Ex Parte Leroux et al

Board of Patent Appeals and Interferences

Mar 8, 2012

10738663 (B.P.A.I. Mar. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte FABIEN LEROUX, DOMINIQUE JAMET, JEAN-LUC
VALFORT, and CLAIRE HAESE
___________

Appeal 2010-006311
Application 10/738,663
Technology Center 3600

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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2010-006311
Application 10/738,663

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STATEMENT OF THE CASE
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Fabien Leroux, Dominique Jamet, Jean-Luc Valfort, and Claire Haese
(Appellants) seek review under 35 U.S.C. § 134(a) (2002) of a final rejection
of claims 1-8, 10-11, and 13-16, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b) (2002).
The Appellants invented a method, a server computer system, and a
computer program product for enabling an invoice issuer to track the
processing status of invoices via a web interface. Specification 1:4-8.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method of enabling an invoice issuer to track, via a Web
interface, a processing status of invoices issued to and
processed by an invoice recipient, comprising:
[1] enabling the invoice issuer to upload an invoice list to a
server computer system, the invoice list having list items
referring to invoices issued to the invoice recipient;
[2] correlating the list items with invoices received from the
invoice issuer;
[3] putting invoice-status data including information
identifying invoices referred to in the invoice list and
information about their current processing status into the Web
interface provided by the server computer system, said

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Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 24, 2009) and the Examiner’s Answer (“Ans.,” mailed
December 28, 2009), and Final Rejection (“Final Rej.,” mailed April 27,
2009).
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invoice –status data being accessible by the invoice issuer via
the Web interface.

The Examiner relies upon the following prior art:
Stone et al. US 2003/0212617 Al Nov. 13, 2003
Furphy US 6,882,983 B2 Apr. 19, 2005
Maners US 6,507,826 B1 Jan. 14, 2003

REJECTIONS
Claims 1-8, 10-11, and 13-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Maners, Furphy, and Stone.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1-8, 10-
11, and 13-16 under 35 U.S.C. § 103(a) as unpatentable over Maners,
Furphy, and Stone turns on (a) whether the combination of Maners, Furphy,
and Stone teaches or suggests “upload[ing] an invoice list to a server
computer system, the invoice list having list items referring to invoices
issued to the invoice recipient” and “correlating the list items with invoices
received from the invoice issuer” and (b) whether there is a motivation to
combine the cited prior art.

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Application 10/738,663

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Facts Related to the Prior Art
Maners
01. Maners is directed to a method and apparatus for remotely and
electronically entering invoices and for validating said invoices in
an invoice processing system. Maners 1:8-11. Maners describes
that in a typical transaction, a company creates a purchase order,
packages the purchase order document, and then uploads the
purchase order document into a value added network. Maners
2:6-11. The document arrives at a second company that also
creates a purchase order and delivers the ordered product. Maners
2:11-19. The second company then creates an invoice and
uploads the invoice document into the value added network.
Maners 2:19-24. The first company receives the invoice
document, creates an accounts payable invoice document, and
updates its purchase order system. Maners 2:26-36.
Furphy
02. Furphy is directed to a method and system for providing a single
transaction point to process business transactions between
multiple trading partners. Furphy 1:15-19.
Stone
03. Stone is directed to systems and techniques for automatically
matching client specific vendor or purchase order information
against invoices received from the client’s vendors. Stone ¶ 0002.
Stone describes an embodiment that displays an “invoice list” that
includes data from a plurality of invoices or purchase orders and
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links to these orders in a matching database. Stone ¶0141 and Fig.
11. The GUI indicates specific purchase order status information
for each transaction, such as whether the purchase order is
matched to an invoice. Stone ¶ 0141.

