Ex Parte 7991680 et al

Patent Trial and Appeal Board

Aug 11, 2015

95001700 (P.T.A.B. Aug. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SAP AMERICA, INC.,
Requester,

v.

WELLOGIX TECHNOLOGY LICENSING, LLC,
Patent Owner.
____________

Appeal 2015-001669
Reexamination Control 95/001,700
Patent 7,991,680 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, DENISE M. POTHIER, and DAVID M.
KOHUT, Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 1–27. PO App. Br. 7–8.1 Requester appeals the
Examiner’s decision not to adopt the rejections of claims 1–27 over various
references. 3PR App. Br. 9–10.2 We have jurisdiction under 35 U.S.C.
§§ 134 and 315. An oral hearing was conducted on June 17, 2015.

STATEMENT OF THE CASE
This proceeding arose from an August 2, 2011 request by SAP
America, Inc. (“Requester”) for an inter partes reexamination of claims of
U.S. Patent 7,991,680 B2, titled “Method and Process for Providing
Relevant Data, Comparing Proposal Alternatives, and Reconciling
Proposals, Invoices, and Purchase Orders with Actual Costs in a Workflow
Process,” issued to Jeffery A. Livesay, Robert Bodnar, and Thomas A.
Lopus, on August 2, 2011 (“the ’680 patent”).
The ’680 patent describes a method and system for matching buyers
and sellers of goods or services. Spec. 1:29–32.

Claim 1 reads as follows:
1. A method for procuring at least one good, at least
one service, or combinations thereof, for reconciling actual
performance data with estimated data for a complex project
ordered by a buyer and performed by a seller, the method
comprising:
obtaining and storing in at least one data storage medium
electronically accessible to a processor the estimated data from

1 Patent Owner Appeal Brief, dated October 28, 2013 (“PO App. Br.”).
2 Third Party Requester’s Cross-Appeal Brief, dated November 4, 2013
(“3PR App. Br.”).
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a source relating to the complex project, wherein the estimated
data comprises an initial estimate of the at least one good, the at
least one service, or combinations thereof required for
performance of at least a portion of the complex project;
receiving and storing in at least one data storage medium
electronically accessible to the processor the actual
performance data via a communication network, wherein the
actual performance data comprises an indication of the at least
one good, the at least one service, or combinations thereof used
for performance of at least a portion of the complex project;
using the processor to compare the actual performance
data to the estimated data to determine a discrepancy between
the actual performance data and the estimated data;
sending an electronic notification of the discrepancy to at
least one buyer, at least one seller, or combinations thereof;
receiving a proposed reconciliation from the at least one
buyer or the at least one seller; and
receiving approval or disapproval of the proposed
reconciliation from the at least one buyer or the at least one
seller.

The cited references are as follows:

Cherrington US 5,657,233 Aug. 12, 1997
Anderson US 6,360,211 B1 Mar. 19, 2002
Harvey US 6,519,568 B1 Feb. 11, 2003
Cornelius US 6,629,081 B1 Sept. 30, 2003
Green WO 97/29445 Aug. 14, 1997
Wong WO 99/33016 July 1, 1999

Zamora, Optimized PC-Based Expert Systems, Society of Petroleum
Engineers SPE 16488, 1987 (“Zamora”).

Oracle, Oracle Purchasing User’s Guide Release 11i Volume 1,
(Oracle Corporation, January 2000) (“Oracle Purchasing”).

