Ex Parte Bright et al

Board of Patent Appeals and Interferences

Apr 28, 2009

09303368 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARION SCOTT BRIGHT,
PUSHPALATHA CHANNIKERE,
BALASUBRAMANIAN GOPALAN,
RAHUL JINDANI,
JINRAJ DHRUVAKUMAR JOSHIPURA,
VINOD KANNOTH,
JAYAKUMAR KRISHNAMURTHY,
GREGORY LEE MCKEE,
SYLVAIN MICHEL,
PENNY JEANETTE PEACHEY-KOUNTZ, and
JAMES DONALD SCOTT
____________

Appeal 2008-2915
Application 09/303,368
Technology Center 3600
____________

Decided:1 April 28, 2009
____________

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2915
Application 09/303,368

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Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on Jan. 15, 2009.

STATEMENT OF THE CASE
Marion Scott Bright, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1, 3, 4, 6, 8, 9, 11, 13-15, and
25-31. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
“The present invention generally relates to pre-processing electronic
commerce requests and, more particularly, to a method and system for
modifying electronic commerce requests before they are sent to an order
processing system.” Specification 1:7-10.
Sole independent claims 1 and 31, reproduced below, are illustrative
of the subject matter on appeal.
1. A system for pre-processing orders before

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jul. 19, 2006) and Reply Brief (“Reply Br.,” filed Nov. 13, 2007),
and the Examiner’s Answer (“Answer,” mailed Sep. 17, 2007).
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they are transmitted to an order processing system,
comprising:
an order interceptor receiving and pre-
processing electronic sales order data prior to
transmitting to the order processing system, the
order interceptor being capable of adding,
changing, and deleting electronic sales order data,
wherein changes to an electronic sales order are
logged so as to provide an audit trail of activity;
an interface system receiving the electronic
sales order data from the order interceptor and
performing an availability check, wherein the
availability check determines the portions of the
electronic sales order data that can be satisfied; and
means for transmitting at least a portion of
the electronic sales order data to the order
processing system for order processing.

31. A system for pre-processing orders before they are
transmitted to an order processing system, comprising:
an order interceptor receiving and pre-processing
electronic sales order data prior to transmitting to the order
processing system, wherein pre-processing the
electronic sales order includes splitting the electronic sales
order into at least two separate requests prior to transmitting to
the order processing system;
an interface system receiving the electronic sales order
data from the order interceptor and performing an availability
check, wherein the availability check determines the portions of
the electronic sales order data that can be satisfied; and
means for transmitting at least a portion of the electronic
sales order data to the order processing system for order
processing.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
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Johnson US 6,023,683 Feb. 8, 2000

The following rejection is before us for review:
1. Claims 1, 3, 4, 6, 8, 9, 11, 13-15, and 25-31 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Johnson.

