Ex Parte Mathe et al

Board of Patent Appeals and Interferences

Jan 16, 2009

10746123 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JAMES G. MATHE, CHRISTINE R. RICHARDS, and 8
CHRISTINE A. MAUTHE 9
___________ 10
11
Appeal 2008-3790 12
Application 10/746,123 13
Technology Center 3600 14
___________ 15
16
Decided: January 16, 2009 17
___________ 18
19
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge.22
DECISION ON APPEAL 23
STATEMENT OF THE CASE 24
James G. Mathe, Christine R. Richards, and Christine A. Mauthe 25
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 26
1-15, the only claims pending in the application on appeal. 27
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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 1
(2002). 2
3
We AFFIRM-IN-PART and ENTER A NEW GROUND OF 4
REJECTION PURSUANT TO 37 C.F.R. § 41.50(b). 5
6
The Appellants invented a way of sourcing orders for groups of products 7
by organizing a plurality of products into a plurality of distinct groups of 8
products and assigning the order to a distribution center based on various 9
criteria (Specification 1:25-28). 10
An understanding of the invention can be derived from a reading of 11
exemplary claims 1 and 11, which are reproduced below [bracketed matter 12
and some paragraphing added]. 13
1. A method of sourcing orders for groups of products, the 14
method comprising: 15
[1] organizing a plurality of products into a plurality of distinct 16
groups of products; 17
[2] determining a capacity for each distribution center in a 18
plurality of distribution centers to ship each of the distinct 19
groups of products; and 20
[3] assigning an order for one of the groups of products to a 21
first distribution center 22
based on the capacity of each distribution center to ship 23
the order. 24
25
11. A method of sourcing orders for groups of products, the 26
method comprising: 27
[1] organizing a plurality of products into a plurality of distinct 28
groups of products; 29
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[2] determining a storage capacity range for each one of a 1
plurality of containers relative to each distinct group of 2
products; 3
[3] assigning an order for at least one distinct group of products 4
onto one of the containers 5
if the order fits in the storage capacity range of the 6
container. 7
8
This appeal arises from the Examiner’s Final Rejection, mailed 9
September 23, 2005. The Appellants filed an Appeal Brief in support of the 10
appeal on June 26, 2006. An Examiner’s Answer to the Appeal Brief was 11
mailed on September 13, 2007. A Reply Brief was filed on November 13, 12
2007. 13
PRIOR ART 14
The Examiner relies upon the following prior art: 15
Kooy US 3,705,410 Dec. 5, 1972
Bernard US 5,472,309 Dec. 5, 1995
Onozaki US 6,026,378 Feb. 15, 2000
Huang US 6,151,582 Nov. 21, 2000
Braun US 6,341,266 B1 Jan. 22, 2002
Klots US 6,622,127 B1 Sep. 16, 2003
REJECTIONS 16
Claims 11, 14, and 15 stand rejected under 35 U.S.C. § 102(b) as 17
anticipated by Bernard. 18
Claims 1, 5, 8, and 10 stand rejected under 35 U.S.C. § 103(a) as 19
unpatentable over Huang, Bernard, and Klots. 20
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Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Huang, Bernard, Klots, and Onozaki.1 2
Claims 2-4 and 9 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Huang, Bernard, Klots, and Braun. 2 4
Claims 11, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Bernard and Kooy. 6
Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as 7
unpatentable over Bernard, Kooy, and Onozaki.3 8
ISSUES 9
The issues pertinent to this appeal are 10
• Whether the Appellants have sustained their burden of showing that 11
the Examiner erred in rejecting claims 11, 14, and 15 under 35 U.S.C. 12
§ 102(b) as anticipated by Bernard. 13

1 The Examiner had applied this rejection to claims 1, 6, and 7 in the Final
Rejection at 4, and the Appellants respond as such in the Brief at 13. The
Examiner withdrew the rejection as to claim 1 in the Answer at 3.

