Ex Parte 6055516 et al

Patent Trial and Appeal Board

Mar 10, 2014

90009636 (P.T.A.B. Mar. 10, 2014)

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.
90/009,636 11/12/2009 6055516 16391.0001USRX 8376
33942 7590 03/11/2014
Cha & Reiter, LLC
17 Arcadian Avenue
Suite 208
Paramus, NJ 07652
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/11/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ePlus, Inc.
1
,
Appellant and Assignee
____________

Appeal 2013-009637
Reexamination Control 90/009,636
Patent 6,055,516
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL

1
ePlus, Inc. is the assignee of the subject patent and the real party in interest.
App. Br. 1.
STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on November 12, 2009, of United States Patent 6,055,516 (the ’516 Patent)
issued to James M. Johnson et al. on April 25, 2000. Reexamination of
claims 1-29 was requested, where the rejection of those claims is the subject
of the instant appeal.
The ’516 Patent was asserted in litigation, namely ePlus, Inc. v.
Lawson Software, Inc., C.A. No. 3:09-cv-620 (E.D. Va.) and ePlus, Inc. v.
Ariba, Inc., C.A. No. 1:04-cv-612 (E.D. Va. 2004). The former litigation
resulted in a jury verdict finding that claims 1, 2, 6, 9, 21, 22, and 29 are not
anticipated or rendered obvious by U.S. Patent 5,712,989. The later
litigation resulted in a jury verdict for ePlus and defendant Ariba taking a
license. App. Br. 6.
The Federal Circuit has affirmed our decision in the reexamination
appeal of U.S. Patent 6,023,683 (hereinafter, “the ’683 Patent”), which is the
parent patent of the ’516 Patent. See In re ePlus, Inc., 2013 WL 5952006
(CAFC November 08, 2013) (per curiam).
We heard oral arguments from Appellant on October 30, 2013, a
transcript of which is part of the record.

THE INVENTION
The ’516 Patent generally relates to an electronic sourcing system
including a computer that maintains a database of product information
available from multiple vendor product catalogs. Abstract. Further, the
’516 Patent discloses requisition/purchasing systems and methods that use
the results of product information searches. Spec. 1:10-11.
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Claim 1, which is illustrative of the appealed subject matter, has not
been amended during reexamination and reads as follows:
1. An electronic sourcing system comprising:
a collection of catalogs of items stored in an electronic
format;
a first set of pre-determined criteria associated with said
collection of catalogs;
a second set of pre-determined criteria associated with
items from each of said catalogs;
a catalog selection protocol, said catalog selection
protocol relying on said first set of predetermined criteria to
select less than said entire collection of catalogs, and including
matching a vendor identification code with a subset of said
collection of catalogs, wherein said subset of catalogs includes
both a vendor catalog from a predetermined vendor and a
second catalog from a predetermined third party that is one of a
manufacturer and a competing vendor, said predetermined third
party selling items corresponding to items in said vendor
catalog; and
a search program, said search program relying on said
second set of criteria to select specific items from said catalogs
determined from said catalog selection protocol.

App. Br., Claims App’x.

PRIOR ART REJECTIONS
2

The Examiner relies on the following references:

2
The Patent Owner contends that the P.O. Writer Manual and J-Con Manual
rejections should be reversed because the Examiner incorrectly rejected the
claims under 35 U.S.C. §102(e). App. Br. 39 and 45; Reply Br. 2. The
Examiner acknowledges this error and corrects it in the Answer, such that
the claims are now properly rejected under 35 U.S.C. §102(a). Ans. 36-37
and 48-49. We agree with the Examiner that the correction of the statutory
basis for the rejection does not change the basic thrust of the rejection and
therefore is not a new rejection.
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Johnson 5,712,989 Apr. 2, 1998
King 5,319,542 June 7, 1994
Cooperative Computing, Inc., J-CON Manual, volume 1, Part
No. E9096 (Apr. 1994) (“J-CON Manual”).
American Tech, Inc., P.O. Writer Plus Version 10 Manual (Apr. 1993)
(“P.O. Writer Manual”)including Volumes (1) P.O. Writer Plus Guided Tour
(“P.O. Writer Guided Tour”) and (2) P.O. Writer Plus Purchasing Tutorial
(“P.O. Writer Tutorial”).
The Examiner rejected the claims on the following bases:
1. Claims 1-6, 9-12, 15-19, and 29 under 35 U.S.C. §102(e) as being
anticipated by Johnson.
2. Claims 1-3, 6, 9, 12-16, 19, 20, and 29 under 35 U.S.C. §102(e) as
being anticipated by King.
3. Claims 1, 3, 6-9, 16, and 19 under 35 U.S.C. §102(a) as being
anticipated by P.O. Writer Manual.
4. Claims 1-12, 14-19, and 21-29 under 35 U.S.C. §102(a) as being
anticipated the J-CON Manual.
The Patent Owner relies upon the following declarations in rebuttal to
the Examiner's rejections:
Declaration of Brooks L. Hilliard, executed September 2, 2010(App.
Br., Evidence App’x, Exhibit 1)(“Hilliard Decl.").
Declaration of Douglas A. Momyer, executed September 8,
2010(App. Br., Evidence App’x, Exhibit 2)(“Momyer Decl.").
Declaration of James M. Johnson, executed September 8, 2010 (App.
Br., Evidence App’x, Exhibit 3)(“Johnson Decl.").

