Ex Parte Smith

Patent Trial and Appeal Board

Jun 10, 2013

12393020 (P.T.A.B. Jun. 10, 2013)

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.
12/393,020 02/25/2009 Matthew J. Smith ICIX.P256CIP2 9940
30554 7590 06/11/2013
MAHAMEDI PARADICE KREISMAN LLP
550 Winchester Boulevard
Suite 605
SAN JOSE, CA 95128
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
06/11/2013 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 THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW J. SMITH
____________

Appeal 2011-009184
Application 12/393,020
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009184
Application 12/393,020

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-3 and 5-11 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to a system for sharing
compliance information between buyers and suppliers regarding products
the buyers desire to obtain (Spec. para. [0002]). Claim 1, reproduced below
with the numbering in brackets added, is representative of the subject matter
on appeal:

1. A computer-implemented method for electronically distributing
product recall information across a supply chain, comprising:
[1] storing, in a persistent data store, relationship information
that identifies relationships between members of a supply chain,
wherein the members of the supply chain include a supplier and a
plurality of buyers,
[2] wherein the persistent data store is operated and controlled
by an entity that is independent of any member in the supply chain;
[3] receiving, from an initiating member of the supply chain, a
recall notice relating to a product;
[4] storing, in the persistent data store, the recall notice;
[5] transmitting a recall request to other members in the supply
chain besides the initiating member, wherein the other members in the
supply chain include those members both upstream and downstream
from the initiating member;
[6] storing, in the persistent data store, a recall receipt
electronically received from the other members of the supply chain,
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wherein the recall receipt received from each of the other members of
the supply chain is automatically generated and sent by the member in
response to the member displaying the recall request; and
[7] transmitting the recall receipt received from the other
members of the supply chain to the initiating member.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Steele US 2002/0184524 A1 Dec. 5, 2002
Thomson US 2003/0061104 A1 Mar. 27, 2003
Babu US 2005/0038691 A1 Feb. 17, 2005

The following rejections are before us for review1:
1. Claims 1-3, 8, and 10 are rejected under 35 U.S.C. § 101.
2. Claims 1-3 and 5-11 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 1-3 and 5-7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Babu, Steele, and Thomson.
4. Claims 8-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Babu, Steele, Thomson, and Official Notice.

1 The following rejections are all listed as still pending in the Answer (Ans.
3-9).
Appeal 2011-009184
Application 12/393,020

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ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner rejected claims 1-3, 8, and 10 under 35 U.S.C. § 101
(Ans. 3-4, 9). Appellant’s Appeal Brief fails to address the Examiner’s
rejection under 35 U.S.C. § 101. However, in their Reply Brief, Appellant
argues that the Examiner’s rejection under 35 U.S.C. § 101 was addressed
and withdrawn in an Advisory Action, mailed December 2, 2010 (Reply Br.
4). Specifically, Appellant asserts that in the Advisory Action, the Examiner
entered Appellant’s After-Final Amendment, filed November 8, 2010, and
indicated that the Amendment was sufficient to overcome the rejections
under 35 U.S.C. § 101 (Reply Br. 4). We cannot agree.
While the Appellant is correct that the Examiner did enter the After-
Final Amendment, we cannot agree with the Appellant that the Examiner
withdrew the rejection of claims 1-3, 8 and 10 under 35 U.S.C. § 101.
Rather, on page 2 of that Advisory Action, the Examiner indicated that the
After-Final Amendment only overcame “the 101 rejection [with respect to]
claims 5-7, 9 and 11.” We note that the Examiner’s Final Rejection, mailed
September 8, 2010 included two rejections under 35 U.S.C. § 101 (Final
Rejection 2-3), and the Examiner continues to maintain the one under 35
U.S.C. § 101 to claims 1-3, 8 and 10 in the Answer (Ans. 3-4). Thus, we
find it is clear that the Advisory Action indicated that the Appellant’s After-
Final Amendment was only sufficient to overcome the Examiner’s rejection
of claims 5-7, 9, and 11, which are not listed as being rejected under 35
U.S.C. § 101 in the Examiner’s Answer, but was not sufficient to overcome
the rejection of claims 1-3, 8, and 10 under 35 U.S.C. § 101 which remain
rejected in the Examiner’s Answer.
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Accordingly, in the absence of any arguments to the contrary, we
summarily affirm this remaining rejection.

Rejection under 35 U.S.C. § 112, second paragraph
The Examiner rejected claims 1-3 and 5-11 under 35 U.S.C. § 112,
second paragraph. (Ans. 4-5). Appellant’s Appeal Brief fails to address the
Examiner’s rejection under 35 U.S.C. § 112, second paragraph. However, in
their Reply Brief, Appellant argues that the Examiner’s rejection under 35
U.S.C. § 112, second paragraph was addressed and withdrawn in the
Advisory Action mailed December 2, 2010 (Reply Br. 4). Specifically,
Appellant contends that in the Advisory Action, the Examiner entered
Appellant’s After-Final Amendment and indicated that the amendment was
sufficient to overcome the rejections under 35 U.S.C. § 112, second
paragraph (Reply Br. 4). We cannot agree.
As discussed above, we agree with the Appellant that the Examiner
entered the After-Final Amendment, however, we cannot agree with the
Appellant that the Examiner withdrew the rejection of claims 1-3 and 5-11
under 35 U.S.C. § 112, second paragraph. Rather, on page 2 of that
Advisory Action, the Examiner indicated that the After-Final Amendment
has overcome only “the 112 2nd lack of antecedent basis for claim 1.” We
note that the Examiner’s Final Rejection included two rejections under 35
U.S.C. § 112, second paragraph, with the first rejection being directed to an
insufficient antecedent basis for the limitation “‘the other members’ in line
13” (Final Rejection 4) and the second rejection being directed to limitation
[6] of independent claims 1 and 5 being vague and indefinite (Final
Rejection 3-4; See Ans. 4-5). Thus, we find the Advisory Action indicated
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that the Appellant’s After-Final Amendment was only sufficient to
overcome the Examiner’s lack of antecedent basis rejection of claim 1 which
was removed from the Answer, but not sufficient to overcome the rejection
of independent claims 1 and 5, and their respective dependent claims under
35 U.S.C. § 112, second paragraph.
In the absence of any arguments to the contrary being provided by the
Appellant, we summarily affirm this rejection. Notwithstanding, a review of
this rejection does show it to be proper in our view, because the cited
recitation to “members” is indefinite as it is unclear whether the cited term
refers to the buyers, supplier, or some other member, an understanding of
which we find necessary to determine the scope of the claims. Because the
rejection of claims 1-3 and 5-11 as being indefinite is sustained, the prior art
rejections of these claims must fall, pro forma, because they necessarily are
based on speculative assumptions as to the scope of the claims. Our pro
forma reversal of the prior art rejections, however, takes no position on the
merits of the rejection.

Rejection under 35 U.S.C. § 103(a)
The rejections made under 35 U.S.C. § 103(a) must fall pro forma
because they are necessarily based on a speculative assumption as to the
scope of these claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).
Our decision is based solely on the indefiniteness of the claim.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-3, 8, and 10 under 35 U.S.C. § 101 and claims 1-3
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and 5-11 under 35 U.S.C. § 112, second paragraph. The rejections made
under 35 U.S.C. § 103(a) fall pro forma as their scope cannot be ascertained.

DECISION
The Examiner’s rejection of claims 1-3 and 5-11 is affirmed.

AFFIRMED

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