Ex Parte Braco

Board of Patent Appeals and Interferences

Sep 23, 2009

09852119 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD A. BRACO
___________

Appeal 2008-004362
Application 09/852,119
Technology Center 3600
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Decided: September 23, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Ronald A. Braco (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-26 and 31-34. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
The invention relates to electronic bill presentment and payment.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A switching system for electronic presentment
and payment of bills over a network, comprising:
a first consumer service provider device
which is in electronic communication with a first
consumer terminal;
a first biller service provider device which is
in electronic communication with a first biller
terminal;
a second consumer terminal;
a second biller terminal; and
a switching network which is in electronic
communication with said first consumer service
provider device using one of a first message

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jul. 16, 2007) and Reply Brief (“Reply Br.,” filed Dec. 18, 2007),
and the Examiner’s Answer (“Answer,” mailed Oct. 19, 2007).

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standard protocol and a second message standard
protocol, with said first bill service provider device
using one of said first and second message
standard protocols, with said second consumer
terminal using one of said first and second
message standard protocols, and with said second
biller terminal using one of said first and second
message standard protocols, routing presentment
information between said first consumer service
provider or said second consumer terminal and
said first bill service provider or said second biller
terminal, said switching network being a multi-
standard switch configured to facilitate-electronic
communication between said first consumer
service provider or said second consumer terminal
and said first bill service provider and said second
biller terminal irrespective of which message
standard protocol each of said first consumer
service provider, said first bill service provider,
said second consumer terminal, and said second
biller terminal use.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hilt
Kolling
US 5,465,206
US 5,963,925
Nov. 7, 1995
Oct. 5, 1999

The following rejections are before us for review:
1. Claims 1-21, 24-26, 31, 32, and 34 are rejected under 35 U.S.C.
§102(e) as being anticipated by Kolling.
2. Claims 22, 23, and 33 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kolling and Hilt.
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ISSUES
The first issue before us is, whether the Appellant has shown that the
Examiner erred in rejecting claims 1-21, 24-26, 31, 32, and 34 under 35
U.S.C. §102(e) as being anticipated by Kolling. Specifically, does Kolling
describe a multi standard switch structured to facilitate electronic
communication between consumer and biller terminals irrespective of which
message standard protocol each of the terminals use?
The second issue before us is whether the Appellant has shown that
the Examiner erred in rejecting claims 22, 23, and 33 under 35 U.S.C.
§103(a) as being unpatentable over Kolling and Hilt. Specifically, does
Kolling describe a switching network for routing a payment message for a
particular bill irrespective of whether the particular bill has been previously
presented to the consumer terminal?

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Kolling
1. Kolling describes an electronic statement presentment system.
Col. 1, ll. 12-15.
2. Kolling describes a central site switch 214. Col. 8, ll. 58-59.
3. Kolling is silent as to whether the central site switch is a multi-
standard switch.
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4. Kolling describes a consumer service provider. Col. 8, ll. 23-26.
5. Kolling is silent as to whether the consumer service provider 134
uses a standard message protocol.
6. Kolling describes a biller service provider 106. Col. 7, ll. 44-46.
7. Kolling is silent as to whether the biller service provider uses a
standard message protocol.
8. Kolling does not describe that different financial institutions run
different protocols on their networks.
9. As described, the central site switch of Kolling routes payment
information from a particular consumer to a particular biller. See
Col. 9, ll. 14-28.
10. Kolling description of the central site switch routing payment
information does not include a consideration of whether or not a
particular bill has been previously presented to a consumer
terminal when routing a consumer’s payment.
Hilt
11. The Examiner cites Hilt to teach the steps of claims 22, 23, and 33,
which relate to settlement of the bill. Answer 12-13.

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

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Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-21, 24-26, 31-32, and 34 under 35 U.S.C. §102(e)
as being anticipated by Kolling.
Claims 1-8
In response to the Appellant’s argument that Kolling does not describe
that the central switch is a multi-standard switch that facilitates
communication between consumer terminals and biller terminals using first
and second standard message protocols (App. Br. 10), the Examiner argues
that:
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[i]t is common sense to note that different financial
institutions run[s] different protocols on their
networks, and since Kolling can transmit data to
any number of statement generated workstations
each located in a different consumer's financial
institution (CFI), that in and of itself buttresses the
point that Kolling is a multi-standard switch which
can be configured to communicate using a
plurality of different message standard protocols.

