Ex Parte Amys et al

Patent Trial and Appeal Board

Sep 1, 2016

10666728 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/666,728 09/19/2003 Jennifer Amys
20311 7590 09/06/2016
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30UPN-1001-U 6050
EXAMINER
ADAMS, CHARLES D
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
09/06/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER AMYS and CHUNG CROWLEY
Appeal2015-002752
Application 10/666, 728
Technology Center 2100
Before DEBRA K. STEPHENS, KEVIN C. TROCK, and
JESSICA C. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final rejection of claim 1, which is the only claim pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is UpNet Technologies,
Inc. (App. Br. 4.)
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Application 10/666,728
EXEMPLARY CLAIM
Claim 1, the only pending claim, is reproduced below:
1. A method comprising:
receiving, from two or more different software systems,
copies of electronic data relating to a transaction involving
documentation communicated in an electronic form, the received
documentation including remittance advice advising of a
completed payment processing activity, wherein:
the received electronic data relating to the
transaction is produced by the two-or more different
software systems from which the electronic data is
received; and
the copies of the electronic data received in a system
performing the method which is not one of the systems
from which the data is received and is received only for
purpose of maintaining a central archive repository of e-
commerce activity documentation;
processing copies of the electronic data to identify
electronic documentation items by document type according to
one or more transaction types identified in a transaction
specification database and further processing copies of the
electronic data to identify at least one key value associated with
an electronic documentation item received from one of the at
least two different software systems, wherein the at least one key
value includes a key value that identifies the transaction in the
software system the electronic documentation item is received
from;
using the at least one key value to look up, in a life cycle
index table that contains key values of the processed transactions,
a unique transaction identifier associated with the transaction on
a system performing the method, wherein within the lifecycle
index table the transaction includes one unique transaction
identifier and two or more associated key values, wherein each
key value is a key value used to identify the transaction within
one of the two or more different software systems from which
the electronic data relating to the transaction was received;
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indexing the identified documentation items in the life
cycle index table according to the at least one key value and
unique transaction identifier;
archiving the documentation items in an archive database
stored within a data storage system or device, the archiving
including storing the documentation items within the archive
database on the data storage system or device associated with
their respective unique transaction identifiers;
logging, in a log detail database, one or more of a date and
time associated with at least some of the documentation items to
provide a chronological order to transactions;
wherein all documentation items relating to a transaction
are retrievable using one of the key values of the two or more
different software system from which the electronic data relating
to the transaction was received;
receiving an input key value in a retrieval user interface to
retrieve all documents related to a transaction, of the received
input key value;
based on the received input key value, querying the life
cycle index table to obtain a unique transaction identifier
associated with the received input key value;
retrieving all copies of archived documentation items from
the archive database based on the obtained unique transaction
identifier; and
presenting a view of the retrieved copies of archived
documentation items in chronological order according to a time
stamp associated with each respective archived documentation
item.
REJECTION
The Examiner made the following rejection:
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Aber (US 7,283,976 B2; issued Oct. 16, 2007), Carr (US
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2003/0055747 Al; published Mar. 20, 2003), and Alnwick (US
2002/0007318 Al; published Jan. 17, 2002). (Non-Final Act. 2-7.)
ISSUE
Did the Examiner improperly combine Aber, Carr, and Alnwick?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the Non-Final Action (Non-Final Act. 3-7) from which this
appeal is taken and the findings and reasons set forth in the Examiner's
Answer in response to Appellants' Appeal Brief (Ans. 3-23). We highlight
and address specific findings and arguments for emphasis as follows.
Analogous Art
Appellants argue the Examiner improperly combined Aber, Carr, and
Alnwick because Aber, Carr, and Alnwick are non-analogous art. (App. Br.
10-17; Reply Br. 2-12.) Specifically, Appellants argue "the field of
endeavor of the currently-claimed subject matter is not the same as any of
the cited references" (App. Br. 11-12) because "Appellants' [field of]
endeavor is providing a complete picture of electronic transactions between
two or more enterprises" (App. Br. 11 ), whereas Aber' s field of endeavor "is
capturing invoices and rendering them viewable on the Internet" (App. Br.
12; Reply Br. 4), Carr's field of endeavor "is a single method and system
that is usable in multiple marketplaces while accepting non-unique database
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fields" (App. Br. 13), and Alnwick's field of endeavor "is providing a
platform on which a party can search the inventory of multiple third parties"
(App. Br. 14).
We are not persuaded. A reference qualifies as "analogous art," if it
satisfies either of the two following conditions: (1) the reference is from the
same field of endeavor, regardless of the problem addressed; or (2) if the
reference is not within the field of the inventor's endeavor, the reference still
is reasonably pertinent to the particular problem with which the inventor is
involved. Innovention Toys, LLCv. MGA Entm't, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011).