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ISSUES
1. Are the J-CON Manual and the P.O. Writer Manual “printed
publications” applicable under 35 U.S.C. § 102?
2. Is Johnson available as prior art under § 102(e) where the inventors
have submitted declarations stating that they have conceived the subject
matter disclosed in Johnston that the Examiner relied upon in rejecting
claims 1-6, 9-12, 15-19, and 29 of the’516 Patent?
3. Did the Examiner err in construing specific claim terms such that
they do not comport with the Specification under a broadest reasonable
interpretation standard?
4. Does King teach all of the elements of the instant claims under
35 U.S.C. § 102(e)?
5. Does P.O. Writer Manual teach all of the elements of the instant
claims under 35 U.S.C. § 102(a)?
6. Does J-CON Manual teach all of the elements of the instant claims
under 35 U.S.C. § 102(a)?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).

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The ’516 Patent
FF1. The ’516 patent relates to systems and method for interfacing
product information typically found in vendor catalogs that are provided to
customers. Spec. 1:7-8.
FF2. In particular, the ’516 Patent is directed to an electronic
sourcing system. The system generally includes a database storing product
information from multiple vendor catalogs. Spec. 2:30-34; see also Spec.
4:51-53 (“A feature of the present invention is the ability to search multiple
catalogs from different suppliers.”).
FF3. The product information stored in the database may include
product identification information and descriptive information, such as part
number, price, catalog number, vendor name or I.D., and vendor catalog
number. Spec. 3:8-11 and 4:43-47; see also Spec. 6:4-8 (identifying twelve
fields in the interface).
FF4. The electronic sourcing system can search the database,
containing product information from multiple vendors, to obtain information
for building requisitions and/or purchase orders. Spec. 2:51-60. For
example, the results of a search may be transferred to a
requisition/purchasing system to generate a requisition for the search result
entries. Spec. 2:22-28, 51-60.
FF5. The system allows a user to search all of the vendor catalogs or
select only a subset of catalogs to search. Spec. 9:56-10:11.
FF6. The system may additionally include a requisition/purchasing
system for building requisitions or purchase orders. See e.g., Spec 3:7-28.

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King
FF7. King discloses a system that facilitates the user in electronically
ordering items from suppliers. Abstract. In particular, the system includes
an electronic catalogue and an electronic requisition facility. Id.
FF8. The electronic catalog comprises a public catalog, stored on a
publicly available database, and a private catalog, which is a customer’s
private catalog. King Abstract and 4:3-33.
FF9. King discloses that the public catalog includes cross-industry
catalogs that can be accessed by multiple customers. King 4:3-5; see also
King 2:25-26.
FF10. A customer can create a private catalog, stored locally, based
on the information contained in the public catalog. Specifically, a customer
periodically download catalog data from the public catalog into a private
catalog on the customer’s local host computer. King 4:15-46.
FF11. A user may search for items to purchase in either the public or
downloaded private catalogs. King 5:42-45.
FF12. King’s catalog information includes vendor identification
codes, e.g. supplier number, address, telephone number, fax number and
DUNS number. King 4:47-68.