Oracle, Oracle Payables User’s Guide Release 11i Volume 1 (Oracle
Corporation, 2000) (“Oracle Payables”).
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Patent Owner appeals the Examiner’s rejection of claims 1–13, 18–20,
and 22–24 under 35 U.S.C. § 102(b) as anticipated by Cherrington; claims
1–13, 18, 21, and 23 under 35 U.S.C. § 102(e) as anticipated by Anderson;
claims 1–3, 6–12, and 18–26 under 35 U.S.C. § 102(e) as anticipated by
Cornelius; claims 1–3, 8–12, 18–21, 23, 25, and 26 under 35 U.S.C.
§ 102(b) as anticipated by Wong; claims 1–3, 8–12, 18, and 21–24 under
35 U.S.C. § 102(b) as anticipated by Green; claims 1–13, 19, 22, and 23
under 35 U.S.C. § 102(a) as anticipated by Oracle Purchasing; claims 1–13,
18, and 21–23 under 35 U.S.C. § 102(a) as anticipated by Oracle Payables;
claims 4, 5, and 13 under 35 U.S.C. § 103(a) as unpatentable over Cornelius
and Anderson; claims 4–7 and 13 under 35 U.S.C. § 103(a) as unpatentable
over Wong and Anderson; claims 4–7 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Green and Anderson; Claims 14–17 and 27 under
35 U.S.C. § 103(a) as unpatentable over Cornelius and Harvey; claims 14–
17 and 27 under 35 U.S.C. § 103(a) as unpatentable over Wong and Harvey;
claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over Oracle
Purchasing; claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over
Oracle Payables; claim 27 under 35 U.S.C. § 103(a) as unpatentable over
Oracle Purchasing and Harvey; claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Oracle Payables and Harvey; and claims 13, 17–20, and
27 under 35 U.S.C. § 112, first paragraph, as failing the written description
requirement. PO App. Br. 7–8.
Requester appeals the Examiner’s non-adoption of the following
rejections: claims 1–9 under 35 U.S.C. § 103(a) as unpatentable over
Cherrington, Wong, Oracle Purchasing, or Oracle payables; claims 10–17,
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25, and 27 under 35 U.S.C. § 112, second paragraph, as indefinite; claims
21–24 under 35 U.S.C. § 112, first paragraph, as failing the written
description requirement; claims 14, 17, 26, and 27 under 35 U.S.C. § 102(b)
as anticipated by Cherrington, claims 14, 17, 26, and 27 under 35 U.S.C.
§ 102(e) as anticipated by Anderson; claims 14, 17, and 27 under 35 U.S.C.
§ 102(e) as anticipated by Cornelius; claims 14, 17, and 27 under 35 U.S.C.
§ 102(b) as anticipated by Wong; claims 14, 17, 26, and 27 under 35 U.S.C.
§ 102(b) as anticipated by Green; claims 14, 17, 26, and 27 under 35 U.S.C.
§ 102(a) as anticipated by Oracle Purchasing or Oracle Payables; claim 13
under 35 U.S.C. § 103(a) as unpatentable over any one of the combination of
Cornelius and Zamora, the combination of Wong and Zamora, or the
combination of Green and Zamora; and claim 26 under 35 U.S.C. § 103(a)
as unpatentable over Wong. 3PR App. Br. 9–10.

PRINCIPLES OF LAW

In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).
The question of obviousness is resolved on the basis of underlying
factual determinations, including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Requester’s Appeal – Written Description – Claims 21–24

Requester argues that claims 21–24 are invalid under 35 U.S.C. § 112,
first paragraph (written description). Requester’s Written Comments to
Patent Owner’s Response to Non-Final Office Action and Amendments,
dated December 12, 2011 (“3PR Comments”), 29–30.
Claim 21 and claim 22 recite that a reconciliation is received from a
buyer or a seller, respectively. Claim 23 and claim 24 recite that an approval
or disapproval of the reconciliation is received from the buyer or the seller,
respectively. Requester argues that the Specification discloses that a “buyer
and seller may communicate with each other to negotiate and agree upon a
final figure” but that “[t]he ’680 specification contains no enabling written
description of receiving a proposed reconciliation [or an approval or
disapproval of the reconciliation] from a buyer [or seller]” 3PR App. Br.
14–15 (citing the ’680 patent 39:63–65, 40:2–5). Requester does not
explain a sufficient difference between the disclosure of the Specification
and the disputed claim limitations.
The Examiner did not err in deciding not to adopt the proposed
rejection of claims 21–24 under 35 U.S.C. § 112, first paragraph (written
description).

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Requester’s Appeal – Indefiniteness – Claims 10–17, 25, and 27

