Ex Parte Albazz et alDownload PDFPatent Trial and Appeal BoardSep 26, 201309972403 (P.T.A.B. Sep. 26, 2013) Copy Citation 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. 09/972,403 10/05/2001 Imaddin Othman Albazz CA920000071US1 (332) 3924 46320 7590 09/26/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 EXAMINER KELLEY, HEIDI RIVIERE ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 09/26/2013 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 IMADDIN OTHMAN ALBAZZ and LEV MIRLAS ____________ Appeal 2011-003824 Application 09/972,403 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and MEREDITH C. PETRAVICK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003824 Application 09/972,403 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 9-11, 13-19, 21-24, 33-35, and 37-40. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 9 is illustrative: 9. A method of workflow control of contractual activities under a contract comprising a predefined set of terms and conditions, comprising the steps of: a. storing the contract terms and conditions, receiving information, and referencing the terms and conditions of the contract to process the information and generate user interfaces in response, and b. communicating a user interface to a contracting party, wherein the contract is generated by storing at least one compilation of business rules comprising a plurality of rules available to be selected for inclusion in the contract, storing at least one terms and conditions set containing parameters corresponding to selected rules from the compilation of business rules, generating links between the compilation of business rules and the terms and conditions set to generate specific terms and conditions to be embodied in the contract, and interlocking the compilation of business rules, the terms and conditions set and the links to lock the contract. Appeal 2011-003824 Application 09/972,403 3 Appellants appeal the following rejections:1 Claims 9-11, 13-19, 21-24, 33-35, and 37-40 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Conklin (US 6,338,050 B1; iss. Jan. 8, 2002) and Shirley (US 5,692,206; iss. Nov. 25, 1997). FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). Additional findings of fact may appear in the Analysis that follows. 1. The Specification does not include a lexicographic definition of “interlocking.” 2. A definition of the verb “interlock” is “to become locked together or interconnected.” See Merriam Webster's Collegiate Dictionary 611 (l0th Ed. 1996.) 3. A definition of the verb “lock” is “to fix in a particular situation or method of operation.” Id. at 684. 4. The Specification describes that elements are interlocked by staff to prevent further changes to the contract but that Static Elements 1 The Examiner withdrew the rejection of claims 9-11 and 13-16 under 35 U.S.C. § 101 and the rejection of claims 9-11 and 13-16 under 35 U.S.C. § 112, second paragraph. (Ans. 8). The Examiner also appears to have withdrawn the obvious-type double patenting rejection of claims 9-11, 13- 19, 21-24, 33-35, and 37-40, as the rejection does not appear anywhere within the Examiner’s Answer and the Answer makes clear that the only rejection pending is under 35 U.S.C. § 103(a). (See Ans. 2). Appeal 2011-003824 Application 09/972,403 4 of the contract may be amended by mutual agreement between the parties. Page 25, ll. 1-7. ANALYSIS Claims 9-11, 13-19, 21-24, 33-35, and 37-40 rejected under 35 U.S.C. § 103(a) as being unpatentable over Conklin and Shirley. We are not persuaded the Examiner erred in asserting that a combination of Conklin and Shirley discloses “at least one compilation of business rules comprising a plurality of rules available to be selected for inclusion in the contract” and “at least one terms and conditions set containing parameters corresponding to selected rules from the compilation of business rules,” as recited by independent claim 9 (App. Br. 14-18; Reply Br. 8-14). Specifically, Appellants argue that the Examiner has failed to demonstrate how Conklin’s rules for ordering (App. Br. 15-16; Reply Br. 13-14) and list of terms being negotiated (App. Br. 16-17; Reply Br. 14) correspond to a compilation of business rules and set of terms and conditions, respectively. However, we agree with the Examiner that the combination of Conklin and Shirley discloses the subject matter of independent claim 9. Turning first as to whether Conklin discloses the “at least one compilation of business rules” of claim 9, we agree with the Examiner that Conklin’s rules for ordering (see Ans. 5; see also col. 23:36 – col. 24:4) address the “at least one compilation of business rules,” as presently claimed. While the Appellants argue that the rules in Conklin are for processing the proposal and not intended to be placed into the proposal Appeal 2011-003824 Application 09/972,403 5 (App. Br. 15), we are unable to find such a requirement within the language of claim 9 or in the portions of the Specification referred to by the Appellants on pages 2 and 3 of their Appeal Brief. To the contrary, the Specification states at page 13, lines 8-17 that the compilation of business rules is invisible to both the buyer and seller. Thus, the Appellants have failed to persuade us that the rules disclosed in Conklin fail to address the “at least one compilation of business rules,” recited by independent claim 9. Turning next as to whether Conklin discloses “at least one terms and conditions set containing parameters corresponding to selected rules from the compilation of business rules,” we find that Conklin discloses that its system allows sellers to author templates including a seller’s marketing and product information along with pricing, terms, and service offerings within Conklin’s sponsored community (col. 19:14-26). Conklin describes that its system uses unique id’s to ensure proper data are found and transmitted using a combination of record, field, relational names, and delimiters (col. 21:36-55) in order to ensure the information included within the seller’s template is integrated within Conklin’s community (col. 20:4-21). In our view, the “at least one terms and conditions set containing parameters corresponding to selected rules from the compilation of business rules,” as reasonably broadly construed, covers the product information included in Conklin’s seller templates because they are used to “‘fill[] in the blanks’” of the selected