P.O. Writer Manual
FF13. The P.O. Writer Manual discloses that the P.O. Writer Plus
system allows for purchasing, receiving, inventory control, stock
requisitioning, and purchase requisitioning. P.O. Writer Guided Tour, p. iv.
The system allows for histories of purchases to be saved and can be used in
order to create new orders for goods. P.O. Writer Guided Tour, p. 21-22.
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The system also facilitates inventory control in that specific items can be
looked up and tracked. P.O. Writer Guided Tour, p. 102-103.
FF14. The P.O. Writer Manual details that multiple catalogs can be
loaded into the P.O. Writer Plus system’s database and can be selected in
order to effectuate orders. P.O. Writer Guided Tour, p. 45-47.
FF15. The catalogs can be searched by supplying a search criterion,
such as an initial letter for item descriptions. Id. A catalog ID can be entered
to select a specific catalog so that items can be selected therefrom. P.O.
Writer Guided Tour, p. 102-103, p. 131.
FF16. The P.O. Writer Plus system also includes a wildcard search
feature. Specifically, a “!” can be used to replace characters within a search
field. P.O. Writer Guided Tour, p. 68. Additionally, the P.O. Writer Plus
system can limit an item search by item classification or commodity. P.O.
Writer Tutorial, p. 2-226.
FF17. The P.O. Writer Manual also describes that a user may access
all or selected segments of information in the data files. P.O. Writer
Tutorial, p. 2-122.
FF18. The P.O. Writer Plus system includes a Master Vendor file that
includes vendor information for particular items. P.O. Writer Tutorial, p.2-
52.
FF19. The P.O. Writer Manual details both stock requisitioning and
purchase requisitioning, where a requisitioning interface can be used to turn
purchase requisitions into purchase orders. P.O. Writer Guided Tour, p. 117,
129 and 149. Individual fields in the requisition or purchase order to be
processed are readily changeable by the user. P.O. Writer Guided Tour,
p. 23.
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J-CON Manual
FF20. The J-CON Manual is directed to point-of-sale systems which
allow for parts to be searched, and provide for assistance in conducting
purchasing and receiving, closing for the day and accounting functions, as
well as performing inventory, price labeling and system security. J-CON
Manual, Ch. 1, Sec. 1, p. 1.
FF21. The PartSource database, within the J-CON system, stores
multiple manufacturer’s catalogs that can be searched. An additional search
feature is a wildcard that can be substituted for characters when conducting a
search. J-CON Manual, Ch. 2, Sec. 4, p. 3.
FF22. The J-CON system also includes a PartFinder, which allows
for parts to be looked up based on their group and subgroup and allows a
user to select a part from a displayed list of possible parts. J-CON Manual,
Ch. 3, Sec. 2, p. 1.
FF23. An Interchange parts feature is also included in the J-Con
system. This Interchange allows a user to search for parts by different
manufacturers. J-CON Manual, Ch.3, Sec. 4, p. 4.
FF24. The J-CON Manual also provides that the system can be set up
to automatically compute purchase orders at the end of the day based on the
contents of the inventory to maintain stock quantity. J-CON Manual, Ch. 4,
Sec. 2, p. 1, sec. 4, p. 1.

ANALYSIS
J-CON MANUAL AND P.O. WRITER MANUAL
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The Federal Circuit affirmed our decision in the ’653 Patent
reexamination appeal, where we found that the P.O. Writer Manual and J-
CON Manual qualify as printed publications. See In re ePlus, Inc., 2013
WL 5952006 (CAFC November 08, 2013) (per curiam). The Patent Owner
presents substantially the same arguments here. Compare App. Br. 18-27
and Reply Br. 9-15 with Ex Parte Eplus, Inc., 2011 WL 1918594, *7-*11
(BPAI May 18, 2011), rehearing denied, 2012 WL 1050566, *4-*9 (BPAI
March 23, 2012).
We do note that the Patent Owner here additionally argues that the
Examiner erroneously relies on an advertisement in a purchasing manual
because the advertisement relates to an earlier version of the P.O. Writer
Manual and therefore the P.O. Writer Manual is not a printed publication.
App. Br. 12. We disagree.
Our previous analysis and resulting decision were based on the totality
of evidence before us, not dependent solely on the advertisement. See e.g.,
Ex Parte Eplus, Inc., 2011 WL 1918594, *7-*11 (BPAI May 18, 2011)
(citing, for example, the presence of the P.O. Writer Plus system in a buyer’s
guide); Ex Parte Eplus, Inc., 2012 WL 1050566, *4-*9 (BPAI March 23,
2012)(citing testimony that all someone had to do to obtain the guide was
buy the product or trial product and discussing that the license agreement
restrictions against making authorized copies speaks to further dissemination
and not a level of confidentiality, i.e. availability to the public). Therefore,
even if we agreed that the advertisement should now be given no weight, it
would not outweigh the remaining evidence and would not change the result
of our previous analysis. Moreover, the advertisement still persuasively
shows the standard practice of advertising (and thus the public availability)
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the P.O. Writer Plus system, albeit the advertisement relates to an earlier
version.
Therefore, for at least the reasons discussed here and in the previous
decisions, we affirm the Examiner’s decision that the P.O. Writer Manual
and J-CON Manual are printed publications.

