Ex Parte Barrett et al

Patent Trial and Appeal Board

May 7, 2013

11613859 (P.T.A.B. May. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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6
Ex parte MELYSSA BARRETT AND ERIC CHRISTOPHER 7
LUNDQUIST 8
___________ 9
10
Appeal 2011-007474 11
Application 11/613,859 12
Technology Center 3600 13
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15
16
Before ANTON W. FETTING, MEREDITH C. PETRAVICK and 17
THOMAS F. SMEGAL, Administrative Patent Judges. 18
19
SMEGAL, Administrative Patent Judge. 20
21
22
DECISION ON APPEAL 23
24
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STATEMENT OF THE CASE1 1
Appellants seek our review under 35 U.S.C. § 134 of the final 2
rejection of claims 6-12, 14, 15 and 28-31, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 35 4
U.S.C. § 6(b). 5
6
We REVERSE. 7
8
THE INVENTION 9
Appellants invented a system and method directed to processing 10
proofs of claims in bankruptcy organizations. Spec. 2, paras.[0008-0010]. 11
Illustrative Claim 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 6, which is reproduced below: 14
6. A method comprising: 15
receiving requests from a plurality of creditors to file 16
proofs of claims for debts 17
owed by debtors to the creditors with a plurality of different 18
bankruptcy organizations, wherein each request includes a data 19
record for generating a proof of claim; 20
automatically generating the proofs of claims with the 21
received data records, 22
wherein the proofs of claims are suitable for filing with 23
different bankruptcy organizations; and 24
batch filing the proofs of claims with the different 25
bankruptcy organizations, wherein batch filing is performed by 26
a server computer. 27
28

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed October 25, 2010) and Reply Brief (“Reply Br.,” filed March 15,
2011) and the Examiner’s Answer (“Ans.,” mailed January 24, 2011).
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The Examiner relies upon the following prior art as evidence of 1
unpatentability: 2
3
Cook US 2002/0198824 A1 Dec. 26, 2002 4
Lewis US 6,513,019 B2 Jan. 28, 2003 5
Stevenson US 2003/0028477 A1 Feb. 6, 2003 6
7
Rejections on Appeal2 8
9
The Examiner (Ans. 3-4) rejects the claims on appeal as follows: 10
I. Claim 6 stand rejected under 35 U.S.C. §112, second 11
paragraph, as being indefinite for failing to particularly point 12
out and distinctly claim the subject matter which applicant 13
regards as the invention. 14
II. Claims 6-12, 14, 15, 30 and 31 stand rejected under 35 U. S. C. 15
§103(a) as being unpatentable over the combination of Cook 16
and Stevenson. 17
III. Claims 28 and 29 stand rejected under 35 U.S.C. §103(a) as 18
being unpatentable over the combination of Cook, Stevenson 19
and Lewis. 20

2 Appellants cancelled claim 1(along with claims 2, 13, 17 and 32) in an
Amendment after Final filed August 23, 2010. Even though the record
before us does not contain an Advisory Action, the rejection of claim 1
under 35 U.S.C. § 112 is not the subject of this Appeal; see 37 C.F.R.
§41.33(a). Further, the Examiner’s Answer appears to have changed the
rejection on Appeal from that presented in the final rejection where claims
6-12, 14, 15 and 29-31 were rejected over Cook and Stevenson and only
claim 28 was finally rejected over Cook, Stevenson and Lewis.

