Ex parte ePlus, Inc.
Appeal 2010007804; Reexam 90/008,104; Tech. Center 3900
May 18, 2011
The patent in reexamination was directed to an electronic procurement system. A representative independent claim on appeal read:
26. A method comprising the steps of:
maintaining at least two product catalogs on a database containing data relating to items associated with the respective sources;
selecting the product catalogs to search;
searching for matching items among the selected product catalogs;
building a requisition using data relating to selected matching items and their associated source(s);
processing the requisition to generate one or more purchase orders for the selected matching items; and
determining whether a selected matching item is available in inventory.
In this third-party reexamination, the Examiner applied several anticipation rejections using various software product manuals. In one of the anticipation rejections (the "P.O. Writer Manual"), the Examiner read the "product catalogs" on a purchase order history through which the user could re-order a previously ordered item.
On appeal, the Patentee argued that the P.O. Writer order history did not include a catalog of data associating items with multiple sources as required by the claim. Specifically, the Applicant argued that the order history required the user to select an item and then enter a vendor number in order to re-order the item. "As any vendor may be entered regardless of whether there is any information associating Item A1000 to that vendor, it should be clear that no catalog is used or maintained in order to create a purchase order is this manner."
The Patentee further argued that P.O. Writer did not disclose selecting multiple product catalogs to search as claimed. The Examiner relied on a description of P.O. Writer's purchase order history feature as allowing the user to first select an item from "the Best Buy Catalog, as well as the Bayless catalog, or any other vendor you would like to select" and then allowing the user to by the item from "Best Buy, Bayless, or any other vendor you would like to select." However, according to the Patentee, this disclosed selecting a vendor rather than a product catalog.
The Board affirmed the P.O. Writer anticipation rejection. The Board first explained that "catalog" was broad enough to read on the disclosed purchase order history:
As discussed supra, we find that a “catalog” is defined as “an organized collection of items and associated information.” The purchase history disclosed in P.O. Writer Manual (FF 10) provides for items and associated information pertaining to different vendors. We do not find that the selection of previously ordered items from previously indicated vendors to be different from selecting catalogs and searching for items.While it is true that such a process could not be performed for items never before purchased, we find that the process steps recited in claim 26 read upon such a process as explicitly disclosed in P.O. Writer Manual.The Board specifically adopted the Examiner's findings as to selecting multiple catalogs for search. But the Board went further to find that the limitation "selecting the product catalogs to search" did not require the selection of multiple catalogs:
While we would agree that the “maintaining” step of claim 26 requires multiple catalogs to be maintained, we do not find that the “selecting” step requires the selection of multiple catalogs. As discussed above, P.O. Writer Manual details that multiple catalogs can be maintained in the database of the system (FF 11). The system of P.O. Writer Manual could certainly infringe claim 26 if only one catalog was selected because the “selecting” step allows for multiple or a single catalog to be selected.
The Board also affirmed all the other prior art rejections.
My two cents: I was astounded by the Board's statement that the limitation "selecting the product catalogs to search" did not require selection of multiple catalogs. After all, the word in question – catalogS – is plural. Furthermore, the claim also recites "maintaining at least two catalogs," so the rule of antecedent basis says that the thing being selected is the same thing being maintained, and the thing being maintained is absolutely plural ("at least two").
Clearly the Board is interpreting the claim language "selecting the product catalogs to search" to mean "selecting which of the catalogs to search." And in plain English, that's how a reader would usually interpret the claim language in question. But claims aren't plain English. They follow all sorts of special rules. Which lead me to the conclusion that the claim requires selecting multiple catalogs.
After I thought about it more, I decided that the Board's interpretation is indeed a possible interpretation. Maybe reasonable minds can differ on which one is correct. But I'm still astounded that the Board didn't give any explanation at all how they arrived at this interpretation. Instead, the Board merely concluded that "we do not find that the 'selecting' step requires the selection of multiple catalogs." This interpretation is far enough from the plain language of the claim that some analysis and explanation is needed.
The patentee filed a Request for rehearing with the Board but did not argue this claim construction issue. Instead, the Request argued a different point made in the Appeal Brief, that the references were not prior art under the "public use" prong of § 102(b). The Request was filed in July, but as of November 1, the Board hasn't yet issued a rehearing decision.