Ex Parte Sherman et al

Board of Patent Appeals and Interferences

Jan 29, 2009

10365259 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARC ALAN SHERMAN and
CHRISTOPHER MICHAEL WARNKEN
____________

Appeal 2008-5679
Application 10/365,259
Technology Center 3600
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Decided: January 29, 2009
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Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI and BIBHU
MOHANTY , Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). (2002).

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim an automated order fulfillment method and system, and
more specifically a method and system for creating multiple shipping orders.
(Specification 1:5-7.)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for creating shipping orders, the method comprising
the computer implemented steps of:
receiving an order to be sent to a plurality of specified locations, wherein all of the
locations are to receive the same order contents;
retrieving, from a database, a shipping address associated with each of the plurality
of specified locations;
creating a shipping order template, wherein the shipping order template specifies
the contents of the order and has a blank field for designating a delivery address to
which the order should be sent; and
creating a separate shipping order for each shipping address, wherein a copy of the
shipping order template is created and a delivery address is filled into the blank
field, wherein the separate shipping orders for the plurality of delivery addresses
all have the same contents.

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THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:

Goldberg US 4,656,591 Apr. 7, 1987
Bain US 5,315,508 May 24, 1994

The following rejection is before us for review.
The Examiner rejected claims 1-21 under 35 U.S.C. §103(a) as unpatentable
over Goldberg in view of Bain.

ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 1-21 on
appeal as being unpatentable under 35 U.S.C. § 103(a) over Goldberg in view of
Bain on the grounds that a person with ordinary skill in the art with the
understanding that it is known to ship identical items and quantities to a specified
group of distributors each located in a different location would use the subscription
list addressees in Goldberg to ship the same order contents to a plurality of
different locations?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Goldberg discloses:
In the example of orders representing a subscription list,
an order of a subscriber for any item (e.g. a book title) is
satisfied after allocation of but one package to a
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designated consignee. Plural packages of any one item
may appear in a retail establishment's order for an item.
The package may be only one unit of an item. Otherwise
the package may be a one-dozen carton of like units (for
example) or a multiple-gross case of an item.
(Goldberg, col.2, ll.40-47.)
2. Goldberg states:
It is contemplated that supplies of preprinted labels
(e.g. pre-ticketing labels) may be prepared. Devices
having supplies of such labels may be selectively
activated for labeling packages allocated to respective
consignees. However, it is preferred to use commercially
available computer-controlled printers for labeling of
packages. Labeling may be performed by printing
directly on the packages, or on labels to be applied.
(Goldberg, col.2, ll. 61-67.)
3. The Specification states that “[c]urrently, when a push order is sent to a
specified group of distributors, the shipping orders for each separate location must
be created one at a time, even though all of the locations in the group are receiving
identical items and quantities.” (Specification 1:ll.26-28.)
4. The Examiner found that “‘subscription list’ as disclosed by Goldberg
…would consist of a plurality of specified locations that would receive the same
‘subscription’ contents….” (Answer 4.)
5. Appellants admit that it is known to ship identical items and quantities to
a specified group of distributors each located in a different location. (Specification
1:26-28.)
6. Goldgerg discloses that:
[t]he packages in inventory bear machine-readable codes
that identify or characterize the package contents.
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Scanning of a package triggers a search in the computer
storage to select an order requiring that item. The match
between the item characterization and a requirement for
that item in a selected order results in labeling of the
scanned package with data related to the selected order
including derived data. Such data may take the form of
the selling price of that item established by the
consignee, optionally with the consignee's name, or it
may take the form of a complete shipping label.
(Goldberg, col.2, ll. 26-36.)
7. Bain discloses use of a template associated with “[e]ach consignee display
screen file 27 includes a display screen prompt template that depicts display data
fields and associated data entry boxes to prompt a user to enter data….” (Bain
col.8, ll. 1-5.)
8. In Bain the template of the display screen file 27 causes “… data selected
for printing [which] may include data entered by a user in response to the prompt
template, data from the purchase order database and data representing the
consignee's address and vendor's address, etc.” (Bain, col.8, ll. 18-22.)
9.The Examiner found that:

It would be obvious to one skilled in the art at the time
the invention was made to modify the teachings of
Goldberg to include retrieving, from a database, a
shipping address associated with each of the plurality of
specified locations; creating a shipping order template,
wherein the shipping order template specified the
constraints of the order and has a blank field for
designating a delivery address to which the order should
be sent; and creating a separate shipping order for each
shipping address, wherein a copy of the shipping order
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template is created and a delivery address is field into the
blank field, wherein the separate shipping orders for the
plurality of delivery addresses all have the same contents
as taught by Bain. (Answer 5.)

