Ex Parte Gerber et al

Patent Trial and Appeal Board

Nov 15, 2013

11677093 (P.T.A.B. Nov. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIMOTHY JAMES GERBER, IVORY WELLMAN KNIPFER,
and WILLIAM ROBERT TAYLOR
___________

Appeal 2011-010289
Application 11/677,093
Technology Center 3600
____________

Before MEREDITH C. PETRAVICK, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010289
Application 11/677,093

2
STATEMENT OF THE CASE
Timothy James Gerber et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 26-27 and 32. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 26, reproduced below, is illustrative of the subject matter on
appeal.
26. A computer-implemented method for determining
purchase requirements for a component in an inventory control
system, the method comprising the steps of:
(A) providing at least one processor;
(B) providing computer readable memory in
communication with the at least one processor;
(C) storing order demands and forecasts in the memory;
(D) storing physical inventory in the memory;
(E) determining demand for the component from the
order demands and forecasts stored in step (C) and from the
physical inventory stored in step (D);
(F) copying the physical inventory for the component to a
logical inventory for the component;
(G) reading a description for an assembly that specifies
the component of the assembly;
(H) reading a logical inventory policy that specifies:

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 7, 2010) and Reply Brief (“Reply Br.,” filed Apr. 22, 2011),
and the Examiner’s Answer (“Ans.,” mailed Mar. 14, 2011).

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(H1) whether the component in the assembly may
be reused or not if the assembly is disassembled;
(H2) whether the component in the assembly is an
explodable part, wherein an explodable part is an
assembly of other components; and
(H3) a reduction percentage less than 100% that
specifies a percentage of the assembly in the physical
inventory that may be potentially disassembled;
(I) determining from the reduction percentage a number
of the at least one assembly that may be potentially
disassembled;
(J) determining from the physical inventory stored in step
(D) excess inventory of the assembly that includes the
component;
(K) determining from the physical inventory stored in
step (D) and the information in (H1) and (H3) in the logical
inventory policy a number of the component in the excess
inventory that may be reused;
(L) determining from (H2) in the logical inventory policy
whether the component is an explodable part;
(M) when the component is an explodable part, repeating
steps (I), (J), (K) and (L) for each sublevel in the explodable
part specified in the description of the assembly read in step
(G);
(N) when the component is not an explodable part and
(H1) in the logical inventory policy indicates the component
may be reused, increasing the logical inventory of the
component by the number of the component determined in step
(K) for each level of the part, wherein the logical inventory for
the component is greater than the physical inventory of the
component due to potential reuse of the component if
assemblies in the excess inventory are disassembled; and
(O) determining the purchase requirements for the
component based on the demand for the component and the
logical inventory for the component.

Appeal 2011-010289
Application 11/677,093

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Cheng
Mok
Abbott
U.S. 2005/0283412 A1
U.S. 7,136,713 B2
U.S. 7,251,611 B2
Dec. 22, 2005
Nov. 14, 2006
Jul. 31, 2007

The following rejections are before us for review:
1. Claim 27 is rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claim 27 is rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the
subject matter that Appellants regard as the invention.
3. Claims 26-27 and 32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cheng, Mok, and Abbott.

ISSUES
The first issue is whether the Examiner has established a prima facie
showing that claim 27 fails to comply with the requirements of 35 U.S.C. §
101.
The second issue is whether claim 27 is indefinite under 35 U.S.C. §
112, second paragraph, because it recites both an apparatus and a method.
The third issue is whether claims 26-27 and 32 are unpatentable under
35 U.S.C. § 103(a) over Cheng, Mok, and Abbott. Specifically, whether the
prior art teaches steps H and H3 of claim 26.

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FINDINGS OF FACT
We find that the findings of fact, which appear in the Analysis below,
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
The rejection of claim 27 under § 101
We are persuaded by the Appellants’ argument (App. Br. 8-10 and
Reply Br. 3-4) that the Examiner erred in rejecting claim 27 under 35 U.S.C.
§ 101. We agree with the Appellants that the Examiner fails to establish a
prima facie showing that claim 27 fails to comply with the requirements of
35 U.S.C. § 101. While the rejection is based upon 35 U.S.C. § 101, the
body of the rejection seems to be directed to whether claim 27 is indefinite
under 35 U.S.C. § 112, second paragraph, (see Ans. 6 “these claims . . .
accordingly[,] are rejected as vague and indefinite under § 112, second
paragraph”).
Accordingly, the rejection of claim 27 under 35 U.S.C. § 101 is
reversed.

The rejection of claim 27 under § 112, second paragraph
We are persuaded by the Appellants’ argument (Reply Br. 1-2) that
the Examiner erred in rejecting claim 27 under 35 U.S.C. § 112, second
paragraph, as being indefinite. The Examiner asserts that claim 27 recites
both an apparatus and method steps. Ans. 5. However, we agree with the
Appellants that the “steps” at issue are not steps, but functional language.
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The Appellants may use functional language or any style of expression or
format of claim which makes clear the boundaries of the subject matter for
which protection is sought. As noted by the Court in In re Swinehart, 439
F.2d 210, 212 n.4 (CCPA 1971), a claim may not be rejected solely because
of the type of language used to define the subject matter for which patent
protection is sought.
Accordingly, the rejection of claim 27 under 35 U.S.C. § 112, second
paragraph, as being indefinite is reversed.

The rejection of claims 26-27 and 32 under § 103(a) as being unpatentable
over Cheng, Mok, and Abbott
We are persuaded by the Appellants’ argument (App. Br. 14-16 and
Reply Br. 7-11) that the Examiner erred in rejecting claim 26 under 35
U.S.C. § 103(a) as being unpatentable over Cheng, Mok, and Abbott. We
agree with the Appellants that the combination of Mok and Abbott, upon
which the Examiner relies (Ans. 11), does not teach steps H and H3. We
find that while Mok teaches a binary tree or an assembly/disassembly tree,
which contains information about the process of assembling or
disassembling a product (see for example, Mok, col. 7, ll. 30-63 and Figs. 5
and 6), Mok fails to teach step H3’s reduction percentage. Further, we find
that Abbott’s teaching of a percentage yield (i.e., “percentage of total parts
that are actually yielded as a result of demanufacture based on historical,
statistical data for a particular model” Abbott col. 5, ll. 7-9) fails to cure the
deficiency of Mok. We agree with the Appellants that one of ordinary skill
in the art would not have been led by these teachings of Mok and Abbott to
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step H3’s reduction percentage which “specifies a percentage of the
assembly in the physical inventory that may be potentially disassembled.”
Claims 27 and 32 recite similar limitations and were similarly rejected
(see Ans. 17 and 19). Accordingly, the rejection of claims 26-27 and 32
under 35 U.S.C. § 103(a) as being unpatentable over Cheng, Mok, and
Abbott is reversed.

DECISION
The decision of the Examiner to reject claims 26-27 and 32 is
reversed.

REVERSED

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