Ex Parte Jhingan

Board of Patent Appeals and Interferences

Feb 15, 2012

10687896 (B.P.A.I. Feb. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/687,896 10/17/2003 Nitin Jhingan END920030059US1
(16844)
9806
23389 7590 02/15/2012
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
CLARK, DAVID J
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
02/15/2012 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte NITIN JHINGAN 8
___________ 9
10
Appeal 2010-008502 11
Application 10/687,896 12
Technology Center 3600 13
___________ 14
15
16
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
22
23
Appeal 2010-008502
Application 10/687,896

STATEMENT OF THE CASE1 1
Nitin Jhingan (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2
a final rejection of claims 1-6 and 19-32, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way for using instant messaging to provide and 6
receive information about requisition orders over the Internet or other 7
computer networks. (Specification ¶ 0001). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method of creating and providing information about a 12
requisition order, comprising the steps: 13
[1] providing an automated agent 14
for receiving and identifying a set of inquiries about the 15
requisition order, 16
and 17
for each identified inquiry, 18
preparing an associated response; 19
[2] a user transmitting to the agent 20
one of said set of inquiries; 21
[3] the agent identifying the transmitted inquiry 22

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 25, 2009) and Reply Brief (“Reply Br.,” filed March
16, 2010), and the Examiner’s Answer (“Ans.,” mailed March 16, 2010).
Appeal 2010-008502
Application 10/687,896

and 1
preparing the associated response; 2
[4] using an instant messaging system 3
to send said associated response from the agent to the 4
user; 5
[5] the user initiating an instant messaging session 6
with the agent 7
via the instant messaging system; 8
and 9
[6] the user and the agent creating the requisition order during 10
said instant messaging session 11
by interactively communicating with each other during 12
said instant messaging session via the instant messaging 13
system, 14
thereby eliminating the need to use a Web site to create 15
the requisition order, 16
wherein the agent helps the user create orders through a 17
chat window. 18
The Examiner relies upon the following prior art: 19
Monteleone US 7,184,973 B2 Feb. 27, 2007
Katzman US 2002/0046051 A1 Apr. 18, 2002
Chou US 2002/0099796 A1 Jul. 25, 2002
Claims 1-6, 19-22, and 24-32 stand rejected under 35 U.S.C. § 103(a) as 20
unpatentable over Chou and Katzman. 21
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 22
Chou, Katzman, and Monteleone. 23
Appeal 2010-008502
Application 10/687,896

ISSUES 1
The issue of obviousness turns primarily on whether it was predictable to 2
use Katzman’s instant messaging service in Katzman’s purchasing 3
management system during the requisition portion of the purchase cycle. 4
FACTS PERTINENT TO THE ISSUES 5
The following enumerated Findings of Fact (FF) are believed to be 6
supported by a preponderance of the evidence. 7
Facts Related to the Prior Art 8
Chou 9
01. Chou is directed to a tool that allows users who are not directly 10
networked to a client/server requisition system to enter 11
requisitions and inquire into the status of existing requisitions 12
from a remote location using the Internet or an intranet. Chou ¶ 13
0002. 14
02. Chou describes generating a requisition for selectable items, using 15
a client computer and server interconnected via a network. The 16
client computer system is configured to allow a plurality of users 17
to access the server. Chou ¶ 0008. 18
Katzman 19
03. Katzman is directed to communicating with at least one member 20
in a computer system. Member profile information incudes 21
schedule information and member activity information. Vendor 22
profile information includes a vendor determined predetermined 23
condition and associated action to be taken in response to an 24
Appeal 2010-008502
Application 10/687,896

occurrence of a predetermined condition. A member is selected 1
based on the predetermined condition or an occurrence of said 2
predetermined condition. A preferred mode of communication is 3
automatically sent in accordance with said associated action to 4
said at least one member using said preferred mode of 5
communication. The communication is customized in accordance 6
with one of said scheduling information and said member activity 7
information. Katzman ¶ 0007. 8
04. The Order Wizard provides users who are members a targeted list 9
of goods and services specifically available to them. This may 10
include, for example, descriptions of the goods and/or services, 11
current pricing, promotional offers, shipping and inventory 12
availability, local and national vendor information, and other 13
necessary information. The Order Wizard may allow for direct 14
communications, via email, chat, bulletin boards, and other 15
Internet technologies with these suppliers in order to enhance 16
customer/supplier relationships. These MCS communication 17
capabilities may be rules-based and may automatically send 18
communications to both users and suppliers. Katzman ¶ 0028. 19
05. Instant messaging is an optional component for the chat described 20
supra. Katzman ¶ 0033 and 0039. 21
06. Katzman describes using instant messaging to confirm the vendor 22
will be able to deliver. This instant message occurs at the same 23
time the order is placed. The vendor responds back with instant 24
Appeal 2010-008502
Application 10/687,896

