Ex Parte Bright et al

Board of Patent Appeals and Interferences

Aug 6, 2004

09303368 (B.P.A.I. Aug. 6, 2004)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MARION SCOTT BRIGHT, PUSHPALATHA CHANNIKERE,
BALASUBRAMANIAN GOPALAN, RAHUL JINDANI, JINRAJ DHRUVAKUMAR
JOSHIPURA, VINOD KANNOTH, JAYAKUMAR KRISHNAMURTHY, GREGORY LEE
MCKEE, SYLVAIN MICHEL, PENNY JEANNETTE PEACHEY-KOUNTZ
and JAMES DONALD SCOTT
________________
Appeal No. 2003-0901
Application 09/303,368
________________
HEARD: JULY 14, 2004
________________
Before HAIRSTON, JERRY SMITH and FLEMING, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1, 3, 4, 6, 8, 9, 11 and
13-24, which constitute all the claims remaining in the
application.
Appeal No. 2003-0901
Application 09/303,368
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The disclosed invention pertains to a method and
apparatus for pre-processing electronic sales order data before
it is transmitted to an order processing system.
Representative claim 1 is reproduced as follows:
1. A system for pre-processing orders before they are
transmitted to an order processing system, comprising:
an order interceptor receiving and pre-processing electronic
sales order data prior to transmitting to the order processing
system;
an interface system receiving the electronic sales order
data from the order interceptor and performing an availability
check, wherein the availability check determines the portions of
the electronic sales order data that can be satisfied; and
means for transmitting at least a portion of the electronic
sales order data to the order processing system for order
processing.
The examiner relies on the following references:
Johnson et al. (Johnson) 6,023,683 Feb. 08, 2000
(filed Aug. 10, 1994)
Blinn et al. (Blinn) 6,058,373 May 02, 2000
(filed Oct. 16, 1996)
Claims 1, 3, 4, 6, 8, 9, 11 and 13-24 stand rejected
under 35 U.S.C. § 103(a). As evidence of obviousness the
examiner offers Blinn taken alone or Johnson taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
Appeal No. 2003-0901
Application 09/303,368
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OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejections. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we affirm.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
Appeal No. 2003-0901
Application 09/303,368
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modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
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Application 09/303,368
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decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived [see 37 CFR § 1.192(a)].
We consider first the rejection of all pending claims
based on the teachings of Blinn. The examiner finds that Blinn
teaches the claimed invention except that Blinn does not teach
two separate processing systems, that is, a pre-processing system
and a processing system. The examiner finds that it would have
been obvious to the artisan to modify the integrated Blinn system
so as to split the processing disclosed therein into two separate
processing systems as claimed [answer, pages 4-5].
Appellants argue that their invention relates to an
integrated system for pre-processing Electronic Sales Orders
(ESOs) or Electronic Purchase Orders (EPOs) in order to validate
certain criteria before routing the same, altered, or additional
ESOs or EPOs to an order processing system. Appellants assert
that the claimed pre-processing is meant to act upon an entire
order before the actual subsequent order placement. Appellants
note that their invention amounts to much more than splitting the
processing into pre-processing and processing. Appellants argue
that Blinn has no disclosure of pre-processing orders as defined
in the present invention. Appellants note that the claimed pre-
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Application 09/303,368
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processing occurs prior to any ESO being routed by a router to an
order processing system [brief, pages 5-8].
With respect to independent claim 1, the examiner points
out in detail how he reads the claimed invention on Blinn. The
examiner notes that Blinn essentially anticipates the claimed
invention except for the fact that the examiner has interpreted
the claimed invention as requiring separate systems for the pre-
processing and for the processing. The examiner finds that Blinn
teaches all the functions of the claimed invention except that
the pre-processing and processing of Blinn are integrated into a
single device. The examiner responds that the pre-processing
steps of Blinn are performed before the processing steps and
before any actual order placement [answer, pages 6-10].
Appellants respond that the present invention is meant for
intercepting an already completed purchase order between two
trading partners and then pre-processing the completed purchase
order before re-submitting the order to an appropriate order
fulfillment system. Appellants argue that Blinn does not perform
what is termed pre-processing by the present invention.
Appellants argue that the “pre-processing” in Blinn occurs before
the purchase order is completed so that it is not pre-processing
as intended by the claimed invention [reply brief, pages 4-7].
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Application 09/303,368
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We will sustain the examiner’s rejection of independent
claim 1 based on the teachings of Blinn. The thrust of
appellants’ arguments is that the “pre-processing” of the claimed
invention refers to pre-processing of completed purchase orders
which is different than the pre-processing of Blinn identified by
the examiner. We do not agree with appellants’ arguments.
During prosecution before the examiner, claims are given their
broadest reasonable interpretation. This is done because an
applicant has an opportunity at this time to amend the claims so
that they accurately reflect what the applicant is trying to
protect. The examiner has read the pre-processing of claim 1 on
the processing in Blinn which takes place before the final
processing of the order is confirmed. We agree with the examiner
that these operations of Blinn, such as item availability, can be
considered to fall within the broad term of pre-processing in
claim 1. We also agree with the examiner that it would have been
obvious to the artisan to separate the pre-processing operations
and the processing operations of Blinn into separate processing
devices as explained by the examiner. We note, however, that we
do not agree with the examiner’s position that the claimed pre-
processing and processing must be interpreted to include separate
devices for performing the pre-processing and the processing. We
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Application 09/303,368
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do not find any basis which compels reading two devices into the
invention of claim 1.
Appellants indicate that the claims stand or fall
together as a single group [brief, page 5]. Nevertheless,
appellants refer to the limitations of several other claims on
page 8 of the brief. Since this portion of the brief does
nothing more than recite the limitations of other claims on
appeal and make a general assertion that Blinn does not teach or
suggest these limitations, we find that this portion of the brief
does not constitute a valid separate argument for patentability.
Therefore, all the other claims on appeal fall with claim 1 for
reasons discussed above.
We now consider the rejection of all pending claims based
on the teachings of Johnson. The examiner finds that Johnson
teaches the claimed invention except that Johnson does not teach
two separate processing systems, that is, a pre-processing system
and a processing system. The examiner finds that it would have
been obvious to the artisan to modify the integrated Johnson
system so as to split the processing disclosed therein into two
separate processing systems as claimed [answer, page 5].
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Application 09/303,368
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Appellants’ arguments with respect to this rejection
essentially parallel the arguments discussed above with respect
to the rejection based on Blinn. The examiner’s response to
appellants’ arguments and appellants’ arguments set forth in the
reply brief are essentially the same as the arguments we
considered above.
We will sustain the examiner’s rejection of claim 1 based
on the teachings of Johnson for reasons discussed above.
Specifically, the key question again is appellants’ improper
attempt to have the term “pre-processing” of claim 1 interpreted
in a manner which is narrower that its broadest reasonable
interpretation. We agree with the examiner that the processing
of Johnson which he has identified as pre-processing is
consistent with the broadest reasonable interpretation of that
term.
Once again, although appellants refer to other claims on
appeal, the discussion of these other claims does not amount to a
separate argument for patentability. Therefore, we also sustain
the examiner’s rejection of all the other claims on appeal based
on Johnson.
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Application 09/303,368
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In summary, we have sustained each of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1, 3, 4, 6, 8, 9, 11 and 13-24 is
affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
JS/ki
Appeal No. 2003-0901
Application 09/303,368
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Andrew M. Calderon
McGuire, Woods, LLP
1750 Tysons Boulevard
Suite 1800
Mclean, VA 22102-4215