Ex Parte Erke et al

Board of Patent Appeals and Interferences

Jan 30, 2009

09879677 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YESIM ERKE, YI-HUI CHRISTINA MA, and MARK C. BOOTH
____________

Appeal 2008-5475
Application 09/879,677
Technology Center 3600
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Decided: January 30, 2009
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection of claims 3, 4, 6, 7, 19, 21, 22, and 24-27.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a method for determining inventory levels of
replacement parts in a network of neighboring part facilities. (Specification
1:2-4.)
Claim 3, reproduced below, is representative of the subject matter
on appeal.
3. A method of determining inventory levels
of parts for a plurality of stocking locations within
a two hour neighborhood of a primary location,
wherein said parts are normally stocked at more
than one of said stocking locations, said method
comprising:
providing data for plurality of customer
locations, unit price of said parts, request rates for
each of said parts for each of said customer
locations, handling costs for each of said stocking
locations, and travel time and transportation cost
between said stocking locations, wherein said
request rates include a probability distribution for
one or more of said request rates;
specifying a parts procurement time
performance measure for transfer of said parts
from said plurality of stocking locations to said
plurality of customer locations, wherein said parts
procurement time performance measure comprises
the percentage of parts in said request rates which
can be transferred from any said stocking location
to each respective said customer location within a
pre-specified time, and wherein equipment
requiring on[e] or more of said parts is installed at
one or more of said plurality of customer locations;
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entering said data and said performance
measure into an optimization computer program;
computing said inventory levels of said
parts for said plurality of stocking locations using
said optimization computer program; and
ordering sufficient numbers of said parts to
maintain said inventory levels at said plurality of
stocking locations, wherein said inventory levels
are such that said performance measure is met.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ettl US 5,946,662 Aug. 31, 1999
Kalyan US 6,826,538 B1 Nov. 30, 2004

The following rejections are before us for review.
1. The Examiner rejected claims 3, 4, and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Ettl.
2. The Examiner rejected claims 6, 7, 21-22, and 24-27 under 35 U.S.C.
§ 103(a) as being unpatentable over Ettl in view of Kaylan.

ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 3,
4, and 19 on appeal as being unpatentable under 35 U.S.C. § 103(a) over Ettl
and claims 6, 7, 21-22, and 24-27 as being unpatentable over Ettl in view of
Kaylan on the grounds that a person with ordinary skill in the art would
know to arrange for stocking locations/warehouses and distribution centers
to be in close proximity, in order to minimize transportation time, provide
timely services to customers, and increase productivity and revenue?
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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification describes the order by which the network of parts
facilities are used to obtain a part which is needed in that:
[f]acilities 2-4 are shown as located within a two
hour neighborhood of facility 1 and facilities 5-6
lie outside the two hour neighborhood…. Often
this ad hoc procedure involves contacting other
locations in sequence starting with the closest and
proceeding outward as shown by the path of
arrows in FIG. 2. Note that if locations 1-4 do not
have a part in stock but 5 or 6 do, then the demand
can not be satisfied within two hours.
(Specification 9:2-12.)
2. The Examiner found that:
Ettl discloses distribution of parts between Atlanta
and Cleveland, (see column 24, lines 50-57). The
travel time between Atlanta and Cleveland by
plane, is approximately two hours. Furthermore, it
would have been obvious to a person of ordinary
skill in the art to arrange for stocking
locations/warehouses and distribution centers to be
in close proximity, in order to minimize
transportation time, provide timely services to
customers, and increase productivity and revenue.
(Answer 7-8.)

PRINCIPLES OF LAW
Field of use recitations are typically found in the preamble of claims,
and the weight given them largely depends on how the recitation is
subsequently used in the body of the claim. Pitney Bowes, Inc. v. Hewlett-
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Packard Co., 182 F.3d 1298, 1305, 1306 (Fed. Cir. 1999). Whether a
preamble statement that the “patent claims a method of or apparatus for...[x]
is not merely a statement describing the invention’s intended field of use ...
[depends upon if] that statement is intimately meshed with the ensuing
language in the claim.” Id. at 1306. In other words, “if the preamble merely
state[s] a purpose or intended use and the remainder of the claim completely
defines the invention independent of the preamble,” it does not constitute a
limitation. Lipscomb’s Walker on Patents, 3rd Edition, Vol. 3, § 11.11 at p.
361 (citing Marston v. J.C. Penney Co., 353 F.2d 976, 986 (4th Cir. 1965));
see also, Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997); Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)
(An element initially recited in the preamble, is thereafter fully incorporated
into the body of the claim so as to breathe life and breath into it by setting
forth the complete combination).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
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questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)

