Ex Parte Hoopes et al

Patent Trial and Appeal Board

Mar 23, 2016

12149328 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/149,328 04/30/2008 John M. Hoopes
58982 7590 04/15/2016
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York A venue, NW
WASHINGTON, DC 20001-4413
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08350.0048 7405
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
04/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. HOOPES, SHANNON M. PETTIT,
and PAULINE C. AGBODJAN-PRINCE
Appeal2013-002377 1
Application 12/149,3282
Technology Center 3600
Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We REVERSE.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
July 9, 2012) and Reply Brief ("Reply Br.," filed Nov. 28, 2012), and the
Examiner's Final Office Action ("Final Action," mailed Feb. 8, 2012) and
Answer ("Ans.," mailed Sept. 28, 2012).
2 According to Appellants, the real party in interest is Caterpillar Inc.
(Appeal Br. 3).
Appeal2013-002377
Application 12/149,328
Introduction
Appellants' disclosure relates to a system, computer-readable
medium, and method for supply chain management, and more particularly,
to a system and method for identifying and redirecting misdirected advanced
shipping notices (Spec. i-f 1 ).
Claims 1, 9, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A computer-implemented method for correcting misdirected
Advanced Shipping Notices (ASNs), comprising:
receiving, from a product supplier, a first set of data associated
with an ASN, wherein the first set of data includes an ASN receiving
facility identifier;
determining a purchase order (PO) that is associated with the
ASN, wherein the PO includes a second set of data;
comparing one or more fields of the first set of data with one or
more fields of the second set of data;
determining if the ASN was misdirected to an incorrect
receiving facility based on the comparison;
determining; by at least one processor and when the ASN was
misdirected, whether the incorrect receiving facility and a correct
receiving facility to which the ASN should have been directed are on
the same electronic communications network;
correcting the ASN using a first method based on a
determination that the correct receiving facility and the incorrect
receiving facility are on the same electronic communications network;
and
correcting the ASN using a second method based on a
determination that the correct receiving facility and the incorrect
receiving facility are not on the same electronic communications
network.
(Appeal Br. 33, Claims App.).
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Application 12/149,328
Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
I. Claims 1-16 stand rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as the invention.
II. Claims 1, 3-5, 9, 11-13, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hayes (US 2003/0195836 Al, pub.
Oct. 16, 2003).
III. Claims 2, 10, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hayes and Berlin (US 6,006,199, iss. Dec. 21,
1999).
IV. Claims 6, 8, 14, 16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hayes and Broussard
(US 2007/0038673 Al, pub. Feb. 15, 2007).
V. Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hayes and Green (US 2003/0191710 Al, pub.
Oct. 9, 2003).
ANALYSIS
Rejection I (Indefiniteness)
Claims 1-16
Claims 1-16 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. In particular, the Examiner determines that the
following limitations of claims 1, 2, and 9 are vague and indefinite:
"correcting the ASN using a first method ... etc."; "correcting the ASN
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Application 12/149,328
using a second method ... etc."; and "wherein correcting the ASN is
completed before delivery of material associated with the ASN" (Final Act.
2-3; see also Ans. 3--4 ). In particular, the Examiner reasons that it is
"unclear and confusing" whether the corrections are performed to the
original ASN received from the supplier or to the determined misdirected
ASN (id.).
We are persuaded by Appellants' argument that there is no vagueness
because a review of the claims reveals that they recite just a single ASN,
determined either to be misdirected or not misdirected. Indeed, one of the
recited steps of independent claim 1 is "determining if the ASN was
misdirected," followed by "correcting the ASN" (Appeal Br. 14). The
correction of a unitary ASN, i.e., which had been misdirected, is reflected in
the preamble to claim 1 which states recites a "method for correcting
misdirected Advanced Shipping Notices (ASNs)." Further, this
understanding is supported by the Specification (e.g., i-f 4), which explains
that: "[t]he ASN contains pertinent information such as the bill of lading
number, PO number, shipment information (e.g., weight, quantity, carrier,
date of shipment, etc.), receiving facility code, the goods contained in the
shipment, etc." We, therefore, conclude that, in the context of the other
claim recitations and the Specification, it would be reasonably clear to a
person of ordinary skill in the art that there is one ASN involved, and that
this ASN is subject to correction if it is misdirected. See In re Packard, 751
F.3d 1307, 1311 (Fed. Cir. 2014).
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Application 12/149,328
For these reasons, we do not sustain the Examiner's rejection under 35
U.S.C. § 112, second paragraph, of claims 1-16.3
Rejection II (Obviousness)
Claims 1 and 3-5
Independent claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hayes. Hayes discloses, inter alia, a method of
reconciling purchase orders (POs) and invoices (which state the amount