ANALYSIS
Claims 1-8, 10-11, and 13-16 rejected under 35 U.S.C. § 103(a) as
unpatentable over Maners, Furphy, and Stone
The Appellants first contend that the combination of Maners, Furphy,
and Stone fails to teach or suggests “upload[ing] an invoice list to a server
computer system, the invoice list having list items referring to invoices
issued to the invoice recipient,” as required by limitation [1] of claim 1.
App. Br. 6-7. The Appellants specifically argue that Maners merely
describes the uploading of a single invoice and therefore fails to describe an
invoice list referring to invoices. App. Br. 6-7.
We disagree with the Appellants. The Examiner found that Maners
describes uploading an invoice document to a value added network. Ans. 4-
7. The Examiner further found that Stone describes an invoice list that
includes a list of invoices or purchase orders. Ans. 4-7. As such, the
Examiner found that the combination of Maners and Stone teaches or
suggests “upload[ing] an invoice list to a server computer system, the
invoice list having list items referring to invoices issued to the invoice
recipient.”
Since the Appellants have only argued that Maners fails to describe this
limitation, the Appellants’ argument is not found to be persuasive because
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the Appellants are responding to the rejection by attacking the references
separately, even though the rejection is based on the combined teachings of
the references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
The Appellants also contend that the combination of Maners, Furphy,
and Stone fails to teach or suggests “correlating the list items with invoices
received from the invoice issuer,” as required by limitation [2] of claim 1
and as recited by claims 4, 8, 11, 15, and 16. App. Br. 7-9 and 10-11. We
disagree with the Appellants. As discussed supra, Maners describes
uploading an invoice and Stone describes an invoice list that lists a plurality
of invoices. FF 01 and 03. The invoice list in correlates each item or
invoice included in the list to a set of invoices contained in a matching
database. FF 03. Furthermore, Maners describes that the purchase order
documents are for an ordered item or product and the subsequently created
invoices are based on that ordered product. FF 01. As such, we find that the
combination of Maners and Stone also teaches or suggests this limitation.
The Appellants further contend that a person with ordinary skill in the
art would not have been prompted to combine the teachings of Maners,
Furphy, and Stone to achieve the claimed subject matter. App. Br. 9. We
disagree with the Appellants.
The Examiner found that a person with ordinary skill in the art would
have been motivated to combine Maners and Furphy in order to increase the
accuracy of invoices by requiring the manual approval, payment, and
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resolution of discrepancies. Ans. 5. The Examiner further found that a
person with ordinary skill in the art would have been motivated to combine
Stone with Maners and Furphy in order to increase efficiency by minimizing
the data entry required. Ans. 5. The Appellants merely point out the same
alleged deficiencies argued supra and provide no rationale or evidence to
rebut the Examiner’s findings as to the motivation of a person with ordinary
skill in that to combine the cited prior art. As such, we do not find the
Appellants’ argument to be persuasive.
The Appellants additionally contend that the cited prior art fails to teach
or suggest “to put invoice-status data including information identifying
invoices referred to in the invoice list and information about their current
processing status into the Web interface,” as required by claims 8, 11, 15,
and 16. App. Br. 11. We disagree with the Appellants. The Examiner
found Stone describes matching a purchase order with an invoice and the
status of this matching is displayed to a user. Ans. 4 and 7.
The Appellants merely state that the prior art fails to describe this
limitation without providing any rationale or evidence to illustrate how the
claimed invention is distinguished from the cited prior art. A statement that
merely points out the claim language without any specific rationale to
distinguish the claimed invention from the cited prior art is not considered
an argument. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); In re Lovin, 99 USPQ2d 1373, 1379
(Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
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elements were not found in the prior art.”). As such, the Appellants’
contention is not found to be persuasive.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1-8, 10-11, and 13-16 under
35 U.S.C. § 103(a) as unpatentable over Maners, Furphy, and Stone.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1-8, 10-11, and 13-16 under 35 U.S.C.
§ 103(a) as unpatentable over Maners, Furphy, and Stone is sustained.

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)(1)(iv) (2007).

AFFIRMED

ELD