recited in independent claim 1 (App. Br. 7; Reply Br. 3). We disagree.
Yang discloses that the manager application might initiate one or more
services (para. [0043]), which would require multiple accesses to the
database (para. [0032]). As discussed above, accessing the database, by
itself, is sufficient to meet the demand forecast creation limitations of
independent claim 1.
Appellants also assert that the Examiner relies on forecasts
communicated to the suppliers as groups as corresponding to the claimed
second forecast, and that communicating is not the same as creating a second
separate demand forecast (App. Br. 7). We disagree. As discussed above,
accessing the database multiple times, by itself, is sufficient to meet the
multiple demand forecast creation limitations of independent claim 1.
Appellants further assert that the Examiner has provided an
insufficient conclusory rationale for combining Yang and Lidow (App. Br.
8). We disagree. The Examiner cites Yang for disclosing the resolving of
service parts inventory excesses or needs (para. [0032]), and Lidow for
disclosing keeping track of parts by customer and part number (col. 7, ll. 63-
66; col. 15, ll. 52-54). We fail to see how adding another level of part
tracking granularity, as set forth in Lidow, to the inventory management of
Yang would not have been within the abilities of one of ordinary skill.

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Appellants additionally assert that manager application in paragraph
[0032] of Yang is not related to the forecasted demand (Reply Br. 3). Even
assuming arguendo this is correct, it is irrelevant. As discussed above,
accessing the database, by itself, is sufficient to meet the demand forecast
creation limitations of independent claim 1.

Obviousness Rejection of Claims 7-11, 25, and 26
We are not persuaded the Examiner erred in asserting that a
combination of Yang and Lidow renders obvious claims 7-11, 25, and 26
(App. Br. 8-14). After carefully considering Appellants’ arguments, we
agree with and adopt the Examiner’s findings and rationales, as set forth on
pages 16-22 of the Examiner’s Answer.

DECISION
The decision of the Examiner to reject claims 1-19 and 25-34 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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