THE JOHNSON REFERENCE
Claims 1-6, 9-12, 15-19, and 29
The Patent Owner argues that Johnson is not available as prior art
under 35 U.S.C. §102(e) because Johnson is not an invention by another.
App. Br. 15-16.
According to the Examiner, Johnson is available as prior art under
§ 102(e) because the inventive entity of Johnson and the ’516 Patent are
different. Ans. 14-15. More specifically, Johnson lists only two of the four
inventors listed on the ’516 Patent. The Examiner then reasons that where
the later application, here the ’516 Patent, includes additional inventors, it
must be proven that this joint invention was made first, i.e., prior to the
Johnson invention. Id.
The Patent Owner, on the other hand, argues that the submitted
Johnson and Momyer inventor declarations, which attest that the Johnson
disclosures claimed in the ’516 Patent were solely invented by them, should
overcome the rejection. The Examiner finds these declarations insufficient,
explaining that they “do not prove that the joint invention of the ’516 Patent
was made first” and was thereafter described in Johnson. Ans. 15 (citing
MPEP §2136.05). We agree with the Patent Owner.
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“The fact that an application has named a different inventive entity
than a patent does not necessarily make that patent prior art.” Applied
Materials Inc. v. Gemini Research Corp., 835 F.2d 279 (Fed. Cir. 1988).
The issue turns on what the evidence of record shows as to who invented the
subject matter. In re Whittle, 454 F.2d 1193, 1195 (CCPA 1972).
The Johnson and Momyer declarations each state, in part:
4. To the extent the Examiner has found that
disclosures from the ’989 Patent are claimed in the ’516
Patent, I can attest that these aspects of the inventions
claimed in the ’516 Patent were derived from the
inventions of myself and the ’989 Patent co-inventor,
James M. Johnson[Douglas A. Momyer]. As noted
above, Mr. Johnson [Mr. Momyer] is also a co-inventor
of the ’516 Patent. The remaining ’516 Patent co-
inventors, Messrs. Kinross and Kelly, did not make an
inventive contribution to the ’989 Patent disclosures
which the Examiner has found were later claimed in the
’516 Patent. Johnson Decl. ¶ 4 and Momyer Decl. ¶4.

In other words, Johnston and Momyer testify that the claims the
Examiner rejected here in the ’516 Patent, namely claims 1-6, 9-12, 15-19,
and 29, are solely invented by Johnson and Momyer, not Kinross and Kelly.
The declarations further state that the subject matter disclosed in Johnson
was also invented only by Johnson and Momyer. We find that this
persuasively shows that the subject matter of Johnson relied upon in
rejecting claims 1-6, 9-12, 15-19, and 29 of the ’516 Patent then is not by
another.
Based on the record before us, we find that the Examiner erred in
rejecting claims 1-6, 9-12, 15-19, and 29 under 102(e) as anticipated by
Johnson and accordingly do not sustain this rejection.
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CLAIM CONSTRUCTION
Previously Construed Terms – Catalog, Requisition, Purchase Order
By affirming our decision in ’683 Patent reexamination appeal, the
Federal Circuit has affirmed the construction of terms also at issue here. See
Ex Parte Eplus, Inc., 2011 WL 1918594, *11-*12 (BPAI May 18, 2011),
aff’d, 2013 WL 5952006 (CAFC November 08, 2013)). Therefore, for at
least the reasons set forth in our affirmed opinion we adopt the following
constructions for catalog, requisition, and purchase order.
1) A “catalog” is “an organized collection of items and associated
information.” See Ex Parte Eplus, Inc., 2011 WL 1918594,
*11-*12 (BPAI May 18, 2011); see also Ans. 9-12.
2) A “requisition” is “a request to purchase something.” See Ex
Parte Eplus, Inc., 2011 WL 1918594, *11-*12 (BPAI May 18,
2011); see also Ans. 10-12.
3) A “purchase order” is “a contractual document prepared by a
buyer committing to buy something from a seller.” See Ex
Parte Eplus, Inc., 2011 WL 1918594, *11-*12 (BPAI
May 18, 2011).