2 The Examiner had applied this rejection to claims 1-4 and 8-9 in the Final
Rejection at 4, and the Appellants respond as such in the Brief at 16. The
Examiner withdrew the rejection as to claims 1 and 8 in the Answer at 3.

3 The Examiner had applied this rejection to claims 11-15 in the Final
Rejection at 7, and the Appellants respond as such in the Brief at 21. The
Examiner withdrew the rejection as to claims 11, 14, and 15 in the Answer
at 3.
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• Whether the Appellants have sustained their burden of showing that 1
the Examiner erred in rejecting claims 1, 5, 8, and 10 under 35 U.S.C. 2
§ 103(a) as unpatentable over Huang, Bernard, and Klots. 3
• Whether the Appellants have sustained their burden of showing that 4
the Examiner erred in rejecting claims 6 and 7 under 35 U.S.C. 5
§ 103(a) as unpatentable over Huang, Bernard, Klots, and Onozaki. 6
• Whether the Appellants have sustained their burden of showing that 7
the Examiner erred in rejecting claims 2-4 and 9 under 35 U.S.C. 8
§ 103(a) as unpatentable over Huang, Bernard, Klots, and Braun. 9
• Whether the Appellants have sustained their burden of showing that 10
the Examiner erred in rejecting claims 11, 14, and 15 under 35 U.S.C. 11
§ 103(a) as unpatentable over Bernard and Kooy. 12
• Whether the Appellants have sustained their burden of showing that 13
the Examiner erred in rejecting claims 12 and 13 under 35 U.S.C. 14
§ 103(a) as unpatentable over Bernard, Kooy, and Onozaki. 15
The pertinent issues turn on whether the art applied describes or suggests 16
organizing a plurality of products into a plurality of distinct groups of 17
products and assigning an order for at least one distinct group of products 18
onto a container based on some criterion. 19
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
4
Bernard 5
01. Bernard is directed to an automated warehousing system for 6
receipt, storage and disposition of a wide variety of material items. 7
The warehousing system includes containers for receiving 8
different quantities and varieties of the material items. Container 9
storage includes a rotational storage carousel having connected 10
container support rack arrays that move about a horizontal 11
continuous track. The support rack arrays are arranged in side by 12
side fashion with each array including a vertically spaced 13
container racks. Each rack is suitable for carrying a container 14
(Bernard 3:12-25). 15
02. When material goods are received by Bernard’s warehousing 16
system they are placed in containers. After the operator has 17
indicated the identity and quantity of the received goods, the 18
controller calculates the space that will be required by the goods 19
and directs the operator to place the goods in a particular container 20
compartment. In order to minimize the total space required by 21
Bernard’s warehousing system, any time a compartment within a 22
container is filled, any other empty compartment within that 23
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container should be filled as well if at all possible (Bernard 15:5-1
30). 2
03. Bernard’s issue station functions to consolidate orders and 3
contains a consolidation queue holding a large number of tote 4
drawers. A particular customer order may request several items. 5
Thus, when the operator receives the first one of the ordered 6
goods, he would place those goods in a tote drawer associated 7
with the order. As the remaining goods are received, they would 8
be placed in the same tote drawer until the order is filled. The 9
goods may be shipped directly in the tote drawers (Bernard 8:24-10
41). 11
04. When an order is received by Bernard, it is entered into a 12
computer which searches the inventory record to determine 13
whether the ordered goods are in inventory. A master computer 14
would be used to organize the orders into related batches, with 15
each batch corresponding to a family of related goods. By way of 16
example, related families might include: hair care products; first 17
aid products; RX; and sporting goods. When an operator is ready 18
to begin filling orders, one of the containers that carries ordered 19
items is delivered to a work station. Each tote drawer is adapted to 20
receive a specific order. An instructional video terminal instructs 21
the operator which items are to be distributed next and the 22
quantity of units that are to be deposited into an open tote drawer. 23
After depositing the appropriate amount of aspirin in the first 24
drawer, the operator shuts the first drawer and another 25
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automatically opens with the video monitor displaying the number 1
of units to be placed in the next drawer. (Bernard 15: 48 – 16: 22). 2
