11009435 (B.P.A.I. Sep. 1, 2010)

Ex Parte Johnson et al

Board of Patent Appeals and InterferencesSep 1, 2010

11009435 (B.P.A.I. Sep. 1, 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. 11/009,435 12/09/2004 Blake Johnson P-9276-US 5055 7590 09/01/2010 Eitan Law Group C/O LandonIP, Inc. Suite 450 1700 Diagonal Road Alexandria, VA 22314 EXAMINER BOSWELL, BETH V ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 09/01/2010 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) UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte BLAKE JOHNSON, DARIO BENAVIDES, 8 HEIKO PIEPER, COLIN KESSINGER, 9 ALLAN GRAY, and ANTJE KANN 10 ___________ 11 12 Appeal 2010-008773 13 Application 11/009,435 14 Technology Center 3600 15 ___________ 16 17 Before HUBERT C. LORIN, ANTON W. FETTING, and 18 BIBHU R. MOHANTY, Administrative Patent Judges. 19 FETTING, Administrative Patent Judge. 20 DECISION ON APPEAL1 21 1 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. Appeal 2010-008773 Application 11/009,435 2 STATEMENT OF THE CASE2 1 Blake Johnson, Dario Benavides, Heiko Pieper, Colin Kessinger, Allan 2 Gray, and Antje Kann (Appellants) seek review under 35 U.S.C. § 134 3 (2002) of a final rejection of claims 8-21, the only claims pending in the 4 application on appeal.3 We have jurisdiction over the appeal pursuant to 5 35 U.S.C. § 6(b) (2002). 6 The Appellants invented a way of analyzing relationships among 7 sourcing variables in material sourcing (Specification ¶ 0003). 8 An understanding of the invention can be derived from a reading of 9 exemplary claim 8, which is reproduced below [bracketed matter and some 10 paragraphing added]. 11 8. A system for analyzing relationships between sourcing 12 variables in the presence of uncertainty, comprising: 13 [1] a data generation engine configured 14 for identifying one or more sourcing variables 15 for defining a condition and 16 for identifying one or more sourcing performance 17 scenarios from a set of available sourcing performance 18 scenarios, 19 2 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed October 12, 2007) and Reply Brief (“Reply Br.,” filed June 26, 2008), and the Examiner’s Answer (“Ans.,” mailed May 27, 2010). 3 Claims 1-7 were cancelled by an Examiner’s Amendment mailed June 2, 2010. Appeal 2010-008773 Application 11/009,435 3 represented by one or more probability 1 distributions and/or stochastic processes, 2 each of which represent sourcing performance 3 under a different prospective outcome of one or 4 more relevant sources of uncertainty, 5 that satisfy the condition; 6 [2] a database coupled to the data generation engine and 7 configured for storing 8 the one or more variables and 9 the one or more sourcing performance scenarios; and 10 [3] an analytical engine coupled to the database and configured 11 for analyzing 12 at least one relationship between the one or more 13 sourcing variables 14 utilizing the one or more sourcing performance scenarios 15 identified. 16 The Examiner relies upon the following prior art: 17 Cheng US 6,138,103 Oct. 24, 2000 Claim 20 stands rejected under 35 U.S.C. § 101 as directed to non-18 statutory subject matter. 19 Claim 21 stands rejected under 35 U.S.C. § 112, second paragraph, as 20 failing to particularly point out and distinctly claim the invention. 21 Claims 8-21 stand rejected under 35 U.S.C. § 102(a) and (e) as 22 anticipated by Cheng. 23 24 25 Appeal 2010-008773 Application 11/009,435 4 DISPOSITION OF THE APPEAL 1 The Examiner entered a new ground of rejection in the Examiner’s 2 Answer against claim 20 under 35 U.S.C. §101 as being directed to 3 nonstatutory subject matter and against claim 21 under 35 U.S.C. §112, 4 second paragraph, as being indefinite. Answer 3-7. The Examiner properly 5 gave notice of the new ground of rejection (Answer 3) and the Technology 6 Center Director approved it. Answer 19. As the Answer indicated (Answer 7 18-19), the Appellants were required to respond to the new ground within 8 two months in either of two ways: 1) reopen prosecution (see 37 CFR 9 41.39(a)(2)(b)(1)); or 2) maintain the appeal by filing a reply brief as set 10 forth in 37 CFR 41.41 (see 37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua sponte 11 dismissal of the appeal as to the claims subject to the new ground of 12 rejection.” Answer 18-19. According to the record before us, neither option 13 appears to have been exercised. 14 Accordingly, the appeal as to claims 20 and 21, subject to the new 15 ground of rejection under §101 as being directed to nonstatutory subject 16 matter and under 35 U.S.C. §112, second paragraph, as being indefinite 17 stands dismissed. 18 Upon return of the application to the Examiner, the Examiner should 19 (1) cancel claims 20 and 21 subject to the new ground of rejection, and (2) 20 notify the Appellants that the appeal as to claims 20 and 21, subject to the 21 new ground of rejection under 35 U.S.C. § 101, as being directed to 22 nonstatutory subject matter, is dismissed and claims 20 and 21 are cancelled. 23 See Manual of Patent Examining Procedure (MPEP) § 1207.03, 8th ed., Rev. 24 7, Jul. 2008. 25 Appeal 2010-008773 Application 11/009,435 5 Given that the appeal as to claims 20 and 21 stands dismissed, the 1 rejections before us for review are reduced to as follows: 2 Claims 8-19 stand rejected under 35 U.S.C. § 102(a) and (e) as 3 anticipated by Cheng. 4 ISSUES 5 The issue of novelty hinges on whether Cheng’s use of demand 6 scenarios reads on the claimed sourcing scenarios. 7 FACTS PERTINENT TO THE ISSUES 8 The following enumerated Findings of Fact (FF) are believed to be 9 supported by a preponderance of the evidence. 