Ex Parte LI et al

Board of Patent Appeals and Interferences

Jul 13, 2011

10121268 (B.P.A.I. Jul. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MEI LI and THERESA M. ELLIS
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Appeal 2010-004644
Application 10/121,268
Technology Center 3600
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004644
Application 10/121,268

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 4, and 16. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A system for generating customs documents for the importation of
goods purchased by a buyer from a seller, comprising a computer
programmed with software, including:
a network interface;
a customs information system database having records configured to
record transaction information identifying the purchased goods, a customs
classification of the purchased goods, and a valuation of the purchased
goods, wherein the customs information system database is configured to be
in electronic communication with a customs broker via the network interface
such that the customs broker can access records to generate customs
documents reporting the transaction information; and
an audit module configured to audit the transaction information, using
an audit criterion, after the records are accessible by the customs broker for
submission to a buyer’s-country customs authority.

The Examiner relies on the following reference:
Sandman US 2003/0163447 A1 Aug. 28, 2003

Appellants appeal the following rejections:
1. Claims 1, 4, and 16 under 35 U.S.C. § 101 as directed to non-statutory
subject matter.
2. Claims 1, 4, and 16 under 35 U.S.C. § 103(a) as unpatentable over
Sandman.

Appeal 2010-004644
Application 10/121,268

3
ANALYSIS
Patentable Subject Matter
The Examiner holds that the claims appear to be directed to
technology; however, the body of claim 2 provides no specificity of how
technology is applied in a meaningful, specific, and non-trivial way. The
Examiner also finds that the claims are directed to software per se.
Claim 1 is directed to a system that includes a computer, a network
interface, a database, and an audit module and as such is a physical system
and is not software per se. Therefore, we will not sustain this rejection.
Obviousness
We agree with Appellants that Sandman does not disclose an audit
module configured to audit transaction information as required by claim 1.
Appellants’ Specification discloses that the audit module checks and
verifies customs information of each record according to a particular set of
criteria and if a criterion is not met indicates that further action should be
taken (Specification 11).
We have reviewed paragraph 29 of Sandman which is relied on by the
Examiner to disclose the audit module. We find that this paragraph of
Sandman discloses that customs brokers classify items and map the items to
the Harmonized Tariff Schedule of the United States, but there is no
disclosure in this paragraph that there is verification of transaction
information according to auditing criterion.
We do not agree with the Examiner that the recitation in claim 1 of an
“audit” module is a recitation of non-functional descriptive material. In our
view, the auditing function is functionally related to the module because the
module is configured to audit transaction information.
Appeal 2010-004644
Application 10/121,268

4
In addition, the Examiner has not directed our attention to a disclosure
in Sandman of transaction information that includes a valuation of purchased
goods as is recited in claim 1 The Examiner, recognizing that Sandman does
not disclose this aspect of the claims, states: “It would have been obvious
to one of ordinary skill in the art at the time of the invention was made to
extend Sandman to include any other type of information because the
incorporation of such features is no more than the predictable use of the
prior art elements according to their established function.” We do not agree
with this reasoning of the Examiner. First, as we stated above, Sandman
does not disclose auditing of transaction information. Second, Sandman
does not disclose that this transaction information includes valuation of
purchased goods. As such, it would not be a predictable use of the Sandman
method according to established functions
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 and claims 4 and 16 dependent thereon.

DECISION
The decision of the Examiner is reversed.

ORDER
REVERSED

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