Huang 3
05. Huang is directed to a decision support system for the 4
management of agile supply chains. The server side includes a 5
decision support system database that interfaces with one or more 6
model engines that perform analytical processes on the data to 7
determine requirements and make projections. The client side 8
includes Decision Support Frames that present the various view 9
points available in the system to the users (Huang 2:30-40). 10
06. In Huang, products are the end items that are produced and, 11
based on their various attributes, can be grouped into various 12
product groups. These products are stocked at various stock 13
locations (Huang 7:12-17). 14
07. In Huang, the Supply Data Space that characterizes product 15
supply has the following three dimensions: Production Resource; 16
Product/Component; and Time. Production resource can be at a 17
resolution of production resource, production resource group, or 18
production node. Product/Component can be at the resolution of 19
component, product or product group (Huang 8:7-15). 20
08. Among Huang’s processes in its manufacturing supply chain is 21
a vendor managed replenishment (VMR) program. VMR is a 22
process in which the supplier takes on the responsibility of 23
managing the inventory at the customer site for the products it 24
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supplies. This process operates on point-of-sales demand as 1
opposed to demand forecasts provided by the customers. VMR 2
involves formulating the contractual agreements between the 3
enterprise and the retailers as well as determining the operating 4
parameters such as shipment quantities and replenishment 5
frequencies (Huang 14:5-12). 6
09. To use VMR, a user first needs to choose the product/product 7
group and the distribution center of interest. For a given 8
replenishment scenario (a given set of delivery frequency, target 9
inventory level and customer service level), the system will 10
estimate the total cost including customer distribution center 11
inventory carrying cost, transportation cost and manufacturing 12
plant inventory carrying cost (Huang 34:57-63). 13
10. Huang describes a process of sanity check that uses a capacity 14
checking model to help determine the production requirements for 15
the given set of the sales requirements and safety stock 16
constraints. A user can scope the capacity checking model 17
appropriately through modification of: Location(s), Products or 18
product groups, Time horizon, Production lines, and Key 19
components (Huang 29:20-27). 20
11. The generation of replenishment orders is the main 21
functionality of Huang’s replenishment planning (Huang 36: 30-22
31). 23
12. Huang’s VMR will help the user set joint replenishment orders 24
so that the total cost for the replenishment batch can be 25
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minimized. The basic logic is to add or delete products included in 1
a replenishment batch to optimally use the transportation means 2
while maintaining satisfactory customer service level and 3
inventory level (Huang 36:66 – 37: 5). 4
13. After the initial replenishment quantity has been generated for 5
each product, the user may be interested in examining the entire or 6
only a selected set of products to make sure that the soft 7
information can be reflected in the actual replenishment orders. In 8
addition, a number of constraints such as product availability and 9
production capacity will also have to be taken into consideration. 10
Klots 11
14. Klots is directed to a warehouse management system that 12
maximizes throughput and reduces carrying costs by reducing the 13
number of stops that a container makes in the process of fulfilling 14
a customer order. This is accomplished by allocating inventory to 15
orders by selecting a pod in order to maximize throughput. If there 16
are multiple locations within the pod that stock the same inventory 17
item, then the method chooses one of those locations based upon 18
the expiration date. Finally, if a subset of these locations have 19
units that expire within the same expiration period (the soonest 20
expiration period), the method chooses the location with the 21
fewest units. In this manner, those inventory locations having the 22
most idle space are rapidly cleared to make more complete use of 23
the available space (Klots 2:41-56). 24
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15. Klots describes how, to run a distribution center economically, 1
at least three overarching concerns must be addressed: (1) 2
minimizing carrying costs per unit of inventory, (2) minimizing 3
spoilage, and (3) maximizing throughput (Klots 8:55-58). 4
Onozaki 5
16. Onozaki is directed to a warehouse managing system having a 6
