Ex Parte Hammann

Patent Trial and Appeal Board

Oct 10, 2013

09840332 (P.T.A.B. Oct. 10, 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.
09/840,332 04/23/2001 Jerald A. Hammann H238.101.101 4071
25281 7590 10/11/2013
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
10/11/2013 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 JERALD A. HAMMANN
____________

Appeal 2011-009944
Application 09/840,332
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 31-401 2. Claims 1-30 have been cancelled. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6(b).
We affirm-in-part.
The invention relates generally to employing yield management in
human-factor resource industries (Spec. 1:16-19).
Claim 31, reproduced below, is further illustrative of the claimed
subject matter.
31. A computer-based method for capacity/demand
management in human factor resource industries, comprising:
accepting, via computer, transaction parameter values for
composite resources, wherein each composite resource has
associated therewith at least a service location, a service date
and a service time;
accepting from at least one potential user of composite
resources, via computer, at least one composite resource
transaction parameter value;
communicating to the at least one potential user of the at
least one composite resource at least a portion of the transaction
parameter values for at least one composite resource related to
the potential user’s at least one transaction parameter value;
modifying, in response to the communication; at least
one of a demand for the at least one composite resource and a
capacity of the at least one composite resource, wherein when
the capacity exceeds the demand for the at least one composite
resource, the modifying includes increasing the demand for

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 20, 2010) and Reply Brief (“Reply Br.,” filed May 17,
2011), and the Examiner’s Answer (“Ans.,” mailed March 17, 2011).
2 The present appeal is related to US Application No. 09/999,378, also under
appeal as Appeal No. 2011-009786.
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and/or decreasing the capacity of the at least one composite
resource;
wherein the at least one service date and service time is a
date and time point or range measure indicating a present or
future first date and time when the service is available;
wherein the service availability date and time is related to
the availability of at least one service provider resource
comprising in part the at least one composite resource;
wherein the at least one service provider resource is a
human resource;
wherein the at least one service provider resource
contributes more than a nominal amount of time to producing
and/or making available the at least one composite resource;
wherein the communication occurs prior to any first
assignment of other concurrently consumed and/or
concurrently-utilized composite resources to the at least one
potential user;
wherein the capacity of the at least one composite
resource is a measure of the on hand supply and/or availability,
if applicable, of the at least one composite resource at a first
date and time plus a measure of an ability to produce and/or
make available additional quantities of the at least one
composite resource over a first date and time period beginning
at the first date and time and ending at a second date and time;
wherein the measure of an ability to produce and/or make
available additional quantities of the at least one composite
resource over a first date and time period beginning at the first
date and time and ending at a second date and time is derived
from at least one human factor resource and is not a static
ability; and,
wherein the demand for the at least one composite
resource is a measure of the on hand consumption and/or
utilization, if applicable, of the at least one composite resource
at the first date and time plus a measure of an ability to
consume and/or utilize additional quantities of the at least one
composite resource over the first date and time period.

Claims 31-40 stand rejected under 35 U.S.C. § 103(a) as being
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unpatentable over Hailpern (U.S. 6,922,672 B1, iss. Jul. 26, 2005) and
Dietrich (U.S. 5,630,070, iss. May 13, 1997).
Claims 31, 32, 33, 34, 35, and 36-40 stand provisionally rejected
under the judicially created doctrine of obviousness-type double patenting as
being unpatentable over claims 1, 7, 12, 17, 22, and 66-70 of copending
Application No. 09/999,378.
We AFFIRM.