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739,
and discussed circumstances in which a patent might be determined to be obvious.
In particular, the Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR,
127 S. Ct. at 1739 (citing Graham, 383 U.S. at 12 (emphasis added)), and
reaffirmed principles based on its precedent that “[t]he combination of familiar
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elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art elements
according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after Graham
[that] illustrate the application of this doctrine.” Id. at 1739. “In United States v.
Adams, … [t]he Court recognized that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a predictable
result.” Id. at 1739-40. “Sakraida and Anderson’s-Black Rock are illustrative – a
court must ask whether the improvement is more than the predictable use of prior
art elements according to their established function.” Id. at 1740.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
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mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of
demands known to the design community or present in
the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent
reason to combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41. The Court noted that “[t]o facilitate review, this analysis
should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness”)).
However, “the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”
ANALYSIS
Initially, we note that the Appellants argue independent claims 1, 8 and 15
together as a group. Correspondingly, we select representative claim 1 to decide
the appeal of these claims, remaining claims 2-21standing or falling with claim 1.
We affirm the rejection of claim 1 for the following reasons.
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The Examiner found that because Goldberg discloses a “subscription list” it
discloses a plurality of specified locations that would receive the same subscription
contents, e.g., the same book title. (FF 1.)
Appellants however argue that “[i]n contrast, Goldberg teaches receiving
multiple orders from different retailers and consignees. The brief description of
the subscription list indicates that many retailers may subscribe to receive a
particular type of item, but there is no teaching that these subscribers will receive
orders that are identical in content.” (Appeal Br. 10.)
While we find nothing in Goldberg indicating that that system would be
incapable of sending the same order contents to a plurality of specified locations,
we are not convinced that the use of a subscription list means that the recipients on
that list all receive the same contents as interpreted by the Examiner. This is
because in Goldberg, it is the scanning of the item which triggers the matching of
the order requiring the item (FF 6).
This notwithstanding, Appellants’ Specification states that it is known to
ship identical items and quantities to a specified group of distributors each located
in a different location. (FF 5.) Thus, we conclude it would be a predictable
variation to a person with ordinary skill in the art of a known practice e.g., push
orders, to use the subscriber list in Goldberg to group together recipients of the
same order contents in a system which matches orders by product identification.
“When a work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or in a different
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one. If a person of ordinary skill in the art can implement a predictable variation, §
103 likely bars its patentability.” KSR at 1740.
Appellants next argue that:
[a] single initial order is used for the plurality of
destination locations, therefore resulting in identical
order contents for all of those locations. A single
shipping template is used for all of the shipments going
to these locations, resulting in a plurality of shipping
orders that are identical except for the destination
addresses. Neither Goldberg nor Bain teach or suggest
this aspect of the claimed invention. (Appeal Br. 12.)
However, the Appellants’ arguments “fail from the outset because . . . they
are not based on limitations appearing in the claims . . .,” and are not
commensurate with the broader scope of claims 1, 8 and 15 which merely recite
the step/function of creating a shipping order template without reference to the
template having been created based on a single initial order. In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
Appellants also argue that “…Bain does not teach using the same shipping
order template to create multiple shipping orders that differ only in their delivery
addresses.” (Appeal Br. 12.) Appellants’ argument is again not persuasive as to
error in the rejection because Appellants are attacking the Bain reference
individually when the rejection is based on a combination of references. See In re
Keller, 642 F.2d 413, 426, 882 (CCPA 1981); In re Young, 403 F.2d 754, 757-58,
159 USPQ 725, 728 (CCPA 1968). Bain is relied on by the Examiner only to
provide a teaching of a shipping template in which the addressee field is blank and
corresponding data is entered by a user (FF 7-9). Further, it follows from the
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analysis above that a shipping order template which is used to ship identical
content and quantity of items would result in the use of the same template being
used given that each screen would have to present the same content and quantity of
the involved items generated for each would be addressee. Since all the Examiner
takes from Bain is using a template and entering into a blank address line of the
template an address of a recipient (FF 8), Appellants’ alleged deficiency of Bain is
not persuasive.

CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred in
rejecting claims 1-21 under 35 U.S.C. § 103(a) as unpatentable over Goldberg in
view of Bain.
DECISION
The decision of the Examiner to reject claims 1-21 is affirmed but, because
our rationale is substantially different from that used by the Examiner, we
denominate this as new grounds of rejection under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the claims so
rejected or new evidence relating to the claims so rejected, or both, and have the
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matter reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record . . . .
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; 37 C.F.R. § 41.50(b)

LV:

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