Ex Parte Woehler

Patent Trial and Appeal Board

Mar 25, 2015

12626435 (P.T.A.B. Mar. 25, 2015)

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.
12/626,435 11/25/2009 Christian Farhad Woehler 6741P018C 2121
8791 7590 03/25/2015
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
PATS, JUSTIN
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
03/25/2015 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 CHRISTIAN FARHAD WOEHLER
____________________

Appeal 2012-007661
1

Application 12/626,435
Technology Center 3600
____________________

Before: ANTON W. FETTING, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

This is an appeal from the final rejection of claims 1–7 and 9–17. We
have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to determining characteristic
combinations in a production environment. Spec. 1, ll. 2–3.

1
The Appellant identifies SAP AG as the real party in interest. (App. Br. 3).
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Claim 1 is illustrative:
1. A method comprising:
receiving a total quantity value;
receiving a plurality of distribution rules for distributing
the total quantity value to a plurality of product types, each
distribution rule to govern a separate characteristic of the
plurality of product types;
applying the plurality of distribution rules to the total
quantity value to derive a desired quantity value for each of the
plurality of product types;
rounding in a computer processor the desired quantity
value for each of the plurality of product types to an integer
when the desired quantity value is a non-integer, wherein the
rounding includes:
maintaining the sum of the desired quantity values
as equal to the total quantity value; and
approximating the plurality of distribution rules for
each value of each separate characteristic as applied to
the desired quantity values, taking into account, for the
desired quantity value of a product type of the plurality
of product types being rounded, rounding errors of
desired quantity values rounded prior to the desired
quantity value of the product type being rounded; and
applying the rounded desired quantity values to a
production of products.

Claims 1–5 and 9–15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Joachim Paul Walser, “Integer Optimization by Local
Search-A Domain-Independent Approach,” Springer, 1999, pg. 37–48,
(hereinafter “Walser”) and Kaneko (US 5,327,340, issued July 5, 1994).
Claims 6, 7, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Walser, Kaneko, and Applicant’s Admitted Prior Art.
We AFFIRM-IN-PART.

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ANALYSIS
Claims 1, 2, and 9–12
The Appellant argues independent claims 1 and 11 as a group (App.
Br. 10), so we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
We are not persuaded by the Appellant’s argument that Walser does
not disclose rules where “each distribution rule [governs] a separate
characteristic of a plurality of product types,” and that Walser’s “variables
are not characteristics nor are they in any way tied to products.” (App. Br.
10–13). Specifically, the Appellant is asserting that the rules and variables
used in Walser do not convey the same meaning as the claimed rules, i.e.,
relating to products and product characteristics. The Appellant’s assertions
are misplaced, however, because although the Examiner finds general rules,
variables, and relationships of component tools in Walser, the Examiner
further finds the application of such rules more specifically disclosed in
Kaneko, stating “Walser does not explicitly teach application of the
variables and their characteristics to a product to be produced or application
of the rounded desired quantity values to a production of products.
However, Kaneko teaches this concept in the analogous art of production
order determining . . . .” (Ans. 6). The Appellant is contesting
impermissibly shortcomings in one reference, where the rejection is over a
combination of references.
We are also not persuaded by the Appellant’s argument that the “total
quantity” is not identified, and that in Kaneko, “there is no notion of
determining a desired quantity value from a total value.” (Reply Br. 8–9).
The total quantity is one of variables in the equations used to solve for the
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values of the products in Walser (page 39), and Kaneko discloses
determining a desired quantity from a total value, taking rounding into
account by “selecting the closest integer to the sum of the totaled number for
the instant day and a remainder from the previous day.” (Col. 5, ll. 34–37).
We are not persuaded that because Walser discloses integer
optimization using local search, and Kaneko has nothing to do with local
search, there is no reason to combine the references, because to do so would
fundamentally alter the manner in which Kaneko operates. (App. Br. 9–10).
As an initial matter, we are not persuaded because the test for obviousness is
not bodily incorporation. In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.”).
Moreover, we are unpersuaded that there is something concerning the
characteristics of the limitations for which Kaneko is relied upon,
“application of the variables and their characteristics to a product to be
produced or application of the rounded desired quantity values to a
production of products” (Ans. 6), which would be unsuitable for the local
search operation of Walser.
We are not persuaded by the Appellant’s arguments that the
combination is without motivation, and based on impermissible hindsight.
(Reply Br. 3–4). The Examiner articulated the combination of Walser and
Keneko:
. . . is merely a combination of old elements, and in the
combination each element merely would have performed the
same function as it did separately, and one of ordinary skill in
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the art would have recognized that the results of the
combination were predictable, providing the benefits of meeting
multiple production objectives, requirements, and demands
without having to overstock, also preventing shutdown of the
assembly line due to a lack of supply of products.
(Ans. 7).