FINDINGS OF FACT
Specification
1. The Specification defines “composite resources” as “a
collection of resources that a user typically will purchase as a bundle at a
single price” and describes that a haircut performed by a cosmetician may be
an example of a “composite resource.” (14:19-27).
2. The Specification defines “transaction parameters” as “a set of
variables describing composite resources. Transaction parameters include,
but are not limited to, transaction price parameters, composite resource
availability (date/time) parameters, and various profile (described below)
parameters.” (13:24-27).
3. The Specification does not provide a lexicographic definition of
“human-factor resources.”
4. The Specification describes that “human-factor resources” refer
to “a human resource participating in individual transactions sequentially
(i.e., a one-to-one transaction relationship) . . . .” (14:1-9).
5. The Specification does not provide a lexicographic definition of
“static ability.”
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ANALYSIS

Obviousness Rejection of Independent Claim 313
We are not persuaded the Examiner erred in asserting that a
combination of Hailpern and Dietrich renders obvious “accepting, via
computer, transaction parameter values for composite resources, wherein
each composite resource has associated therewith at least a service location,
a service date and a service time,” as recited in independent claim 31,
because the Examiner does not address the critical distinction between the
promotions disclosed in Hailpern and the composite resources, as presently
claimed (App. Br. 17-18; Reply Br. 2-3). As an initial matter, we note that
Hailpern discloses that its dynamic method for targeting promotions is
applicable to products and services (col. 2:37-39). While Appellant attempts
to draw a distinction between the services disclosed in Hailpern and the
“composite resources” of exemplary independent claim 31 (App. Br. 19-20),
we find Appellant’s position to be unsupported by the language of the claims
and their Specification. Given that Appellant’s Specification describes a
haircut as an example of a “composite resource” (FF 1) and Hailpern
describes a store’s available service capacity to service customers (col. 5:30-
37), we find that Appellant has failed to provide persuasive evidence to
support a narrower construction of “composite resource,” such that it would
not read on the services offered by the stores in Hailpern’s promotion system

