Ex Parte Moll

Patent Trial and Appeal Board

Mar 21, 2016

13025820 (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/025,820 02/11/2011
46320 7590 03/23/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Georges-Henri Moll
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.
RSW920100152US1 (705) 3497
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGES-HENRI MOLL
Appeal2013-008760 1
Application 13/025,8202
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1, 2, 4, and 8. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Br.," filed Mar. 18,
2013), and the Examiner's Answer ("Ans.," mailed Mar. 28, 2013) and Final
Office Action ("Final Act.," mailed Nov. 11, 2012).
2 Appellant identifies International Business Machines Corporation as the
real party in interest. Br. 2.
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Application 13/025,820
BACKGROUND
Appellant's invention "relates to production planning pattern
management and more particularly to coupling demand forecasting and
production planning in a production planning tool." Spec. i-f 1.
Claim 1 is illustrative:
1. A method for coupling demand forecasting and production
planning in a production planning tool, the method comprising:
invoking a forecasting module in a production planning
tool executing in memory of a computer upon demand data to
compute a forecasting model;
retrieving a stochastic vector from the computed
forecasting model for a product, the stochastic vector expressing
a vector of expected values of demand for the product;
linearizing the stochastic vector in a matrix describing a
linear model for demand of the product; and,
providing the linearized stochastic vector to a stochastic
linear programming (LP) relaxation of a planning module of the
production planning tool.
REJECTIONS
Claims 1, 2, 4, and 8 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 2, 4, and 8 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 2, 4, and 8 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
ANALYSIS
Written Description
In rejecting the claims under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement, the Examiner
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finds that "[i]t is not clear what the goal of the invention is," because the
preamble of claim 1 recites a method for coupling demand forecasting and
production planning but "[ n Jo actual coupling of the forecasting and
planning seems to occur within the scope of any of the pending claims."
Final Act. 7. Referring to the language recited in claim 1, the Examiner
further finds that "a forecasting model is never actually computed" (id. at 8);
"mathematical operations applied to the stochastic vector are not specific to
forecasting or planning" (id.); "it is not understood how [providing the
linearized stochastic vector, as recited in claim 1,] accomplishes the earlier
recited goal of coupling the forecasting and planning or computation of a
forecasting model" (id. at 8-9); "it is not clear how [linearizing a stochastic
vector in a matrix] is accomplished" (id. at 8); and "the scope of coupling is
vague and indefinite" (id. at 9). The Examiner acknowledges that paragraph
44 of the Specification describes coupling and a coupling manager, but the
Examiner determines that "it is still not clear if the coupling is limiting [sic]
to using output from one module as input to another or if the interpretation
may vary." Id.
Similarly, with respect to claim 2, the Examiner finds that "[i]t is not
clear how [the vector of independent normalized random variables] Vis
selected (especially to yield meaningful results in a forecasting and planning
environment .... )." Id. at 8. And with respect to claim 8, the Examiner
finds that "it is not clear how the product gain data is particularly yielded
from the invention" (id. at 10), and that "the [S]pecification does not explain
which specific data would need to be included in the stochastic vector so that
product gain is maximized" (id.). The Examiner finds that the phrase "to
generate," as recited in claim 8, is
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in intended use format and the disclosure lacks details to
explain if actual detailed analysis occurs to yield a specific
answer to a demand forecasting or production planning
question or if data that may or may not be used (e.g., outside of
the scope of the disclosed invention) is merely looked up and
output (i.e., generated).
Id. at 10-11. The Examiner asserts that the Specification "largely relies on
the same language used in the claims ... ; therefore, it fails to provide
adequate written description to support the claimed invention." Id. at 8. The
Examiner further finds that "no detailed working example is provided." Id.
As the Examiner is concerned with how the invention performs the
recited steps of the method, the Examiner appears to be challenging whether
Appellant's disclosure teaches how to make and use the invention, which
relates to the enablement of the invention, rather than the written description
of the invention. Although the written description requirement and the
enablement requirement are both covered by the first paragraph of 35 U.S.C.
§ 112; it is well settled that the description and enablement requirements are
separate and distinct from one another and have different tests. See In re
Wilder, 736 F.2d 1516, 1520 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209
(1985); In re Barker, 559 F.2d 588, 591(CCPA1977); andin re Moore, 439
F.2d 1232, 1235-36 (CCPA 1971). The written description requirement
serves "to ensure that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later claimed by him;
how the specification accomplishes this is not material." In re Wertheim,
541 F .2d 257, 262 (CCP A 197 6).
In order to meet the written description requirement, Appellant does
not have to utilize any particular form of disclosure to describe the subject
matter claimed, but "the description must clearly allow persons of ordinary
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skill in the art to recognize that [he or she] invented what is claimed." Jn re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). Put another way, "the
applicant must ... convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the
invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir.