The Examiner finds, and we agree, Aber teaches a database system for
"processing and managing invoices" which are "related to the procurement
of goods and services between multiple vendors and the system." (Ans. 5
(citing Aber 2:45-55, 3:32--40, 3:50-52).) The Examiner further finds, and
we agree, Carr "uses a 'unique identifier' in the system to keep track of
separate records in a database system." (Ans. 6; Non-Final Act. 6 (citing
Carr i-fi-f 129, 131, 204, Fig. 8).) The Examiner additionally finds, and we
agree, Alnwick "retriev[ es] an invoice or purchase order from a database and
display[s] it to a user." (Ans. 7 (citing Alnwick i-fi-187-88).)
We are not persuaded that Aber, Carr, and Alnwick are non-analogous
art. The claimed subject matter's field of endeavor proffered by Appellants,
"providing a complete picture of electronic transactions between two or
more enterprises," is unduly narrow. (App. Br. 11, see Reply Br. 4.)
Contrary to Appellants' argument that the Examiner ignores the
"background of the disclosure, the embodiments, the structure, and the
function of the claimed invention" (Reply Br. 8), the Examiner finds-in
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Appellants' Specification, under the heading "Technical Field of
Invention"-that the claimed subject matter is directed to "data processing,
and more particularly to electronic transactions carried out between one or
more entities" (Ans. 4 (citing Spec. 1)). We agree with the Examiner's
finding that the claimed subject matter's field of endeavor is "data
processing, and more particularly to electronic transactions carried out
between one or more entities." (Id.)
Further, Appellants' arguments, which only discuss discrete portions
of the prior art references (see Reply Br. 4--5; see also App. Br. 12-14) or
assigned classifications (Reply Br. 5-6), inappropriately limit the prior art
references' field of endeavor by ignoring the entirety of the prior art
references' disclosures. Aber, Carr, and Alnwick, when considered in their
entirety, are related to data processing and electronic transactions between
entities. Indeed, Aber's summary teaches a "system and method for
processing invoices," i.e., a data processing system. (Aber 2:45-51.) Carr's
summary teaches "a single repository, such as a database or database farm,
is used with middle tier software on servers on a network to provide
information to users," i.e., a data processing system. (Carr i-f 11, Abstract.)
Alnwick's summary teaches "a system of processing requests generated by a
particular customer through the home page on the website operated by a
wholesaler of items such as components, as well as the databases included or
associated therewith," i.e., a data processing system which provides
transactions between entities. (Alnwick i-f 19; see also Alnwick i-fi-186-88.)
Because Aber, Carr, and Alnwick are all directed to data processing, and are
further directed to electronic transactions carried out between one or more
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entities, we determine Aber, Carr, and Alnwick are in the same field of
endeavor as Appellants' claimed subject matter.
We need not reach the merits of Appellants' arguments that Aber,
Carr, and Alnwick are non-analogous art on the basis that those references
are not reasonably pertinent to the particular problem with which the
inventor is involved (App. Br. 15-17; Reply Br. 9-12) because we agree
with the Examiner that Aber, Carr, and Alnwick are in the same field of
endeavor as Appellants' claimed subject matter, and thus qualify as
analogous art. Accordingly, we are not persuaded the Examiner erred in
finding Aber, Carr, and Alnwick are analogous art.
Articulated Reasoning for the Combination
Appellants argue the Examiner improperly combined Aber, Carr, and
Alnwick using improper rationales. (App. Br. 17-26; Reply Br. 12-15.)
Specifically, Appellants argue that "the Examiner has improperly
articulated---or not articulated at all-the required findings for a proper
obviousness rejection based on an 'obvious to try' rationale" in combining
Aber with Carr and in combining Aber with Alnwick. (App. Br. 18
(citations omitted), 21-22.) Appellants further argue the Examiner's
rationales are "circular." (Id. at 26).
We are not persuaded the Examiner improperly combined Aber and
Carr. The Examiner finds, and we agree, Aber teaches a database system
which receives and stores electronic invoices from multiple sources for user
retrieval. (Ans. 5 (citing Aber 2:45-55, 3:32--40, 3:50-52), 14 (citing Aber
6:35--48, Figs. 10-11); Non-Final Act. 6.) The Examiner further finds, and
we agree, Carr teaches linking related database records using a universal
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identifier. (Ans. 14 (citing Carril 131 ); Non-Final Act. 6 (citing Carr
i-fi-f 129, 131, 204, Fig. 8).) The Examiner concludes it would have been
obvious to combine Aber and Carr in order to "ensure that any updated
invoices of [Aber] are linked to one another." (Non-Final Act. 6-7.)