terminal which reads a location code, the location code being 7
attached on a storage place and being representative of the storage 8
place, and an article code attached to each of the articles, and is 9
used for inputting article information including the quantity of the 10
articles (Onozaki 3:3-8). 11
17. In Onozaki, after inputting the orders, the warehouse managing 12
system prepares the picking list. The articles are loaded on the 13
trucks with reference to the truck allocation management data, 14
which shows article names, truck numbers, destinations or routes. 15
In summary, allocating truck is defined as the operation of 16
assigning the articles to the trucks, and preparing for the truck 17
allocation management data if necessary (Onozaki 10:54-67). 18
18. With respect to articles, if respective quantity, routes, and 19
customers are given, trucks can be assigned the articles according 20
to respective capacity (Onozaki 12:37-39). 21
Kooy 22
19. Kooy is directed to a data processing system for optimizing 23
warehouse storage. The system includes data representing (a) 24
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production quantities of units produced in a selected time period, 1
(b) expected shipping quantities, (c) an assumed bay depth, (d) 2
stacking height, (e) safety stock period, and (f) base position area. 3
The difference between (a) and (b) is determined for each of a 4
series of successive time periods, e.g., one through thirty days. 5
The number of units stored at the end of each time period is then 6
compared with those in storage when the product was first shipped 7
to establish the working storage cycle of period P in which the 8
quantity of units in storage returns to its original value or close to 9
its original value (Kooy 1:50-65). 10
Braun 11
20. Braun is directed to a maximization of the range of coverage 12
profiles in the deployment problem which arises in industrial 13
production planning systems. Braun proposes a new formulation 14
of the network flow problem that takes into account different 15
transport modes, calendar constraints, demand priorities, and fixed 16
flows of production. The objective of the algorithm is to select the 17
free variables of the range profile formulation such that, first, the 18
range of coverage profile is maximized and second, the 19
transportation costs are minimized. The proposed algorithm can 20
use any minimum-cost flow algorithm as a basic building block 21
(Braun 2:51-67). 22
Facts Related To The Level Of Skill In The Art 23
21. Neither the Examiner nor the Appellants has addressed the level 24
of ordinary skill in the pertinent arts of systems analysis and 25
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programming, manufacturing and distribution system design, and 1
order fulfilling and shipping logistics. We will therefore consider 2
the cited prior art as representative of the level of ordinary skill in 3
the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 4
2001) (“[T]he absence of specific findings on the level of skill in 5
the art does not give rise to reversible error ‘where the prior art 6
itself reflects an appropriate level and a need for testimony is not 7
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 8
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 9
Facts Related To Secondary Considerations 10
22. There is no evidence on record of secondary considerations of 11
non-obviousness for our consideration. 12
PRINCIPLES OF LAW 13
Claim Construction 14
During examination of a patent application, pending claims are 15
given their broadest reasonable construction consistent with the 16
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 17
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 18
Limitations appearing in the specification but not recited in the claim are 19
not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 20
1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 21
specification” without importing limitations from the specification into the 22
claims unnecessarily) 23
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Although a patent applicant is entitled to be his or her own lexicographer 1
of patent claim terms, in ex parte prosecution it must be within limits. In re 2
Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing 3
such definitions in the Specification with sufficient clarity to provide a 4
person of ordinary skill in the art with clear and precise notice of the 5
meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480 6
(Fed. Cir. 1994) (although an inventor is free to define the specific terms 7
used to describe the invention, this must be done with reasonable clarity, 8
deliberateness, and precision; where an inventor chooses to give terms 9