owed for a shipment for a vendor), whereby Hayes describes finding the
closest match and, if necessary, correcting the invoices (id. at i-fi-f 12, 17-19,
68, and Figs. 3, 5).
As an initial matter, we are unpersuaded by Appellants' argument
that Hayes discloses an invoice rather than an "ASN," as recited by
independent claim 1 (Appeal Br. 16-28; see also Reply Br. 2-11).
According to the Specification (i-f 3), a seller may submit an invoice when
the seller provides goods or services to a business. An ASN, also referred to
as an Advanced Shipping Notice, is a notification provided by the seller to
the business indicating that a shipment of goods is currently, or soon-to-be,
in-transit (before goods arrive), and may contain such information as a bill
of lading number, PO number, shipment information (weight, quantity,
carrier, date of shipment), receiving facility code, or the goods contained in
3 We do not reach Appellants' argument requesting entry of its Amendment
to Place Application in Better Form for Consideration on Appeal Under 37
CPR § 41.33, which Appellants propose to simplify issues relating to 35
U.S.C. § 112, second paragraph (see Appeal Br. 12-13). The Examiner may
consider this and any other issues presented in the event of further
prosecution.
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Application 12/149,328
the shipment (id. i1 4). Therefore, although an ASN may be a type of invoice
(see Ans. 8), an invoice is not necessarily an ASN.
Nevertheless, the Examiner further reasons as follows:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify Hayes' s
teachings to include "an ASN is misdirected if the comparison
is not found" enabled, for the advantage of providing an
automatic processing of approximately matched data records in
addition to facilitating more efficient manual processing of
inexact matches (Hayes, i-f 2).
(Final Act. 5; see also Ans. 5-7). We agree with the Examiner that it would
have been obvious for a person of ordinary skill in the art to apply the
teachings of Hayes, as to a document containing information regarding a
shipment, to the subject matter of claim 1, which is directed to a document
containing information regarding a shipment, albeit one sent earlier. KSR
Int 'l Co. v. Teleflex Corp., 550 U.S. 398, 421 (2007) ("A person of ordinary
skill is also a person of ordinary creativity; not an automaton.")
We are, however, persuaded by Appellants' argument that Hayes fails
to disclose determining if an invoice (much less an ASN) was misdirected to
an incorrect receiving facility as recited by independent claim 1, i.e.,
"determining if the ASN was misdirected to an incorrect receiving facility
based on the comparison" (Appeal Br. 21-22; see also Reply Br. 9-10).
The Examiner relies on paragraphs 17-19 of Hayes (and Fig. 3),
which describe that, when a match cannot be made between a purchase order
and an invoice, the system sends the invoice to an operator to manually
correct the match (Final Act. 4). The Examiner further reasons that "[i]t
would be also obvious that the misdirected invoice would be routed back to
the supplier who issued the invoice because it does not belong to the entity
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(see also [F]ig.1 which describes invoices within the range and outside the
range)" (Final Act. 5). The Examiner does not determine that Hayes'
operator or supplier is within the meaning of a different "receiving facility"
as claimed, but reasons that "[i]t is obvious that the correction would be
applicable to facilities within an entity (same communication network) such
as warehouses, suppliers, etc." (id.; see also Ans. 8).
Although we do not necessarily disagree with the Examiner's
reasoning, there is no disclosure of a different "receiving facility" in Hayes,
let alone one that is "on the same electronic communications network" or
"not on the same communications network," as recited by further limitations
of independent claim 1. We have additionally reviewed the portions of
Hayes relied on by the Examiner (as well as the remainder of Hayes).
Where the Examiner's reliance on reasoning or Official Notice surpasses the
reliance on the primary reference, i.e., where, as here, the reasoning is
required for several limitations and additional qualifications of the
limitations, we decline to sustain a rejection based thereon.
Thus, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claim 1. For the same reason, we do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claims 3-5, which depend
therefrom.
Independent claims 9 and 17 and dependent claims 11-13
Independent claims 9 and 1 7 contain similar requirements as
independent claim 1. We do not sustain the Examiner's rejection under 35
U.S.C. § 103(a) of independent claims 9 and 17, for similar reasons as for
independent claim 1. We do not sustain the Examiner's rejection under 35
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U.S.C. § 103(a) of claims 11-13, which depend from claim 9, for the same
reasons.
Rejections III-V (Obviousness)
Claims 2, 6--8, 10, 14-16, and 18-20
Claims 2, 6-8, 10, 14--16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hayes and one of Berlin, Broussard, and
Green. The Examiner does not rely on Berlin, Broussard, or Green to
remedy the argued deficiency in Hayes. We, therefore, do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claims 2, 6-8, 10, 14--16,
and 18-20, which depend respectively from claims 1, 9, and 17.
DECISION
The Examiner's decision to reject claims 1-16 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's decision to reject claims 1-20 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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