Appellants' argument that the Examiner's rationales are improper
(App. Br. 17-26; Reply Br. 12-15) is not persuasive. Appellants' arguments
directed to "obvious to try" rationales (App. Br. 17-25; Reply Br. 14--15),
do not persuade us that the Examiner's combination is improper because the
Examiner has provided articulated reasoning with some rational
underpinning to support the combination of Aber and Carr-namely, that it
is desirable "that any updated invoices that Aber et al. receives are linked to
one another" (Non-Final Act. 6-7) because there is a "benefit [to] ensuring
that appropriate records are linked together" (Ans. 22), and Appellants have
not proffered sufficient evidence or argument to persuade us of error.
Additionally, Appellants' arguments that the Examiner's rationale in
combining Aber and Alnwick is improper (App. Br. 21-22) are not
persuasive. The Examiner finds, and we agree, Aber retrieves stored
electronic invoices in response to a user query. (Ans. 13 (citing Aber 6:35-
48, Figs. 10-11.) The Examiner further finds, and we agree, Alnwick
teaches a manner of retrieving and displaying invoices stored in a database.
(Non-Final Act. 7 (citing Alnwick i-fi-187-88); Ans. 17, 21.) The Examiner
concludes it would have been obvious to combine Aber and Alnwick in
order to provide a user interface which displays query results in
chronological order. (Non-Final Act. 7; Ans. 17, 22.) Appellants'
arguments directed to "obvious to try" rationales (App. Br. 17-25; Reply Br.
14--15), do not persuade us that the Examiner's combination is improper
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because the Examiner has provided articulated reasoning with some rational
underpinning to support the obviousness conclusion-namely, that it is
desirable to provide chronologically ordered "results to a query" in order to
"provid[e] a commonly known way of reporting results." (Ans. 17, 22; Non-
Final Act. 7), and Appellants have not proffered sufficient evidence or
argument to persuade us of error.
Accordingly, we are not persuaded the Examiner relied on improper
rationales to combine Aber and Carr and Aber and Alnwick. 2
Reasonable Expectation of Success
Appellants argue the Examiner improperly combined Aber and Carr
because "there is no evidence that there would have been a reasonable
expectation of success" in combining Aber and Carr. (App. Br. 25-27;
Reply Br. 15-16.) Specifically, Appellants argue that "there is no evidence
that there would have been a reasonable expectation of success" that
incorporating Carr's universal identifier into Aber's system would "ensure
that any updated invoices of [Aber] are linked to one another." (App. Br.
26-27 (citing Non-Final Act. 7) (emphasis omitted); Reply Br. 15-16.)
We are not persuaded. We agree with the Examiner's finding that
Aber teaches "tracking invoices in a database." (Ans. 11 (citing Aber 2:45-
55), 23 (citing Aber 5:66-6:3).) We further agree with the Examiner's
2 Appellants also argue the Examiner "has made at least two procedural
errors" by "presentin[ing] a rationale for modifying" the references without
"[a]scertain[ing] the differences between the claimed invention and the prior
art" or "considering the disclosure" of the prior art. (App. Br. 19-20). We
disagree because the Examiner has identified Aber's teachings and the
differences when Aber and claim 1; the Examiner then combined Aber with
the teachings of Carr and Alnwick (Ans. 12-13; Non-Final Act. 3-7).
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finding that Carr teaches "managing records in a database" (Ans. 11 (citing
Carr i-fi-f 129--130) and linking related database records together using a
universal identifier (Ans. 23 (citing Carr i-f 131) ).
Appellants' arguments, that the Examiner's findings lack evidence
(App. Br. 26-27; Reply Br. 15-16), are unpersuasive. The Examiner finds
that both references teach records stored in a database. (Ans. 11 (citing Aber
2:45-55; Carr i-fi-f 129--130), 23 (citing Aber 5:66-6:3).) Furthermore, the
Examiner finds Carr teaches successfully using a universal identifier to link
related database records. (Ans. 23 (citing Carr i-f 131 ). ) Because the
Examiner's combination applies the database management technique taught
by Carr to Aber' s database, we agree with the Examiner that linking related
invoices, i.e., records, in Aber's database using a universal identifier is
"within the skill of 'a person of ordinary creativity"' (Ans. 15; see Ans. 23)
and, as such, there is a reasonable expectation of success for the
combination. Accordingly, we are not persuaded that the Examiner failed to
show a reasonable expectation of success for the combination of Aber and
Carr.
DECISION
For the above reasons, the Examiner's rejection of claim 1 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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