Electronic Sourcing System
The Examiner defines an electronic sourcing system as “an electronic
system to find items for purchase.” Ans. 12-13. The Patent Owner, on the
other hand, construes an electronic sourcing system as “an electronic system
for use by a prospective buyer to locate and find items to purchase from
sources, suppliers, or vendors.” App. Br. 6 (citing Hillard Decl. ¶ 45.ii.).
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As the Examiner point out though, there is no requirement in the
claims that the system can only be used by a “prospective buyer.” Ans. 13.
For example, the Specification identifies that a customer end user, a
customer purchasing employee, or a distributor purchasing employee may
use the system. Ans. 14 (citing Spec. 16:45-49 and 17:60-18:34).
The Patent Owner responds that the Examiner’s position is
unsupported. Particularly, according to the Patent Owner, a customer end
user and the customer purchasing employee are “part of the so-called
‘Customer’ entity” and therefore are a “prospective buyer.” Reply Br. 7.
Notably absent though is any discussion of the distributor purchasing
employee. The Specification expressly identifies that a distributor
purchasing employee may use the system to find, for example, products the
distributor does not regularly stock. The information may then be forwarded
to the customer end user or customer purchasing employee, i.e. prospective
buyer. Spec. 17:60-18:34. We therefore agree with the Examiner that,
under the broadest reasonable interpretation, an electronic sourcing system is
not limited to use by a prospective buyer.
Further, the Patent Owner maintains that an electronic sourcing
system should include components such as modules for building a
requisition and sending it to someone who can accept or reject it.
App. Br. 14-15. The only support the patent owner relies on here though is
claim 21, the only independent claim that requires a requisition system. The
Specification also describes that the electronic sourcing system may include
a requisition or may transfer the results of search to a requisition system.
See e.g., FF4. It is therefore not consistent with the Specification to include
a requisition system within the definition of an electronic sourcing system.
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We do note that the Examiner acknowledges that the term “sourcing”
is known in the art as “a business procurement practice aimed at finding,
evaluating, and/or engaging suppliers, or sources of goods and services.”
Ans. 12-13. In at least one embodiment though, the Specification describes
that the electronic sourcing method and system provides (1) the capability of
searching database that includes items available from at least two vendor
product catalogs and (2) the capability to transfer the product information to
a requisition/purchasing system.” See FF4. It is not consistent with the
Specification then to interpret “sourcing” to require procurement or
purchase. Thus, we find that an electronic sourcing system is “an electronic
system to find items for purchase from sources, suppliers or vendors.”

Converting Means
We agree with the Patent Owner that the function of the claimed
converting means is converting data relating to said item from said first
catalog to data related to said item from said second catalog. See App.
Br. 6-7. The Examiner though correctly identifies the corresponding
structure performing this function as cross-reference tables or files stored in
a database. Ans. 7 (citing Spec. 5:4-13 and 17:28-38).

THE ANTICIPATION REJECTION BASED ON KING
Claims 1-3, 6, 9, 12-16, 19, 20, and 29
Based on the record before us, we see no error in the Examiner’s
rejection of claims 1-3, 6, 9, 12-15 and 29 as anticipated by King.
The Patent Owner argues that King does not teach an “electronic
sourcing system.” Specifically, King’s system does not include a
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procurement system that is integrated with either the Public or Private
Catalogs and again argues that the claims are directed to a system for use by
a prospective purchaser. App. Br. 37. Notably though, these limitations are
not claimed. As discussed above, we rejected the contentions that the
claimed electronic sourcing system requires procurement or is limited to use
by only a prospective buyer.
Additionally, the Patent Owner argues that King fails to disclose
“(1) vendor identification codes; and (2) the ability to define a ‘subset’ of at
least two catalogs to search (since it could only search one catalog at a
time).” App. Br. 37. These arguments, however, are misplaced. First, King
expressly discloses that the catalog includes vendor identification codes, e.g.
supplier number, address, telephone number, fax number and DUNS
number. Ans. 35 (citing King 4:47-68); FF12.
Then, as the Patent Owner describes, in King “[c]ustomers can
periodically download catalog data from the Public Catalog into a Private
Catalog on the customer’s local host computer….” App. Br. 37. In other
words, the Private Catalog may include a subset of catalogs from the Public
Catalog depending on the catalog selection. See King 2:43-50, 4:15-30;
FF10. Thus, contrary to the Patent Owner’s assertions, the private catalog is
not a single catalog but may include multiple catalogs or portions of multiple
catalogs depending on the selected criteria. Furthermore, we also agree with
the Examiner that claim 1 does not require that the catalogs to be
searched simultaneously. See Ans. 33-34; see also Final Rejection Dated
July 21, 2011(hereinafter “Final Rejection”), 21 (discussing the search
features disclosed by King).
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The Patent Owner’s remaining arguments are likewise unavailing.
See e.g., App. Br. 38 (asserting that because King fails to disclose a catalog
selection protocol it also fails to disclose the claimed search program).
Therefore, we agree with the Examiner that King discloses the claimed
limitations of claim 1 and claims 2-3, 6, 9, 12-15 and 29 not argued with
particularity.
For at least the reasons discussed above and by the Examiner, we find
that the Examiner did not err in rejecting claims 1 - 3, 6, 9, 12 -15, and 29 as
anticipated by King. Accordingly, we sustain the rejection with respect to
these claims.

