Ex Parte Mack et al

Patent Trial and Appeal Board

Nov 17, 2014

11734543 (P.T.A.B. Nov. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DENNIS MACK, JOE JOHNSON, and PAUL REITHMEIER
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Appeal 2012-001201
Application 11/734,5431
Technology Center 3600
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Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–44. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates “to providing customs
documentation associated with international parcel shipments.” (Spec. ¶ 1.)

1 According to Appellants, the real party in interest is United Parcel Service
of America, Inc. (Appeal Br. 1.)
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Application 11/734,543

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Claim 1 is illustrative and is reproduced below:
1. A method of providing paperless customs documentation
associated with an international parcel shipment, said
method comprising:
storing in a memory shipping data provided by a
shipping entity and associated with the parcel shipment,
the shipping data designating a destination country and
including invoice data;
verifying via a processor that the destination
country accepts electronic customs documentation; and
in response to verification that the destination
country accepts electronic customs documentation,
creating via a processor an electronic invoice from the
shipping data as part of the electronic customs
documentation for the destination country.

REJECTIONS
Claims 1–3, 5, 7–13, 15–18, 20, 22–28, 30–35, and 37–43 are rejected
under 35 U.S.C. § 103(a)2 as being unpatentable over Pento
(US 2005/0251404 A1, pub. Nov. 10, 2005) and Milovina-Meyer
(US 2008/0114643 A1, pub. May 15, 2008).
Claims 4, 19, and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pento, Milovina-Meyer, and Bush (US 2006/0090065 A1,
pub. Apr. 27, 2006).
Claims 6, 21, and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pento, Milovina-Meyer, and Official Notice taken by the
Examiner “that it is old and well known in the business arts that a third party

2 Now 35 U.S.C. § 103.
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Application 11/734,543

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can perform an action rather than the service being performed directly by the
service provider.” (Answer 15.)
Claims 14, 29, and 44 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pento, Milovina-Meyer, and Nark (US 2005/0218222 A1,
pub. Oct. 6, 2005).

ANALYSIS
Claims 1, 15, 16, 30, and 31 are the only independent claims. All of
the independent claims are argued together. All of the independent claims
stand or fall together.
Appellants argue (Appeal Br. 8–9) that
[t]he Examiner asserts that the Pento reference teaches all of the
elements of the independent claims except [1] verifying that the
destination country accepts electronic customs documentation,
and [2] in response to verification that the destination country
accepts electronic customs documentation creating an electronic
invoice from the shipping data. . . . The Examiner suggests
that the Milovina-Meyer reference teaches the missing
elements.

Appellants argue that Milovina-Meyer does not teach missing elements 1
and 2 but Appellants do not dispute that Pento teaches all of the other
elements of the independent claims. Therefore, we address the question of
whether Milovina-Meyer teaches elements 1 and 2.
Appellants argue “that the Milovina-Myer [sic] reference does not
teach or suggest verifying that a destination country accepts electronic
customs documentation . . . .” (Appeal Br. 10) Appellants further argue that
although Milovina-Meyer describes using a country code to choose the
format for the customs invoice, the invoice is always created and the format
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Application 11/734,543

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of the invoice is not related to whether the country accepts electronic
customs documents. (Appeal Br. 10.)
Milovina-Meyer is directed to a method for creating electronic
customs invoices. It describes a server configured to create such a customs
invoice for a particular country and that uses the country code of the country
to determine the format of the invoice from a table, e.g., a customs invoice
configuration table. (Milovina-Meyer ¶ 25; see also Ans. 19.) The
Examiner reasons “that by looking at country codes, a [Milovina-Meyer]
system is verifying whether or not a destination country accepts electronic
custom [sic] documentation, as only countries that accept electronic customs
documentation will have a format to use for electronic customs
documentation.” (Final Action 3.)
The Examiner presents a prima facie case that Milovina-Meyer
teaches that if a country accepts customs documents in an electronic file
format, then for that country the Milovina-Meyer system will create a
customs form in an appropriate electronic filing format. In other words, in
the case of a country that accepts electronic filing, the user of a Milovina-
Meyer system inputs a country code, the system determines/verifies3 the
electronic filing format for the customs form for that country, and then the
system creates the form in electronic filing format.
Appellants argue that “the format of an electronic customs invoice is
unrelated to whether the country accepts electronic customs documentation.”

3 The Specification does not define the term “verifying” nor does it explain
how a processor performs the claimed “verifying” step. The term is given
its broadest reasonable interpretation. (See, e.g., Spec. ¶ 35.)
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(Appeal Br. 10, see also Reply Br. 4.) But Appellants do not provide
technical reasoning and/or evidence to support this argument.
We conclude that Appellants have not rebutted the Examiner’s prima
facie case.
Thus, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103(a). For the same reasons, we sustain the Examiner’s rejections of
independent claims 15, 16, 30, and 31 which were not separately argued and
dependent claims 2, 3, 5, 7–13, 17, 18, 20, 22–28, 32–35, and 37–43 which
were also not argued separately.
For the same reasons, we sustain the rejections of dependent claims 4,
19, and 34, dependent claims 6, 21, and 36, and dependent claims 14, 29,
and 44.4

4 Appellants’ only additional argument with respect to claims 4, 19, and 34
is “that the Bush reference does not cure the deficiencies of the Milovina-
Meyer and Pento references . . . .” Appellants’ only additional argument
with respect to claims 6, 21, and 36 is “that the Official Notice taken by the
Examiner does not cure the deficiencies of the Milovina-Meyer and Pento
references . . . .” Appellants’ only additional argument with respect to
claims 14, 29, and 44 is “that the Nark reference does not cure the
deficiencies of the Milovina-Meyer and Pento references . . . .” (Appeal Br.
11–12.)
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DECISION
The Examiner’s rejection of claims 1–44 under 35 U.S.C. § 103(a) is
affirmed.5
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).

AFFIRMED

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5 In the event of further prosecution of this application, the Examiner may
wish to review claims 1–44 for compliance with 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.