Glenn E. Riggs et al.

Patent Trials and Appeals Board

Apr 29, 2021

2013005910 (P.T.A.B. Apr. 29, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/005,678 12/07/2004 Glenn E. Riggs 78820.0001 3619
72550 7590 04/29/2021
Bauer Law Offices
9800A McKnight Road
Suite 307
Pittsburgh, PA 15237
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
04/29/2021 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
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN E. RIGGS, JOHN H. KIVELA,
ROBERT H. SHELLMAN, JOSEPH F. ROCKY JR.,
STANLEY M. BAINOR, RALPH K. BRECHTER, DOUGLAS L. CLARK,
JAMES R. CLARK, JON L. CLOW, AMY DALEY, LARRY HU,
LOUIS F. INDELICATO, WILLIAM J. LOHAN,
MICHAEL M. NAUGHTON, PETER P. NELSON,
ALAN D. SHOLLENBERGER, NADINE M. WILLETT,
DOUG JOHNSTON, DONALD H. MUELLER, MICHAEL D. MICHAUD,
ROBERT PHANEUF, and JOSEPH J. BAINOR
Appeal 2013-005910
Application 11/005,678
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
The Examiner filed a Request for Rehearing (“Request”), pursuant to
37 C.F.R. § 41.52, on September 23, 2016, seeking reconsideration of our
Decision on Appeal of April 29, 2016 (“Decision”), in which we reversed
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the Examiner’s rejections of claims 1–25 under 35 U.S.C. §§ 102(e), 103(a),
and the Examiner’s rejection of claims 1–25 on the ground of obvious –type
double patenting. The Examiner requests reconsideration of only the
rejections under §§ 102(e) and 103(a). We have jurisdiction over the
Request under 35 U.S.C. § 6(b).

DISCUSSION
HISTORY OF THE CASE
1. On April 29, 2016, the Patent Trial and Appeal Board (Board) issued
the Decision, which reversed the Examiner’s rejections of claims 1–25.
2. On September 23, 2016, the Examiner filed the Request. In the
Request, the Examiner argued that the Board overlooked and
misapprehended which version of 35 U.S.C. § 102(e) is applicable to the
above-identified application.
3. On November 23, 2016, Appellant filed a REPLY TO REQUEST
FOR REHEARING (“REPLY TO REQUEST FOR REHEARING”).
4. On June 23, 2017, the Board issued an Order under 37 C.F.R.
§ 41.50(d) entitled “REQUEST FOR BRIEFING AND INFORMATION,”
which provided Appellant another opportunity to file a substantive
response to the Request within one month of the Order.
5. On July 24, 2017, Appellant filed two petitions entitled
“REQUEST TO STAY ADDITIONAL BRIEFING” and “PETITION
AGAINST REQUEST FOR REHEARING OF BOARD DECISION.” The
“REQUEST TO STAY ADDITIONAL BRIEFING” included a “REPLY
TO ‘REQUEST FOR REHEARING’ OF PTAB DECISION AND
APPLICANTS’ REPEATED REQUEST FOR NOTICE OF
ALLOWANCE.”
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6. On November 22, 2017 both of the petitions were dismissed.
7. On December 14, 2017, Appellant filed a REQUEST FOR
RECONSIDERATION OF DECISION DISMISSING PETITION
AGAINST REHEARING.
8. On December 22, 2017, Appellant filed an “ADDITIONAL BRIEF
UNDER 37 C.F.R. §41.50(d)” (“ADDITIONAL BRIEF”).
9. On January 23, 2018, Appellant filed a COMPLAINT in the United
States District Court for the Eastern District of Virginia (“COMPLAINT”).
The COMPLAINT sought, inter alia, to reverse the petition decisions,
enjoin the Board from rendering a decision on the issues presented in the
Request, and direct the Board to mail a Notice of Allowance.
10. On April 6, 2018, The REQUEST FOR RECONSIDERATION OF
DECISION DISMISSING PETITION AGAINST REHEARING was
denied.
11. On August 3, 2018, The COMPLAINT was dismissed.
12. On October 2, 2018, Appellant filed an Appeal to the Court of
Appeals for the Federal Circuit appealing the decision of the United States
District Court for the Eastern District of Virginia.
13. On May 22, 2020, the decision of the United States District Court for
the Eastern District of Virginia to dismiss the COMPLAINT was affirmed.
14. The Request is now before this panel.
DISCUSSION
Request for Rehearing
In the Decision we determined that Lettich was not prior art as of the
effective filing date of this application, and therefore reversed the
Examiner’s rejections under 35 U.S.C. §§ 102(e) and 103(a) (Decision 4).
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In the Request, the Examiner argues that section 102(e), as revised by
the Intellectual Property and High Technology Technical Amendments Act
of 2002, is applicable to all patents and all applications for patents pending
on or filed after November 29, 2000. The Examiner argues that as the
above-identified application is an application pending on or after
November 29, 2000, section 102(e) as revised by the Intellectual Property
and High Technology Technical Amendments Act of 2002, is applicable to
the above-identified application. Thus, according to the Examiner, “the
prior art teachings of Lettich, and the Examiner’s citations, explanations and
arguments in support of the rejections based thereon must be considered in
determining the patentability of claims 1 through 25 of the above-identified
application.” (Req. Reh’g 4).
The arguments of the Examiner are well taken. We amend our
Decision to determine that Lettich is proper prior art against the instant
claims.
As we have determined that Lettich is prior art against the claims on
appeal, we now consider the Examiner’s rejections of the appealed claims
under 35 U.S.C. §§ 102(e) and 103(a) and the Appellant’s arguments in
response to these rejections presented in the Supplemental Appeal Brief and
Reply Brief.
THE REJECTIONS
Claims 1, 2, 8, 10–13, 24, and 25 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Lettich (US 2002/0049622 A1; April 25,
2002).
Claims 3, 5–7, 9, 15–20, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lettich and Rojek (Karen Rojek, “How
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Baxter Improved Data Exports,” AS/400 Systems Management, vol. 26,
no. 5, pp. 52–53, (2009) (“Rojek”)).
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lettich in view of Rojek and further in view of GoCargo (“Internet
Services: Here’s a List,” A Special Report: Logistics & Technology, Journal
of Commerce (2000) (“GoCargo”)).
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lettich in view of Challener (Cynthia Challener, “Environmental
Software Incorporates Internet Capabilities,” Chemical Market Reporter,
p. 7, Reed Business Information (2000) (“Challener”)).
Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lettich in view of Rojek and further in view of Conklin (US 6,141,653;
October 31, 2000).
Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lettich in view of Soga et al. (US 6,304,856 B1; October 16, 2001).