1991 ).
Here, we agree with Appellant (Br. 8-11) that one of ordinary skill in
the art would understand from at least Figure 2 and paragraphs 15, 25-27,
and 44 of the Specification that Appellant was in possession of the claimed
invention, including the limitations identified by the Examiner, at the time
the invention was filed. For example, Appellant's invention distinguishes
over known forecasting and production planning tools (described at Figure 1
and paragraphs 4--5 of Appellant's Specification) by inserting a stochastic
LP relaxation module 225 between the known demand forecasting module
210 and known planning modules (i.e., LP relaxation module 230 and
scheduling heuristic module 240). Spec. Fig. 2, i-f 15. An important
consideration is how to match the forecasting module output and new
stochastic LP relaxation module input. Id. i-f 25. Appellant's Specification
describes three methods for this matching - one of which is linearizing the
stochastic vector output from the forecasting model in a Jacobian matrix. Id.
,-r,-r 14, 29-34, 45.
To the extent that the Examiner is rejecting the claims as not being
enabled by the originally filed disclosure because the disclosure does not
sufficiently explain how the steps of the invention are performed, we note
that the Examiner has not addressed whether a person skilled in the art could
make and use the claimed invention from the disclosure coupled with
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information known in the art without undue experimentation. See United
States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988), cert. denied,
109 S.Ct. 1954 (1989); In re Stephens, 529 F.2d 1343, 1345 (CCPA 1976).
This inquiry into whether a skilled artisan can make or use the invention
without undue experimentation must consider the level of skill of the
ordinary artisan, and whether the ordinary artisan would have known how to
perform the steps of the invention without undue experimentation. Factors
which must be considered in determining whether a disclosure would require
undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) citing Ex parte
Forman, 230 USPQ 546, 547 (BPAI 1986). This analysis was not done by
the Examiner.
We are not persuaded, on this record, that the Examiner has
established a prima facie case of non-enablement or failure to comply with
the written disclosure requirement. Therefore, we do not sustain the
Examiner's rejection of claims 1, 2, 4, and 8 under 35 U.S.C. § 112, first
paragraph.
Indefiniteness
The test for definiteness is whether a person skilled in the art would
understand what is claimed when the claim is read in light of the
Specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F .2d
1565, 1576 (Fed. Cir. 1986).
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In rejecting claim 1 under 35 U.S.C. § 112, second paragraph as
indefinite, the Examiner relies on the same findings set forth in the written
description rejection. See Final Act. 11-14. For example, the Examiner
finds that "[i]t is not clear what the goal of the invention is" (Final Act. 11),
"[ n Jo actual coupling of the forecasting and planning seems to occur within
the scope of any pending claims" (id.) and "a forecasting model is never
actually computed" (id.). The Examiner finds that claim 1 recites that the
stochastic vector is linearized in a matrix "but it is not clear how this is
accomplished." Id. The Examiner further asserts that it is not clear how the
step of providing the linearized stochastic vector to a stochastic linear
programming (LP) relaxation of a planning module "accomplishes the
earlier recited goal of coupling the forecasting and planning or computation
of a forecasting goal." Id. at 12.
However, we agree with Appellant that one of ordinary skill in the art
would understand what is claimed when claim 1 is read in light of the
Specification. See Br. 13-14 (citing Spec. i-f 44 ); see also Br. 8-9 (citing
Spec. i-fi-115, 25-27). For example, claim 1 recites "invoking a forecasting
module ... to compute a forecasting model," and "retrieving a stochastic
vector from the computed forecasting model," indicating that a forecasting
model is computed and its output contains a stochastic vector. Claim 1
further recites "linearizing the stochastic vector .... " and "providing the
linearized stochastic vector to ... a planning module," indicating that the
stochastic vector retrieved from the computed forecasting model is
linearized and provided to a planning module, thereby coupling the
forecasting and planning modules. Therefore, we do not sustain the
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Examiner's rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claim 2 recites "linearizing the stochastic vector in a Jacobian matrix
H, such that D= HV where D is the stochastic vector and v [sic] is a vector of
independent normalized random variables." The Examiner finds that the
claim recites linearizing the stochastic variable in a Jacobian matrix but "[i]t
is not clear how Vis selected." Final Act. 11-12. However, one of ordinary
skill in the art would understand from the language recited in claim 2 that V
is selected to be a vector of independent, normalized random variables. See
also Spec i-f 27 ("V [is] a vector of independent random variables with
known distributions"). Therefore, we do not sustain the Examiner's
rejection of claim 2 under 35 U.S.C. § 112, second paragraph, as indefinite.
Independent claim 4 includes language similar to claim 1 and was
rejected by the Examiner using the same rationale as applied in rejecting
claim 1. Therefore, we do not sustain the Examiner's rejection of claim 4
under 35 U.S.C. § 112, second paragraph, as indefinite, for the same reasons
set forth with respect to claim 1.
