Ex Parte 7991680 et al

Patent Trial and Appeal BoardFeb 9, 2016

95001700 (P.T.A.B. Feb. 9, 2016)

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. 95/001,700 08/15/2011 7991680 6115-0108PUS5 4099 2292 7590 02/09/2016 BIRCH STEWART KOLASCH & BIRCH, LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 EXAMINER BASEHOAR, ADAM L ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/09/2016 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 ____________ SAP AMERICA, INC., Requester, v. WELLOGIX TECHNOLOGY LICENSING, LLC, Patent Owner. ____________ Appeal 2015-001669 Reexamination Control 95/001,700 Patent 7,991,680 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, DENISE M. POTHIER, and DAVID M. KOHUT, Administrative Patent Judges. SIU, Administrative Patent Judge. Appeal 2015-001669 Reexamination Control 95/001,700 Patent 7,991,680 2 DECISION ON REQUEST FOR REHEARING Patent Owner submits a Request for Rehearing (“Req. Reh’g.” or “Request”) under 37 C.F.R. § 41.79(b) from the Opinion of the Patent Trial and Appeal Board, dated August 11, 2015 (“Decision”). Requester filed “Third Party Requester’s Comments in Opposition to Request for Rehearing,” dated October 7, 2015 (“Comments”). A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Patent Owner argues that “the board misapprehended or overlooked the points made by Patent Owner regarding [whether Cornelius1 discloses a “combined purchase order proforma invoice” that includes “estimated data”].” Req. Reh’g. 3. Regarding this claim feature, Patent Owner repeats previously presented arguments. See, e.g., Req. Reh’g. 3–6. This issue was previously addressed. See, e.g., Decision 13–14 (referring to arguments presented at page 17 of Appeal Brief). As previously explained in the Decision, we are not persuaded by Patent Owner’s arguments. We also are not persuaded by Patent Owner for at least the reasons set forth by Requester. Comments 1–3. Patent Owner argues that Cornelius fails to disclose “discrepancies.” See, e.g., Req. Reh’g. 6–7. This issue was previously addressed in the Decision. See, e.g., Decision 14–15. We remain unpersuaded by Patent 1 U.S. Patent No. 6,629,081 B1, issued September 30, 2003 (“Cornelius”). Appeal 2015-001669 Reexamination Control 95/001,700 Patent 7,991,680 3 Owner’s arguments. We also are not persuaded by Patent Owner for at least the reasons set forth by Requester. Comments 3. Patent Owner argues that Cornelius fails to disclose “receiving a proposed reconciliation.” See, e.g., Req. Reh’g. 7–8. This issue was previously addressed in the Decision. See, e.g., Decision 17–18. We remain unpersuaded by Patent Owner’s arguments. We also are not persuaded by Patent Owner for at least the reasons set forth by Requester. Comments 3–4. Patent Owner argues that Cornelius fails to disclose a “complex project.” See, e.g., Req. Reh’g. 8–9. This issue was previously addressed in the Decision. See, e.g., Decision 15–17. We remain unpersuaded by Patent Owner’s arguments. We also are not persuaded by Patent Owner for at least the reasons set forth by Requester. Comments 4–5. Patent Owner argues that Anderson fails to disclose a “using the processor to compare the discrepancy” or “receiving automatic approval,” recited in claim 4. Req. Reh’g. 10 (bolding in original). We are not persuaded by Patent Owner’s argument. For example, Anderson discloses a “system . . . for processing . . . information.” Anderson Abstract. We agree with Requester that it would have been at least obvious to one of ordinary skill in the art that a “system” that “processes” information would have included a “processor.” While Patent Owner argues that Anderson discloses a “user performing” actions (PO Reb. Br. 14), Patent Owner does not demonstrate sufficiently that Anderson also discloses that such actions are performed only by a user without the use of a “processor.” For example, Anderson discloses an “invoice reviewer” that displays information to a “customer” and that the “customer can enter directions” into the system. See Appeal 2015-001669 Reexamination Control 95/001,700 Patent 7,991,680 4 e.g., Anderson 8:26-30, 33-45. In order to perform the disclosed actions, the “customer can execute invoice reviewer 98 to take action.” Anderson 8:45- 48. In other words, the “user” performs actions through use of a system component (e.g., “processor”) that, in turn, performs the desired actions. Hence, Anderson discloses a “processor” performing actions. Patent Owner argues that the rationale provided regarding obviousness of the claimed invention over a combination of references to one of ordinary skill in the art is inadequate. See, e.g., Req. Reh’g. 10–11. This issue was previously addressed in the Decision. See, e.g., Decision 18– 21. We remain unpersuaded by Patent Owner’s arguments. We also are not persuaded by Patent Owner for at least the reasons set forth by Requester. Comments 7–8. Patent Owner argues that “the Board overlooked Patent Owner’s arguments regarding rejections based on Cherrington, Anderson, Wong, Green, Oracle Purchasing, Oracle Payables, and Harvey.” Req. Reh’g. 11. We acknowledged additional rejections of claims based on references other than Cornelius. See, e.g., Decision 3–5. Hence, these additional rejections have not been “overlooked.” As explained in the Decision, it is unnecessary to reach the propriety of the Examiner’s decision to reject or not reject claims over additional references in view of our affirmance of the Examiner’s rejection of those claims over Cornelius. See, e.g., Decision 20– 21. Patent Owner “respectfully requests that the Board reconsider its decision to decline reaching the propriety of [the rejections of claims over Cherrington, Anderson, Wong, Green, Oracle Purchasing, Oracle Payables, Appeal 2015-001669 Reexamination Control 95/001,700 Patent 7,991,680 5 and Harvey].” Req. Reh’g. 13. As previously explained, all claims have been rejected using Cornelius as a base reference and reaching the propriety of alternative rejections is unnecessary. We also are not persuaded by Patent Owner for at least the reasons set forth by Requester. Comments 9–11. Hence, Patent Owner’s request is denied. We have considered the arguments raised by Patent Owner in the Request. We have granted the Request to the extent that we have reconsidered the Decision and further have granted the Request to the extent that we overlooked or misapprehended Patent Owner’s arguments concerning Anderson and claim 4. We deny the request with respect to all other points presented by Patent Owner related to the Decision and with respect to making any changes therein. GRANTED-IN-PART PATENT OWNER: BIRCH STEWART KOLASCH & BIRCH, LLP PO BOX 747 FALLS CHURCH, VA 22040-0747 THIRD PARTY REQUESTER: ONE WORLD TRADE CENTER 121 S.W. SALMON STREET SUITE 1600 PORTLAND, OR 97204