Ex Parte Knipfer et al

Patent Trial and Appeal Board

Aug 25, 2016

12191170 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/191,170 08/13/2008
85096 7590
Duke W, Yee
Yee & Associates, P.C.
P.O. Box 802333
Dallas, TX 75380
08/29/2016
FIRST NAMED INVENTOR
Ivory Wellman Knipfer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RPS920080127US 1 1269
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IVORY WELLMAN KNIPPER, FRASER ALLAN SYME, and
MATTHEW H. ZEMKE
Appeal2014-002771
Application 12/191,170
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
CRAWFORD, 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 decision rejecting claims 1, 3-10, 12 and 14--20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A method implemented by a computer for substituting a
group of parts in an order, the computer implemented method
compnsmg:
responsive to receiving a request for an order, the
computer creating a parts list for the order;
Appeal2014-002771
Application 12/191,170
the computer determining whether each part in the parts
list is present in current inventory stock;
responsive to a determination that any of a first group of
parts in the parts list is not present in current inventory stock,
the computer determining a second group of parts in the
current inventory stock is a valid substitution group for
replacing the first group of parts, wherein the number of parts
in the first group of parts is not equal to the number of parts in
the second group of parts, wherein a first assembly includes the
first group of parts and a second assembly includes the second
group of parts, and the first group of parts of the first assembly
are different from the second group of parts of the second
assembly such that the first assembly is different from the
second assembly in that the number of parts in the first
assembly is not equal to the number of parts in the second
assembly; and
the computer updating the order by replacing the first
group of parts in the parts list with the identified second group
of parts, wherein the second group of parts in the current
inventory stock is a valid substitution group for replacing the
first group of parts only ifthe first group of parts is located
•,1 • '. 1 1 ' .. • 1 1 wnnm a pan1curnr suose1 or me oraer.
Appellants appeal the following rejections:
1. Claims 1-18, 12 and 14--18 under 35 U.S.C. § 103(a) as unpatentable
over Von Helmolt and McDonald.
2. Claims 9, 10, 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over
Von Helmolt, McDonald, and Home.
ISSUE
Did the Examiner err in rejecting claim 1 because the prior art does
not disclose replacing the first group of parts only if the first group of parts
is located within a particular subset of the order?
2
Appeal2014-002771
Application 12/191,170
Did the Examiner err in rejecting claim 10 because the prior art does
not disclose a mapping control table to find substitution groups for the first
group of parts?
ANALYSIS
Appellants argue that prior art does not disclose determining if the
first group of parts are located within a particular subset of the order. We
agree.
Claim 1 recites, in pertinent part, a first group of parts and a second
group of parts for replacing the first group of parts.
The Examiner finds disclosure of the aspect of claim 1 in
paragraph 21 of McDonald (Final Act. 6). This paragraph of McDonald
discloses determining if open orders exist for the compatible parts and
determining whether the compatible parts are classified as end-of-life parts.
The compatible parts, as disclosed by McDonald, are used to replace
requested parts and, as such, in accordance with the recitations in claim 1,
the requested parts are a first group of parts and the compatible parts are a
second group of parts. As such, McDonald discloses making a
determination about the second group of parts, not the first group of parts, as
required by claim 1. In addition, the determinations made in McDonald do
not relate to whether the parts are located within a particular subset of the
order but rather whether open orders exist for the part.
In response to Appellants' argument that the prior art does not
disclose this subject matter, the Examiner states that a part can reasonably be
construed to be an order (Ans. 3). However, the Examiner has not made
clear how McDonald discloses that a determination is made that the first
3
Appeal2014-002771
Application 12/191,170
group of parts, which the Examiner finds is the order, is located within a
subset of the order, which is the part. We agree with Appellants that it is not
possible for a first group of parts to be located within a particular subset of
the part.
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 1 and claims 3-9 dependent therefrom. We will also not sustain the
Examiner rejection of claim 12 and claims 14--19 because these claims also
require determining if the first group of parts is located within a subset of the
order.
In regard to claim 10, Appellants argue that the prior art does not
disclose a mapping control table that is accessed to find substitution groups
of parts having equivalent functions to the first group of parts. The Examiner
relies on the teaching of a substitution parts file disclosed in paragraph 32 of
McDonald as teaching the required mapping control table. However, the
Examiner has not established that the substitution parts file allows one to
find substitution groups for a first group of parts. Paragraph 32 discloses
that the substitution parts file is a listing of parts that are within an
enterprise's inventory that may be used as substitutions, replacements or
matching parts. However, nowhere in this paragraph is it disclosed that the
listing relates to a first group of parts and a second substitute, replacement or
matching group of parts. Rather, McDonald appears to be directed to
finding a second part that can replace a first part. For example,
paragraph 46, which is also relied on by the Examiner, and paragraph 4 7
disclose using the substitute parts file to find a compatible part for a part A.
In response to Appellants' argument that the prior art does not disclose the
recited mapping control table from which can be found substitution groups
4
Appeal2014-002771
Application 12/191,170
for the first group, the Examiner additionally relies on paragraph 44 of
McDonald. However, this paragraph, like paragraph 32, relates to a list
which can be accessed to find a substitution part of a part. The Examiner
has not established that the prior art discloses a mapping control table for
groups of parts and has not addressed why a person of ordinary skill in art
would have been motivated to modify the substitute parts file of McDonald
that contains a list of compatible substitution parts for a selected part so as to
include a second group of parts that can be substituted for a first group of
parts.
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 10. We will also not sustain the rejection as it is directed to
claim 20 because claim 20 also recites a mapping control table that is
assessed to find substitution groups for the first group of parts.
DECISION
The decision of the Examiner is reversed.
REVERSED
5