Requester argues that claims 10–17, 25, and 27 are unpatentable under
35 U.S.C. § 112, second paragraph. 3PR Comments, 25–26; 3PR App. Br.
10–13.
Claim 10 recites that the estimated data is compiled by the buyer
during a procurement phase of the complex project. Requester argues that
“[i]t is unclear whether [claim 10] is intended to specify the content and
source of the estimated data, . . . add a new ‘compiling’ step . . . or to modify
the current step of ‘obtaining and storing’ estimated data.” 3PR App. Br. 11.
We disagree with Requester that one of ordinary skill in the art would not
have been apprised of the metes and bounds of claim 10. For example, one
of ordinary skill in the art would have understood that claim 10 requires that
the estimated data is compiled by the buyer during a procurement phase of
the complex project, as claim 10 explicitly and broadly recites. The
Examiner did not err in refusing to adopt the proposed rejection of claim 10
under 35 U.S.C. § 112, second paragraph.
Requester also argues that claim 11 recites that “performance data” is
“compiled after the estimated data is compiled and after completing the
performance of at least said part of the complex project” but that claim 1,
from which claim 11 depends, recites “a step for ‘receiving and storing’ the
‘actual performance data.’” 3PR App. Br. 11. Based on this observation,
Requester argues that claim 11 is indefinite. We disagree with Requester
that one of ordinary skill in the art would not have been apprised of the
metes and bounds of claim 11. For example, one of ordinary skill in the art
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would have understood that claim 1 requires receiving and storing actual
performance data and claim 11, which depends from claim 1, requires that
the actual performance data is compiled after the estimated data is compiled
and after completing the performance of at least said part of the complex
project, as claims 1 and 11 explicitly and broadly recite. The Examiner did
not err in refusing to adopt the proposed rejection of claim 11 under 35
U.S.C. § 112, second paragraph.
Claim 12 recites that the complex project is a project undertaking
which involves adaptations of said at least one good, at least one service, or
combinations thereof during performance of the project. Requester argues
that “[i]t is unclear whether this claim is intended to further identify the
types of ‘complex projects’ for which the method is intended to be used . . .
or whether it is intended to add a new ‘adaptation’ step . . . [and it] is also
unclear what connection the ‘adaptation’ has to the remainder of the claimed
steps.” 3PR App. Br. 12. We disagree with Requester that one of ordinary
skill in the art would not have been apprised of the metes and bounds of
claim 12. For example, one of ordinary skill in the art would have
understood that claim 12 requires that the complex project is a project
undertaking which involves adaptations of said at least one good, at least one
services, or combinations thereof during performance of the project, as claim
12 broadly recites. The Examiner did not err in refusing to adopt the
proposed rejection of claim 12 under 35 U.S.C. § 112, second paragraph.
Claim 13 recites a “pre-defined industry specific application.”
Requester argues that this claim limitation is “unclear” because “it is unclear
as to what ‘pre-defined’ means” and because “it is unclear what a ‘pre-
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defined industry specific application’ is.” 3PR App. Br. 12. We disagree
with Requester that one of ordinary skill in the art would not have been
apprised of the metes and bounds of claim 13. For example, one of ordinary
skill in the art would have understood that claim 13 requires that a rule is
specified as an element of a process provided for a pre-defined industry
specific application, as claim 13 explicitly recites. See Spec. 16:64–17:8.
The Examiner did not err in refusing to adopt the proposed rejection of claim
13 under 35 U.S.C. § 112, second paragraph.
Claim 14 recites that the “complex project is an oil well drilling
project.” Requester argues that “[i]t is unclear whether [claim 14] is
intended to further identify the types of ‘complex projects’ for which the
method is intended to be used . . . or whether it is intended to add new
‘buyer requests and specifies’ and ‘seller submits a response’ steps . . . [or]
what connection the ‘buyer requests and specifies’ and ‘seller submits a
response’ steps have to the remainder of the claimed steps.” 3PR App. Br.
13. Requester provides similar arguments with respect to claims 15 and 16.
Id. We disagree with Requester that one of ordinary skill in the art would
not have been apprised of the metes and bounds of claims 14–16. For
example, one of ordinary skill in the art would have understood that claims
14–16 require that the complex project is an oil well drilling project, as
claim 14–16 explicitly recite. The Examiner did not err in refusing to adopt
the proposed rejection of claim 12 under 35 U.S.C. § 112, second paragraph.
Claims 17 and 27 recite “information related to daily wellbore
operations.” Requester argues that “[i]it is unclear whether this information
is the ‘actual performance data’ or something in addition . . . [and] what the
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scope of ‘information related to daily wellbore operations’ includes.” 3PR
App. Br. 13. We disagree with Requester that one of ordinary skill in the art
would not have been apprised of the metes and bounds of claim 17 or claim
27. For example, one of ordinary skill in the art would have understood that
claim 17 (and claim 27) requires that information is related to daily wellbore
operations, as claim 17 and claim 27 explicitly and broadly recite. The
Examiner did not err in refusing to adopt the proposed rejection of claim 13
or claim 27 under 35 U.S.C. § 112, second paragraph.
Claim 25 recites a communication system for “negotiation of
agreements and formation of contracts to provide the requested or alternative
at least one good, at least one service, or combinations thereof.” Requester
argues that claim 25 is indefinite because ‘what does ‘alternative refer to?’
and “what connection, if any, the added step has to the claimed method of
reconciliation.” 3PR App. Br. 13. We disagree with Requester that one of
ordinary skill in the art would not have been apprised of the metes and
bounds of claim 25. For example, one of ordinary skill in the art would have
understood that claim 25 requires a communication system for “negotiation
of agreements and formation of contracts to provide the requested or
alternative at least one good, at least one service, or combinations thereof,”
as claim 25 explicitly and broadly recites. The Examiner did not err in
refusing to adopt the proposed rejection of claim 25 under 35 U.S.C. § 112,
second paragraph.