When considering obviousness of a combination of known elements, the
operative question is “whether the improvement is more than the predictable
use of prior-art elements according to their established functions.” KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results. Id. at 418. The
Examiner has articulated reasons the invention would have been obvious,
supporting those reasons with a proper citation to column 8, lines 20–30 of
Kanedo. (Ans. 7). We are persuaded the combination is proper, and is not
based on the Appellant’s own disclosure.
We are also not persuaded by the Appellant’s assertion that “Kaneko
doesn’t relate to development time frame and does not teach or suggest the
application of distribution rules to a total quantity to derive a desired
quantity value . . . .” (Reply Br. 4–5). First, the claim does not recite that
the claimed method relates to “development time frame,” but instead recites
that the values are for “a production of products,” which we are persuaded
the Examiner has identified sufficiently in the combination of Walser and
Kaneko, for example, at Kaneko in columns 3, lines 9–25, column 4, lines
36–58, and Figure 1 (Ans. 6–7) Second, the assertion attacks the rules in
Kaneko, but the rules are disclosed in Walser, and applied to products in
Kaneko. (Ans. 5–6).
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Next, the Appellant asserts the Examiner has failed to identify the
claimed variables and “(1) distribution rules; (2) the total quantity; or
(3) how each distribution rule governs a separate characteristic for the
plurality of product types.” (Reply Br. 5–6). We are not persuaded by these
arguments. The Examiner’s rejection relies on the mathematical techniques
of Walser that involve variables in equations (pg. 39), where the equations
correspond to a “distribution rule,” and where the meanings of the rules,
from Kaneko, “govern a separate characteristic of the plurality of product
types.” (Ans. 5–6). Walser discloses an equation for total quantity, for
example, “x1 + x2 + x3 + x4 ≥ 400.” (Id.). Kaneko discloses products with
characteristics to which Walser’s variables and equations are applied at
Figure 2, which discloses product types A, B, and C and the production
quantity for each. (Ans. 6–7). The Examiner has, thus, identified the
disputed claim elements.
For these reasons, we will sustain the rejection of claims 1 and 11
under 35 U.S.C. § 103(a). We will also sustain the rejection of dependent
claims 2, 9, 10, and 12 that were not separately argued.

Claims 3 and 13
Dependent claim 3 recites “wherein the rounding comprises: using a
previously rounded quantity of a first product type for a desired quantity
value of a second product type.” Dependent claim 13 recites substantially
similar language.
We are not persuaded of error by Appellant’s argument that there is
no evidence that a previously rounded value for product A, for example, is
used as a starting value for product B or product C in the cited portion of
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Kaneko. (App. Br. 13; Reply Br. 9–10). The Examiner relies on Kaneko,
column 5, lines 32–46, and Figure 4, where “integer-processing is executed
by selecting the closest integer to the sum of the totaled number for the
instant day and a remainder from the previous day.” (Col. 5, ll. 34–37). The
Specification describes that “each product type is specified by one or more
characteristics.” (Spec. 2, ll. 8–11). A day of production, thus, can be
considered a characteristic used to differentiate between products under a
broad construction of the claim language. Therefore, Kaneko’s disclosure of
using a remainder from a previous day, of a previously rounded quantity of a
first product type, for a desired quantity of a second product type meets the
requirements of claim 3, because each product type is differentiated by a
different day of production for the product.
For this reason, we sustain the rejections of claims 3 and 13.