ARGUMENTS
This application (09/303,368) was previously before the Board on
appeal (2003-0901; decided Aug. 6, 2004), where the Board affirmed the
rejection of claims 1, 3, 4, 6, 8, 9, 11, and 13-24 under § 103 over Johnson.
The claims before this panel are not those that were before the Board in
appeal 2003-0901. Claim 1, for example, has since been amended. Claim 1
previously on appeal read as follows:
1. A system for pre-processing orders before they
are transmitted to an order processing system,
comprising:
an order interceptor receiving and pre-processing
electronic sales order data prior to transmitting to
the order processing system;
an interface system receiving the electronic sales
order data from the order interceptor and
performing an availability check, wherein the
availability check determines the portions of the
electronic sales order data that can be satisfied; and
means for transmitting at least a portion of the
electronic sales order data to the order processing
system for order processing.
Since that decision, claim 1 has been amended to further define the “order
interceptor” as “being capable of adding, changing, and deleting electronic
sales order data, wherein changes to an electronic sales order are logged so
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as to provide an audit trail of activity” (claim 1). Claim 3, 4, 6, 8, 9, 11, 13-
15 do not appear to have been further amended. Claims 25-31 were added
after the prior Board decision and thus have not been previously before the
Board.
Claim 1
The Appellants challenge the Examiner’s rejection of claim 1. (App.
Br. 7-10.) In particular, the Appellants have argued that Johnson does not
disclose the limitation “order interceptor being capable of adding, changing,
and deleting electronic sales order data, wherein changes to an electronic
sales order are logged so as to provide an audit trail of activity” in the claim.
As to this limitation, the Examiner responded as follows:
Regarding the argument that no proper
interpretation of Johnson discloses or suggests an
order interceptor that is capable of adding,
changing, or deleting electronic sales order data,
wherein changes to an electronic sales order are
logged, Johnson et al. indeed disclose or suggest
an order interceptor that is capable of adding,
changing, or deleting electronic sales order data,
wherein changes to an electronic sales order are
logged. See, in particular, column 15, lines 60-62
[ ].
Answer 6.
The Appellants responded, disagreeing that the disclosure at column
15, lines 60-62 of Johnson to which the Examiner referred discloses an
“order interceptor” “being capable of adding, changing, and deleting
electronic sales order data, wherein changes to an electronic sales order are
logged so as to provide an audit trail of activity” (claim 1).
Such language [referring to column 15, lines 60-62
of Johnson, see supra] says nothing about an order
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interceptor being capable of adding, changing, and
deleting electronic sales order data, much less, that
changes to an electronic sales order are logged so
as to provide an audit trail of activity. Nor has the
Examiner explained how such language is
suggestive of this feature.
Reply Br. 3.
Claim 31
The Appellants challenge the Examiner’s rejection of claim 31. App.
Br. 11-13.
Claim 31 describes a system comprising three elements: (1) an order
interceptor; (2) an interface system; and, (3) means for transmitting at least a
portion of the electronic sales order data to the order processing system for
order processing. Claim 31 differs from claim 1 in that, though it also
describes a system comprising an order interceptor, the order interceptor is
not required to be “capable of adding, changing, and deleting electronic sales
order data, wherein changes to an electronic sales order are logged so as to
provide an audit trail of activity” (claim 1). Rather, it is required to be
capable of receiving and pre-processing electronic sales order data prior to
transmitting to an order processing system, wherein pre-processing the
electronic sales order includes splitting the electronic sales order into at least
two separate requests prior to transmitting to the order processing system.
The Examiner’s concedes that “Johnson et al. do not specifically teach
splitting the electronic sales order into at least two separate requests prior to
transmitting to the order processing system.” Answer 4. However,
according to the Examiner, “splitting an electronic order into two separate
requests is certainly well known, hence obvious, step to follow on
processing an electronic order.” Answer 4.
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The Appellants argued that just because a feature may be well known
does not make a combination involving the well-known feature per se
obvious. App. Br. 11. Nevertheless, the Appellants have urged the
Examiner to provide evidentiary support for the Examiner’s assertion that
the subject matter that is claimed was well known in the art or of common
knowledge in the art capable of instant and unquestionable demonstration as
being well-known. Answer 12. The Appellants further argued that Johnson
shows a computer that maintains a catalog database and a means for
generating a requisition whereby a user may manually enter information
about an item desired to be requisitioned so as to search the database for
matching catalog items and generating a requisition thereof, and that such a
system does not suggest the features for the system set forth in claim 31.
App. Br. 12.
The Examiner responded by arguing that
such functionality [i.e., splitting the order into
separate requests/orders prior to transmitting the
order to the order processing system] is indeed
well known, and, in any event, the system of
Johnson et al. performs such functionality, splitting
the order into two separate requests/orders prior to
transmitting the order to the order processing
system. See, in particular, column 15, lines 52-54,
and column 17, lines 44-47.
Answer 6.
The Appellants replied, in part, that the Examiner has failed to show
that Johnson discloses the order interceptor as claimed, which receives and
pre-processes the electronic sales order data and splits the electronic sales
order into at least two separate requests. Reply Br. 4.
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ISSUES
The issues are:
• Have the Appellants shown that the Examiner erred in rejecting
independent claim 1, and claims 3, 4, 6, 8, 9, 11, 13-15, and 25-30
dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable
over Johnson on the grounds that the scope and content of Johnson is
such that it does not disclose the order interceptor as claimed and as
the Examiner has argued?
• Have the Appellants shown that the Examiner erred in rejecting
independent claim 31 under 35 U.S.C. § 103(a) as being unpatentable
over Johnson on the grounds that Johnson, alone or in view of the
alleged well known functionality of splitting an order into separate
requests/orders prior to transmitting the order to an order processing
system, would not lead one of ordinary skill in the art to the claimed
system?