uncommon meanings, the inventor must set out any uncommon definition in 10
some manner within the patent disclosure so as to give one of ordinary skill 11
in the art notice of the change). 12
Anticipation 13
"A claim is anticipated only if each and every element as set forth in the 14
claim is found, either expressly or inherently described, in a single prior art 15
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 16
631 (Fed. Cir. 1987). "When a claim covers several structures or 17
compositions, either generically or as alternatives, the claim is deemed 18
anticipated if any of the structures or compositions within the scope of the 19
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 20
Cir. 2001). "The identical invention must be shown in as complete detail as 21
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 22
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 23
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 24
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 25
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Obviousness 1
A claimed invention is unpatentable if the differences between it and 2
the prior art are “such that the subject matter as a whole would have been 3
obvious at the time the invention was made to a person having ordinary skill 4
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 5
S.Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 6
(1966). 7
In Graham, the Court held that that the obviousness analysis is 8
bottomed on several basic factual inquiries: “[(1)] the scope and content of 9
the prior art are to be determined; [(2)] differences between the prior art and 10
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 11
in the pertinent art resolved.” 383 U.S. at 17. See also KSR, 127 S.Ct. at 12
1734. “The combination of familiar elements according to known methods 13
is likely to be obvious when it does no more than yield predictable results.” 14
Id. at 1739. 15
“When a work is available in one field of endeavor, design incentives 16
and other market forces can prompt variations of it, either in the same field 17
or a different one. If a person of ordinary skill can implement a predictable 18
variation, § 103 likely bars its patentability.” Id. at 1740. 19
“For the same reason, if a technique has been used to improve one 20
device, and a person of ordinary skill in the art would recognize that it would 21
improve similar devices in the same way, using the technique is obvious 22
unless its actual application is beyond his or her skill.” Id. 23
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“Under the correct analysis, any need or problem known in the field 1
of endeavor at the time of invention and addressed by the patent can provide 2
a reason for combining the elements in the manner claimed.” Id. at 1742. 3
ANALYSIS 4
Claims 11, 14, and 15 rejected under 35 U.S.C. § 102(b) as anticipated by 5
Bernard. 6
The Appellants argue these claims as a group. Accordingly, we select 7
claim 11 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2007). 8
The Examiner found that Bernard’s discussion of its system operation at 9
column 15 described the limitations of claim 11 (Answer 4). The Appellants 10
contend that there is no disclosure in Bernard relating to "determining a 11
storage capacity range for each one of a plurality of containers relative to 12
each distinct group of products" in combination with "assigning an order for 13
at least one distinct group of products onto one of the containers if the order 14
fits in the storage capacity range of the container" as recited in claim 11 15
(Brief 6:First full ¶). 16
We agree with the Appellants. The Examiner conflates Bernard’s 17
receiving and shipping procedures. The Examiner found Bernard’s product 18
organization into groups at Bernard 15:55-65, describing Bernard’s order 19
fulfillment operation (FF 04), but found Bernard’s capacity evaluation and 20
order assignment at Bernard 15:23+, describing Bernard’s part receiving 21
operation (FF 02). We find no suggestion in Bernard of assigning an order 22
for at least one distinct group of products onto one of Bernard’s containers 23
(tote drawer in Bernard) if the order fits in the storage capacity range of the 24
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container. Bernard assigns parts to containers in inventory based on 1
capacity, but does not suggest a similar test for assigning product orders if 2
the order fits a storage capacity range. 3
The Appellants have sustained their burden of showing that the 4
Examiner erred in rejecting claims 11, 14, and 15 under 35 U.S.C. § 102(b) 5
as anticipated by Bernard. 6
Claims 1, 5, 8, and 10 rejected under 35 U.S.C. § 103(a) as unpatentable 7
over Huang, Bernard, and Klots. 8
