Ex Parte Brown et al

Board of Patent Appeals and Interferences

Sep 24, 2010

11391758 (B.P.A.I. Sep. 24, 2010)

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.
11/391,758 03/29/2006 Michael Wayne Brown AUS920000052US2 6328
45502 7590 09/24/2010
DILLON & YUDELL LLP
8911 N. CAPITAL OF TEXAS HWY.,
SUITE 2110
AUSTIN, TX 78759
EXAMINER
DANNEMAN, PAUL
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
09/24/2010 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)

The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL WAYNE BROWN, KELVIN RODERICK
LAWRENCE and MICHAEL A. PAOLINI
____________

Appeal 2009-011306
Application 11/391,758
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/391,758

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-5, 7-10, 27-31 and 33-36. We have jurisdiction
under 35 U.S.C. § 6(b). (2002).

SUMMARY OF DECISION
We REVERSE (37 C.F.R. § 41.50(b)).

THE INVENTION
Appellants claim a system and method for managing inventory of a
storage area according to food-related inventory preferences for a particular
user.
(Specification 1:26-28)
Claims 1 and 27 reproduced below, are representative of the subject
matter on appeal.

1. A system for managing inventory, said system
comprising:
a processor;
an interconnect coupled to said processor; and
a computer-usable storage medium embodying computer
program code, said computer-
usable storage medium being coupled to said interconnect, said
computer program code comprising instructions executable by
said processor and configured for:
receiving food-related inventory preferences for
each of a plurality of users for a particular storage area that
monitors current food-related inventory in said particular
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storage area;
adjusting a current database of intended food-related
inventory for said particular storage area according to said
food-related inventory preferences;
periodically receiving records of additions and
removals of food-related items from said particular
storage area at said controller;
determining a selection of food-related items from
among said current database of intended food-related
inventory that are absent from said particular storage area
based at least in part on said records, such that food-
related inventory that is intended for said particular
storage area is managed;
receiving, at a universally accessible server system, a
request from a provider of food-related items for said
selection of food-related items that are absent from said
particular storage area, said request identifying the
particular storage area with a identifier uniquely associated
with said particular storage area; and
permitting access to said selection of food-related
items by said provider of food- related items if said
provider of food-related items is included in a plurality of
allowable requesters for said particular storage area.

27. A program product for managing inventory,
comprising:
a computer usable storage medium; and
computer executable program code stored within the
computer usable storage medium, said program code
including:
means for receiving food-related inventory
preferences for each of a plurality of users at a controller
for a particular storage area that monitors current food-
related inventory in said particular storage area;
means for adjusting a current database of intended
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food-related inventory for said particular storage area at
said controller according to said food-related inventory
preferences;
means for periodically receiving records of additions
and
removals of food-related items from said particular storage
area at said controller;
means for determining a selection of food-related items
from among said current database of intended food-related
inventory that are absent from said particular storage area
based at least in part on said records, such that food-related
inventory that is intended for said particular storage area is
managed;
means for receiving, at a universally accessible server
system, a request from a provider of food-related items for
said selection of food-related items that are absent from
said
particular storage area, said request identifying the
particular
storage area with a identifier uniquely associated with said
particular storage area; and
means for permitting access to said selection of food-
related items by said provider of food-related items if said
provider of food-related items is included in a plurality of
allowable requesters for said particular storage area.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Gould US 6,693,236 B1 Feb. 17, 2004

