Ex Parte Black et al

Patent Trial and Appeal Board

Dec 18, 2015

13354817 (P.T.A.B. Dec. 18, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/354,817 01/20/2012
826 7590 12/22/2015
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
DALE BLACK
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.
056182/414243 5515
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/22/2015 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE BLACK and GARY CLEMENTS
Appeal2013-007495
Application 13/354,817
Technology Center 3600
Before BIBHU R. MOHANTY, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Dale Black and Gary Clements (Appellants)2 appeals under 35 U.S.C.
§ 134(a) from the Examiner's final rejection of claims 35-37. We have
jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
Feb. 27, 2013) and Reply Brief ("Reply Br.," filed May 15, 2013), the
Examiner's Answer ("Ans.," mailed Apr. 15, 2013), and the Final Office
Action ("Final Act.," mailed Aug. 6, 2012).
2 Appellants identify the real party in interest as "United Parcel Service of
America, Inc." (Appeal Br. 2).
Appeal2013-007495
Application 13/354,817
CLAHvIED Il~VENTION
The invention is a method "that automatically obtains customs
clearance and communicates this information to systems processing the
shipments thereby minimizing delays and storage of goods" (Spec. i-f 16).
Claim 35, the sole independent claim on appeal, is reproduced below.
35. A computer-implemented method for processing a
shipment comprising:
receiving at a first processor shipment data pertaining to
at least one item, the shipment data comprising at least one of
an item description or an item code;
identifying at the first processor a rating profile based at
least in part on at least one of the item description or the item
code;
determining a confidence level of the rating profile;
determining whether the confidence level satisfies a
confidence threshold level;
after determining that the confidence level satisfies the
confidence threshold level, selecting the tariff code associated
with the rating profile to determine a tariff amount for the item;
receiving at the first processor a customs clearance
indication associated with the item;
communicating the customs clearance indication from
the first processor to a second processor using a
communications network;
storing the customs clearance indication in a memory
accessible to the second processor;
receiving a message at the second processor from a
package handling system identifying a package associated with
the shipment data;
retrieving the customs clearance indication from the
memory;
determining the customs clearance indication is
associated with the package;
communicating a message to the package handling
system indicating the package has cleared customs; and
processing the package at the package handling system for
delivery of the package.
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Appeal2013-007495
Application 13/354,817
REJECTION3
Claims 35-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Napier (US 2003/0167240 Al, pub. Sept. 4, 2003), Kamman (WO
01/24096 Al, pub. Apr. 5, 2001), and Camarillo (US 2003/0041068 Al,
pub. Feb. 27, 2003).
DISCUSSION
Appellants do not dispute the Examiner's findings with respect to the
teachings of the references. Rather, Appellants argue that the cited
references do not render claim 3 5 obvious because their combination would
change the principle of operation of Kamman (Appeal Br. 4--7). Specifically,
Appellants contend:
If combined with Camarillo, instead of the described parsing
the descriptions into search phrases, Kamman would normalize
the item descriptions and the harmonized codes. Then, Kamman
would compare the normalized item descriptions with the
normalized harmonized codes and increase the confidence level
every time data within two similar fields are considered
identical. Once a match is found based on exceeding a
confidence threshold, the item descriptions would be combined
harmonized codes into a single record. This combination of
features does not fulfill the above-described deficiencies of
Napier.
Id. at 7-8.
We are not persuaded that modifying Kamman in view of Camarillo
would change Kamman's principle of operation. Initially we note that the
term "principle of operation" actually relates to the "basic principles" under
which the prior art device was designed to operate. See In re Ratti, 270 F.2d
810, 813 (CCPA 1959)("This suggested combination of references would
3 The double patenting rejection of claims 35-37 was withdrawn (Ans. 3).
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Appeal2013-007495
Application 13/354,817
require a substantial reconstruction and redesign of the elements shown in
[the primary reference] as well as a change in the basic principles under
which the [primary reference] construction was designed to operate.").
Kamman is directed to a process for facilitating global e-commerce
transactions by computing customs tariffs. Camarillo is relied upon for
teaching "a confidence threshold feature to increase the accuracy of the
potential match" (Ans. 4; see also Final Act. 6). What Appellants overlook
is that references need not be capable of physical combination in order to
show obviousness. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (in
bane); see also, In re Nievelt, 482 F.2d 965, 968 (CCPA 1976) ("Combining
the teachings of references does not involve an ability to combine their
specific structures"); In re Andersen, 391 F.2d 953, 958 (CCPA
