Ex Parte Kumar et al

Patent Trial and Appeal Board

Sep 19, 2014

11849148 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/849,148 08/31/2007 Amar Kumar 6741P123 5094
8791 7590 09/19/2014
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
DANNEMAN, PAUL
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
09/19/2014 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 AMAR KUMAR,
WOLFGANG E. WALTER,
VIOLA MITTERER, and
PASCALE VAN LAETHEM
____________

Appeal 2012-002053
Application 11/849,148
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellants have filed a request for rehearing under 37 C.F.R.
§ 41.52 (hereinafter “Request”), filed September 3, 2014. The Request
seeks reconsideration of a decision (hereinafter “Decision”), mailed
July 3, 2014, wherein we reversed the Examiner’s rejection of claims 1–8
and 14–18 under 35 U.S.C. § 103(a) as unpatentable over Broussard (US
2007/0038673 A1; pub. Feb. 15, 2007) and Arunapuram (US 2002/0019759
A1; pub. Feb. 14, 2002) and claims 9–13 under 35 U.S.C. § 103(a) as
unpatentable over Broussard and Kadaba (US 2005/0119786 A1; pub. Jun.
2, 2005); but entered a New Grounds of rejection for independent claims 1,
9, and 14 under 35 U.S.C. § 103(a) as unpatentable over Broussard pursuant
Appeal 2012-002053
Application 11/849,148

2
to 37 C.F.R. § 41.50(b). We have jurisdiction over the Request under 35
U.S.C. § 6(b).
In the Request, Appellants contend that our new interpretation of the
term “shipping document,” as it appears in exemplary independent claim 1,
to read on the “advanced shipping notification (ASN)” disclosed in
Broussard, is unreasonable because claim 2 “requires receiving an advanced
shipping notification and two correlations: one with the ASN and one with
the shipping document.” Req. 2–3.
Although, the “shipping document” of exemplary independent claim 1
is broad enough to read on the “advanced shipping notification (“ASN”),”
disclosed in Broussard, we agree that such an interpretation may be difficult
when viewed in the context of claim 2. That is, claim 2 receives an “ASN”
before the correlating operation and then performs a first correlation based
on items listed in the “ASN” and items listed in the purchase order to
produce a pre–correlated purchase order, and also performs a second
correlation that compares the “shipping document,” recited in claim 1, with
this pre–correlated purchase order. Thus, when read together under our
construction, we agree with Appellants it would be awkward to compare the
“ASN” with a correlation of itself.
Even though our New Grounds of rejection was applicable only to
independent claims 1, 9, and 14 (see Decision 5–10), when viewed in
context with claim 2, we agree with Appellants that it is inconsistent to
construe the “ASN” disclosed in Broussard to read on the “shipping
document,” recited by exemplary claim 1. See Rexnord Corp. v. Laitram
Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (quoting CVI/Beta Ventures,
Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (“[W]e are obliged to
Appeal 2012-002053
Application 11/849,148

3
construe the term ‘elasticity’ consistently throughout the claims.”);
Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir.
1995) (holding that claim terms found in different claims should be
interpreted consistently).
In view of Appellants’ contention, we grant the request, and vacate
our decision to enter a new grounds of rejection under 35 U.S.C. § 103(a),
with respect to claims 1, 9, and 14, pursuant to 37 C.F.R. § 41.50(b).
Accordingly, we modify our decision to that extent, and as such, the
Examiner’s decision to reject claims 1–18 is REVERSED for the reasons
enumerated in the Decision on pages 2–5.

GRANTED1

rvb

1 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25, 2014.