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The following rejection is before us for review.
The Examiner rejected claims 1-5, 7- 10, 27-31 and 33-36 under 35
U.S.C. § 103(a) as unpatentable over Gould.
ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 1-
5, 7-10 on appeal as being unpatentable under 35 U.S.C. § 103(a) over
Gould on the grounds that a person with ordinary skill in the art would
understand that because the grocery list in Gould is user driven to define
given statuses of particular items, that needed goods on the list are not
generated by identifying the particular storage area with a identifier
uniquely associated with said particular storage area?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Gould discloses:
…FIG 6, by selecting from the list an item 610
which needs to be purchased, information
regarding that item will appear in one or more item
description windows 614 within the user interface
602. For example, if an item 610 entitled
"mozzarella", which needs to be purchased, is
selected, a window 614 corresponding to a
particular brand of mozzarella will be displayed
along with price and other information…. The
window 614 preferably includes a "buy" button
616, selection of which will initiate an on-line
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purchase of the item. The vendor used for
purchase of the item can be one of several on-line
grocery store chains which can, in some cases,
deliver goods free of charge to the user's home.
(Col. 7, ll. 21-38).
2. Gould further discloses that:
In order to maintain a current inventory, as a user
uses the last of a particular item, or notices that the
item is getting to a low level, he or she can select
the status icon 612 for that item 610 causing it to
change sequentially among the two or three
available states. For example, if the user uses the
last of the available coffee, he or she can select the
status icon 612(b). The status icon will change
from an "owned" state 612(a) to a "buy" state
612(b).
(Col. 7, ll. 42-49).
3. Appellants’ Brief states that Figure 6, blocks 226 and 230; page 29
ll. 7-17, provide the support for the limitation: means for determining a
selection of food-related items from among said current database of
intended food-related inventory that are absent from said particular storage
area based at least in part on said records, such that food-related inventory
that is intended for said particular storage area is managed…. (Appeal Br.
4)
4. Block 226 reads “UPDATE ABSENT FOOD-RELATED ITEMS”
and Block 230 reads “ADJUST INTENDED FOOD-RELATED
INVENTORY DATABASE ACCORDING TO INVENTORY
PREFERENCES”. (Specification: Figure 6)
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Application 11/391,758

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5. The Specification at page 29, ll. 7-17 merely rephrases the block
statements listed in Figure 6 at boxes 226 and 230.
6. The Specification only references an inventory control application
50 as being responsible for updating intended food related inventory
database 52, bit does not show the code associated with the application.
(Specification 17: 19-23).

ANALYSIS
We reverse the rejection of claims 1-5, 7-10, 27-31 and 33-36, and
enter a new ground as to claims 27-31 and 33-36 under 35 U.S.C. § 112,
second paragraph.
Claim 1 requires:
receiving, at a universally accessible server system, a request from a
provider of food-related items for said selection of food-related items that
are absent from said particular storage area, said request identifying the
particular storage area with a identifier uniquely associated with said
particular storage area; and
permitting access to said selection of food-related items by said provider of
food- related items if said provider of food-related items is included in a
plurality of allowable requesters for said particular storage area.
The Examiner found that “Gould in at least Column 7, lines 52-55
further discloses the action by a grocery vendor updating the inventory status
of a particular item when it is delivered to a user.” (Answer 4) However,
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Gould discloses that in order to fulfill the order, a window 614 is provided
and “preferably includes a ‘buy’ button 616, selection of which will initiate
an on-line purchase of the item.” (FF 1) Once this is done, the “[t]he status
icon will change from an ‘owned’ state 612(a) to a ‘buy’ state 612(b) (FF 2).
In addition, the grocery list in Gould is user driven to define given statuses
of particular items (FF 2), and thus needed goods on the list are not
generated by identifying the particular storage area with a identifier
uniquely associated with said particular storage area.
For these reasons we will not sustain the rejection of claim 1. Since
claims 2-5, 7-10 depend from claim 1, and since we cannot sustain the
rejection of claim 1, the rejection of these claims likewise cannot be
sustained.
Claims 27-31 and 33-36
Pursuant to our authority under 37 CFR § 41.50(b) we enter a new
ground of rejection of claims 27-31 and 33-36 under 35 U.S.C. § 112,
second paragraph as failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention. Therefore, the
rejection over prior art must fall, pro forma, as being necessarily based on
speculative assumptions as to the scope of this claim. See In re Steele, 305
F.2d 859, 862-63 (CCPA 1962).
A claim limitation that includes the term “means” is presumed to be
intended to invoke means-plus-function treatment, i.e., treatment under 35
U.S.C. §112, 6th paragraph. Rodime PLC v. Seagate Tech., Inc., 174 F.3d
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1294, 1302 (Fed. Cir. 1999) (“presumed an applicant advisedly used the
word “means” to invoke the statutory mandates for means-plus-function
clauses.”).
When no structure is described in the Specification to support a
means-plus-function limitation in a claim, the disclosure is inadequate to
explain to one of ordinary skill in the art what is meant by the claim
language. In such a situation, a means-plus-function claim would not be
amenable to construction and thus would fail to particularly point out and
distinctly claim the invention as required by the second paragraph of section
112.
"[I]f one employs means-plus-function language in
a claim, one must set forth in the specification an
adequate disclosure showing what is meant by that
language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim
the invention as required by the second paragraph
of section 112."
In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en
banc).
When the means-plus-function limitation in a claim is a computer-
enabled means-plus-function limitation, one must set forth in the
specification sufficient description of an algorithm associated with the
function recited in the claim in order to avoid a finding that an applicant has
failed to particularly point out and distinctly claim the invention as required
by the second paragraph of section 112.
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It is certainly true that the sufficiency of the disclosure of algorithmic
structure must be judged in light of what one of ordinary skill in the
art would understand the disclosure to impart. See, e.g., Intel Corp. v.
VIA Techs., 319 F.3d 1357, 1367 (Fed. Cir. 2003) (knowledge of a
person of ordinary skill in the art can be used to make clear how to
implement a disclosed algorithm); Atmel Corp., 198 F.3d at 1379
(“[T]he ‘one skilled in the art’ analysis should apply in determining
whether sufficient structure has been disclosed to support a means-
plus-function limitation.”). That principle, however, has no
application here, because in this case there was no algorithm at all
disclosed in the specification. The question thus is not whether the
algorithm that was disclosed was described with sufficient specificity,
but whether an algorithm was disclosed at all.

