Ex parte Berlin et al.

Board of Patent Appeals and Interferences

Jan 29, 1999

07815654 (B.P.A.I. Jan. 29, 1999)

Application for patent filed December 31, 1991.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT L. BERLIN,
CRAIG A. BLOSZINSKY, WILLIAM E. BRUNER,
FRANCIS L. FITZPATRICK, JOSEPH E. HEIN,
DONALD R. JOHNSON, BARRY E. McCAA, and
BHARATH NATARAJAN
__________
Appeal No. 96-3540
Application 07/815,6541
__________
ON BRIEF
__________
Before BARRETT, FLEMING, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-3540
Application 07/815,654
2
This is a decision on appeal from the final rejection of
claims 1 through 12, all of the claims pending in the present
application.
The invention relates to an automated payment method and
system within a Computer Integrated Manufacturing (CIM)
system. Referring to page 9 line 15 et seq. of the
specification and figure 2B, a purchase order is created at
82, and released to a supplier at 84. A purchase order
planned receipt list is then generated at 86. After an
advanced ship notice is received from the supplier at 88
(listing each item), a comparison/validation is made at 90,
comparing the items listed on the advanced ship notice to
those items listed on the planned receipt list. If the items
on each list match at 92(figure 2C), an automatic
authorization for payment is issued at 94 to a bank at 96.
All of these processes are accomplished electronically and
transmitted over a communications network using an Electronic
Data Interchange (EDN).
A representative independent claim 1 is reproduced as
follows:
Appeal No. 96-3540
Application 07/815,654
The Examiner's Answer incorporates by reference the2
final rejection (Paper No. 13) which in turn incorporates by
reference the preceding rejection (Paper No. 10) as the
"grounds of rejection". Both papers include a rejection under
35 U.S.C. § 101, however this rejection was withdrawn by
the advisory action of Paper No. 15. Also, only those
statements of grounds of rejection as appear in a single prior
(continued...)
3
1. An automated payment method for utilization within a
computer integrated manufacturing system which includes a
plurality of trading partners linked via an electronic data
interchange system, said method comprising the computer
implemented steps of:
creating within said computer integrated manufacturing
system a purchase order listing items to be purchased by a
first trading partner from a second trading partner;
transmitting within said computer integrated
manufacturing system an advanced shipment notice listing items
to be delivered from said second trading partner to said first
trading partner in anticipation of a planned shipment of such
items in response to said purchase order;
comparing within said computer integrated manufacturing
system items listed within said advanced shipment notice with
items listed within said purchase order; and
automatically authorizing payment in response to a
validation of said items listed within said advanced shipment
notice.
The Examiner relies on the following reference:
Shavit et al. (Shavit) 4,799,156 Jan. 17,
1989
Claims 1 through 12 stand rejected under 35 U.S.C. § 103
as being unpatentable over Shavit.2
Appeal No. 96-3540
Application 07/815,654
(...continued)2
action may be incorporated by reference. An examiner's answer
should not refer, either directly or indirectly, to more than
one prior Office action (MPEP § 1208).
4
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the brief (Paper No. 17) and
answer (Paper No. 18) for the respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 12
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the reasonable teachings or suggestions found in
the prior art, or by a reasonable inference to the artisan,
contained in such teachings or suggestions. In re Sernaker,
702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
In regard to the rejection of claims 1 through 12 under
35 U.S.C. § 103 as being unpatentable over Shavit, Appellants
argue (1) that Shavit does not set forth an advanced shipment
Appeal No. 96-3540
Application 07/815,654
5
notice, from the supplier, listing items to be delivered
(Brief at the bottom of page 4, et seq.); (2) that Shavit does
not compare the advanced shipment list with a purchase order
list for validation (Brief at the top of page 5); and (3) that
upon validation, Shavit does not automatically authorize
payment (Brief at the bottom of page 5). These limitations
are recited in both independent claims.
In response to argument (1), the Examiner, at the middle
of page 4 of the Answer, cites Shavit at column 14, lines 17-
27, which recites delivery notifications from the supplier.
Column 16, lines 35-38, recite that such notifications may
contain "invoices from the suppliers". Invoices are defined
as "an itemized list of goods shipped usu. specifying the
price and the terms of sale", Webster's Ninth New Collegiate
Dictionary (1986). Also note column 11, line 55, of Shavit
for invoices. It is clear that, contrary to Appellants'
argument, Shavit does teach an advanced shipment notice
listing items to be delivered.
In response to argument (2), the Examiner states, at the
bottom of page 5 of the Answer, that although Shavit does not
Appeal No. 96-3540
Application 07/815,654
6
recite a specific "items comparing step", normal business
practice would be to compare the items listed on a supplier's
notice of shipment (i.e., invoice) with the items listed on a
purchase order. Shavit recites several instances of comparing
items. Such a comparison would be inherent at column 26,
lines 1-4, where orders are automatically confirmed against
available inventory, and substitutes are suggested for an
unavailable item. Note also, the validation procedures
recited at column 13, lines 51-68 (cited by the Examiner in
the final rejection at the end of paragraph 5, and in Paper
No. 10, in the middle of page 4). We agree with the Examiner
that comparison of such item lists is covered by Shavit.
In response to argument (3), the Examiner indicates that
automatically authorizing payment is shown in Shavit at column
8, lines 55-66; column 14, lines 35-44 (middle of page 4 of
the Answer). We are at a loss to find any automatic payment
authorization, let alone the "automatically authorizing
payment in response to a validation of said items listed" as
claimed by Appellants. Although Shavit allows for payment
Appeal No. 96-3540
Application 07/815,654
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authorization, no automatic authorization can be found as
argued by Appellants.
We find that all claims recite the automatic payment
authorization upon validation which is not found or suggested
in the applied prior art. Therefore we have not sustained the
rejection of claims 1 through 12 under 35 U.S.C. § 103.
Accordingly, the Examiner's decision is reversed.
REVERSED
)
LEE E. BARRETT )
Administrative Patent Judge )
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
STUART N. HECKER )
Administrative Patent Judge )
SNH/cam
Felsman, Bradley, Gunter & Dillon, LLP
Suite 350, Lakewood On the Park
7600B North Capital of Texas Highway
Austin, TX 78731
Appeal No. 96-3540
Application 07/815,654
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