The Appellants argue claims 1 and 5 as a group and 8 and 10 as a group. 9
Accordingly, we select claims 1 and 8 as representatives of the groups. 10
37 C.F.R. § 41.37(c)(1)(vii) (2007). Claims 1 and 8 are similar except for 11
the criteria applied for order assignment. Claim 1 applies the criteria of 12
capacity and claim 8 applies the criteria of cost. 13
The Examiner found that Huang described capacity checking for product 14
groups; Bernard described organizing products into batches; and Klots 15
described determining a distribution center based on capacity and cost 16
(Answer 5-7). The Appellants contend that Huang describes assigning an 17
order to ship one type of product instead of to ship each of a plurality of 18
distinct groups of products (Brief 8:Last full ¶); Bernard combines orders for 19
different individual products into batches and has no reference to 20
determining a capacity of a distribution center to ship distinct groups of 21
products (Brief 8: Bottom ¶ - 9: Top ¶); and Klots places orders for different 22
individual products into a pod instead of organizing products into groups and 23
assigning an order based on capacity (Brief 9: Last full ¶). 24
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We disagree with the Appellants. Huang’s products are the end items 1
that are produced and, based on their various attributes, can be grouped into 2
various product groups. These products and groups are stocked at various 3
stock locations (FF 06). Thus limitation [1] is met. 4
Huang’s product supply is characterized by both product and the place 5
where product comes from (resource) (FF 07). Huang performs a capacity 6
check for meeting production requirements that depends on production 7
requirements, product groups, and production lines (resources) (FF 10). 8
Thus, Huang determines a capacity for each resource to ship each of the 9
distinct groups of products. Since products are distributed from such 10
production line resources, the resources function as distribution centers. 11
Therefore limitation [2] is met. 12
Huang’s vendor managed replenishment program (VMR) generates 13
replenishment orders (FF 11) by which the supplier takes on the 14
responsibility of managing the inventory at the customer site for the products 15
it supplies and requires determining operating parameters for supplying 16
those products (FF 08). To use VMR, a user first needs to choose the 17
product/product group and the customer distribution center of interest, and 18
the system will estimate the total cost including transportation cost (FF 09). 19
Huang’s VMR will help the user set joint replenishment orders so that the 20
total cost for the replenishment batch can be minimized. The basic logic is to 21
add or delete products included in a replenishment batch to optimally use the 22
transportation means while maintaining satisfactory customer service level 23
and inventory level (FF 12). After the initial replenishment quantity has 24
been generated for each product, a number of constraints such as product 25
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availability and production capacity will also have to be taken into 1
consideration (FF 13). Thus, Huang assigns a replenishment order for one 2
of the groups of products to a customer distribution center4 and relies on the 3
capacity of the production resources to fulfill the product group in assigning 4
a resource to fulfill the order. As the Examiner found, Klots describes 5
requiring the addressing of cost and throughput to run a distribution center in 6
the process of fulfilling customer orders (Answer 6-7; FF 14 & 15). Thus, 7
Klots shows that Huang’s supplier distribution centers would have, as 8
resources, similarly taken cost and capacity for throughput into account. As 9
also found by the Examiner, Bernard shows that assigning product to orders 10
may be done in batches with each batch corresponding to a family of related 11
goods (Answer 6; FF 04). Thus, the combination of Huang, Bernard, and 12
Klots suggests limitation [3] is met. 13
The Appellants’ arguments regarding Huang, Bernard, and Klots 14
responds to the rejection by attacking the references separately, even though 15
the rejection is based on the combined teachings of the references. 16
Nonobviousness cannot be established by attacking the references 17
individually when the rejection is predicated upon a combination of prior art 18
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 19
1986). 20
The Appellants also argue the lack of motivation to combine the 21
references (Br. 12-13). The Examiner found that the motivation was to 22

4 Huang’s terminology is somewhat confusing. Huang’s customer
distribution center is a destination, and does not correspond to the
distribution center in claim 1.
