Ex Parte Riggs et al

Patent Trial and Appeal Board

Apr 28, 2016

11005678 (P.T.A.B. Apr. 28, 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.
11/005,678 12/07/2004 Glenn E. Riggs 78820.0001 3619
72550 7590 04/29/2016
Robert M. Bauer, Esq.
Bauer Law Offices
Griswold Plaza Building
1314 Griswold Plaza
Erie, PA 16501
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
04/29/2016 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

____________

Ex parte GLENN E. RIGGS, JOHN H. KIVELA, ROBERT H.
SHELLMAN, JOSEPH F. ROCKY, JR.,
STANLEY M. BAINOR, RALPH K. BRECHTER, DOUGLAS L. CLARK,
JAMES R. CLARK, JON L. CLOW, AMY DALEY, LARRY HU,
LOUIS F. INDELICATO, WILLIAM J. LOHAN,
MICHAEL M. NAUGHTON, PETER P. NELSON,
ALAN D. SHOLLENBERGER, M. NADINE WILLETT,
DOUG JOHNSTON, DONALD H. MUELLER, MICHAEL D. MICHAUD,
ROBERT PHANEUF, and JOSEPH J. BAINOR
____________

Appeal 2013-005910
Application 11/005,678
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
Non-Final decision rejecting claims 1–25. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). Appellants appeared for hearing on April 5,
2016.
We REVERSE.
Appeal 2013-005910
Application 11/005,678

2
Claim 1 is illustrative:

1. An integrated logistics system for managing the
shipments of goods by at least one of a plurality of carriers,
said system comprising:
at least one computer;
at least one database, said at least one database
storing data in conjunction with at least two of a plurality of
modules;
a network connecting said at least one computer
and said at least one database; and
at least one storage device, said at least one
storage device storing at least one software program, said at
least one software program when executed by said at least one
computer causing said integrated logistics system to operate in
conjunction with said plurality of system modules,
said plurality of modules including:
a purchasing module evaluating proposals for
respective shipments of goods and awarding contracts for the
shipments said one or more carriers;
a contract administration module maintaining
information relating to the status of proposals received and
contracts awarded by the purchasing module;
a scheduling module scheduling shipments
according to the awarded contracts;
a shipment management module tracking the
status of shipments awarded by the purchasing module and
scheduled by said scheduling module; and
a financial module authorizing payments
according to the status of shipments tracked by the shipment
management module,
wherein said information relating to the status of
proposals received and contracts awarded by the purchasing
module is made available to said scheduling module, said
shipment management module, and said financial module
utilizing said at least one computer, said at least one database
or said network.

Appeal 2013-005910
Application 11/005,678

3
Appellants appeal the following rejections:
1. Claims 1, 2, 8, 10–13, 24, and 25 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Lettich (US 2002/0049622 A1, pub. Apr. 25,
2002).
2. Claims 3, 5–7, 9, 15–20, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lettich, in view of Rojek (Karen Rojek, How
Baxter Improved Data Exports, Journal article, AS/400 Systems
Management, v26n5, 52-53, ISSN: 1086-881X, SSW (2009)).
3. Claim 4 is rejected under 35 U.S.C. §103(a) as being unpatentable over
Lettich, Rojek, and further in view of GoCargo’s (Internet Services:
Here’s a List, A Special Report: Logistics & Technology, Journal of
Commerce, Ed. Five Star, 12, UBM Global Trade, (2000),
Cargpsphere.com, www.cargosphere.com/).
4. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Lettich, in view of Challener (Cynthia Challener, Environmental
Software Incorporates Internet Capabilities, Chemical Market Reporter,
7, Reed Business Information, ISSN: 1092-0110 (2000)).
ISSUE
Did the Examiner err in rejecting the claims because Lettich was not
prior art under 35 U.S.C. §102(e) on the effective filing date of the
application?

ANALYSIS
Prior art rejections

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Application 11/005,678

4
The Appellants argue that Lettich is not prior art as of the effective
filing date of this application. We agree.
The instant application claims priority to the July 28, 2000, filing date
of its provisional application. Prior to this effective filing date of the instant
application, the Lettich Patent Application 2002/0049622 had not matured
into a patent. At the time of the effective filing date of the instant
application, Lettich did not qualify as prior art pursuant 35 U.S.C. §102(e) in
effect at the time. 35 U.S.C. §102(e) in effect at the time of the filing of the
application read as follows:
(e) the invention was described in . . .
(2) a patent granted on an application for patent by
another filed in the United States before the invention
thereof by the applicant for patent,

Section 102(e) was changed on November 29, 1999. Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948
sec. 4505). This change redefined prior art so that published patent
applications qualified as prior art but that change was not effective
until November 28, 2000 (S. 1948. Sec. 4508).
Therefore, at the time of the effective filing date of this
application, Lettich was not prior art.
In view of the foregoing, we will not sustain the Examiner’s
rejections of the claims over prior art because each of the rejections
relies on the teachings of Lettich.
Double patenting rejection
Appeal 2013-005910
Application 11/005,678

5
We will not sustain this rejection because we agree with the
Appellants that the Examiner’s rejection is fatally flawed because no
proper obviousness analysis has been made. Specifically, the
Examiner has failed to set forth a prima facie case of double
patenting. The Examiner has simply provided a chart with claims
from the instant application in one column and claims from Patent
No. 6,915, 268, along with the statement that the elimination of an
element or its function is deemed obvious in light of prior art
teachings. However, the Examiner has failed to provide any analysis
in support of this assertion. In a double patenting rejection, the
Examiner has the same burden to establish a prima facie case of
unpatentability as with any other rejection. The Examiner cannot
satisfy this burden by simply noting that the conditions for double
patenting are met without a comparative analysis of the claims on
appeal with the claims of the corresponding patent or application. In
this regard, the Examiner has not discussed what elements or
functions have been eliminated and/or identified the prior art
teachings that purportedly render their elimination obvious. Because
the Examiner has failed to provide us with an appropriate comparative
analysis of the claims on appeal with the claims of U.S. Patent
6,915,268, we will not sustain the Examiner’s double patenting
rejection.

DECISION
The decision of the Examiner is reversed.

Appeal 2013-005910
Application 11/005,678

6
REVERSED