seller template in order to generate orders and contracts in accordance with their unique system ids (col. 20:4-32; see Ans. 5). We find nothing in the claim language or the Specification, nor do Appellants point to anything, that would preclude such an interpretation. Appeal 2011-003824 Application 09/972,403 6 We are also not persuaded by the Appellants’ arguments that the Examiner erred in asserting that the combination of Conklin and Shirley discloses “interlocking the compilation of business rules, the terms and conditions set and the links to lock the contract,” as recited by independent claim 9 (App. Br. 18; Reply Br. 15). Initially, we note that the Specification does not include a lexicographic definition of “interlocking” (FF 1). A definition of the verb “interlock” is “to become locked together or interconnected” (FF 2), and a definition of “lock” is “to fix in a particular situation or method of operation” (FF 3). We note that these definitions are consistent with the Specification, which describes preventing further changes to the elements of the contract, but still allowing amendments to the contract by mutual agreement (FF 4). Given these definitions and giving claim 1 the broadest reasonable construction in light of the Specification (In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)), we find that Conklin’s final contract document which reflects the participants agreement (col. 24:19-22) meets the claimed interlocking step as the terms are fixed relative to that particular version of the contract once it is agreed upon and finalized. Lastly, to the extent Appellants seek an explicit suggestion or motivation in the reference itself, this is no longer the law in view of the Supreme Court’s holding in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).2 Instead, we hold that the Examiner has provided an articulated 2 Appellants incorrectly state that the Examiner’s burden of proof should be analyzed using the substantial evidence standard (Reply Br. 10-11). However, the Board’s decision is a final agency decision on patentability, Appeal 2011-003824 Application 09/972,403 7 reasoning with rational underpinning for why a person with ordinary skill in the art would modify the negotiation process and system of Conklin with the authoring unit in Shirley, which describes selecting provision of an agreement during negotiations. (Ans. 6 and 9-10). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). In view of the foregoing, we will sustain the Examiner’s rejection of independent claim 9. We will also sustain the Examiner’s rejection of independent claims 17 and 33, as well as dependent claims 10-11, 16, 19, 24, 34, 35, and 40 because these claims stand or fall with independent claim 9. (See App. Br. 11.) Claim 13 We are not persuaded by the Appellants’ argument that the Examiner erred in asserting that the combination of Conklin and Shirley fails to disclose “storing at least one product list filter for generating a list of a specified subset of products from a master list of products, and generating and thus, the Board reviews the Examiner’s fact finding using a preponderance of the evidence (more likely than not) standard of proof. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Other than for fraud or violation of the duty of disclosure, preponderance of the evidence is the standard that must be met by the PTO in making rejections). On judicial review of agency action, administrative findings of fact must be sustained when supported by substantial evidence on the record considered as a whole. In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000). Appeal 2011-003824 Application 09/972,403 8 links between the product list filter, the terms and conditions set and the master list of products” because the Examiner did not cite to any passages in Conklin to disclose these limitations (App. Br. 20; Reply Br. 16). Contrary to Appellants’ argument, the Examiner cited to the functionality provided by the relational database discussed in Conklin at column 21 (Ans. 6-7; see also Fin. Rej. 113). Accordingly, we sustain the Examiner’s rejection of claim 13. Claim 14 We are not persuaded by the Appellants’ argument that the Examiner erred in asserting that the combination of Conklin and Shirley fails to disclose “the product list filter comprises a plurality of tiers, each tier generating a list of a different subset of products” because Conklin’s search and evaluate processes only enables buyers to search companies and their products (App. Br. 20-21; Reply Br. 16). Instead, we agree with the Examiner that Conklin’s search and evaluate functionality addresses the product filter list comprising tiers with different subsets of products, as required by claim 14. While we acknowledge the differences between the list and tiers in Conklin and Appellants’ claim, we agree with the Examiner that these differences are directed to non-functional descriptive material which cannot serve to render non-obvious an invention that otherwise would have been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is not 3 Final Rejection, mailed March 2, 2010. Appeal 2011-003824 Application 09/972,403 9 functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability). Accordingly, we sustain the Examiner’s rejection of claim 14. Claim 15 We are not persuaded by the Appellants’ argument that the Examiner erred in asserting that the combination of Conklin and Shirley fails to disclose “the contract comprises dynamic elements which can be unilaterally altered by a contracting party” because the portion of Conklin relied upon by the Examiner is related to the bilateral altering of an element (App. Br. 21; Reply Br. 16). We agree with the Examiner that the unilateral action recited by claim 15, as reasonably broadly construed, covers the functionality in Conklin that allows participants to propose terms to other participants, thus making the other participant the deciding entity (col. 23:38-62). We find nothing in the claim language or the Specification, nor do Appellants point to anything, that would preclude such an interpretation. Accordingly, we sustain the Examiner’s rejection of claim 15. DECISION We affirm the Examiner’s rejection of claims 9-11, 13-19, 21-24, 33- 35, and 37-40 under 35 U.S.C. § 103(a). Appeal 2011-003824 Application 09/972,403 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh Copy with citationCopy as parenthetical citation