3 As Appellant argues independent claims 31-35 together, we choose
independent claim 31 as representative of independent claims 31-35.
37 C.F.R. § 41.37(c)(1)(vii).
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under the Examiner’s broad, but reasonable construction (col. 5:16-17; see
Ans. 4-5). See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (“[d]uring examination [of a patent application, a pending claim
is] given [the] broadest reasonable [construction] consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art”)
(internal citation and quotations omitted).
Equally unpersuasive are Appellant’s assertions that the Examiner
erred in asserting that the combination of Hailpern and Dietrich fails to
disclose or suggest that composite resources are associated with “at least a
service location, a service date and a service time,” because Hailpern fails to
disclose specifying the service availability time for a transaction (App. Br.
17-18; Reply Br. 3-5). In making this determination, we agree with the
Examiner that the promotions in Hailpern which may expire within a
predetermined period of time correspond to a service date and a service time
(Ans. 14; citing Hailpern at 3:1-2). While we acknowledge, as the Examiner
has done, that Hailpern does not explicitly state a specific service date or
service time, given that Hailpern discloses promotions expiring within a
predetermined amount of time, one of ordinary skill in the art at the time of
the invention would have readily appreciated the predetermined periods of
time to be adjustable and as specific and granular as required by the service
provider offering the promotion, and as such, would have understood
Hailpern’s system to render obvious a service date and time being associated
with each promotion for goods and services.
We note that the Examiner additionally relies on Dietrich to provide
evidence that the expiration time frame disclosed in Hailpern would include
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a specific service time and service date (Ans. 8). Specifically, the Examiner
relies on Dietrich to disclose that the designation of a time frame for an
inventory forecast includes a specified start date and time and an end date
and time is well known in the restaurant supply chain management art (col.
6:26-50 and cols. 35:18 – 36:11). Thus, contrary to Appellant’s argument
(App. Br. 24-25; Reply Br. 10), Dietrich also discloses a date and time
measure.
Similarly, we are not persuaded of error by the Appellant’s argument
that the combination Hailpern and Dietrich fails to disclose or suggest
“wherein the at least one service date and time is a date and time point or
range measure indicating a present or future first date and time when the
service is available” (App. Br. 19; Reply Br. 6; Emphasis omitted). As
discussed above, Hailpern discloses that a promotion may expire with a
predetermined period of time (col. 3:1-2).
Appellant further asserts that the combination of Hailpern and
Dietrich fails to disclose or suggest “accepting from at least one potential
user of composite resources, via computer, at least one composite resource
transaction parameter value wherein the at least one composite resource
communicated is related to the potential user’s at least one transaction
parameter value accepted” because independent claim 31 requires “user-
determined search criteria” (App. Br. 19-20; Reply Br. 5-6). However, as an
initial matter, claim 31 does not recite accepting “user determined search
criteria” from a potential user, but rather broadly recites accepting, via a
computer, at least one composite resource transaction parameter value,
which is not the same as “user determined search criteria.” See CollegeNet,
Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the
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specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims). Therefore,
because claim 31 does not set forth any specific steps or mechanism from
which the computer accepts the at least one composite resource transaction
parameter value, we agree with the Examiner that Hailpern’s profile and
characteristic information used to match a target product for promotion
addresses the limitation, as presently claimed (Ans. 16; citing Hailpern at
3:5-26).
We are not persuaded the Examiner erred in asserting that a
combination of Hailpern and Dietrich renders obvious “wherein the capacity
of the at least one composite resource is a measure of on-hand supply and/or
availability, if applicable, of the at least one composite resource at a first
date and time plus a measure of an ability to produce and/or make available
additional quantities of the at least one composite resource over a first date
and time period beginning at the first date and time and ending at a second
date and time,” as recited in independent claim 31 (App. Br. 19-20; Reply
Br. 7). Independent claim 31 is a method claim. By presenting the
aforementioned aspect in the conditional “if” format, under a broadest
reasonable interpretation of that claim aspect, if the condition is not met, the
balance of the claim aspect also does not need to be met.
To that end, Hailpern’s system determines if there are changes in store
conditions such as available service capacity or inventory (col. 4:28:30).
Hailpern’s system accounts for a provider’s dynamic service capacity and
inventory levels, as well as demand, when determining whether or not to
implement a promotion (col. 5:8-15). That is, if inventory or service
capacity is high, Hailpern’s system determines that a promotion is desirable
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(col. 4:30-34). Accordingly, under a broadest reasonable interpretation,
Hailpern’s system satisfies this limitation of independent claim 31. This
same reasoning applies to Appellant’s similar argument regarding a similar
limitation: “demand for the at least one composite resource is a measure of
on hand consumption and/or utilization,” as recited in independent claim 31
(see App. Br. 21-22; Reply Br. 8-9)
We also are not persuaded the Examiner erred in asserting that a
combination of Hailpern and Dietrich renders obvious “wherein the measure
of an ability to produce and/or make available additional quantities of the at
least one composite resource over a first date and time period beginning at
the first date and time and ending at a second date and time is derived from
