Glenn E. Riggs et al.Download PDFPatent Trials and Appeals BoardApr 29, 20212013005910 (P.T.A.B. Apr. 29, 2021) Copy Citation 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 Appeal 2013-005910 Application 11/005,678 2 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.” Appeal 2013-005910 Application 11/005,678 3 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). Appeal 2013-005910 Application 11/005,678 4 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 Appeal 2013-005910 Application 11/005,678 5 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 Appeal 2013-005910 Application 11/005,678 6 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 Appeal 2013-005910 Application 11/005,678 7 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 Appeal 2013-005910 Application 11/005,678 8 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). Appeal 2013-005910 Application 11/005,678 9 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 Appeal 2013-005910 Application 11/005,678 10 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 Appeal 2013-005910 Application 11/005,678 11 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 Appeal 2013-005910 Application 11/005,678 12 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. Appeal 2013-005910 Application 11/005,678 13 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. Appeal 2013-005910 Application 11/005,678 14 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 Copy with citationCopy as parenthetical citation