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ISSUES 1
The issues are whether the Examiner: 2
(1) failed to substantiate that claim 6 is indefinite for use of the 3
term “suitable for filing”; 4
(2) failed to substantiate that claims 6-12, 14, 15, 30 and 31 are 5
unpatentable over the combination of Cook and Stevenson; 6
(3) failed to substantiate that claims 28 and 29 are unpatentable 7
over the combination of Cook, Stevenson and Lewis. 8
9
FINDINGS OF FACT 10
We find that the findings of fact, which appear in the Analysis below, 11
are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 12
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 13
evidentiary standard for proceedings before the Office). 14
ANALYSIS 15
Indefiniteness Rejection 16
We are persuaded by Appellants’ arguments that the Examiner erred 17
in rejecting claim 6 under 35 U.S.C. §112, second paragraph, for failing to 18
particularly point out and distinctly claim the subject matter which applicant 19
regards as the invention. The Examiner contends that the term “suitable for 20
filing” in claim 6 is not clearly defined. The difficulty with the Examiner’s 21
position is that no claim construction analysis has been done. “That 22
determination [for definiteness] requires a construction of the claims 23
according to the familiar canons of claim construction. Only after a 24
thorough attempt to understand the meaning of a claim has failed to resolve 25
material ambiguities can one conclude that the claim is invalid for 26
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indefiniteness.” All Dental Prodx. LLC v. Advantage Dental Prods. Inc., 1
309 F.3d 774 (Fed. Cir. 2002). Part of that determination is to read the 2
claims in light of the Specification. “The requirement that the claims 3
“particularly point[] out and distinctly claim[]” the invention is met when a 4
person experienced in the field of the invention would understand the scope 5
of the subject matter that is patented when the claim is read in conjunction 6
with the rest of the specification.” Inc. v. nVIDIA Corp., 259 F.3d 1364 7
(Fed. Cir. 2001). Only then can a determination be made that the claimed 8
subject matter is so unclear as to rise to the level of indefiniteness as 9
proscribed by the 2nd paragraph of §112. Cf. Bancorp Serv. LLC v. Hartford 10
Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004). (“We have held that a claim is 11
not indefinite merely because it poses a difficult issue of claim construction; 12
if the claim is subject to construction, i.e., it is not insolubly ambiguous, it is 13
not invalid for indefiniteness. [ ] That is, if the meaning of the claim is 14
discernible, “even though the task may be formidable and the conclusion 15
may be one over which reasonable persons will disagree, we have held the 16
claim sufficiently clear to avoid invalidity on indefiniteness grounds.” 17
Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. 18
Cir. 2001).”). For this reason, we reverse the rejection of claim 6 under 35 19
U.S.C. §112. 20
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Obviousness Rejections 1
2
The rejection of claims 6-12, 14, 15, 30 and 31 under 35U.S.C. 3
§103(a) as being unpatentable over Cook and Stevenson 4
5
We are also persuaded by Appellants’ arguments that claim 6-12, 14, 6
15 and 28-31 are patentable over the combination of prior art references. In 7
particular, we agree with Appellants that “Cook has nothing to do with 8
receiving requests from a plurality of creditors to file, generate and send 9
bankruptcy documents to different bankruptcy organizations” (App.Br. 8). 10
While the Examiner asserts that Cook discloses that locally stored 11
information may be “transferred to server 101 in a “batch” operation at 12
periodic intervals”-referencing para. [0088] of Cook-that argument is only 13
asserted against dependent claim 11. 14
Without referring to any disclosure in Stevenson-teaching the claimed 15
step of “batch filing the proofs of claims”-the Examiner contends that “it 16
would be obvious to one of ordinary skill in the art at the time of the 17
invention to include generating and filing bankruptcy forms as taught by 18
Stevenson”(Ans.5). We agree with Appellants that the combination of Cook 19
and Stevenson does not describe a process of batch filing proofs of claims in 20
a pending bankruptcy (App. Br. 10-11). The Examiner provides no evidence 21
or argument to the contrary. 22
Accordingly, we reverse the Examiner’s rejection of claims 6-12, 14, 23
15 and 30-31under 35 U.S.C. §103 as being unpatentable over Cook and 24
Stevenson. 25
26
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The rejection of Claims 28 and 29 under 35 U.S.C. §103(a) as being 1
unpatentable over Cook and Stephenson, further in view of Lewis 2
3
This rejection is directed to claims 28 and 29, which depend either 4
directly or indirectly from claim 6. We reverse the rejection of claim 6 5
above, and for the same reasons we will not sustain the rejections of claims 6
28 and 29 over the cited prior art. Cf. In re Fritch, 972 F. 2d 1260, 1266 7
(Fed. Cir. 1992) (“Dependent claims are nonobvious if the independent 8
claims from which they depend are nonobvious”). 9
10
DECISION 11
The decision of the Examiner to reject claims 6-12, 14, 15 and 28-31 12
is reversed. 13
14
REVERSED 15
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17
mp 18