Anticipation
The Examiner rejects claims 1, 2, 8, 10–13, 24, and 25 under
35 U.S.C. § 102(e) as being anticipated by Lettich.
We note initially, that the Examiner has determined that
paragraphs 161–175 of Lettich (US 2002/0049622 A1; April 25, 2002) are
not expressly supported by the provisional application (Application No.
60/200,035) to which Lettich claims priority and that these particular
paragraphs are effective as prior art only as of April 26, 2001 (the filing date
of Lettich’s non-provisional application). However, the Examiner
determines that the remaining disclosure of Lettich is effective as prior art
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back to April 27, 2000 (the filing data of Lettich’s provisional application)
which is prior to the effective filing date of the claimed invention. (Ans. 6).
Appellant argues that Lettich does not disclose a plurality of modules
as recited in the claims or that such modules work together and share
information as recited in the claims. (Supp. Appeal Br. 6). Specifically,
Appellant argues that it is not necessarily the case that the software in
Lettich contains the recited modules.
We agree with the Examiner’s response to this argument on pages 27–
28 of the Answer and adopt same as our own. We note that Appellant has
not directed our attention to a disclosure in the Specification that clearly
defines the architecture of the present invention recited in claim 1.
Therefore, we agree with the Examiner that any software programmed to
perform the recited functions of the claims can be interpreted as a part of a
module as broadly claimed.
We also agree with the Examiner’s finding that the Lettich system and
method for shipping and logistics services is described as a global e-logistics
software infrastructure and is therefore understood to be programmed in
“modules” that range anywhere from a few lines of code to a subroutine to a
group of related subroutines or software packages. (Ans. 27–28). In this
regard, we find, for example, that the operations described in
paragraphs 102–130 of Lettich regarding functions such as the selection of
carriers, tracing of shipments, arrangement and building of shipments, etc.,
are done by a purchasing and contract administration module as broadly
claimed. In addition, we find, for example, that the functions described in
paragraph 132 of tracing and expediting inbound and outbound shipments
are performed by a shipment management module, the functions described
in paragraphs 196 of planning and scheduling orders are done by a
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scheduling module, and the financial functions described in paragraphs 187–
188 of Lettich are done by a financial module as broadly claimed.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Lettich does not disclose information “relating to
the status of proposals received and contracts awarded by the purchasing
module is made available to said scheduling module, said shipment
management module, and said financial module,” as claimed.
We agree with the Examiner’s response to this argument found on
pages 27–28 of the Answer and adopt same as our own. Specifically, we
agree that:
¶¶ 102-107 of Lettich show that the various modules are
implemented as a service package. In ¶ 85 of Lettich, it is seen
that there is full integration of information systems and an
emphasis is placed on information visibility. ¶ 100 of Lettich
explains that ShipChem.com is a “1-stop shop for shipping and
logistics services, operations and products,” thereby implying
that the various system elements work together and share
information. As seen in at least ¶ 115, ShipChem.com needs to
know the customer specifications as well as corresponding
industry standards in order to make sure that all facets of the
delivery process are adequately covered. The details of an
award proposal would need to be known so that scheduling is
executed and rates are charged accordingly. This requires that
the relevant information be "made available" to the various
functions of ShipChem.com so that each function can perform
its respective task(s).
(Ans. 27–28).
We are not persuaded of Examiner error by Appellant’s argument that
the Lettich provisional application is not enabled.
Enablement is a question of law based on underlying factual findings.
In re Antor Media Corp., 689 F.3d 1282, 1287 (Fed. Cir. 2012). A prior art