at least one human factor resource and is not a static ability,” as recited by
independent claim 31 (App. Br. 20-21; Reply Br. 7-8). As discussed above,
Hailpern discloses determining if there are changes in store conditions, such
as available service capacity or inventory (col. 4:28:30). While we
acknowledge that Hailpern does not explicitly refer to its available service
capacity as a “human-factor resource,” one of ordinary skill in the art
understands Hailpern’s reference to “the sales activity on a particular
product or service that they provide” (col. 2:37-39) to encompass “human-
factor resources.” This interpretation is commensurate with Appellant’s
Specification, which does not provide a lexicographic definition of “human-
factor resources” (FF 3), but rather, generally describes that it refers to “a
human resource participating in individual transactions sequentially” (FF 4).
Additionally, we are not persuaded that the Examiner erred in
asserting that Hailpern’s ability to monitor changing store conditions with
respect to service capacity or inventory levels addresses the “not a static
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ability” limitation of claim 31 (Ans. 17). Specifically, Appellant argues that
the Examiner improperly construes “not a static ability,” as it modifies a
“human factor resource,” to read on all human resources, because the ability
to produce or make available additional quantities of the composite resource
is dependent upon the human resource (App. Br. 20; Reply Br. 8). However,
we find the Appellant’s argument to be misplaced, as the Examiner does not
assert that all human resources address this limitation, but rather asserts that
Hailpern’s service capacity for a service-oriented business addresses a
human factor resource that is not a static ability, as presently claimed.
Accordingly, in the absence of a lexicographic definition for “static ability”
(FF 5), we agree with the Examiner that Hailpern’s changing service
capacity renders obvious the “not a static ability” limitation of claim 31
under a broadest reasonable construction (see Ans. 17).
Appellant further asserts that the combination of Hailpern and
Dietrich fails to disclose or suggest “wherein when the demand exceeds the
capacity for the at least one composite resource, the modifying includes
decreasing the demand for the at least one composite resource and/or
increasing the capacity of the at least one composite resource” (App. Br. 22;
Reply Br. 9; Emphasis omitted). However, Hailpern discloses that its
system is able to select an optimal discount level for its promotions based on
capacity or inventory (col. 5:28-37). Thus, we agree with the Examiner that
Hailpern discloses increasing and decreasing demand by determining
whether or not to offer a targeted promotion (col. 4:28-34; see also Ans. 18).
We are also not persuaded the Examiner erred in asserting that the
combination of Hailpern and Dietrich renders obvious independent claim 31
because Hailpern and Dietrich are not in the same field of endeavor (App.
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Br. 22-23; Reply Br. 9-10). As an initial matter, we note that a proper non-
analogous art analysis compares the references to the claimed invention, and
not to each other. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (a
reference is analogous art to the claimed invention if: (1) the reference is
from the same field of endeavor as the claimed invention (even if it
addresses a different problem); or (2) the reference is reasonably pertinent to
the problem faced by the inventor (even if it is not in the same field of
endeavor as the claimed invention). Moreover, we agree with the Examiner
that each of Hailpern and Dietrich are reasonably pertinent to the problem
faced by the inventor of using demand control and inventory monitoring to
maximize profit and reduce on-hand inventory (Ans. 19).
Lastly, to the extent that Appellant is arguing that there is no
suggestion or motivation to combine Hailpern and Dietrich because they are
not in the same field of prior art (App. Br. 25-26; Reply Br. 10-11), we note
that “any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” See KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007).
And, to the extent Appellant seeks an explicit suggestion or
motivation in the reference itself, this is no longer the law in view of the
Supreme Court’s holding in KSR. See KSR, 550 U.S. at 419. We find that
the Examiner has provided articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness (see KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)). On pages 9 and 19-20 of the Answer, the Examiner
provides the required rationale to support the combination. Therefore, in the
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absence of specific, technical arguments as to why the motivation is
insufficient or whether the improvement described by the Examiner is more
than the predictable use of prior art elements according to their established
functions, we find this argument unpersuasive.
For these reasons, we sustain the rejection of independent claims 31-
35 under 35 U.S.C. § 103(a) over Hailpern and Dietrich, as well as
dependent claims 36-40 that were not separately argued.
Obviousness-Type Double Patenting Rejection
We are persuaded the Examiner erred in asserting that all of the
pending claims are provisionally-rejected in view of the pending claims 1, 7,
12, 17, 22, and 66-70 of co-pending Application No. 09/999,378 (App. Br.
27). We note that the Examiner’s Answer does not explicitly address or set
forth a rejection in the Grounds of Rejection portion of the Answer, but does
explicitly state on page 2 of the Answer that “[t]here is a double patenting
rejection of claims 31-40” pending. Accordingly, because the Examiner did
not establish a proper prima facie case of obviousness-type double patenting
rejection, we do not sustain this rejection.

DECISION
The decision of the Examiner to reject claims 31-40 under 35 U.S.C.
§ 103(a) as unpatentable over Hailpern and Dietrich is AFFIRMED.
The decision of the Examiner to reject claims 31-40 under the
judicially created doctrine of obviousness-type double is REVERSED.
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).
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AFFIRMED-IN-PART
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