ANALYSIS
The rejections are affirmed as to claims 3, 4, 6, 7, 19, 21, 22, and 24-
27.
Appellants’ argument against each of the 35 U.S.C. § 103(a)
rejections is based on perceived deficiencies of Ettl. Inasmuch as Appellants
raise the same issue with respect to each of the 35 U.S.C. § 103(a)
rejections, we discuss them together.
Correspondingly, we select representative claim 3 to decide the appeal
of these claims, remaining claims 4, 6, 7, 19, 21, 22, and 24-27 standing or
falling with claim 3. See, 37 C.F.R. § 41.37(c)(1)(vii)(2007).
Appellants’ sole argument on appeal is that the claims require

that the plurality of stocking locations must be
within a two hour neighborhood of a primary
location. Ettl does not describe or suggest such a
neighborhood or a plurality of stocking locations
located there within. All of the parts in Ettl's
description follows a fixed path as shown in his
FIG. 1 supply chain network. There is no
opportunity in Ettl's disclosure for an alternate
supply path. Ettl, therefore, does not describe or
suggest the neighborhood fill method of
Appellants' independent claim 3.
(Appeal Br. 11.)
The Examiner however found that travel time between distribution
locations disclosed in Ettl is two hours (FF 2). Notwithstanding this finding,
the Examiner further found that it would have been obvious to a person of
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ordinary skill in the art to arrange for stocking locations/warehouses and
distribution centers to be in close proximity, in order to minimize
transportation time. (FF 2.)
We agree with the Examiner for the following reasons.
1. The language which is in dispute is found in the preamble of claim
3. The language recites “determining inventory levels of parts for a plurality
of stocking locations within a two hour neighborhood of a primary
location.” (Emphasis added.) Simply put, this preamble language is not
intimately meshed with the body of the claim enough to constitute a claim
limitation. In other words, the body of the claim completely defines the
invention without need of this preamble limitation. See, Pitney Bowes, Inc.
at 1306.
2. Even if the preamble recitation of a plurality of stocking locations
within a two hour neighborhood of a primary location could be read as a
required claim limitation, the Specification describes this characteristic only
as the maximum demand tolerance for the system (FF 1). The Specification
goes on to state that in the event that a part is needed, then the customer
proceeds to contact other locations in sequence starting with the closest and
proceeding outward until reaching locations outside a two hour travel time.
(FF 1) In other words, the customer is only willing to wait a maximum of
two hours for a part to arrive and thus the two hour limit is set by the user as
a design parameter of the system based on the user’s limitations. We thus
conclude that the selection of an acceptable waiting time for a part is no
more than a matter of obvious design choice for a person with ordinary skill
in the art based on system limitations and requirements. See, In re Hopkins,
342 F.2d 1010, 1015 (CCPA 1965).
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Additionally, the Examiner found that “it would have been obvious to
a person of ordinary skill in the art to arrange for stocking
locations/warehouses and distribution centers to be in close proximity, in
order to minimize transportation time, provide timely services to customers,
and increase productivity and revenue.” (FF 2.) The Examiner is correct in
espousing common sense in dealing with a familiar item, such as wait time,
in an obviousness determination. See KSR at 1742. This, taken together
with the Examiner’s articulated reasoning having some rational
underpinning to support the legal conclusion of obviousness (FF 2), supports
that a prima facie case of obviousness has been established.
3. Finally, Appellants do not challenge the Examiner’s finding that
Ettl discloses travel time between distribution points Atlanta and Cleveland
is within two hours (FF 1) as required by the claims. Rather, Appellants
argue that “[a]ll of the parts in Ettl's description follows [(sic)] a fixed path
as shown in his FIG. 1 supply chain network. There is no opportunity in
Ettl's disclosure for an alternate supply path.” (Appeal Br.11.)
We are not persuaded by Appellants’ argument here because the
argument “fail[s] from the outset because . . . [it is] not based on limitations
appearing in the claims . . .,” and is not commensurate with the broader
scope of claim 1 which merely recites a plurality of stocking locations
without limiting them as alternate supply paths outside of a fixed path as
argued by Appellants. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).

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CONCLUSIONS OF LAW
1. We conclude the Appellants have not shown that the Examiner
erred in rejecting claims 3-4 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Ettl.
2. We conclude the Appellants have not shown that the Examiner
erred in rejecting claims 6, 7, 21, 22, and 24-27 under 35 U.S.C. § 103(a)
as being unpatentable over Ettl in view of Kaylan.

DECISION
The decision of the Examiner to reject claims 3, 4, 6, 7, 19, 21, 22, 24-
27 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) (2007).

AFFIRMED

hh

William E. Schiesser
IBM Corporation Dept. IQ0A/Bldg.40-3
1701 North Street
Endicott, NY 13760