printed publication cited by an examiner is presumptively enabling barring
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any showing to the contrary by a patent applicant or patentee. Id. at 1288.
The prior art disclosure must be enabling such that one of ordinary skill in
the art could practice the invention without undue experimentation. “The
standard for enablement of a prior art reference for purposes of anticipation
under section 102 differs from the enablement standard under 35 U.S.C.
§ 112.” Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347,
1355 (Fed. Cir. 2005). Although section 112 states that the specification
must enable one skilled in the art to “use” the invention, “section 102 makes
no such requirement as to an anticipatory disclosure . . . . Rather,
anticipation only requires that those suggestions be enabled to one of skill in
the art.” Id.
It has also been held that “proof of efficacy is not required for a prior
art reference to be enabling for purposes of anticipation.” Impax Labs., Inc.
v. Aventis Pharm. Inc., 468 F.3d 1366, 1382 (Fed. Cir. 2006). “Rather, the
proper issue is whether the . . . patent is enabling in the sense that it
describes the claimed invention sufficiently to enable a person of ordinary
skill in the art to carry out the invention.” Id. at 1383.
In light of these guiding principles, we have reviewed Appellant’s argument
regarding the enablement of Lettich. (Supp. Appeal Br. 6–9, Reply Br. 5–8).
We conclude that a preponderance of the evidence supports the Examiner’s
detailed position that Lettich has an enabling disclosure. (Ans. 29–31). See
In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013). On this record, Appellant
does not provide any factual evidence to support its arguments that Lettich is
non-enabling but rather relies on the arguments made by counsel. An
attorney’s arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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In addition, we agree with the Examiner that when a disclosure of
software is required, it is generally sufficient for enablement purposes if the
functions of the software are disclosed because the creating of specific
source code is within the skill in the art. Cf. Fonar Corp. v. Gen. Elec. Co.,
107 F.3d 1543, 1549 (Fed. Cir. 1997) (functional description of software
satisfied best mode requirement because “writing code for such software is
within the skill of the art, not requiring undue experimentation, once its
functions have been disclosed”).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Lettich provisional disclosure does not include
support for claims 1 and 34 of the Lettich patent. (Additional Brief 7–10).
We agree with the Examiner’s response to this argument found on pages 29
to 30 of the Answer and adopt same as our own. Specifically, we agree that
only the disclosure relied upon to reject the claims needs to be fully
supported and enabled by Lettich’s provisional application in order to
qualify Lettich’s provisional priority date as valid for applying an
anticipation rejection. The rejections do not rely on claims 1 and 34 of
Lettich.
In view of the foregoing, we will sustain the rejection of claim 1 under
35 U.S.C. § 102(e). We will also sustain this rejection as it is directed to
claims 2, 8, 10–13, 24, and 25 because Appellant has not argued the separate
patentability of these claims.
Obviousness
Claims 3, 5–7, 9, 15–20, and 22
Appellant argues that there is no suggestion to combine the teachings
of Lettich and Rojek because there is nothing in Rojek to indicate that the
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various comments in Rojek address the shipping “community” envisioned in
the Lettich patent application. (Supp. Appeal Br. 15).
We find that Lettich discloses data collection, data storage, data
sorting and data retrieval, and carrier performance data. (Lettich ¶183). As
Lettich does not disclose a “relational” database, as required by claim 3, the
Examiner relies on Rojek for teaching this subject matter.
The Supreme Court has stated that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (citing Graham v.
John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
Here, Lettich discloses a database storing collaborative data relating to
shippers, freight forwarders, and ship owners. (Lettich ¶¶ 97, 134, 183).
Rojek discloses a relational database storing shipping data that has the
