Ex Parte Kumar et alDownload PDFPatent Trial and Appeal BoardSep 19, 201411849148 (P.T.A.B. Sep. 19, 2014) Copy Citation 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. Copy with citationCopy as parenthetical citation