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Patent Owner’s Appeal – Written Description – Claims 13, 17–20, and 27

Claim 13 recites, “wherein said at least one rule is specified as an
element of a process provided for a pre-defined industry specific application
to ensure compliance with said pre-defined industry specific application
associated with the complex project.” Patent Owner argues that the
Specification discloses support for this claim feature. PO App. Br. 34 (citing
Spec. 16:61 – 17:8). The Specification discloses “verifying that [parameters
for a project] comply with the appropriate design rules” that are “provided
for an industry specific application.” Spec. 16:62–65.
Requester argues that the disclosed “rules” “refers to design
parameters and not to a discrepancy between estimated data and actual
performance data.” 3PR Reb. Br. 28–29. However, the Specification
discloses the “rules” “ensur[e] compliance with . . . information applicable
to a project.” Spec. 17:6–8. One of skill in the art would have understood
that when there is a lack of “compliance” with information (corresponding to
an industry specific application), then a “discrepancy” would exist.
Requester does not explain sufficiently a difference between this
“discrepancy” and any purported claimed “discrepancy.”
The Examiner erred in rejecting claim 13 with respect to this issue.
Claim 17 recites wherein said field ticket (or “actual performance
data”) is configured to provide information related to daily wellbore
operations associated with said complex project. Claim 27 recites a similar
feature. Patent Owner argues that the Specification discloses support for this
claim feature. PO App. Br. 34, 37 (citing Spec. 34:59–35:3, 37:57–61). The
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Specification discloses “the history of a well’s performance” via “update
reports” that are “provided daily.” Spec. 34:60, 65–67.
Requester argues that the information disclosed in the Specification
does not “‘relate[] to daily wellbore operations.’” 3PR Reb. Br. 29.
However, Requester does not explain sufficiently a difference between the
“update reports” of a “well’s performance” that are “provided daily” and
“daily wellbore operations.” In both cases, information about a well’s
performance is provided daily.
The Examiner erred in rejecting claim 17 with respect to this issue.
Claim 18 recites “wherein said electronic notification of the
discrepancy is sent to at least one buyer.” Claim 19 recites “wherein said
electronic notification of the discrepancy is sent to at least one seller.”
Claim 20 recites “wherein said electronic notification of the discrepancy is
sent to at least one buyer and at least one seller.” Patent Owner argues that
the Specification discloses support for this claim feature. PO App. Br. 35–
37 (citing Spec. 20:26–52). The Specification discloses “highlighting the
discrepancies to the buyer.” Spec. 20:37–38. Requester argues that “[t]he
‘discrepancies’ referred to are not discrepancies between estimated and
actual data [but are] differences between the buyer[’s] request for a proposal
and the seller[’s] bid.” 3PR Resp. Br. 29. However, even if Requester’s
characterization of the disclosure in the Specification is correct, Requester
does not explain sufficiently how the claimed “estimated data” differs from a
“buyer’s request” and how the claimed “actual data” differs from a “seller’s
bid.” In addition, the Specification discloses that “the process may be
configured to verify a seller’s response at any time,” “applies the . . . rules . .
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. to each seller’s response as it applies to each buyer’s request,” “and that
“both sellers and buyers are assured to a given level of certainty that a
request, and response is acceptable and in compliance.” Spec. 20:40–48. In
other words, the Specification discloses that the process applies to any of
seller’s (or buyer’s) responses and not only to any particular “seller’s bid.”
See id.
No additional arguments in support of the rejection of claims 13, 17–
20, and 27 are identified. The Examiner erred in rejecting claims 13, 17–20,
and 27 with respect to this issue.

