Ex Parte Beach et alDownload PDFPatent Trial and Appeal BoardNov 15, 201311408913 (P.T.A.B. Nov. 15, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LORRIE K. BEACH, DENISE L. CONRAD, CRAIG C. CORNELL, LISA C. FEKLER, and SCOTTY J. REYNOLDS ____________________ Appeal 2011-011425 Application 11/408,913 Technology Center 3600 ____________________ Before ANTON W. FETTING, NINA L. MEDLOCK, and JAMES A. TARTAL, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011425 Application 11/408,913 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We REVERSE.1 BACKGROUND Appellants’ invention relates to “a method, system, and program product for validating invoices for transactions between trading partners that occur across jurisdictional borders (e.g., inter-country or inter-state transactions)” (Spec. 3, para. [0007]). Claim 1, reproduced below with added bracketed notations, is representative of the subject matter on appeal: 1. A method for electronically validating invoices, comprising: [a] electronically receiving an invoice corresponding to a transaction between a purchaser and a seller; [b] determining a purchaser tax jurisdiction for the transaction from a tax registration number that is unique to the purchaser and a seller tax jurisdiction for the transaction from a tax registration number that is unique to the seller; [c] determining, using a computer device, a category of the transaction based on the purchaser tax jurisdiction, the seller tax jurisdiction, and a set of categorization rules, the category of the transaction defining a relationship between the purchaser and seller tax jurisdictions; 1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed December 13, 2010) and Reply Brief (“Reply Br.,” filed April 15, 2011) and the Examiner’s Answer (“Ans.,” mailed February 17, 2011). Appeal 2011-011425 Application 11/408,913 3 [d] validating a tax rate indicated on the invoice based on the category and a set of validation rules; and [e] determining whether the invoice is valid based on the validating. THE REJECTIONS The following rejections are before us for review: Claims 1-7 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cirulli (US 2002/0184125 A1, pub. Dec. 5, 2002) in view of Brikman (US 2004/0049437 A1, pub. Mar. 11, 2004), and further in view of Bross (US 2005/0278233 A1, pub. Dec. 15, 2005). Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Cirulli in view of deGroeve (US 7,206,768 B1, iss. Apr. 17, 2007). Claims 9-23 are rejected under the same rationale as claims 1-8. ANALYSIS Independent claim 1 and dependent claims 2-7 We are persuaded that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) by Appellants’ argument that none of the cited references teaches or suggests “determining a purchaser tax jurisdiction for the transaction from a tax registration number that is unique to the purchaser and a seller tax jurisdiction for the transaction from a tax registration number that is unique to the seller,” i.e., limitation [b], as recited in claim 1. The Examiner directs our attention to the Abstract of Cirulli, Figure 1 of Brikman, and paragraph [0032] of Bross (Ans. 4-5 and 7-9). However, we agree with Appellants that there is nothing in the cited portions of Cirulli, Brikman, and Bross that discloses or suggests the argued limitation (App. Br. 6-7 and Reply Br. 1-2). Appeal 2011-011425 Application 11/408,913 4 Cirulli describes in the Abstract that a tax code and tax location are identified in a front end process, but there is nothing in the Abstract that discloses or suggests that either the tax code or the tax location is determined based on a tax registration number unique to a purchaser or seller. Instead, Cirulli describes that this information is retrieved from a user profile or manually entered (see, e.g., Cirulli, paras. [0056], [0057], [0076], and [0078]). A single tax code and a single tax location also are determined for a single user only, i.e., a purchaser. Cirulli does not disclose or suggest determining the tax jurisdiction of a seller and the tax jurisdiction of a purchaser. Brikman illustrates the operation of an invoice tax engine in Figure 1, and describes that the tax engine calculates an invoice tax based on a “tax table (or set of rules) for a particular tax jurisdiction among many” (see Brikman, fig. 1 and para. [0009]). But, like Cirulli, Brikman teaches only a single tax jurisdiction-based retrieval, not a tax jurisdiction for each of the purchaser and the seller. Brikman also fails to disclose or suggest that the tax jurisdiction is determined from a tax registration number unique to the purchaser or the seller. Bross describes in paragraph [0032], cited by the Examiner, that an invoice may include “tax related data, such as tax registration numbers and IDs, references to tax returns or other financial documents, payment-related information such as bank references and account numbers, etc.” But Bross neither discloses nor suggests that this tax related data, e.g., the tax registration number, is used to determine the tax jurisdiction of either a buyer or a seller. Appeal 2011-011425 Application 11/408,913 5 The Examiner asserts in the Response to Argument that the combination of Cirulli, Brikman, and Bross discloses limitation [b] of claim 1 because “[t]he elements are all known but not combined as claimed” and “[t]he technical ability exists to combine the elements as claimed and the results of the combination are predictable” (Ans. 8-9). However, Bross, the only one of the cited references that even mentions a tax registration number, neither discloses nor suggests that the tax registration number is used to determine the tax jurisdiction of either a buyer or a seller. The Examiner also has made no finding that, at the time Appellants’ invention was made, it was known in the art to determine an entity’s tax jurisdiction from its tax registration number. As such, there is, on this record, no basis for the Examiner’s finding that the argued limitation involves no more than the predictable use of prior art elements according to their established functions. In view of the foregoing, we will not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). We also will not sustain the Examiner’s rejection of claims 2-7, which depend from claim 1. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). Dependent claim 8 Claim 8 depends from claim 1. The Examiner has not established on this record that deGroeve cures the deficiencies of Cirulli, Brikman, and Bross, as set forth above with respect to claim 1. Therefore, we will not sustain the Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a). Appeal 2011-011425 Application 11/408,913 6 Independent claims 9, 16, and 24 and dependent claims 10-15 and 17-23 Independent claims 9, 16, and 24 include language substantially similar to the language of claim 1. Therefore, we will not sustain the Examiner’s rejection of independent claims 9, 16, and 24 under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to claim 1. For the same reasons, we also will not sustain the Examiner’s rejection of claims 10-15 and 17-23, which depend from claims 9 and 16, respectively. DECISION The Examiner’s rejections of claims 1-24 under 35 U.S.C. § 103(a) are reversed. REVERSED llw Copy with citationCopy as parenthetical citation