Ex Parte LI et al

Patent Trial and Appeal Board

Jul 29, 2013

11342768 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JIA LIN LI, LEV MIRLAS,
ZHONG HUA WU, XIA ZHANG, and YANCHUN ZHAO
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Appeal 2011-008261
Application 11/342,768
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2011-008261
Application 11/342,768

2
In response to our Decision on Appeal mailed July 31, 2013
(hereinafter “Dec.”), Appellants filed a Request for Rehearing on September
28, 2013 (hereinafter “Req.”). Appellants assert that while the Examiner
admitted that Borders does not explicitly disclose “allocating an inventory
item for the order item irrespective of an underlying inventory allocation
strategy,” as recited in independent claim 6, the Board found that Borders
did disclose the allocating step. Accordingly, Appellants request that the
rejection of claims 6, 10, and 18-26 under 35 U.S.C. § 103(a) as obvious
over Borders be designated a new ground of rejection under 35 U.S.C.
§ 102(b), pursuant to 37 C.F.R. § 41.50(b) (Req. 2-4). We agree, and
designate this rejection a new ground under 35 U.S.C. § 102(b).
Appellants next assert that “inventory allocation strategy” is a term of
art that conveys a specific meaning to those skilled in the art, and thus that
the Board’s claim construction based on dictionary definitions was
erroneous (Req. 4-6, 8-11). Appellants’ assertions are misplaced. As an
initial matter, we note that Appellants have not provided an allegedly proper
construction of “inventory allocation strategy,” with supporting evidence in
the form of a reference or Declaration. In the absence of such evidence, it is
difficult for the Board to objectively ascertain the validity of Appellants’
assertions.
Appellants do provide, in footnotes on page 5 of the Appeal Brief,
alleged examples of inventory allocation strategies. However, examples do
not make a claim construction. Accordingly, in the absence of evidence
supporting an allegedly proper construction of “inventory allocation
strategy” as a term of art, we decline to modify our claim construction.
Appeal 2011-007282
Application 11/868,745

3
Appellants further assert that the Board’s use of the qualifier “even if”
in conjunction with the strategy in Borders “to do nothing with the item,”
shows that the strategy “to do nothing with the item” is not inherent in
Borders (Req. 7-8). Appellants’ assertions are misplaced. The phrase “even
if” was used to show that whatever the previous strategy for an item may
have been, “even if,” as an example, the strategy is “to do nothing with the
item,” that strategy is discarded for a new strategy when an item is allocated
to a customer. In other words, the proper focus should not be “to do nothing
with the item,” but whether it is inherent in Borders that the item had a
strategy, any strategy, prior to allocation to a customer, whatever that
strategy may be. As the customer to whom the item was allocated did not
exist prior to allocation, such a feature is indeed inherent in Borders. The
fact that Borders does not disclose the specific strategy “to do nothing with
the item” is irrelevant, as it was merely provided as an example.
Appellants additionally assert that “to do nothing with the item” is not
an art-recognized “inventory allocation strategy,” and even fails to meet the
Board’s claim construction of “inventory allocation strategy,” because doing
nothing does nothing to advance the goal of assigning or allotting inventory
(Req. 8-9). We disagree. By doing nothing with the item at the present
time, the item is available for allocation. So perhaps a more precise working
of the strategy of “to do nothing with the item” is “await allocation.” As for
the example that “sitting on a chair is [not] a strategy for running a marathon
in under 4 hours,” Appellants arguments are again misplaced (Req. 9).
While “sitting on a chair” may be an admittedly ineffective strategy for
“running a marathon in under 4 hours,” it is nevertheless a strategy.
Appeal 2011-007282
Application 11/868,745

4
Appellants then attempt to say that certain examples are “tactics” or
“implementations” as opposed to “plans” or “strategies” (Req. 9-10).
Appellants now understand the Board’s difficulties. Without specific
definitions as to what constitutes “tactics,” “implementations,” “plans,” or
“strategies,” one of ordinary skill has no plausible way of discerning
whether something falls into one category or another. Put another way,
without definitions, one of ordinary skill cannot determine when something
crosses the line from “tactics” or “implementation” to “plan” or “strategy.”
Using Appellants’ tennis example, one could argue that the overall strategy
or plan is “to win the tennis match.” Then, “hitting to your opponent’s
backhand” becomes a tactic or implementation of that plan or strategy.
However, as Appellants have noted, “hitting to your opponent’s backhand”
can also be a plan or strategy, with tactics or implementations concerning
forehand, backhand and the like. Accordingly, “hitting to your opponent’s
backhand” can simultaneously be all of “tactic,” “implementation,” “plan,”
and “strategy.” Thus, absent a proper claim construction of “inventory
allocation strategy,” an item “doing nothing” or “awaiting allocation,” or
any other status prior to allocation to a new customer, is an “inventory
allocation strategy” under a broadest reasonable construction.
Appellants assert that since Borders does not disclose “identify[ing]
the underlying inventory allocation strategy being employed” (Req. 12),
Borders cannot disclose “the check inventory method manages a checked
data structure, coupled to the common inventory interface, according to the
underlying inventory allocation strategy,” as recited in dependent claim 25.
Appellants’ assertions are misplaced. Dependent claim 25 does not recite
“identify[ing] the underlying inventory allocation strategy being employed.”
Appeal 2011-007282
Application 11/868,745

5
If Appellants are asserting that such identification is necessary to “manage[ ]
a checked data structure. . . according to the underlying inventory allocation
strategy,” we disagree. Even assuming arguendo that Borders does not
explicitly disclose such identification, webstore 132 of Borders maintains a
resource capacity data cache of currently available and reserved capacity
resources, and retrieves this data when required (col. 26, ll. 14-23). These
operations support, and therefore are managed in accordance with, all
underlying inventory allocation strategies in Borders, without an explicit
identification of that strategy. Put another way, a component of a system
may be a passive component, but nevertheless completely support the
overall operation strategy of the system.
Insofar as we have designated a new ground of rejection of claims 6,
10, and 18-26 under 35 U.S.C. § 102(b), and addressed Appellants’
arguments herein, Appellants’ Request for Rehearing is granted. In all other
respects, Appellants’ Request for Rehearing is denied.
GRANTED-IN-PART

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