Claims 16, 19 and 20
With respect to claim 16, we agree with the Patent Owner that the
Examiner erred. The Examiner here cites King’s disclosure of
simultaneously displaying competitive product information. See Final
Rejection 57-58 (citing King 2:25-49 and 4:3-9). Presumably, the Examiner
believes that the display of simultaneous product information inherently
discloses the claimed converting means. We disagree. As the Patent Owner
argues, simultaneous display is not necessarily the same as converting data,
as required by claim 16. App. Br. 38-39. Therefore, we do not sustain the
rejection of claims 16, 19, and 20 as anticipated by King.

THE ANTICIPATION REJECTION BASED ON THE P.O. WRITER MANUAL
Claims 1, 3, 6-9, 16, and 19
The Patent Owner, here, again argues that P.O. Writer Manual does
not disclose an electronic sourcing system. App. Br. 41-42. Specifically,
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“[i]t cannot be used by a prospective buyer to search for and find goods in
vendor product catalogs.” App. Br. 41. We do not find this argument
persuasive because, as discussed above, we do not adopt the Patent Owner’s
construction that limits use of an electronic sourcing system to a prospective
buyer. Moreover, we fail to see why a user of the P.O. Writer Plus system is
not a prospective buyer. As the Patent Owner admits, the system is directed
to a system for generating purchase orders. See App. Br. 41; FF13-FF14.
The Patent Owner’s argues that P.O. Writer Manual fails to provide
continuous item/vendor association. According to the Patent Owner, P.O.
Writer Plus system "could not be used by a prospective buyer to perform the
entire process (as described and claimed in the patent) of searching for and
finding goods in vendor product catalogs such that the goods are associated
with a source or vendor.” App. Br. 41-42. Particularly because once an
item is selected in P.O. Writer Plus system for inclusion on a requisition, the
vendor is no longer associated with the item. Id.
This argument lacks merit. As the Examiner responds, the rejected
“independent claims 1, 9, and 16, do not require any continuous association
of an item and a vendor, nor is there any requirement for inclusion on a
requisition or building a purchase order.” Ans. 38. Furthermore, the Patent
Owner mischaracterizes the disclosure of the P.O. Writer Manual.
Specifically, the cited support merely shows that different vendor options are
available; it does not support a lack of correlation. See App. Br. 42 (citing
P.O. Writer Guided Tour, p. 22). The Patent Owner’s argument is therefore
unpersuasive.
The Patent Owner’s contention that P.O. Writer Manual does not
disclose the claimed “catalog selection protocol” or a “catalog search
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program” (App. Br. 42-43) is likewise unavailing. The Patent Owner
maintains that P.O. Writer Manual only discloses selecting one or all
catalogs to search, not a subset. Id.
To the contrary, as we found in the appeal of the ’683 Patent
reexamination, the P.O. Writer Manual details that multiple catalogs can be
loaded into the system’s database. P.O. Writer Guided Tour, p. 45-47;
FF14. The catalogs can be searched by supplying search criteria, such as an
initial letter for item descriptions or a catalog ID. Id.; see also Ans. 38-39
(citing P.O. Writer Guided Tour, p. 132-133); FF14.
Furthermore, as the Examiner explains, a subset of catalogs can be
selected by using the wildcard search feature. Ans. 39-40 (citing P.O.
Writer Guided Tour, p. 68). For example, “the user of the P.O. WRITER
system would be able to search a subset of catalogs that include a vendor
catalog and a second catalog of a competing vendor, whereby the wildcard
"!" could be substituted for characters within the CATALOG ID field, thus
allowing for multiple competing vendors to be searched at one time.” Ans.
39; FF16. The Patent Owner fails to even acknowledge these findings. We
are thus not persuaded that the P.O. Writer Manual fails to disclose the
claimed catalog selection protocol and catalog search program limitations.
Moreover, we agree with the Examiner that the P.O. Writer Manual
additionally discloses the claimed catalog selection protocol limitation
through the P.O. Writer Tutorial.
3
Ans. 40-41. Specifically, the P.O. Writer