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increase efficiency based on capacity and grouping (Answer 5-7). The 1
Appellants contend this is not sufficiently specific and objective (Br. 12-13). 2
We find that since Bernard and Klots each describe an automated 3
warehousing system for production control such as that in Huang, they are 4
doing no more than describing functions that one of ordinary skill would 5
have seen as directly applying to Huang. “The combination of familiar 6
elements according to known methods is likely to be obvious when it does 7
no more than yield predictable results.” KSR, 127 S. Ct. at 1739. 8
As claim 8 differs from claim 1 only in basing the order assignment on 9
cost rather than capacity, and both Huang and Klots describe using both 10
capacity and cost in assigning product shipments, i.e. orders, to production 11
sources and distribution centers, the combination of Huang, Bernard, and 12
Klots similarly suggests claim 8. 13
The Appellants have not sustained their burden of showing that the 14
Examiner erred in rejecting claims 1, 5, 8, and 10 under 35 U.S.C. § 103(a) 15
as unpatentable over Huang, Bernard, and Klots. 16
Claims 6 and 7 rejected under 35 U.S.C. § 103(a) as unpatentable over 17
Huang, Bernard, Klots, and Onozaki. 18
The Appellants again argue the absence of placing products into groups 19
(Br. 14: Last full ¶) and the lack of motivation (Br. 15). We find these 20
arguments to be unpersuasive here for the same reasons we found them so 21
supra. As to adding Onozaki to the combination, we find that Onozaki 22
simply provides a warehousing data entry implementation that would be 23
suggested for use by warehousing of Bernard, Huang, and Klots. The 24
Appellants have not sustained their burden of showing that the Examiner 25
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erred in rejecting claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable 1
over Huang, Bernard, Klots, and Onozaki. 2
Claims 2-4 and 9 rejected under 35 U.S.C. § 103(a) as unpatentable over 3
Huang, Bernard, Klots, and Braun. 4
The Appellants contend that because the parent claims fail to describe 5
orders for distinct groups of products, the references do not describe the 6
limitation in each of claims 2-4 and 9. The Appellants do not provide any 7
other reason for contending the limitations are unmet (Br. 17-18). The 8
Appellants also again argue lack of motivation to combine the references. 9
We found these arguments unpersuasive in the rejections of the parent 10
claims 1 and 8, supra, and we find them equally unpersuasive here. As to 11
adding Braun to the combination, we find that Braun simply provides a 12
different and presumptively improved cost algorithm that would be 13
suggested for use by the cost determinations of both Huang and Klots. The 14
Appellants have not sustained their burden of showing that the Examiner 15
erred in rejecting claims 2-4 and 9 under 35 U.S.C. § 103(a) as unpatentable 16
over Huang, Bernard, Klots, and Braun. 17
Claims 11, 14, and 15 rejected under 35 U.S.C. § 103(a) as unpatentable 18
over Bernard and Kooy. 19
The Examiner repeated his findings from the anticipation rejection 20
against these claims supra, and further found that Kooy suggested organizing 21
products into groups (Answer 8). The Appellants repeated their arguments 22
from the anticipation rejection (Br. 19-20). We agree with the Appellants 23
for the same reasons we found in the anticipation rejection supra. Kooy 24
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does not remedy the deficiency of Bernard failing to assign product orders to 1
containers if the order fits a storage capacity range. The Appellants have 2
sustained their burden of showing that the Examiner erred in rejecting claims 3
11, 14, and 15 under 35 U.S.C. § 103(a) as unpatentable over Bernard and 4
Kooy. 5
Claims 12 and 13 rejected under 35 U.S.C. § 103(a) as unpatentable over 6
Bernard, Kooy, and Onozaki. 7
The Appellants argue claims 12 and 13 as a group. Claim 12 further 8
requires that determining a storage capacity range for each of the containers 9
includes determining a storage capacity range for a truck. The Examiner 10
found that Onozaki described this (Answer 9). The Appellants repeated 11
their arguments from the anticipation rejection (Br. 21-23). These 12
arguments also contend that none of the references describe organizing 13
products into distinct groups (Br. 21: Bottom ¶). 14
We disagree with the Appellants. Onozaki remedies the deficiency of 15
Bernard failing to assign product orders to containers if the order fits a 16
storage capacity range. In claim 12, the containers are trucks. If respective 17
quantity, routes, and customers are given, Onozaki’s trucks can be assigned 18