advantage of allowing users to analyze aggregate data at a very high level
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while having the capability of drilling down and analyzing data at the level
of the actual shipping transaction. (Rojek ¶¶ 1, 5). In our view, a person of
ordinary skill in the art at the time of Appellant’s invention would have had
a reason to modify the database disclosed in Lettich to achieve the
predictable results produced by Rojek’s relational database. In addition, we
do not agree with Appellant that Rojek does not address the shipping
community disclosed in Lettich. Lettich discloses that the community which
is therein addressed comprises users and suppliers. (Lettich ¶ 11). Rojek
also discloses a database used by suppliers of medical products and
customers (users). (Rojek ¶ 4).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 3. We will also sustain the rejection as it is directed to claims 5–7, 9,
15–20, and 22 because Appellant does not argue the separate patentability of
these claims.
Claim 4
The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Lettich in view of Rojek and GoCargo. Appellant
addresses this rejection together with the argument regarding the
patentability of claim 3. (Supp. Appeal Br. 14). Therefore, we sustain this
rejection for the same reasons as given for claim 3.
Claims 14 and 23
We will also sustain the rejection of claim 14 as being unpatentable
over Lettich and Challener and of claim 23 as being unpatentable over
Lettich and Soga because Appellant does not address these rejections.
Claim 21
The Examiner rejects claim 21 over Lettich in view of Rojek and
Conklin. Appellant argues that Conklin is not directed to an integrated
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logistics systems and is not in the contract management art. (Supp. Appeal
Br. 17). We agree with the Examiner’s response to this argument found on
pages 32–33 of the Answer and adopt same as our own. Specifically, we
agree that this argument is not persuasive because Appellant’s argument
improperly attacks the references separately although the rejection is based
on the combined teachings of Lettich, Rojek, and Conklin. See, e.g., In re
Keller, 642 F.2d 413 (CCPA 1981); In re Merck, 800 F.2d 1091 (Fed. Cir.
1986). In this regard, Lettich, not Conklin, is relied on for teaching an
integrated logistics systems. Conklin is relied on for teaching using an audit
system to show changes to records. We do not agree with Appellant that any
modification of Lettich in view of Conklin would apply the archiving
process disclosed in Conklin to the contract management module of Lettich
and not to the shipping management module as required by claim 21.
Conklin is relied on for teaching using an audit system to show changes to
records and is applicable to contract management records or shipping
management records. In this regard, the advantages outlined in Conklin at
column 30, lines 36 to 51 for such an audit system would be applicable to
contract management records or shipping records. In addition, as the
Examiner explained on page 23 of the Final Action, Conklin does disclose
negotiating terms related to shipments as well as contracts at column 25,
lines 12 to 59.
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CONCLUSION
The request for rehearing is granted. We have considered the prior art
rejections of claims 1–25. We affirm the prior art rejections under 35 U.S.C.
§§ 102(e) and 103(a).1
SUMMARY OF DECISION

Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Denied Granted
1, 2, 8, 10–
13, 24, 25
102(e) 1, 2, 8, 10–
13, 24, 25
3, 5–7, 9,
15–20, 22
103(a) 3, 5–7, 9,
15–20, 22
4 103(a) 4
14 103(a) 14
21 103(a) 21
23 103(a) 23
1–25 Nonstatutory
Double Patenting
US 6, 915,268
1–25
Overall
Outcome
1–25

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 8, 10–
13, 24, 25
102(e) 1, 2, 8, 10–
13, 24, 25

3, 5–7, 9,
15–20, 22
103(a) 3, 5–7, 9,
15–20, 22

1 Our review is limited to the grounds of rejection and bases set forth in the
December 30, 2011 Final Office Action. Therefore, Appellant’s argument
regarding the propriety of the Appendix is moot.
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Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
4 103(a) 4
14 103(a) 14
21 103(a) 21
23 103(a) 23
1–25 Nonstatutory
Double Patenting
US 6, 915,268
1–25
Overall
Outcome
1–25

GRANTED