Ex Parte Cooney et al - Page 10



            Appeal No. 2007-1110                                                 Page 10                     
            Application No. 09/832,603                                                                       

                   D. Analysis                                                                               
                   “Many of appellant's arguments fail from the outset because, as the solicitor             
            has pointed out, they are not based on limitations appearing in the claims.”  In re              
            Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).                                            
                   We have carefully reviewed Appellants’ arguments. FF 15 and 16. No                        
            argument is based on a limitation that appears in claim 1.                                       
                   Various alleged distinctions between the claimed invention and what the                   
            references disclose are argued.                                                                  
                   One alleged distinction between the claimed invention and what the                        
            references disclose is that the claimed invention seeks to accurately predict                    
            supplier cost instead of, as with the references, buyer cost. However, there is no               
            limitation in the claim limiting the method to predicting supplier cost. The claimed             
            method seeks to use a computerized process to determine the lowest cost potential                
            for aspects of the cost of a component or service. Nowhere in the claim is this                  
            determination defined in terms of supplier cost. The supplier is mentioned only                  
            later in the claim with respect to conducting discussions. However, the claim does               
            not define the earlier lowest cost potential as an accurate prediction of supplier               
            cost.                                                                                            
                   Another alleged distinction is that the claimed invention excludes supplier               
            profit from the calculation of the lowest cost potential. We see nothing about                   
            profit, or its exclusion, in the claim. Moreover, the phrase “lowest cost potential” is          
            nowhere defined in the Specification as excluding supplier profit. The broadest                  
            reasonable construction of the claim in light of the Specification as it would be                





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next

Last modified: September 9, 2013