Claims 4 and 14
Dependent claim 4 recites “wherein p characteristics of the plurality
of product types span a p-dimensional space and each of the plurality of
product types is defined as a point in the p-dimensional space, the point
being determined by a combination of values for each of the p
characteristics.” Dependent claim 14 recites substantially similar language.
We are not persuaded by Appellant’s assertion that the Examiner has
not met the burden “in setting forth an articulated reasoning with rational
underpinnings.” (App. Br. 14).
The Federal Circuit has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
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rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, “all that is
required of the office to meet its prima facie burden of production is to set
forth the statutory basis of the rejection and the reference or references relied
upon in a sufficiently articulate and informative manner as to meet the notice
requirement of § 132.” Id. at 1363. To that end, the Examiner cites a 2-
dimensional example in Walser that is also visually portrayed as a 2-
dimensional x-y graph, and we are persuaded that the ordinary artisan would
extrapolate from that disclosure that n variables defines an n-dimensional
space. (Ans. 7–8). Furthermore, we are not persuaded that “the point being
determined by a combination of values for each of the p characteristics”
would have been beyond the abilities of one of ordinary skill, as any value is
either based on itself, or a combination of underlying values.
Appellant also asserts the Examiner takes inconsistent positions on the
meanings of the data elements. (Reply Br. 10–11). We are not persuaded,
because the ordinary artisan would recognize the use of different variables to
represent different dimensions within the application of rules, independent
of what significance the reader wishes to assign to those variables.
For these reasons, we sustain the rejection of claims 4 and 14.

Claims 5 and 15
Dependent claim 5 recites “calculating a difference function for each
dimension, the difference function using previously rounded quantities; and
using the calculated difference functions when rounding the desired quantity
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value to an integer.” Dependent claim 15 recites substantially similar
language.
The Appellant argues the rejection suffers from a “dearth of analysis”
and that the Examiner “has made no effort to identify what constitutes a
‘dimension’ in the disclosure of Kaneko.” (App. Br. 14). We determine the
Examiner has met the burden of setting forth evidence, because specific
sections of columns 5 and 7 in Kaneko are cited. In re Jung, 637 F.3d at
1362.
We are also not persuaded by the Appellant’s argument that there “is
simply no notion in either reference of calculating a number of difference
functions consist[e]nt with a number of dimensions in a multidimensional
space, the number of dimensions is defined by the number of
characteristics.” (Reply Br. 11). The Examiner relies on columns 5 and 7 of
Kaneko, where the use of subtraction as “[a] difference of +0.2 between the
total number 1.2 and the selected integer 1 is carried over as a remainder for
the next day” (col. 5, ll. 41–43) is disclosed. (Ans. 8). This appears
consistent with the use of subtraction in a “difference function” in the
Specification. (Spec. 5, ll. 24–31). Once again, we are not persuaded that
the exact variables used in the difference functions would have been beyond
the abilities of one of ordinary skill, given the disclosures of Walser and
Kaneko.
For these reasons, we sustain the rejection of claims 5 and 15.

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10
Claims 6, 7, 16, and 17
We are persuaded by the Appellant’s argument that the Appellant did
not admit that the equations claimed in these four claims were among
previously known rounding functions. (Reply Br. 11–12).
In rejecting dependent claims 6, 7, 16, and 17, the Examiner asserts
that the Appellant “in its specification implies that many rounding functions,
including some or all of the specific rounding functions it uses in its methods
of at least claims 6–7, were either old and well known or readily deducible
by a person of ordinary skill . . . .” (Ans. 10). The citation the Examiner
relies on, in the “Detailed Description” portion of the Appellant’s originally-
filed Specification, states:
There are many different types of rounding functions that can
be used in the above calculations. One possibility is to use an
integer function f[x, y] = int[x + y], which keeps the integer
part of a number and discards the fractional part of the number.
A second possibility is to use a standard rounding function
f[x, y] = r[x + y] = int [(x + y) + 0.5]. The standard rounding
function rounds a number up or down to the nearest integer
value.
(Spec. 6, ll. 7–11).
We are persuaded that this description of rounding functions, which is not in
the background section of the Specification, does not disclose that the
recited and claimed rounding functions are well-known in the art. We
interpret this description as disclosing the claimed invention, and not
describing what was already known to the ordinary artisan at the time of the
invention. The citation and rejection, therefore, are not based on prior art,
but instead on the Appellant’s own disclosure of the invention.
As to the remaining references, the Examiner states, “[n]either
Kaneko nor Walser explicitly disclose[s] the particular formulae used by
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Applicant in claims 6–7.” (Ans. 10). Because it is undisputed that Kaneko
and Walser do not disclose the limitations of claims 6, 7, 16, and 17, and the
Appellant’s cited Specification does not qualify as prior art, the Examiner
has failed to establish a case of prima facie obviousness. For this reason, we
will not sustain the rejection of claims 6, 7, 16, and 17 under 35 U.S.C.
§ 103(a).

DECISION
We AFFIRM the rejection of claims 1–5 and 9–15 under 35 U.S.C.
§ 103(a).
We REVERSE the rejection of claims 6, 7, 16, and 17 under
35 U.S.C. § 103(a).
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).

AFFIRMED-IN-PART

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