3
We note that the Patent Owner asserts that the P.O. Writer Tutorial is a
separate document from the P.O. Writer Manual. Reply Br. 19-20. To the
contrary, the P.O. Writer Manual, as submitted by the Third Party
Requestor, includes both the Guided Tour Manual and the Purchasing
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Manual describes that a user may access all or selected segments of
information contained in the data files. Ans. 40 (citing P.O. Writer Tutorial,
p. 2-122); FF17. The P.O. Writer Manual also discloses that the system can
limit an item search by item classification or commodity. FF16. “For
example, A CATALOGUE ID could be set up called STATIONARY. This
catalogue would contain all stationary items regardless of what vendor they
are purchased from.” Ans. 41 (quoting P.O. Writer Tutorial, p. 2-226 and
adding emphasis). In other words, by classifying an item, the system selects
the subset of catalogs to search, as required by claim 16.
The Patent Owner similarly relies on the erroneous characterization of
P.O. Writer Manual that a user can only select one or all catalogs in
distinguishing the claims 7 and 9. See App. Br. 43-44. For example the
Patent Owner asserts that “[w]ith respect to claim 7, the P.O. Writer Plus
Manual does not disclose a means for providing an electronic listing of
available catalogs from said collection of catalogs because a user may view
all available catalogs, but must select one or leave the field blank - thereby
selecting all of the available catalogs.” App. Br. 44. As discussed above,
the Examiner persuasively explains that the P.O. Writer Manual can select a
subset of catalogs to search.
We also disagree with the Patent Owner’s argument with respect to
claim 8. Claim 8 does not require “a cross-reference table linking a vendor
item catalog number with an item catalog number from a predetermined
third party” as asserted by the Patent Owner. App. Br. 43. Instead, claim 8

Tutorial. See Ex Parte Reexamination Request, dated Nov. 12, 2009, at 13.
Additionally, both volumes are directed to the same P.O. Writer Plus system.
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merely recites that the electronic listing of available catalogs is less than said
collection of catalogs. See App. Br., Claims App’x.
With respect to claim 16, the Patent Owner asserts that P.O. Writer
Manual fails to disclose the claimed converting means because “[t]here is no
cross-reference table in the P.O. Writer System.” App. Br. 44. In rejecting
claim 16 though, the Examiner explains that the P.O. Writer System includes
a Vendor Master file that allows one vendor (e.g. Best-Buy Supply
Corporation) to be converted to a second vendor (e.g. North American
Packaging Corporation) for a particular item (e.g. Item Number A1000).
See Ans. 45-46 (citing P.O. Writer Tutorial, p. 2-52); FF18. We agree with
the Examiner that the Vendor Master file satisfies the claimed converting
means. Moreover, the P.O. Writer Plus system discloses that an item’s
purchase history can be used to convert one vendor to another. See P.O.
Writer Guided Tour, p. 21-22.
Therefore, for at least the reasons discussed above and by the
Examiner, we find that the Examiner did not err in rejecting claims 1-3, 6, 9,
12-16, 19-20, and 29 as anticipated by P.O. Writer Manual. Accordingly,
we sustain the rejection.