Aristocrat Techs. Australia Party. Ltd. vs. Int’l Game Tech.,
21 F.3d 1328, 1337 (Fed. Cir. 2008).
Claim 27 recites in pertinent part: means for determining a selection
of food-related items from among said current database of intended food-
related inventory that are absent from said particular storage area based at
least in part on said records, such that food-related inventory that is
intended for said particular storage area is managed….
Appellants assert that Figure 6, blocks 226 and 230; page 29 ll. 7-17,
provide the support for this limitation (FF 3). Block 226 reads “UPDATE
ABSENT FOOD-RELATED ITEMS” and Block 230 reads “ADJUST
INTENDED FOOD-RELATED INVENTORY DATABASE ACCORDING
TO INVENTORY PREFERENCES” (FF 4). The cited section of the
Specification page 29, ll. 7-17 merely rephrases these block statements (FF
5). The Specification generally references an inventory control application
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11
50 as being responsible for updating intended food related inventory
database 52, but does not show the code associated with the application. (FF
6)
For the foregoing reasons, we find that the Specification does not
adequately describe an algorithm corresponding to the function “determining
a selection of food-related items from among said current database of
intended food-related inventory that are absent from said particular storage
area based at least in part on said records, such that food-related inventory
that is intended for said particular storage area is managed”. The
Specification fails to disclose an algorithm corresponding to the recited
function at issue in claim 27 such that one of ordinary skill in the art could
determine the scope of claim 27. Accordingly, we reject claims 27-31 33-36
under 35 U.S.C. § 112, second paragraph, as being indefinite.

DECISION
The decision of the Examiner to reject claims 1-5, 7-10 under 35
U.S.C. § 103(a) is REVERSED.
The decision of the Examiner to reject claims 27-31, and 33-36 under
35 U.S.C. § 103(a) is pro forma REVERSED.
This decision contains a new ground of rejection, claims 27-31 and
33-36, under 35 U.S.C. 112, second paragraph, pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 C.F.R.
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§ 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
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) (2006).

REVERSED; 37 C.F.R. § 41.50(b)

MP

DILLON & YUDELL LLP
8911 N. CAPITAL OF TEXAS HWY.,
SUITE 2110
AUSTIN TX 78759