Ex Parte Chan et al

Board of Patent Appeals and Interferences

May 1, 2012

11428607 (B.P.A.I. May. 1, 2012)

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.
11/428,607 07/05/2006 Victor Chan CA920060017US1 (047) 4277
46320 7590 05/02/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
HAYLES, ASHFORD S
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
05/02/2012 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
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VICTOR CHAN, MARK W. HUBBARD, AALIM LAKHANI,
DAISY TAN, and FEN WANG
____________

Appeal 2010-011752
Application 11/428,607
Technology Center 3600
____________

Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-011752
Application 11/428,607

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Appellants filed a Request for Reconsideration (hereinafter “Req.”) on
April 23, 2012 of the Board’s Decision on Appeal of February 21, 2012
(hereinafter “Dec.”), asking that we reconsider and reverse the Examiner’s
rejection of dependent claims 1-16. Appellants assert that “the Honorable
Board appears to have misapprehended or overlooked certain arguments
presented by Appellants in the Appeal Brief of February 15, 2010,” and that
“[s]o much is absent in the combination of the cited Wadawadigi and
Heinrichs references so as to negate a finding of obviousness under 35
U.S.C. § 103(a)” (Req. 2-3). In particular, Appellants repeat arguments, set
forth in the Appeal Brief filed March 1, 2010, that dispute the Examiner’s
claim constructions as to “API exposing inventory operations on the local
inventory cache to other instances of the tier inventory components as ‘API
Level’ [in Wadawadigi],” and “local inventory caches as ‘tables’ [in
Heinrichs]” (Req. 3-4).
In response to the original arguments set forth in the Appeal Brief, we
adopted as our own the findings and rationales set forth on pages 10-13 of
the Examiner’s Answer (Dec. 2-3). In our view, the Examiner’s findings
and rationales were adequately responsive to Appellants’ arguments, and
thus we did not feel the need to provide further elaboration. For example,
the first paragraph in the Response to Arguments section on page 10 of the
Examiner’s Answer accurately sets forth Appellants’ core arguments. Thus,
no further elaboration by the Board was necessary.
The Examiner then sets forth a construction of “API” as “the
computer software that allows information that is stored on an inventory
management computer to be accessed locally and remotely by each or all
computers within the inventory management network” (Exam’r’s Ans. 10).
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Application 11/428,607

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And given that the Examiner set forth this construction while explicitly
taking into account paragraph [0010] of Appellants’ Specification, the
Examiner satisfied the tenets, set forth in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005), in construing “API.” As the Examiner’s construction
was correct, no further elaboration by the Board was necessary.
Appellants then asserted that column 5, lines 60-63 failed to disclose
the aforementioned “API” (App. Br. 7-8). However, Appellants’ admission
that Wadawadigi teaches “that the integration of the various information
systems can be established through the use of a customized API” (App. Br.
8) comports with the Examiner’s construction of “API.” As Appellants’ and
the Examiner’s analysis of column 5, lines 60-63 of Wadawadigi were in
agreement, we adopted the Examiner’s analysis at pages 10-12 of the
Examiner Answer, and thus further elaboration by the Board was not
necessary.
Moreover, the Examiner made additional citations of Wadawadigi as
corresponding to the recited “API” (Exam’r’s Ans. 11-12). As Appellants
were afforded the opportunity to file a Reply Brief to respond to these
additional citations, but chose not to do so, Appellants did not meet the
burden of rebutting the Examiner’s prima facie showing of obviousness, and
thus the Examiner’s undisputed findings prevailed. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“[o]nce a prima facie case of obviousness [is]
established..., the burden shift[s] to appellant to rebut it”). See also In re
Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (“the examiner appears to
have considered thoroughly this assertion, and to have found otherwise.
Since appellants has not shown this finding to be clearly erroneous, we
accept it as fact”); In re Fox, 471 F.2d 1405, 1407 (CCPA 1973). Thus, the
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Application 11/428,607