Patent Owner’s Appeal – Cornelius – Claims 1–3, 6–12, and 18–26

Patent Owner argues that in Cornelius, “there is no estimated data”
because Cornelius supposedly only discloses “an actual cost for the goods.”
PO App. Br. 17. Requester explains that Cornelius discloses a “Combined
Purchase Order Proforma Invoice” (POPI) that “contains data about the sale
as the parties anticipate it will occur (estimated data).” 3PR Resp. Br. 14.
Cornelius discloses a “combined purchase order proforma invoice” that may
include “at least one requirement for the seller to fulfill,” “requirements of
the buyers,” a section “allowing the buyer to sign off on the terms,”
“documents supporting the form,” and “may include shipping related terms.”
Cornelius 18:27, 20:31, 46; 21:15–16, 48, 52–53; 22:28.
Patent Owner does not point out where Cornelius discloses that the
“combined purchase order proforma invoice” includes only “actual cost of
goods.” Regarding components that Cornelius discloses that the “combined
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purchase order proforma invoice” does contain, Patent Owner does not
explain how all of these components as indicated above differ from the
claimed “estimated data.” Indeed, Patent Owner does not appear to assert
that each of the components of the “combined purchase order proforma
invoice” actually disclosed by Cornelius differs from the claimed “estimated
data” at all.
Patent Owner argues that, in Cornelius, “there is no discrepancy
between the agreed upon cost of the goods and the actual cost of the goods.”
PO App. Br. 18 (citing Cornelius 18:25–38). Claim 1 recites a “discrepancy
between actual performance data and the estimated data.” Claim 1 does not
appear also to recite a discrepancy between the agreed upon cost of the
goods and the actual cost of the goods. For at least this reason, we are not
persuaded by Patent Owner’s argument.
To the extent that Patent Owner argues that Cornelius fails to disclose
a “discrepancy between actual performance data and the estimated data,” as
recited in claim 1, Requester explains that Cornelius discloses “a Combined
Purchase Order Proforma Invoice” (i.e., “estimated data,” as recited in claim
1) that is “to be compared with shipping document [i.e., “actual performance
data,” as recited in claim 1] to identify discrepancies.” 3PR App. Br. 14.
We note that Cornelius discloses the “Combined Purchase Order Proforma
Invoice” undergoing a “compliance check” via a “[c]ross commercial
shipping documents check” “through data validation on defined parameters.”
Cornelius 23:18–20, 23–25. Cornelius also discloses that “[a]ny time the
value of the data falls outside the parameter of the structure field, it is
rejected as ‘discrepant’ . . . and highlighted to both buyer and seller.” 3PR
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Resp. Br. 14–15 (citing Cornelius 23:29–32). Patent Owner does not assert
or explain sufficiently a difference between the discrepancy (or
“discrepant”) of Cornelius and the claim feature of a “discrepancy.”
Patent Owner argues that Cornelius fails to disclose a “complex
project.” Claim 1 recites data “for a complex project” and performance of a
portion “of the complex project.” Hence, claim 1 requires a “complex
project” that includes “data” and undergoes a “performance.” Claim 1 does
not recite additional requirements for the “complex project.” We agree with
the Examiner and Requester that Cornelius discloses a “complex project,” as
recited in claim 1.
Cornelius discloses a system and method in which “a buyer is allowed
to select from a group of options” that include “settling a minimum balance,
partially settling, settling a full balance, and applying for an import loan on
payment due date” that may also include “[f]inance interest,” “an unpaid
portion of the account,” “a minimum balance or partially settling,” or
“applying for an import loan.” Cornelius 3:31–45. As previously discussed,
Cornelius also discloses, among other things, creating “a combined purchase
order proforma invoice” in which “a plurality of buyers” are provided
“details on products or services,” “bids are then received from the buyers”
and “categorized,” and “offers are received from the sellers.” Cornelius
18:27, 54–55, 58–60, 63–64. After a negotiation process between buyer(s)
and seller(s), an agreed upon “combined purchase order proforma invoice” is
created. See, generally, Cornelius, cols. 19–22. Patent Owner does not
