Ex Parte Schapler et alDownload PDFPatent Trial and Appeal BoardFeb 4, 201510846116 (P.T.A.B. Feb. 4, 2015) Copy Citation 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. 10/846,116 05/14/2004 Daniela Schapler 08020.0004-00 1300 60668 7590 02/04/2015 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER AMSDELL, DANA ART UNIT PAPER NUMBER 3627 MAIL DATE DELIVERY MODE 02/04/2015 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 DANIELA SCHAPLER, TOBIES ADLER, and JOACHIM EPP ____________________ Appeal 2012-007001 Application 10/846,1161 Technology Center 3600 ____________________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK and SHEILA F. McSHANE, Administrative Patent Judges. McSHANE, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of a final decision of the Examiner to reject claims 1–3, 5–12, 37, 39, 40, 43, 45–49, 51, 52, 55, and 57–60. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. 1 According to Appellants, the real party in interest is SAP AG (Appeal Brief filed December 19, 2011, hereinafter “App. Br.” 1). Appeal 2012-007001 Application 10/846,116 2 BACKGROUND The claims of the invention relate to a system and method for the processing of stock, including creation of an initial work order, which may include several transfer orders, with a handling signal indicating a transfer of stock bundles by a processing unit, with creation of a new work order based on the transfers of stock bundles (Abstract; Specification, hereafter “Spec.” ¶¶ 7, 19, 20, 34, 38, 40, 44; App. Br. 5–6). Claim 1 is representative and is reproduced from page 17 of the Appeal Brief (Claims App’x) as follows, with emphasis added to the relevant claim limitations: 1. A computer-based method for processing stock, the method comprising: creating, using a processor, an initial work order comprising a plurality of transfer orders for a plurality of stock bundles, wherein the plurality of transfer orders are associated with transfers of the stock bundles by a plurality of processing units from a first area to a second area; receiving, from one of the processing units, a handling signal indicating that the processing unit is transferring a stock bundle associated with one of the transfer orders from the first area to the second area according to the transfer order, the handling signal identifying the processing unit transferring the stock bundle; identifying, using the processor from the initial work order in accordance with the handling signal, the transfer order being handled by the corresponding processing unit; creating, using the processor, a new work order reflecting the transfer of the stock bundle from the first area to the second area by the corresponding processing unit according to the identified transfer order; and Appeal 2012-007001 Application 10/846,116 3 deleting, using the processor, the identified transfer order from the initial work order, when the new work order is established. The Examiner rejected all the claims at issue under 35 U.S.C. § 103(a) as unpatentable over Mountz,2 Nel,3 and Bradley.4 (Final Action mailed June 15, 2011, hereinafter “Final Act.,” 4–9; Examiner’s Answer mailed January 25, 2012, hereinafter “Ans.,” 4–12). DISCUSSION Appellants argued all the rejected claims, namely claims 1–3, 5–12, 37, 39, 40, 43, 45–49, 51, 52, 55, and 57–60, as part of this Appeal (App. Br. 11). All of the independent claims were addressed by Appellants on the same issues, with claim 1 serving as the representative claim (id. at 11–15). In main part, the dependent claims also rise or fall with claim 1 (id. at 15). Appellants contended that the Examiner did not establish prima facie obviousness of the claims at issue over the cited prior art (id. at 11–15). Appellants alleged that Nel does not disclose a “handling signal identifying the processing unit transferring the stock bundle,” and given this deficiency, the subsequent claimed steps of “identifying. . .,” “creating,” and “deleting. . .” are also not taught (id. at 13–14). Further, Appellants contended that because there is no teaching of the requisite “handling signal,” Bradley, therefore, does not teach the step of “creating. . . a new work order” (Id.). 2 US Patent 6,748,292 B2, issued June 8, 2004. 3 US Patent Publication 2003/0036935 A1, published February 20, 2003. 4 US Patent 6,289,260 B1, issued September 11, 2001. Appeal 2012-007001 Application 10/846,116 4 The Examiner acknowledged that Mountz fails to disclose the “handling signal” element, and instead relied upon the disclosure of “Nel’s ‘haulage job manager’ as it functional[ly] queries and receives information back from the processing of units regarding current haulage information, so as to establish capacity, route and rates for taking on additional jobs (Abstract); and also Fig[.] 