Ex Parte Smith et al

Patent Trial and Appeal Board

Nov 16, 2012

10899656 (P.T.A.B. Nov. 16, 2012)

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.
10/899,656 07/26/2004 Matthew J. Smith ICIX.P256 6428
25670 7590 11/19/2012
WILLIAM L. PARADICE, III
550 Winchester Boulevard
SUITE 605
SAN JOSE, CA 95128
EXAMINER
ANDERSON, FOLASHADE
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
11/19/2012 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 and
TIM MARCHINGTON1
____________________

Appeal 2011-005200
Application 10/899,656
Technology Center 3600
____________________
Before, JOSEPH A FISCHETTI, KEVIN F. TURNER, and
MICHAEL W. KIM, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-10, 13-25, 50-52, and 56-65. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 iCiX Pty., Ltd. is the real party in interest.
2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 17, 2010) and Reply Brief (“Reply Br.,” filed January
27, 2011), and the Examiner’s Answer (“Ans.,” mailed January 20, 2011).
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Application No. 10/899,656

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THE INVENTION
Appellants’ disclosure relates to a method and system for sharing
compliance information between buyers and suppliers regarding products
the buyers desire to obtain. (¶ [0002].)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method performed by a computer system for managing
compliance information between a buyer and a number of suppliers,
comprising:
storing, in a database, (a) supplier guidelines, provided by the buyer,
corresponding to a product the buyer desires to purchase, (b) a list of
approved suppliers, and (c) compliance information indicating whether one
or more of the approved suppliers is in compliance with the supplier
guidelines;
providing the approved suppliers with access, over a computer
network, to the supplier guidelines;
identifying one or more patterns of non-compliance for the number of
suppliers using the compliance information, wherein at least one pattern
indicates a seasonal pattern of non-compliance for a particular approved
supplier;
selectively updating the list of approved suppliers in response to a
pattern identified within the compliance information; and
managing a list of corrective action requests by (i) enabling the buyer
to issue corrective action requests to one or more suppliers in response to
receiving non-compliant products from the one or more suppliers, (ii)
enabling each of the one or more suppliers to individually respond to one or
more respective corrective action requests, and (iii) upon receiving a
response to a first corrective action request from a first supplier of the one or
more suppliers, storing the response and enabling the buyer to either further
issue a new corrective action request to the first supplier or remove the first
supplier from the list of approved suppliers.
(App. Br., Claims Appendix 20.)
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Application No. 10/899,656

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PRIOR ART REJECTION
The prior art references relied upon by the Examiner in rejecting the
claims are:
Singh 7,080,026 B2 Jul. 18, 2006
Maresca 7,353,497 B2 Apr. 1, 2008
Steele 2002/0184524 A1 Dec. 5, 2002
Cullen, III 2003/0212604 A1 Nov. 13, 2003

The Examiner rejected claims 1-10, 13-25, 50-52, 54 and 56-65 under 35
U.S.C. § 103(a) as unpatentable over Cullen, Maresca, Steele, and Singh.3

ISSUE4
Does the combination of Cullen, Maresca, Steele, and Singh teach or
suggest the steps of “identifying one or more patterns of non-compliance for
the number of suppliers using the compliance information, wherein at least
one pattern indicates a seasonal pattern of non-compliance for a particular
approved supplier” and “selectively updating the list of approved suppliers
in response to a pattern identified within the compliance information,” as

3 Appellants’ Appeal Brief indicates claim 54 as being cancelled. (See App.
Br. 5.) However, both the Examiner’s Answer and Appellants’ Appeal Brief
and Reply Brief include claim 54 in their ground of rejection on appeal.
(See Ans. 5; App. Br. 10; Reply Br. 2; See also App. Br. 19.) A review of
the last filed amendments to the claims also indicates claim 54 as pending,
as does the Final Rejection. (See May 26, 2010 Amendment and Response;
July 21, 2010 Final Rejection at 2). Therefore, for purposes of this appeal,
we will address any arguments Appellants may make for claim 54
accordingly.
4 We have considered in this decision only those arguments that Appellants
actually raised in the Briefs. Arguments which Appellants could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Application No. 10/899,656

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generally recited by independent claims 1 and 50, such that it renders
obvious the subject matter of claims 1-10, 13-25, 50-52, 54 and 56-65 under
35 U.S.C. § 103(a)?