Claim 8 recites "generating deterministic production decisions under
resource constraint to maximize an expected value of product gain." The
Examiner acknowledges that paragraph 15 of Appellant's Specification
states that "the output of the stochastic LP relaxation [module] is
deterministic production decisions under resource constraint that maximizes
the expected value of the gain." Final Act. 12-13 (quoting Spec. i-f 15
(emphasis omitted)). But the Examiner finds that "[t]here is no explanation
about how the mathematical operations applied to the output stochastic
vector [of the forecast model] yield any useful information regarding the
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maximization of an expected value of product gain." Id. at 13. The
Examiner further finds that it is not clear what is meant by "generating ...
decisions ... to maximize an expected value of product gain." Id. The
Examiner further finds that the metes and bounds of claim 8 are in question
because the phrase "to maximize" is recited in intended use format and the
disclosure lacks details to explain if a detailed analysis occurs to yield a
specific answer or if data is looked up and output. Id. at 13-14.
Appellant contends that the Examiner has failed to establish a prima
facie case of indefiniteness, because the Examiner "has not established an
interpretation of the claim in light of the specification or an interpretation of
the claim as interpreted by one of ordinary skill in the art." Br. 13. But
Appellant offers no substantive analysis or argument in the Appeal Brief to
show that the Examiner erred in rejecting claim 8 as indefinite. See In re
Packard, 751F.3d1307, 1313 (Fed. Cir. 2014). Accordingly, Appellant has
not demonstrated error on the part of the Examiner. Therefore, we sustain
the Examiner's rejection of claim 8 under 35 U.S.C. § 112, second
paragraph.
Non-Statutory Subject Matter
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas [or mental processes] from those that claim patent-eligible
applications of those concepts." Alice Corp. Pty. V. CLS Bank Int'!, 134 S.
Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289 (2012)). The first step in the analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts." Id. (citing Mayo, 132 S. Ct. at 1296-97). If the claims
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are directed to a patent-ineligible concept, the second step in the analysis is
to consider the elements of the claims "individually and 'as an ordered
combination' to determine whether [there are] additional elements [that]
'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 132 S. Ct. at 1298, 1297).
Applying the first step of the Alice analysis, we are not persuaded by
Appellant's argument that the "Examiner has made no attempt to
demonstrate factually that the claims at issue reflect any attempt to patent an
abstract idea." Br. 19. Rather, the Examiner finds, and we agree, that each
of claims 1, 2, 4, and 8 is directed to a "mathematical algorithm [that] is
used in a forecasting and planning environment," i.e., a patent ineligible
concept. Final Action 16-1 7. Moreover, Appellant acknowledges that the
claimed invention
teaches how to transform the output of the demand forecasting
module to match the stochastic LP input of a production planning
module to thereby couple demand forecasting and production
planning in a production planning tool
(Br. 20), thereby supporting the Examiner's finding. See Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014) ("a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible"); see also Parker v. Flook, 437 U.S. 584, 589 (1978) ("an
algorithm, or mathematical formula, is like a law of nature [that] cannot be
the subject of a patent").
Turning to the second step of the Alice analysis, we agree with the
Examiner that the claims do not include "other elements or combination of
elements" that amount to "significantly more" than an abstract idea. Final
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Action 17. The Appellant, on the other hand, relies on Ultramercial Inc. v.
Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2011) ("Ultramercial I") to argue that
the claimed invention "presents functional and palpable applications in the
field of computer technology" (Br. 20), and the "claims are drawn to a
specific way of 'doing something with a computer'" (id.).
However, Ultramercial I was vacated by the Supreme Court and
remanded to the Federal Circuit for further consideration in light of the Alice
decision. WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014).
Subsequently, the Federal Circuit held that the claims were directed to
patent-ineligible subject matter. Ultramercial Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) ("the limitations of the ... claims do not transform
the abstract idea that they recite into patent-eligible subject matter[,] because
the claims simply ... implement the abstract idea with routine, conventional
activity.")
Similarly, here, independent claim 1 recites a "memory of a
computer" and independent claim 4 recites a "computer" having a
"memory," a "processor," and a "display." In other words, the claims recite
a generic computer; and this is not enough to transform a patent-ineligible
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2358.
Therefore, we sustain the Examiner's rejection of claims 1, 2, 4, and 8
under 35 U.S.C. § 101.
DECISION
We reverse the Examiner's§ 112, first paragraph, rejection of claims
1, 2, 4, and 8.
We reverse the Examiner's§ 112, second paragraph, rejection of
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claims 1, 2, and 4.
We affirm the Examiner's§ 112, second paragraph, rejection of claim
8.
We affirm the Examiner's§ 101 rejection of claims 1, 2, 4, and 8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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