explain sufficiently how this process (or “project”) differs from the claimed
“complex project.” This is particularly true as the disclosed processes of
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Cornelius includes data and undergoes a performance as claim 1 recites for a
“complex project.”
Patent Owner argues that one of ordinary skill in the art would have
understood a “complex project,” as recited in claim 1, to require “‘a
discrepancy between the actuals reflected in the field ticket, the purchase
order based upon the seller’s proposal, and the final invoice for the job that
will ultimately require reconciliation,’ as described in the Specification” and
that Cornelius supposedly fails to disclose a “complex project,” according to
Patent Owner’s proposed construction of the term. PO App. Br. 9 (citing
Spec. 38:7–11). We are not persuaded by Patent Owner’s argument.
Contrary to Patent Owner’s assertion, the Specification does not
appear to define a “complex project” as requiring “a discrepancy between
the actuals reflected in the field ticket, the purchase order based upon the
seller’s proposal, and the final invoice for the job that will ultimately require
reconciliation.” Id. The cited portion of the Specification merely discloses
that “there may be times when there is a discrepancy between the actuals
reflected in the field ticket, the purchase order . . . and the final invoice for
the job” and that, in these circumstances, reconciliation may be required.
The cited portion of the Specification does not disclose a “complex project”
at all, much less a definition of the term as would have been understood by
one of ordinary skill in the art.
Even if the cited portion of the Specification discloses a “complex
project” and that in a “complex project,” “there may be times when there is a
discrepancy,” as Patent Owner appears to contend, Patent Owner does not
explain how an example allegedly provided in the Specification (i.e., that
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“there may be times when there is a discrepancy”) must be imported into the
claims. In any event, we note that claim 1 recites a “discrepancy.” To the
extent that Patent Owner argues that Cornelius fails to disclose a
“discrepancy,” as recited in claim 1, we are not persuaded by Patent Owner
for at least the previously-discussed reasons.
Regarding claims 6, 7, 10, 21, and 23, Patent Owner argues that
Cornelius “fails to teach or suggest ‘receiving a proposed reconciliation’ and
‘receiving approval or disapproval of the proposed reconciliation,’ as recited
in independent claim 1.” PO App. Br. 19. Requester argues that Cornelius
discloses “comparing the POPI [Purchase Order Proforma Invoice] with the
shipping documents and notifying both the buyer and seller of any
discrepancy so that they can renegotiate.” 3PR Resp. Br. 15 (citing
Cornelius 18:26–28, 23:30–36). Patent Owner does not explain sufficiently
how this disclosure of Cornelius differs from the disputed claim limitations.
For example, when a “value of the data falls outside” a desired range in
Cornelius, the data is “rejected as ‘discrepant’” and “sent and highlighted to
both buyer and seller . . . who will renegotiate.” Cornelius 23:30–36. One
of ordinary skill in the art would have understood that in a “renegotiation” of
Cornelius, a buyer or seller would propose a “reconciliation” in order to
resolve the discrepancy. Patent Owner does not demonstrate sufficiently
how an agreement between a buyer and seller would be achieved in
Cornelius in a “renegotiation” without at least one party proposing a
“reconciliation.” Also, Cornelius explicitly discloses that during
(re)negotiation to resolve discrepancies, one party would “indicate
requirements” and another party “may agree or amend the terms.” Cornelius
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22:20–23. In other words, the parties involved in the negotiation would
approve or disapprove proposed reconciliations, as recited in claim 1.
Regarding claim 10, Patent Owner argues that “Cornelius fails to
teach or suggest ‘estimated data is compiled by the buyer during a
procurement phase of the complex project’” because, according to Patent
Owner, “this invoice [of Cornelius] is the actual cost of goods.” PO App.
Br. 19. This argument pertaining to “estimated data” was previously
addressed above.
The remaining claims depend from claim 1 and are not separately
argued. For the above reasons, we determine the Examiner did not err in
rejecting the remaining claims.