FINDINGS OF FACT
1. Appellants’ Specification describes “non-compliance” as a
“defective or otherwise non-compliant product [delivered] to the buyer . . . .”
(¶ [0020].)
2. Cullen is directed to a system and method for pre-qualifying
vendors for buyers which use vendor criteria information associated with the
buyers and vendor qualification information associated with the vendors.
(Abs; ¶ [0038].)
3. Cullen describes that its vendor maintenance tool is “capable of
selectively removing vendors from one or more lists of pre-qualified vendors
on a per industry or per buyer basis when updated vendor qualification
information is not received.” (¶ [0009].)
4. Cullen describes that “statistical data can be used to qualify vendors
for industries, to compare a vendor to industry standards or to use as a
benchmarking tool by a buyer or a vendor when entering data into a buyer
record 250 or vendor record 230, respectively.” (¶¶ [0008]; [0136].)
5. Cullen describes a qualification tool which compares data within
various fields to ascertain whether the vendor complies with buyer and/or
industry requirements. This compliance information is used to “qualify the
vendor for the particular buyer or industry and update the associated lists
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(vendor, buyer and/or industry) accordingly.” (¶ [0133] - [0134]; See Fig.
17.)
6. Maresca is directed to a method and system for facilitating supplier
qualification and quality management. (Abs.)
7. Steele is directed to a method and system for identifying and
resolving manufacturing conflicts across an extended enterprise in a network
environment. (Abs.)
8. Steele describes a problem reporting and resolution tool which
allows internal and remote users of an organization, as well as its external
trading partners to submit a problem report. (¶¶ [0028]; [0039]; See also
Fig. 2.)
9. Steele further describes that “[w]hen creating a new problem report,
the user at organization 102 enters a brief description of the problem which
appears in the ‘Brief Description’ 212 field . . . the ‘Full Problem
Description’ 218 field is used for providing detailed specifics regarding the
problem for use by other division users and authorized personnel.”
(¶ [0029].)
10. Steele states:
[a]nother way a problem can be discovered is through the
organization’s customer base at step 620. A customer
detects a problem affecting a purchased or leased product
and accesses organization 102’s web site. The customer
selects the help desk option at step 622 and reports the
problem via the web. A service department or technical
representative of organization 102 associated with the
help desk receives the notice, and, if a pattern of similar
defects have been reported, schedules a stress test or
similar testing at step 605 in order to determine the
nature of the defect.
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(¶ [0039].)
11. Singh is directed to a method and system for supply chain demand
forecasting that enables multiple-scenario comparisons and analyses by
letting users create forecasts from multiple history streams. (Abs.)
12. Singh describes that these streams use historical information such
as shipments data, point-of-sale data, customer order data, and return data to
provide a demand forecast. (Col. 4, ll. 6-10.)
13. Singh describes that its demand forecast algorithms “take into
account level, trend, seasonal effects, and casual factors.” (Col. 9, ll. 47-50;
See also col. 10, l. 55-59 – col. 11, l. 22.)

ANALYSIS
Claims 1-10, 13-25, 50-52, 54 and 56-65 rejected under 35 U.S.C. § 103(a)
as unpatentable over Cullen, Maresca, Steele, and Singh.
Independent claims 1 and 50
Appellants generally argue that the combination of Cullen, Maresca,
Steele, and Singh fails to teach or suggest the step of “identifying one or
more patterns of non-compliance for the number of suppliers using the
compliance information, wherein at least one pattern indicates a seasonal
pattern of non-compliance for a particular approved supplier,” as recited by
independent claims 1 and 50. (App. Br. 11; Reply Br. 2-3.) Specifically,
Appellants assert that “each of Cullen, Maresca/Steele, and Singh lack any
teaching or suggestion of identifying one or more patterns of non-
compliance as claimed.” (App. Br. 11.) In particular, Appellants contend
that the seasonal demand forecasting taught by Singh “has nothing to do
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Application No. 10/899,656