3A as it discloses ‘capacity or freight haulage job’; thus identifying the work order being transferred” (Ans. 10–11). The Examiner concluded that one of ordinary skill in the art would combine the teachings of Nel and Mountz to optimize the real-time logistics of freight/stock movement, as it would be an obvious modification to facilitate expansive stock movement and rapid order fulfillment over greater distances (id. at 11). Claim 1 includes multiple interrelated steps where the “handling signal” has to be received from “one of the processing units,” indicating “that the processing unit is transferring a stock bundle associated with the one of the transfer orders,” where that handling signal has to also identify the processing unit that is transferring the stock bundle. In other words, the “handling signal” has to be indicative of the real time transferring of specific stock bundles by an identified processing unit. The information provided by the “handling signal” is then used to identify the transfer order “being handled,” which is then is used to create a new work order. To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. See In re Royka, 490 F.2d 981, 985 (CCPA 1974). In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the Supreme Court emphasized “an expansive and flexible approach” to the obviousness question, it also Appeal 2012-007001 Application 10/846,116 5 reaffirmed that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added). Here, we find that the claimed element of “handling signal indicating that the processing unit is transferring a stock bundle” is not explicitly disclosed in Nel, and the Examiner failed to provide sufficient evidence and requisite rationale that the element is suggested in light of the combined references. The portion of Nel relied upon by the Examiner is directed to matching new freight haulage jobs with mobile carriers (which are already in transit) that may have excess capacity to carry new freight haulage jobs. More specifically, the Examiner identified Nel’s teaching of a “haulage job manager,” that queries and receives “current haulage information,” and the teaching of a “freight haulage job” as supporting disclosures (Ans. 10–11). The “carrier capacity attributes” include real time updates on excess capacity, routes and rates for the mobile carriers that are in transit, and this information is provided to the haulage job manager (Nel, Abstract; ¶¶ 31– 39; Fig. 3A, elems. 92, 94). The pending “freight haulage jobs” that require future transport are matched to a specific carrier already in transit by the haulage job manager (Nel, Fig. 3A, Fig. 3B; ¶¶ 0031–0049). However, once the optimal “match” is made between the mobile carrier and the pending freight haulage job nothing further occurs related to that job—there is no “signal” then provided from the mobile carrier (“the processing unit”) when the transfer of the specific freight haulage job (“the stock bundle”) actually commences. See Nel, Figs. 3A and 3B. Appeal 2012-007001 Application 10/846,116 6 Although the “matching step” performed in Nel could imply that the freight haulage job will, at some future time, be loaded and then transported by the specific matched mobile carrier, we find that the disclosure of this Nel “matching step”—absent the real time updating of the actual act of the initiation of freight transferring—does not sufficiently teach the “handling signal.” Our finding is informed by the use of the “handling signal” within the steps of claim 1, whereby the “receiving” of the “handling signal,” with its conveyed information, causes the identification of a specific work order, and triggers subsequent steps including the creation of a new work order reflecting the actual transfer that is occurring at that time. Within this context, we find that the possible pending future transfer of freight taught by Nel is insufficient disclosure to one of ordinary skill in the art of the “handling signal” element. Accordingly, the evidence of record does not, in our view, support the Examiner’s finding of prima facie obviousness in view of Mountz, Nel and Bradley. We therefore reverse the Examiner’s obviousness rejections of claims 1–3, 5–12, 37, 39, 40, 43, 45–49, 51, 52, 55, and 57–60 over those references. SUMMARY For the above reasons, the Examiner’s rejection of claims 1–3, 5–12, 37, 39, 40, 43, 45–49, 51, 52, 55, and 57–60 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation