Ex Parte Beach et al

Patent Trial and Appeal Board

Nov 15, 2013

11408913 (P.T.A.B. Nov. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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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
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Appeal 2011-011425
Application 11/408,913
Technology Center 3600
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Before ANTON W. FETTING, NINA L. MEDLOCK, and
JAMES A. TARTAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/408,913

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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).
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[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).
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Application 11/408,913

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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.
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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).
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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

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