the articles according to respective capacity (FF 18). Such articles have at 19
that point already been picked and therefore grouped into an assigned order 20
(FF 17). Claim 12 requires organizing a plurality of products into a plurality 21
of distinct groups of products, but does not limit the criteria upon which 22
such organization occurs. Picking articles to an order as in Onozaki 23
inherently organizes the picked products into a plurality of distinct groups of 24
products based on the criteria of the contents of the various orders. Thus, 25
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Onozaki organizes a plurality of products into a plurality of distinct groups 1
of products during its pick process. 2
The Appellants have not sustained their burden of showing that the 3
Examiner erred in rejecting claims 12 and 13 under 35 U.S.C. § 103(a) as 4
unpatentable over Bernard, Kooy, and Onozaki. 5
CONCLUSIONS OF LAW 6
The Appellants have sustained their burden of showing that the 7
Examiner erred in rejecting claims 11, 14, and 15, but have not sustained 8
their burden of showing that the Examiner erred in rejecting claims 1-10, 12, 9
and 13,under 35 U.S.C. § 103(a) as unpatentable over the prior art. 10
NEW GROUND OF REJECTION 11
The following new ground of rejection is entered pursuant to 12
37 C.F.R. § 41.50(b). Claim 11 is rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Bernard, Kooy, and Onozaki for the same reasons as 14
claim 12 which depends from claim 11, because claim 11 incorporates all of 15
the claimed subject matter of claim 12. 16
DECISION 17
To summarize, our decision is as follows: 18
• The rejection of claims 11, 14, and 15 under 35 U.S.C. § 102(b) as 19
anticipated by Bernard is not sustained. 20
• The rejection of claims 1, 5, 8, and 10 under 35 U.S.C. § 103(a) as 21
unpatentable over Huang, Bernard, and Klots is sustained. 22
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• The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as 1
unpatentable over Huang, Bernard, Klots, and Onozaki is sustained. 2
• The rejection of claims 2-4 and 9 under 35 U.S.C. § 103(a) as 3
unpatentable over Huang, Bernard, Klots, and Braun is sustained. 4
• The rejection of claims 11, 14, and 15 under 35 U.S.C. § 103(a) as 5
unpatentable over Bernard and Kooy is sustained. 6
• The rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as 7
unpatentable over Bernard, Kooy, and Onozaki is sustained. 8
• A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). 9
o Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable 10
over Bernard, Kooy, and Onozaki. 11
Our decision is not a final agency action. 12
In addition to affirming the Examiner's rejection(s) of one or more 13
claims, this decision contains new grounds of rejection pursuant to 37 CFR 14
§ 41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection 15
pursuant to this paragraph shall not be considered final for judicial review.”16
This Decision contains a new rejection within the meaning of 17
37 C.F.R. § 41.50(b) (2007). 18
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO 19
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 20
the following two options with respect to the new rejection: 21
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(1) Reopen prosecution. Submit an appropriate amendment of 1
the claims so rejected or new evidence relating to the claims 2
so rejected, or both, and have the matter reconsidered by the 3
Examiner, in which event the proceeding will be remanded 4
to the Examiner. . . . 5
(2) Request rehearing. Request that the proceeding be reheard 6
under § 41.52 by the Board upon the same record. . . . 7
Should the Appellants elect to prosecute further before the examiner 8
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek 9
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 10
the effective date of the affirmance is deferred until conclusion of the 11
prosecution before the Examiner unless, as a mere incident to the limited 12
prosecution, the affirmed rejection is overcome. 13
If the Appellants elect prosecution before the Examiner and this does 14
not result in allowance of the application, abandonment or a second appeal, 15
this case should be returned to the Board of Patent Appeals and Interferences 16
for final action on the affirmed rejection, including any timely request for 17
rehearing thereof. 18
No time period for taking any subsequent action in connection with 19
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 20
§ 1.136(a)(1)(iv) (2007). 21
AFFIRMED-IN-PART 22
41.50(b) 23
24
25
vsh 26
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CHRISTOPHER M. GOFF (27839) 1
ARMSTRONG TEASDALE LLP 2
ONE METROPOLITAN SQUARE 3
SUITE 2600 4
ST. LOUIS MO 63102 5