Patent Owner’s Appeal – Cornelius and Anderson – Claims 4, 5, and 13

Patent Owner indicates that Requester provided various rationales
regarding the obviousness of the combination of Cornelius and Anderson,
including “[c]ombining prior art elements according to known methods to
yield predictable results,” “[s]imple substitution of one known element for
another to obtain predictable results, “[u]se of known technique to improve
similar devices . . . in the same way,” and “[a]pplying a known technique to
a known device . . . ready for improvement to yield predictable results.” PO
App. Br. 28. Patent Owner also argues that “the record [is] devoid of [a]
rational explanation for making the proposed modifications.” PO App. Br.
29. However, Patent Owner does not contest or otherwise refute the prima
facie showing of obviousness provided by the Requester.
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For example, Patent Owner states that Requester argues that the
combination of the known element of (Cornelius) with the known element of
Anderson would “yield predictable results.” PO App. Br. 29. As previously
described, Cornelius discloses a system and method for effecting
“transactions between . . . buyers and . . . sellers” in which a “purchase
order/invoice is complete.” Cornelius 18:65–66, 20:40–41. Likewise,
Anderson discloses a “system and method for electronically processing
invoice information.” Anderson 1:15–16. The combination of the known
feature of performing a transaction between a buyer and a seller in which an
invoice is created (i.e., Cornelius) and the known feature of processing
information within the invoice (i.e., Anderson) would have resulted in no
more than the predictable result of performing a transaction between a buyer
and a seller in which an invoice is created and the information contained
within the invoice is processed accordingly. Such a combination would
have been obvious to one of ordinary skill in the art. KSR Int’l Co., 550 U.S.
at 416. Patent Owner does not provide sufficient evidence to demonstrate
that the combination of known elements of Cornelius with known elements
of Anderson would, in fact, yield unpredictable results, for example. Thus,
Patent Owner does not refute sufficiently the prima facie showing of
obviousness by the Examiner and Requester.

Patent Owner’s Appeal – Cornelius and Harvey – Claims 14–17 and 27

Patent Owner argues that “the adopted rejection . . . . fails to provide
any specific rationale for any such allegedly obvious modification.” PO
App. Br. 30. As the Examiner indicates, however, Requester provides a
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rationale as to why it would have been obvious to one of ordinary skill in the
art to have combined teachings of Cornelius with those of Harvey. RAN
25–26 (citing Requester’s Written Comments to Patent Owner’s Response to
non-final Office Action and Amendments, dated December 12, 2011 (“3PR
Resp. NF OA”), 41–43). For example, Requester argues that Cornelius
discloses “a system . . . that allows” a transaction to be consummated. 3PR
Resp. NF OA 41–43. Harvey also discloses a system that allows a
transaction to be consummated. For example, Harvey discloses “a global
electronic data delivery system and method of use for managing the delivery
of oil exploration and production data” that involves “time-efficient data
acquisition with real-time and/or immediate post-job interaction with and
integration of data to assist with project collaboration and decision-making.”
Harvey 1:9–11, 2:45–48. Patent Owner does not explain sufficiently how
the combination of the known feature of Cornelius of a system that allows
consummation of a transaction with the known feature of Harvey of
consummation of a transaction in the oil exploration field involving
interaction, integration of data, and project collaboration, for example,
would result in anything more than the mere predictable result of a system
that allows consummation of a transaction involving project collaboration
and/or integration of data in the oil exploration field.
Affirmance of the above-mentioned rejections for the above-
referenced claims based on Cornelius renders it unnecessary to reach the
propriety of the Examiner’s decision to reject those claims or not to reject
those claims on a different basis. Cf. In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009). As such, we need not reach the propriety of the rejection
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21
or non-adoption of rejections of those claims over other references or
combination of other references of record.
DECISION
We affirm the Examiner’s rejection of claims 1–3, 6–12, and 18–26
under 35 U.S.C. § 102(e) as anticipated by Cornelius; claims 4, 5, and 13
under 35 U.S.C. § 103(a) as unpatentable over Cornelius and Anderson; and
claims 14–17 and 27 under 35 U.S.C. § 103(a) as unpatentable over
Cornelius and Harvey. We also affirm the Examiner’s non-adoption of the
rejections of claims 21–24 under 35 U.S.C. § 112, first paragraph and claims
10–17, 25, and 27 under 35 U.S.C. § 112, second paragraph. We reverse the
Examiner’s rejection of claims 13, 17–20, and 27 under 35 U.S.C. § 112,
first paragraph, as failing the written description requirement.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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PATENT OWNER:

BIRCH STEWART KOLASCH & BIRCH, LLP
PO BOX 747
FALLS CHURCH, VA 22040-0747

THIRD PARTY REQUESTER:

ONE WORLD TRADE CENTER
121 S.W. SALMON STREET
SUITE 1600
PORTLAND, OR 97204

ACP