messaging recommending an order change. Katzman ¶ 0099-1
0100. 2
ANALYSIS 3
We are unpersuaded by Appellant’s argument that the art fails to 4
describe the agent creating the requisition order during an instant messaging 5
session. Appeal Br. 21. Appellant distinguishes Katzman, contending that 6
Katzman performs instant messaging to confirm delivery rather than create 7
the order. Id. 8
The Examiner responds that Chou describes creating a requisition on a 9
server (see FF 01-02), and Katzman describes using instant messaging 10
during purchasing activities (see FF 03- 06). Ans. 17-18. Katzman does not 11
narrowly restrict instant messaging to only post order activity, and indeed 12
even describes using instant messaging to change an order (FF 06) which is 13
analogous to entering a new requisition. In any event, Katzman describes 14
instant messaging as one of several communication tools for rapid response 15
during purchasing, making it predictable to one of ordinary skill in the 16
purchasing management arts to use such rapid communication during the 17
requisition steps as well as any other steps in the purchasing cycle. There is 18
nothing unusual about entering a requisition that would make the use of 19
communication tools less predictable during that phase of the process. 20
We are further unpersuaded by the Appellant’s argument that an instant 21
messaging system has significantly less processing and memory capacity 22
than a server and that the claim eliminates the need for a web site. Reply Br. 23
3-5. Appellant provides no evidence to support the assertions regarding the 24
relative amounts of processing and memory capacity, and in any event, 25
Appeal 2010-008502
Application 10/687,896

while instant messaging may use much less of a server’s capacity than the 1
maximum available, this is in the nature of a server so as to run plural 2
processes simultaneously. This argument does not even suggest that 3
Katzman’s server would not use the instant messaging service that Katzman 4
explicitly describes. 5
As to the “thereby” clause that a need to use a web site would be 6
eliminated, it is the need to use, not the web site, that is the subject of the 7
verb “is eliminated.” Because all of the pertinent information in a 8
requisition can be conveyed by any textual communication, including instant 9
messaging, the need to use a web site is simply inherently eliminated. More 10
to the point, the Examiner did make findings as to this limitation at Answer 11
12. 12
As to claim 24, reciting that the user and the agent must be currently 13
logged on to the instant messaging system in order for a message to be sent 14
from the user to the agent, we are unpersuaded by Appellant’s argument that 15
the prior art does not require this. Appeal Br. 23. 16
The Examiner responds that both parties are clearly logged onto 17
Katzman’s system (FF 04) which includes the instant messaging facility (FF 18
05-06). Ans. 18-19. Aside from this, plain common sense informs one of 19
ordinary skill that two way communication requires that each party be 20
connected, and logging in is simply one step in computer connection. 21
In rejecting rigid application of the "teaching, suggestion, or 22
motivation" test for obviousness, the Supreme Court observed 23
that common sense can be a source of reasons to combine or 24
modify prior art references to achieve the patented invention. 25
Perfect Web Technologies, Inc. v. INFOUSA, Inc., 587 F.3d 1324, 1329 (Fed 26
Cir 2009). 27
Appeal 2010-008502
Application 10/687,896

CONCLUSIONS OF LAW 1
The rejection of claims 1-6, 19-22, and 24-32 under 35 U.S.C. § 103(a) 2
as unpatentable over Chou and Katzman is proper. 3
The rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable over 4
Chou, Katzman, and Monteleone is proper. 5
DECISION 6
The rejection of claims 1-6 and 19-32 is affirmed. 7
No time period for taking any subsequent action in connection with this 8
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 9
§ 1.136(a)(1)(iv) (2007). 10
11
AFFIRMED 12
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MP 16