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Board’s adoption of the Examiner’s undisputed findings did not need further
elaboration.
Appellants then asserted that Wadawadigi does not disclose “other
instances of the tier inventory component” (App. Br. 8). However, the
Examiner then cited column 3, lines 59-60 of Wadawadigi as corresponding
to the aforementioned aspect (Exam’r’s Ans. 11-12). As Appellants were
afforded the opportunity to file a Reply Brief to respond to the Examiner’s
citation, but chose not to do so, Appellants did not meet the burden of
rebutting the Examiner’s prima facie showing of obviousness, and thus the
Examiner’s undisputed findings prevailed as to “other instances of the tier
inventory component.” See In re Keller, 642 F.2d at 425. See also In re
Kunzmann, 326 F.2d at 425. Again, further elaboration by the Board was
not necessary.
Appellants then asserted that Wadawadigi does not disclose “local
inventory caches” (App. Br. 8), with which we and the Examiner agreed
(Exam’r’s Ans. 12). Appellants then disagreed with the Examiner’s
construction of “local inventory cache” to include Heinrich’s “tables,” but
then did not provide an explanation as to how Heinrich’s tables were
deficient, other than that the Examiner’s construction was not consistent
with the Specification (App. Br. 8-9). Furthermore, Appellants then
additionally failed to set forth any construction of “local inventory cache”
that would allegedly be consistent with the Specification. Accordingly,
when balancing the Examiner’s detailed explanations as to why Heinrich’s
“tables” corresponded to the claimed “local inventory caches” (Exam’r’s
Ans. 12-13), and Appellants’ conclusory arguments that the Examiner’s
construction was in error in view of the Specification, but without providing
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Application 11/428,607

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an alternate construction, the Examiner’s findings once again prevailed. See
In re Keller, 642 F.2d at. 425. Thus, the Board’s adoption of the Examiner’s
construction and findings was all that was necessary.
Appellants also respectfully assert that the Board’s decision does not
comply with the standards of the Administrative Procedure Act (Req. 2, 5-
8). Specifically, Appellants assert that the Board’s decision does not explain
the basis for its rulings sufficient to enable meaningful judicial review.
However, by adopting the Examiner’s findings of fact, response, and
rationales set forth on pages 10-13 of the Examiner’s Answer, the Board has
set forth an adequate evidentiary basis for judicial review. In other words, a
reviewing court need only refer to pages 10-13 of the Examiner’s Answer to
understand the Board’s reasoning for issuing its decision. For example, with
regard to factual findings required by Gechter v. Davidson, 116 F.3d 1454,
1460 (Fed. Cir. 1997) and In re Hyatt, 211 F.3d 1367, 1371 (Fed. Cir. 2000),
pages 10-13 of the Examiner’s Answer provides numerous pinpoint citations
of Wadawadigi and Heinrich. While pages 10-13 of the Examiner’s Answer
may not address every limitation, the Board is only required to address
allegations of error alleged by Appellants. All other arguments are waived.
See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“[i]t is
not the function of this court [or the Board] to examine the claims in greater
detail than argued by an appellant, looking for nonobviousness distinctions
over the prior art”).
With regards to the Board’s failure to provide claim constructions
(Req. 6-8), the Examiner has set forth explicit claim constructions of “API”
(Exam’r’s Ans. 10), “other instances of the tier inventory component”
(Exam’r’s Ans. 11-12), and “local inventory caches” (Exam’r’s Ans. 12),
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Application 11/428,607

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which we adopted as our own (Dec. 2-3). Thus, contrary to Appellants’
assertions, the Board has set forth a claim construction analysis of its own,
as required by In re Fujimora, 130 Fed.Appx. 465, 468 (Fed. Cir. 2005) –
for these disputed terms, our claim constructions is exactly the same as the
Examiner’s. Appellants may disagree with the Examiner’s claim
constructions. However, for the reasons set forth above, we have adopted
the Examiner’s claim constructions, and thus a reviewing court need only
refer to pages 10-13 of the Examiner’s Answer in reviewing for error.
We have granted Appellants’ Request for Rehearing insofar as we
have considered its arguments in rendering this opinion. However, we
decline to modify our Decision on Appeal of February 21, 2012, and so in
all other respects, the Appellants’ Request for Rehearing is respectfully
denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED

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