1968)("There is a distinction between trying to physically combine the two
separate apparatus disclosed in two prior art references on the one hand, and
on the other hand trying to learn enough from the disclosures of the two
references to render obvious the claims in suit. ... Claims may be obvious in
view of a combination of references, even if the features of one reference
cannot be substituted physically into the structure of the other reference.").
The Examiner has not proposed to substitute or physically combine prior art
structures in rejecting the method of claim 35. Here the Appellants have
failed to present adequate evidence that the suggested combination would
require a substantial reconstruction and redesign of the elements shown in
Kamman as well as change the basic principle of operation under which
Kamman was designed to operate.
Moreover, the holding in Ratti must be considered in light of the
Supreme Court's guidance in KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398
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Appeal2013-007495
Application 13/354,817
(2007). \Vhether a patent claiming the combination of prior art elements is
obvious is determined by whether the improvement is more than the
predictable use of prior art elements according to their established functions.
KSR, 550 U.S. at 417. "Often, it will be necessary for a court to look to
interrelated teachings of multiple patents" in order to determine whether
there was an apparent reason to combine the known elements. Id. at 418.
"[F]amiliar items may have obvious uses beyond their primary purposes, and
in many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle." Id. at 420. The Examiner
found that"[ o ]ne of ordinary skill in the art of data analysis and processing
would have recognized that modifying Kamman to include the confidence
threshold of Camarillo would lead to the predictable result of improving the
tariff searching for the same reasons it is useful in Camarillo" (Ans. 4).
Here, Appellants have not persuasively rebutted the Examiner's legal
conclusion of obviousness. Thus, we are not apprised of Exarniner error.
We are also not persuaded by Appellants unsupported allegation that
the "Examiner has improperly used hindsight reasoning to reconstruct the
features recited in the claims by citing the combination of Napier, Kamman,
and Camarillo" (see Appeal Br. 10---11). "Any judgment on obviousness is .
. . necessarily a reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant's disclosure, such a reconstruction is
proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). See also
Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) ("[A]ny
obviousness inquiry necessarily involves some hindsight."). Here, the
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Appeal2013-007495
Application 13/354,817
Examiner's reasons for combining teachings from Napier with those of
Kamman and Camarillo are based on the teachings of Napier, Kamman, and
Camarillo (see Final Act. 3---6; see also Ans. 3-6). These reasons do not
include knowledge gleaned only from Appellants' disclosure. Accordingly,
based on the prior art disclosures, and in the absence of any evidence to the
contrary) such as declarations) evidence of cmnmercial success, long-felt but
unsolved needs, failure of others, and unexpected results, the preponderance
of the evidence supports the rationale stated by the Examiner for combining
Napier, Kamman, and Camarillo. Thus; we are not persuaded that one
having ordinary skill in the art would not have been motivated to combine
the references.
We note that Appellants use the Reply Brief to introduce new
evidence and arguments. "Any bases for asserting error, whether factual or
legal, that are not raised in the principal brief are waived." Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (informative). See also Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief ... is waived.")
(citations and quotation marks omitted). Here, the Examiner's findings in
the Answer are identical to those in the Final Rejection, from which the
instant appeal was taken. In fact, the Examiner only addressed the
deficiency of the arguments presented in the Appeal Brief (see Ans. 3---6);
thus we find nothing that would have prompted the new evidence and
arguments in the Reply Brief. Appellants could have presented that
evidence and made those arguments in the Appeal Brief. For instance, in
support of their "Principle of Operation" argument in the Reply Brief (Reply
Br. 3-11 ), Appellants introduce new evidence and arguments not presented
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Appeal2013-007495
Application 13/354,817
in the original Brief (see Appeal Br. 4--9). The term "Reply Brief' is exactly
that, a brief in reply to new rejections or new arguments set forth in an
Examiner's Answer. The Appellants may not present arguments in a
piecemeal fashion, holding back evidence and arguments until an examiner
answers the original brief. This basis for asserting error is waived. See 3 7
C.F.R. § 41.37(c)(l)(vii).
Therefore, we sustain the rejection of independent claim 3 5.
Appellants do not separately argue the patentability of claims 36 and 37, but
rather rely on arguments presented for claim 35 (see Appeal Br. 11-12).
Thus, for the reasons set forth above, we sustain the rejection of claims 3 6
and 37.
DECISION
The Examiner's decision to reject claims 35-37 is proper.
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)(l )(iv).
AFFIRMED
Ssc
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