THE ANTICIPATION REJECTION BASED ON THE J-CONN MANUAL
Claims 1-12, 14-19, and 29
We additionally find that the Examiner did not err in rejecting claims
1-12, 14-19, and 29 as anticipated by the J-CON Manual.
4

4
We note that we found that J-CON did not anticipate certain claims of the
’683 Patent. See Ex Parte Eplus, Inc., 2011 WL 1918594 (BPAI May 18,
2011); App. Br. 45, n. 10 and Reply Br. 21, n. 6. The claims are notably
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As we discussed in our previous decision, the J-CON system is
directed to a point-of-sale system which allow for parts to be searched. J-
CON Manual, Ch. 1, Sec. 1, p.1; FF20. Specifically, the J-CON system
includes a PartFinder that allows for parts to be looked up based on their
group and subgroup, and allows a user to select a part from a displayed list
of possible parts. J-CON Manual, Ch. 3, Sec. 2, p. 1; FF22.
The Patent Owner argues that the J-CON system is “a retail-oriented
sales and inventory system, rather than a purchasing or sourcing system.”
App. Br. 46. Further, according to the Patent Owner, the J-CON system is
not an electronic sourcing system because “[t]he J-CON system was not
used by a store’s customer to locate and find goods in multiple vendor
product catalogs to select which source or vendor from which to make a
purchase of an item. Nor was the J-CON system used by customers to build
requisitions or generate purchase orders.” Id at 46-47. This reliance on
purchasing an item and building requisitions or generating purchase orders is
misplaced because these limitations are absent from the claims here. Ans.
49-50.
Similarly, the Patent Owner’s distinction between a retail-oriented
system and the claimed electronic sourcing system is unpersuasive where the
claims merely require searching catalogs that include items from multiple
vendors or manufacturers. As the Examiner point out, the J-CON manual
discloses an Interchange parts system that allows you to search for parts by
different manufactures, i.e. different sources. FF23. Moreover, J-CON

distinct here in that they do not require generating purchase orders from a
requisition. Instead, the claims are directed to an electronic sourcing system
that requires searching catalogs that include items from multiple vendors.
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expressly describes that multiple manufacturer’s catalogs are stored with the
PartSource database and a subset of those catalogs can be searched using the
wildcard feature. Ans. 51-52; FF21. We therefore, based on the broadest
reasonable interpretation, agree with the Examiner that J-CON discloses the
claimed electronic sourcing system.
We additionally find the Patent Owner’s arguments regarding the J-
CON Manual’s failure to disclose items associated with multiple vendors
uncompelling. See App. Br.; Reply Br. 21. More specifically, we disagree
with the Patent Owner that J-CON “contemplates only a single product
catalog - the electronic parts catalog of the retail merchant using the J-CON
system.” App. Br. 48-49. To the contrary, as the Patent Owner admits “a
particular retailer may stock parts from many different manufacturers.”
App. Br. 47. The Examiner further explains that the J-CON Manual
expressly describes that multiple manufacturer’s catalogs (i.e. multiple
source or vendor catalogs) are stored within the PartSource database and a
subset of those catalogs can be searched. Ans. 51-52; FF21. The Patent
Owner fails to persuasively respond to these findings.
Finally, we find the Patent Owner’s remaining arguments similarly
unavailing because they either rely on unclaimed features and/or
mischaracterizations of the J-CON Manual disclosures. For example, the
Appellant’s arguments with respect to claim 9 rely on the incorrect
contention that the J-CON system only contains a single catalog.
App. Br. 50.
Therefore, for at least the reasons discussed above as well as by the
Examiner, we find that J-CON discloses the limitations of claims 1-12, 14-
19, and 29 and we accordingly sustain the rejection.
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Claims 21-28
As the Patent Owner notes, we found in the ’683 Patent reexamination
appeal that the J-CON manual fails to disclose processing a requisition to
generate purchase orders. See Ex Parte Eplus, Inc., 2011 WL 1918594
(BPAI May 18, 2011); Reply Br. 21, n.6. Claim 21 here similarly recites “a
multiple purchase order generation module” that “creates multiple purchase
orders from a single requisition created with said user-generated criteria and
said search-module criteria.” For at least the reasons set forth in our
previous decision, we find that J-Con fails to disclose at least this feature.
Accordingly, we do not sustain the rejection of claim 21 and dependent
claims 22-28.
DECISION
The Examiner’s decisions to reject claims 1-20 and 29 are affirmed,
the decision to reject claims 21-28 is reversed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART

ak

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PATENT OWNER:

Cha & Reiter, LLC
17 Arcadian Avenue
Suite 208
Paramus, NJ 07652

THIRD-PARTY REQUESTER:

Blank Rome, LLP
One Logan Square
Philadelphia, PA 19103