PRINCIPLES OF LAW
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
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(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) The Court in Graham further
noted that evidence of secondary considerations “might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought
to be patented.” 383 U.S. at 17-18.

ANALYSIS
Claim 1
Claim 1 defines a “system for pre-processing orders before they are
transmitted to an order processing system, comprising: an order interceptor
receiving and pre-processing electronic sales order data prior to transmitting
to the order processing system, the order interceptor being capable of
adding, changing, and deleting electronic sales order data, wherein changes
to an electronic sales order are logged so as to provide an audit trail of
activity … .” Accordingly, claim 1 defines a system comprising (1) an order
interceptor and (2) an order processing system.
We turn now to Johnson.
Johnson describes a method to provide a user of an electronic
sourcing system the capability of searching a database for items available
from at least two vendor product catalogs and transferring information for
desired catalog items for use in a requisition. See col. 2, ll. 46-56. Johnson
shows an electronic sourcing system in Fig. 1A (element 5) and it includes a
requisition/purchasing system 40 comprising program modules such as an
Inventory Sourcing program or programs 44B. See discussion at col. 4, ll. 1-
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19. In operation, a user creates a requisition in system 40 by first entering
information on a screen. Col. 6, ll. 54-65. Pressing a particular function key
causes the system to jump to the Inventory Sourcing program or programs
44B. Col. 7, ll. 11-13. Via a search program, vendor catalogs in a catalog
database are searched and items are selected and added to an Order List.
Col. 11, l. 30-31. Once the Order List is complete, a user can transmit it to
the requisition/purchasing system 40 (col. 12, ll. 48-50) where it is
transferred to a requisition program (col. 13, ll. 1-5). Once items are
identified for requisitioning, “[t]he next step is that of inventory sourcing
using RIMS inventory sourcing program or programs 44B in Fisher RIMS
system 40, as shown in Fig. 3. Inventory sourcing is the process of
determining what inventory will be used to fill the requisition.” Col. 14, ll.
4-8.
With this understanding of what Johnson discloses, we now return to
the Examiner’s position that the disclosure at column 15, lines 60-62 of
Johnson discloses or suggests an “order interceptor” “being capable of
adding, changing, and deleting electronic sales order data, wherein changes
to an electronic sales order are logged so as to provide an audit trail of
activity” (claim 1).
Column 15, lines 60-62 of Johnson reads as follows: “Electronic
sourcing system 5 also contains the capability to log messages returned from
inventory sourcing program or programs 44B of Fisher RIMS system 40.”
There is no disclosure of an “order interceptor,” as claimed, in the
passage at column 15, lines 60-62. Nowhere in this passage is there any
discussion of an element for adding, changing, or deleting electronic sales
order data. Because the capability to log messages is described as included
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as part of the “electronic sourcing system 5,” we presume the Examiner is
taking the position that Johnson’s “electronic sourcing system 5” necessarily
meets the limitation “order interceptor being capable of adding, changing,
and deleting electronic sales order data” of claim 1.3 We disagree. One of
ordinary skill in the art reading this passage would understand Johnson to be
describing an electronic sourcing system having a capability of logging
messages from a requisitioning/purchasing system. But there is nothing in
that passage, read alone or in the context of Johnson as a whole (see earlier
discussion of Johnson), that would give one of ordinary skill in the art a
reason to provide Johnson’s electronic sourcing system with the additional
function to add, change, or delete electronic sales order data.
Because the scope and content of Johnson is such that it does not
disclose the order interceptor as claimed, as the Examiner has argued, we
find that a prima facie case of obviousness has not been made out.
Accordingly, we find that the Appellants have shown that the Examiner
erred in rejecting independent claim 1, and claims 3, 4, 6, 8, 9, 11, 13-15,
and 25-30 dependent thereon, under 35 U.S.C. § 103(a) as being
unpatentable over Johnson.