10 Facts Related to the Prior Art - Cheng 11 01. Cheng is directed to production planning in an uncertain 12 demand environment using a "Payoff Table" approach by 13 representing the uncertainty in the demand environment by 14 employing a scenario-based analysis performing multiple 15 optimization runs against different demand scenarios and 16 combining an implosion technology with the scenario-based 17 analysis for generating for any one individual demand scenario, a 18 deterministic solution which is optimal for the particular demand 19 scenario. Cheng 2:33-60. Cheng computes the performance 20 measure of each solution against all other potential demand 21 scenarios. The complete enumeration of performance measures for 22 each solution against all demand scenarios produces a payoff 23 Appeal 2010-008773 Application 11/009,435 6 table, which may be referred to as a production plan payoff table 1 (PPPT). 2 02. Cheng describes a scenario based analysis using data 3 representing a set of scenarios, demand as an m x n matrix (m 4 being the number of products and n the number of time periods), 5 that produces a production matrix solution consisting of both a 6 production schedule for all products sold and a procurement 7 schedule for all components to be sourced. Cheng 4:49-5:13. 8 03. As Cheng’s inputs are under uncertainty, they reflect stochastic 9 functions that may require stochastic linear programming 10 techniques. Alternately, a heuristic based solution can simplify 11 the calculations. Cheng 5:14-42. 12 04. Cheng creates a demand scenario to represent each possible 13 realization of uncertain demand. A deterministic solution method 14 is used for each scenario. Since there is uncertainty as to which 15 demand scenario will actually occur, Cheng evaluates the 16 expected overall performance measure of a production plan 17 against multiple scenarios. The choice of a production plan is 18 based on the expected performance or robustness of the 19 production plan against all possible scenarios. Cheng 5:47-6:12. 20 05. The demand scenarios are represented by a canonical tree. 21 Each node represents the demands for all products in a given 22 period and each path represents a scenario. Cheng 6:13-26. 23 24 25 Appeal 2010-008773 Application 11/009,435 7 Facts Related to the Appellants’ Disclosure 1 06. In an exemplary embodiment, a data generation engine either 2 creates or selects existing data from a database. Specification ¶ 3 0019. 4 ANALYSIS 5 The Examiner found that Cheng described each of the three structural 6 limitations in claim 8. Ans. 12-13. The Appellants only argued claim 8, and 7 contended that the Examiner misinterpreted Cheng. The Appellants argued 8 that Cheng produces planning based on demand scenarios whereas the 9 claims are directed to analyzing relationships between sourcing variables by 10 identifying sourcing performance scenarios. Appeal Br. 7. The Appellants 11 also argued that Cheng teaches generating outputs of performance measure 12 across demand scenarios, whereas the “present Application actually takes 13 the performance measures across sourcing scenarios as one of the inputs into 14 the analysis process.” Appeal Br. 7-8; Reply Br. 8. 15 We take the first argument as drawing a distinction between sourcing 16 and demand variables. As the Appellants noted at Reply Br. 10-11, the word 17 “sourcing” is derived from the word source, which when used as a verb, 18 means to specify the source of or obtain from a source. Thus a sourcing 19 variable is a variable that is some indication or measure of how something 20 relates to some source. Cheng provides at least two sets of such sourcing 21 variables, being the production plan of manufactures and the procurement 22 plans of components. FF 02-03. As to the second argument, Cheng uses 23 stochastic demand scenarios as inputs, not outputs. To the extent the 24 Appellants argued that a demand scenario is not a sourcing performance 25 Appeal 2010-008773 Application 11/009,435 8 scenario, the claim does not limit the manner in which such scenarios are 1 related to sourcing performance. The Appellants use dictionary definitions 2 to distinguish source from demand (Reply Br. 10-11), but such distinctions 3 between nouns to not carry through to adjectives, where the character of data 4 described by adjectives has many related attributes. For example, Cheng’s 5 demand scenario is related to the sourcing of the components required for 6 manufacture to meet demand. As such, Cheng’s demand scenarios are 7 component sourcing scenarios as well. 8 CONCLUSIONS OF LAW 9 Rejecting claims 8-19 under 35 U.S.C. § 102(a) and (e) as anticipated by 10 Cheng is not in error. 11 DECISION 12 To summarize, our decision is as follows. 13 • The rejection of claims 8-19 under 35 U.S.C. § 102(a) and (e) as 14 anticipated by Cheng is sustained. 15 • Upon return of the application to the Examiner, the Examiner should 16 (1) cancel claims 20 and 21 subject to the new grounds of rejection 17 and (2) notify the Appellants that the appeal as to claims 20 and 21, 18 subject to the new grounds of rejection under §101, as being directed 19 to nonstatutory subject matter, is dismissed and claims 20 and 21 are 20 cancelled. 21 Appeal 2010-008773 Application 11/009,435 9 No time period for taking any subsequent action in connection with this 1 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2 § 1.136(a)(1)(iv) (2007). 3 4 AFFIRMED 5 6 7 8 mev 9 10 Address 11 Eitan Law Group 12 C/O LandonIP, Inc. 13 Suite 450 14 1700 Diagonal Road 15 Alexandria VA 22314 16