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with identifying seasonal patterns of non-compliance for a number of
suppliers using compliance information indicating whether one or more
approved suppliers is in compliance with supplier guidelines.” (App. Br. 17;
Reply Br. 3.)
We are not persuaded by Appellants’ argument that each of Cullen,
Maresca, Steele, and Singh fails to teach or suggest the step of identifying
one or more patterns of non-compliance, as the argument attacks the
references separately, even though the rejection is based on the combined
teachings of the references. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Contrary to Appellants’ assertion, the
Examiner relies on the combined teachings of Cullen, Maresca, Steele, and
Singh to address the step of “identifying one or more patterns of non-
compliance for the number of suppliers using the compliance information,
wherein at least one pattern indicates a seasonal pattern of non-compliance
for a particular approved supplier,” as generally recited by independent
claims 1 and 50. (Ans. 5-8.)
Specifically, the Examiner relies on Cullen to disclose compliance
information indicating whether a supplier is in compliance with supplier
guidelines. (Ans. 5; See also Reply Br. 6-7.) Cullen is directed to a system
for pre-qualifying vendors for buyers using vendor criteria information
associated with buyers and vendor qualification information associated with
vendors. (FF 2.) Cullen teaches that its system maintains vendor
compliance information and uses a qualification tool to compare whether a
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vendor is in compliance with the supplier guidelines. (FF 3, 4, 5.)
Additionally, Cullen describes that this compliance information is used to
update a list of qualified vendors, which we find teaches identifying non-
compliance using the compliance information. (FF 4, 5.)
While Cullen does not explicitly disclose the step of identifying one
or more patterns of non-compliance, the Examiner relies on Steele for such a
teaching. (Ans. 6.) In particular, the Examiner finds Steele’s problem
reporting and resolution tool addresses this limitation since Steele’s system
responds to problem reports reported by either an organization or its
customers, if a pattern of similar defects have been reported. (FF 8, 10.)
While Appellants argue that the type of problems reported in Steele have
nothing to do with compliance to supplier guidelines, provided by the buyer
(App. Br. 14-15), the Examiner relies on Cullen to disclose compliance to
supplier guidelines provided by the buyer. (See Ans. 5.)
Even so, we find the step of “identifying one or more patterns of non-
compliance,” as presently claimed, reads on the problems reported by
customers in Steele under the broadest reasonable interpretation. This
interpretation is commensurate with Appellants’ Specification which
describes “non-compliance” as a “defective or otherwise non-compliant
product.” (FF 1.) Thus, one of ordinary skill in the art would have
appreciated that the problems reported by customers in Steele are related to a
defective or otherwise non-compliant product.
To address the remaining aspect of the limitation “wherein at least one
pattern indicates a seasonal pattern of non-compliance,” the Examiner turns
to the supply chain demand forecasting system of Singh. (FF 11.) Singh
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describes utilizing historical information such as shipments data, point-of-
sale data, customer order data, and return data to provide a demand forecast.
(FF 11, 12.) Specifically, Singh describes that it system uses algorithms,
which in addition to historical information, creates a demand forecast which
accounts for different trends and seasonal effects. (FF 13.)
While Appellants contend that seasonal demand forecasting has
nothing to do with identifying seasonal patterns of non-compliance, as
presently claimed (App. Br. 13; Reply Br. 3), Appellants’ contention is
unpersuasive as it fails to appreciate the combined teachings of Cullen,
Maresca, Steele, and Singh. Contrary to Appellants’ position, the Examiner
relies on Singh to the extent that it teaches identifying seasonal patterns. (FF
13.) Even so, Singh takes into account historical return data to provide its
supply chain demand forecast (FF 11, 12), which one of ordinary skill in the
art would appreciate may be indicative of a product being defective or
otherwise non-compliant. (See FF 1.) Therefore, we agree with the
Examiner that it would be obvious to apply the seasonal pattern algorithms
in Singh to the type of problem report data taught by Steele in order to
identify a seasonal pattern.
Accordingly, we find the combination of Cullen, Maresca, Steele, and
Singh renders obvious the step of “identifying one or more patterns of non-
compliance for the number of suppliers using the compliance information,
wherein at least one pattern indicates a seasonal pattern of non-compliance
for a particular approved supplier,” as recited by independent claims 1 and
50.
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Equally unpersuasive is Appellants’ argument that the combination of
Cullen, Maresca, Steele, and Singh fails to teach or suggest the step of
“selectively updating the list of approved suppliers in response to a pattern
identified within the compliance information” (App. Br. 17; Reply Br. 7), as
it impermissibly argues the references separately, rather than the
combination proposed by the Examiner. See In re Merck & Co. Inc., 800
F.2d at 1097. As discussed supra, Cullen uses compliance information to
update a list of qualified vendors based upon their compliance with buyer
and/or industry requirements. (FF 5.) Cullen describes that its vendor
maintenance tool is capable of selectively removing vendors from one or
more lists on instances of non-compliance. (FF 3.) While we agree with
Appellants that Cullen does not disclose selecting updating the list in
response to a pattern identified within the compliance information (App. Br.
17), the Examiner does not purport it to, but rather relies on the combination
discussed supra. Therefore, Appellants’ argument is not persuasive.
Accordingly, we sustain the Examiner’s rejection of claims 1 and 50
under 35 U.S.C. § 103(a) as unpatentable over Cullen, Maresca, Steele, and
Singh.

Dependent claims 2-10, 13-25, 51, 52, 54, and 56-65
Appellants do not separately argue claims 2-10, 13-25, 51, 52, 54, and
56-65, which depend from independent claims 1 and 50, respectively, and so
we sustain the rejection of these claims under 35 U.S.C. §103(a) as
unpatentable over Cullen, Maresca, Steele, and Singh for the same reasons
we found as to claims 1 and 50 supra.
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Application No. 10/899,656

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CONCLUSION
We conclude that the combination of Cullen, Maresca, Steele, and
Singh teaches or suggests the steps of “identifying one or more patterns of
non-compliance for the number of suppliers using the compliance
information, wherein at least one pattern indicates a seasonal pattern of non-
compliance for a particular approved supplier” and “selectively updating the
list of approved suppliers in response to a pattern identified within the
compliance information,” as generally recited by independent claims 1 and
50, and as such, renders obvious the subject matter of claims 1-10, 13-25,
50-52, 54 and 56-65 under 35 U.S.C. § 103(a).

DECISION
We affirm the rejection of claims 1-10, 13-25, 50-52, 54 and 56-65.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED
ack