Ex Parte Herrmann et al

Patent Trial and Appeal Board

Jul 24, 2013

10610326 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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Ex parte KARINA HERRMANN, NELSON CAPETILLO, PETER FITZ, 7
RUEDIGER MUELLER and ALEXANDER ZAICHENKO 8
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Appeal 2011-007548 11
Application 10/610,326 12
Technology Center 3600 13
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI and 17
THOMAS F. SMEGAL, Administrative Patent Judges. 18
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SMEGAL, Administrative Patent Judge. 20
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DECISION ON APPEAL 23
Appeal 2011-007548
Application 10/610,326
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STATEMENT OF THE CASE1 1
Karina Herrmann, Nelson Capetillo, Peter Fitz, Ruediger Mueller and 2
Alexander Zaichenko (Appellants) seek review under 35 U.S.C. § 134 of a 3
final rejection of claims 1-39, the only claims pending in the application on 4
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
We AFFIRM. 6
THE INVENTION 7
The Appellants invented a method for procuring items using a central 8
computer system (Spec. 2, ll. 13-14). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1 which is reproduced below. 11
1. A method used in an item procurement process and 12
executed by a central computer system in a distributed network 13
of computer systems, the method comprising: 14
receiving, at the central computer system, a first purchase 15
request for a first item to be procured, the first purchase request 16
received from a first computer system in the network of 17
computer systems and comprising a first item category 18
identifier that describes the first item; 19
selecting a second computer system in the network in 20
which to create a purchase document, the selection of the 21
second computer system based on the first item category 22
identifier; and 23
causing a purchase document to be created in the second 24
computer system. 25

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 18, 2009) and Reply Brief (“Reply Br.,” filed Mar. 24,
2011), and the Examiner’s Answer (“Ans.,” mailed Jan. 25, 2011).
Appeal 2011-007548
Application 10/610,326
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The Examiner relies upon the following prior art: 1
Powell US 2003/0126025 A1 Jul. 3, 2005 2
REJECTION ON APPEAL 3
Claims 1-39 stand rejected under 35 U.S.C. § 102(b) as anticipated by 4
Powell.2 5
ISSUE 6
The issue is whether the Examiner established a prima facie showing 7
of anticipation in rejecting claims 1-39 over Powell. 8
FINDINGS OF FACT 9
We find that the findings of fact, which appear in the Analysis below, 10
are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 11
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 12
evidentiary standard for proceedings before the Office). 13
ANALYSIS 14
Claims 1-39 rejected under 35 U.S.C. § 102(b) as anticipated by Powell. 15
Appellants argue claims 1-39 as a group (App. Br. 13). We select 16
claim 1 as the representative claim for this group and the remaining claims 17
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). 18
We have considered Appellants’ arguments raised in the Appeal Brief 19
and Reply Brief but do not find them persuasive to demonstrate reversible 20
error in the Examiner's position. 21

2 The Examiner has withdrawn the 35 U.S.C. § 112, First and Second
Paragraph Rejections (Ans. 3).
Appeal 2011-007548
Application 10/610,326
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In particular, in the Appeal Brief Appellants argue that Powell “does 1
not disclose generating a purchase order on a second computer system in 2
response to a category identifier on a purchase request” (App. Br. 15; 3
emphasis added). However, claim 1 is not limited to generating a purchase 4
order in response to a category identifier, as the third step only recites: 5
“causing a purchase document to be created in the second computer system.” 6
We do not read the argued limitations into claim 1 from the Specification. 7
Limitations appearing in the specification but not recited in the claim are not 8
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 9
1369 (Fed. Cir. 2003) 10
Notwithstanding, we nevertheless find that Powell discloses “category 11
identifiers” at [0006] described as “a code structure including a specification 12
code and item locator for classifying and organizing direct and indirect 13
items.” 14
Appellants also contend that the Powell does not anticipate the 15
automation afforded by the claimed processes because “the responsibility for 16
generating purchase orders falls on the human intervention” of “purchasing 17
personnel as outlined in Powel, para. [0022]” (App. Br. 14). 18
However, Appellants’ contention is not commensurate with the scope 19
of claim 1 which does not recite “generating” a purchase order, whether 20
automated or manual. All that claim 1 requires is “causing a purchase 21
document to be created in the second computer system,” which we find is 22
met by an act of manual input/releasing into the computer system by the 23
personnel in Powell. 24
This argument is also unavailing as Powell discloses that “the process 25
could be automated” at [0024] (Ans. 4, 7). 26
Appeal 2011-007548
Application 10/610,326
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Appellants argue in the Reply Brief, contending that the Examiner’s 1
referenced portions of Powell do not disclose or suggest the actual language 2
of the “selecting” step of claim 1. However we disagree with Appellants 3
because, as the Examiner found, Powell teaches the “selecting” step. In 4
particular, Powell discloses the second computer system (Fig. 1, supplier 5
system 140) for creation of a request for acquisition (step 302 of Fig. 3) to 6
release a purchase order for the requested item (step 308 of Fig. 3) as more 7
fully described in [0031] (Ans. 7-8). Of course, anticipation "is not an 8
'ipsissimis verbis' test." In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) 9
(citing Akzo N.V. v. U.S. Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 10
(Fed. Cir. 1986)). "An anticipatory reference ... need not duplicate word for 11
word what is in the claims." Standard Havens Prods. v. Gencor Indus., 953 12
F.2d 1360, 1369 (Fed. Cir. 1991). 13
Appellants also argue in the Reply Brief that we must look to the 14
“totality of the record” in evaluating claims in view of the prior art, citing to 15
In re Chu, 66 F.3d. 292 (Fed. Cir. 1995), contending that “by not giving any 16
weight to the advantages asserted in the present matter, the Examiner used 17
the wrong legal standard to evaluate Applicant’s claims” (Reply Br. 2-3). 18
However, In re Chu is inapplicable as it is limited to an obviousness 19
rejection under 35 U.S.C. § 103, not an anticipation rejection under 35 20
U.S.C. § 102. 21
For the foregoing reasons, we sustain the Examiner’s rejection of 22
claim 1 as being anticipated by Powell. We will also sustain the Examiner’s 23
rejection of claims 2-39 as anticipated by Powell for the reason that 24
Appellants have not argued the separate patentability of these claims. (App. 25
Br. 13). 26
Appeal 2011-007548
Application 10/610,326
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DECISION 1
The rejection of claims 1-39 under 35 U.S.C. § 102(b) as anticipated by 2
Powell is affirmed. 3
No time period for taking any subsequent action in connection with this 4
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 5
§ 1.136(a) (1)(iv) (2011). 6
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AFFIRMED 8
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hh 13