Ex Parte Mayer et al

Patent Trial and Appeal BoardMar 19, 2015

11246220 (P.T.A.B. Mar. 19, 2015)

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. 11/246,220 10/11/2005 Thomas A. Mayer 08020.0031-00 5222 60668 7590 03/19/2015 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER SHEIKH, ASFAND M ART UNIT PAPER NUMBER 3627 MAIL DATE DELIVERY MODE 03/19/2015 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 ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte THOMAS A. MAYER and HANS-ULRICH VON HELMOLT ___________ Appeal 2012-008824 Application 11/246,220 Technology Center 3600 ___________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 Thomas A. Mayer and Hans-Ulrich Von Helmolt (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1, 2, 5, 7–10, 13, and 15–18, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed November 11, 2011) and Reply Brief (“Reply Br.,” filed May 15, 2012), and the Examiner’s Answer (“Ans.,” mailed March 15, 2012), and Final Rejection (“Final Rej.,” mailed May 11, 2011). Appeal 2012-008824 Application 11/246,220 2 The Appellants invented systems and methods for automated parallelization of back-order processing in a supply chain environment. (Spec. para. 1). An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]. 1. A computerized method for determining the availability of a plurality of order items within a supply chain environment, the method comprising: [A] defining a profile to be associated with an availability check, wherein the availability check includes at least one process, and wherein the profile comprises a package size parameter and a package number parameter associated with at least one process of the availability check; [B] electronically building processing packages for the plurality of order items to execute the at least one process, wherein the plurality of order items are divided among the processing packages based on the package size parameter of the defined profile; and [C] executing the at least one process on the processing packages in parallel [D] when the number of the processing packages exceeds the package number parameter. The Examiner relies upon the following prior art: Wilson Dutta Kroswek Clayton US 2002/0133387 A1 US 2003/0050865 A1 US 2005/0065828 A1 US 2008/0140688 A1 Sept. 19, 2002 Mar. 13, 2003 Mar. 24, 2005 June 12, 2008 Claims 1, 2, 5, 7–10, 13, and 15–18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Dutta, Wilson, Kroswek, and Clayton. Appeal 2012-008824 Application 11/246,220 3 ISSUE The issue of obviousness turns on whether Clayton discloses or suggests executing a process in parallel when a number of the processing packages exceeds the package number parameter. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Wilson 01. Wilson is directed to “order fulfillment and supply chain management systems that efficiently allocate and distribute items to customers in a cost-effective manner.” (Wilson, para. 2). Dutta 02. Dutta is directed “to online searches for goods and services.” (Dutta, para. 2). Kroswek 03. Kroswek is directed to “enhanced integration and management of logistics for supply chains.” (Kroswek, para. 1). Clayton 04. Clayton is directed to “methods and systems for storing decisions as objects and for linking, synchronizing, integrating, aggregating Appeal 2012-008824 Application 11/246,220 4 and/or aligning units, plans, functions, processes and/or other subsets of an enterprise.” (Clayton, para. 7). 05. Clayton discloses an analytic engine may “calculate demand or generate forecasts.” (Clayton, para. 90). 06. Clayton describes how parameters may be defined. (Clayton, para. 92). 07. Clayton discloses examples of values that may be estimated. (Clayton, para. 93). 08. Clayton discloses the “analytic engine may allow for the specification, such as by a user, system and/or decision maker, of at least one parameter . . . .” (Clayton, para. 91). ANALYSIS Claims 1, 2, 5, 7-10, 13, and 15-18 rejected under 35 U.S.C. § 103(a) as unpatentable over Dutta, Wilson, Kroswek, and Clayton Each of independent claims 1 and 17 recite “executing the at least one process on the processing packages in parallel when the number of the processing packages exceeds the package number parameter.” Independent claim 9 recites “a component for executing the at least one process on the processing packages in parallel when the number of the processing packages exceeds the package number parameter.” We are persuaded by the Appellants’ argument that the cited art fails to disclose parallel execution when a number of packages exceeds a threshold. (App. Br. 14, Reply Br. 5). Appeal 2012-008824 Application 11/246,220 5 The Examiner finds that the limitation of executing in parallel mode is disclosed in Kroswek, and that the “when” conditional controlling execution is disclosed in Clayton, paragraphs 90–93. (Ans. 7–8, 10–11). Clayton discloses that its analytic engine may calculate demand or generate forecasts, and provides examples of forecast values and how parameters are defined. (FF 05–07). Clayton also discloses the “analytic engine may allow for the specification, such as by a user, system and/or decision maker, of at least one parameter.” (FF 08). However, we do not find, in these cited paragraphs, the use of a parameter that operates as a threshold for determining that a process is executed in parallel when the threshold is exceeded, as claimed. The Examiner further explains “one of ordinary skill in art would have possessed knowledge to utilize any parameter or specifically a ‘package size parameter’ and ‘package number parameter’ in order to perform a multitude of functions . . . .” (emphasis added)(Ans. 11). While this may be true, the issue is not one of enablement, but instead of obviousness. Merely having knowledge to be able to perform a function does not render that function obvious. To say that knowing that a parameter can be used for a function, would lead one of ordinary skill to use a particular parameter as a threshold for executing a process in parallel when the threshold parameter value is exceeded, is mere speculation, which is not a sufficient basis for a prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). For these reasons, we will not sustain the rejection of independent claims 1, 9, and 17, and of dependent claims 2, 5, 7, 8, 10, 13, 15, 16, and 18. Appeal 2012-008824 Application 11/246,220 6 CONCLUSIONS OF LAW The rejection of claims 1, 2, 5, 7–10, 13, and 15–18 under 35 U.S.C. § 103(a) as unpatentable over Dutta, Wilson, Kroswek, and Clayton is improper. DECISION The rejection of claims 1, 2, 5, 7–10, 13, and 15–18 is reversed. REVERSED pgc