3 It is necessary to explain our understanding of the logic underlying the
Examiner’s position because the Answer fails to do so. Initially the
Examiner states that “Johnson et al. clearly anticipates all of the substantive
elements of the instant invention … ” (Answer 3) but does not explain, via
e.g., an element-by-element comparison, how Johnson describes the claimed
subject matter. In the response to the arguments (Answer 6), the Examiner
relied on column 15, lines 60-62 of Johnson to show Johnson disclosed the
order interceptor as claimed. But there, too, the Answer does not provide an
apparent reason with logical underpinning explaining how exactly Johnson
would lead one of ordinary skill in the art to the order interceptor as claimed.
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Claim 31
We also do not find that the Examiner has made out a prima facie case
of obviousness for the claimed subject matter of claim 31.
Claim 31 is directed to a system. The Examiner’s contention that
“splitting an electronic order into two separate requests is certainly a well
known, hence obvious, step to follow on processing an electronic order”
(Answer 4) assumes claim 31 requires such a splitting step. However, claim
31 is not drawn a method. Rather, claim 31 is directed to an apparatus
comprising the element “order interceptor.” Furthermore, according to the
claim, the “order interceptor” is required to be capable of receiving and pre-
processing electronic sales order data prior to transmitting to an order
processing system, wherein pre-processing the electronic sales order
includes splitting the electronic sales order into at least two separate requests
prior to transmitting to the order processing system. Accordingly, the
Examiner’s assertion that a splitting step per se was well known fails to
appreciate fully what the claim is calling for.
Moreover, the Examiner does not explain what precisely is relied
upon in Johnson for disclosure of an order interceptor which would be
modified in light of the alleged well known aspect of splitting an electronic
order to arrive at the claimed invention. We presume the Examiner means to
take the same position with respect to the “order interceptor” of claim 31 as
was taken with respect to claim 1 where the Examiner relied on the
disclosure at column 15, lines 60-62 as disclosing or suggesting an “order
interceptor.” But, as we have already discussed, the passage at column 15,
lines 60-62 of Johnson makes no mention of an “order interceptor,” let alone
one having the function described in claim 31. Accordingly, we do not find
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that a prima facie case of obviousness has been established for the claimed
subject matter over Johnson in view of the alleged well known step of
splitting electronic orders.
As an alternative to asserting that splitting electronic orders is well
known, the Examiner also cites to col. 15, ll. 52-54 [sic., ll. 50-54], and col.
17, ll. 44-47 of Johnson as evidence that Johnson discloses such a splitting
of orders. Answer 6.
The two Johnson passages the Examiner cites to state “[i]t is an
important feature of the present invention that a requisition may be filled by
searching and selecting from a catalog database of items, inventory sourced,
and the resulting requisition then divided into one or more purchase orders”
and “[t]he CSR, knowing which items are available from which Distributor
warehouse and direct-shipping supplier, then may divide the customer’s
requested items into multiple orders, so as to assure that each order is
completely filled by a single shipment,” respectively. These passages
provide a general indication that orders may be divided. We do not see that
the Examiner has explained how one of ordinary skill in the art would be led
to the system claimed given this general indication that orders may be
divided, especially given, as we have discussed, Johnson’s lack of any
mention of an “order interceptor.” While Johnson discloses splitting an
order, claim 31 is drawn to a system that does not simply splits orders. The
system that is claimed requires there be an “order interceptor” for receiving
and pre-processing electronic sales order data prior to transmitting to an
order processing system, wherein pre-processing the electronic sales order
includes splitting the electronic sales order into at least two separate requests
prior to transmitting to the order processing system. Because that is not
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disclosed and the Examiner has not provided an apparent reason with logical
underpinning that would lead one of ordinary skill in the art to a system
having an “order interceptor” as claimed, i.e., one that is capable of
receiving and pre-processing electronic sales order data prior to transmitting
to an order processing system, wherein pre-processing the electronic sales
order includes splitting the electronic sales order into at least two separate
requests prior to transmitting to the order processing system, we find that a
prima facie case of obviousness of the claimed subject matter over Johnson
alone has not been established.
Accordingly, we find that the Appellants have shown that the
Examiner erred in rejecting independent claim 31 under 35 U.S.C. § 103(a)
as being unpatentable over Johnson, alone or in view of the alleged well
known functionality of splitting an order into separate requests/orders prior
to transmitting the order to an order processing system.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1, 3, 4, 6, 8, 9, 11, 13-15, and 25-31 under § 103(a) as
being unpatentable over Johnson.

DECISION
The decision of the Examiner to reject claims 1, 3, 4, 6, 8, 9, 11, 13-
15, and 25-31 is reversed.

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REVERSED

hh

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