Answer 14-15. In the Reply Brief, the Appellant further argues that the
Examiner’s reliance on common sense in the argument above is an error as
claim 1 was rejected as being anticipated by Kolling under §102 and not as
obvious under §103. See Reply Br. 7.
We agree with the Appellant. First, we note that claim 1 recites, “said
switching network being a multi-standard switch configured to facilitate
electronic communication . . . irrespective of which message standard
protocol each of said first consumer service provider, said first bill service
provider, said second consumer terminal, and said second biller terminal
use.” (Emphasis added.) This limitation is drawn to the structure of the
switching network as it is configures and not as it can be configured. The
claim 1 requires that the switching network is a multi-standard switch that is
structured to facilitate electronic communication irrespective of which of the
message standard protocols are used by each terminal.
We find that Kolling does not expressly nor inherently describe that
the central site switch 214 is a multi-standard switch having the structure
above. Kolling is silent as to whether central site switch 214 is a multi-
standard switch as claimed (FF 3) and whether the biller service providers
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and consumer service providers are using a first or second standard message
protocol (FF 5 and 7). Kolling does not expressly describe this limitation.
The Examiner seems to rely on the theory of inherency to find that the
central site switch 214 of Kolling is a multi-standard switch having the
structure recited in claim 1. Answer 14-15. Their rationale above is based
on the fact that “different financial institutions run[s] different protocols on
their networks.” Answer 14. However, this fact is not found in Kolling. FF
4-8. While we agree that it is possible that different financial institutions run
different protocols on their network, we do not find that the consumer
service provider and the biller service provider of Kolling are necessarily
running different protocols on their networks. Inherent anticipation requires
that the missing descriptive material is “necessarily present,” not merely
probably or possibly present, in the prior art. In re Robertson, 169 F.3d 743,
745, 49 USPQ2d 1949, 1950-51 (Fed.Cir.1999) (citing Continental Can Co.
USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749
(Fed.Cir.1991)). Trintec Industries, Inc V. Top-USA Corp., 295 F.3d 1292,
1295 (Fed. Cir. 2002). Further, while it is probable that the central site
switch of Kolling would be a multi-standard switch, we do not find that the
central site switch necessarily is a multi-standard switch. As noted by the
Appellant, the Examiner’s rationale seems more appropriate for a rejection
of claim 1 as obvious under §103. Reply Br. 7. If it is necessary to reach
beyond the boundaries of a single reference to provide missing disclosure of
the claimed invention, the proper ground is not § 102 anticipation, but § 103
obviousness. Scripps Clinic & Research Found. v. Genentech, Inc., 927
F.2d 1565, 1576-77 (Fed. Cir. 1991).
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Accordingly, we find that the Appellant has shown that the Examiner
erred in rejecting claim 1, and claims 2-8 dependent thereon, under 35
U.S.C. 102(e) as anticipated by Kolling.

Claims 9-16
Unlike claim 1, claim 9 does not recite that the switching network is a
multi-standard switching network; however, like claim 1, claim 9 recites that
the switching network has a structure that functions to exchange information
between consumer terminals and biller terminals, which are using first or
second message standard protocols, irrespective of which message protocol
each of the terminals use. We find that claim 9 requires that the switching
network has a structure that is able to exchange information between the
terminals irrespective of which message protocol is used by the terminals.
As, with claim 1, the Appellant again argues that Kolling does not
expressly or inherently describe this structure (App. Br. 14), and the
Examiner relies upon the same rationale as applied to claim 1 (Answer 18).
For the same reasons as above, we find that Kolling does not expressly or
inherently, describe a switching network that has the structure above. We
find that the Examiner has erred in rejecting claim 9, and claims 10-16
dependent thereon, under 35 U.S.C. 102(e) as anticipated by Kolling.

Claims 17-21 and 24
Like claim 1, claim 17 recites a switching network which is a multi-
standard switch which is communicating with biller terminals and consumer
terminals using first and second message standard protocols. As, with claim
1, the Appellant again argues that Kolling does not expressly or inherently
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describe this limitation (App. Br. 17-19), and the Examiner relies upon the
same rationale as applied to claim 1 (Answer 20). Accordingly, because we
found the Appellant’s argument persuasive as to the rejection of claim 1, we
find them equally persuasive as to the rejection of claim 17. We find that
the Appellant has shown that the Examiner erred in rejecting claim 17, and
claims 18-21 and 24 dependent thereon, under 35 U.S.C. 102(e) as
anticipated by Kolling.

Claim 25
Like claim 1, claim 17 recites a switching network which is a multi-
standard switch which is communicating with biller terminals and consumer
terminals using first and second message standard protocols. As, with claim
1, the Appellant again argues that Kolling does not expressly or inherently
describe this limitation (App. Br. 21-22), and the Examiner relies upon the
same rationale as applied to claim 1 (Answer 21). Accordingly, because we
found the Appellant’s argument persuasive as to the rejection of claim 1, we
find them equally persuasive as to the rejection of claim 25. We find that
the Appellant has shown that the Examiner erred in rejecting claim 25 under
35 U.S.C. 102(e) as anticipated by Kolling.

Claim 26
The Appellant argues that Kolling does not describe that the routing
of a payment message is “irrespective of whether the particular bill has been
previously presented to the consumer terminal” as recited in claim 26. App.
Br. 22 and Reply Br. 10. The Examiner disagrees and points to Kolling’s
description of routing a payment message (Answer 22), which makes no
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mention of considering whether a particular bill has been previously
presented to the consumer terminal when routing the payment message.
We agree with the Examiner. First, claim 26 recites a switching
network for routing payments irrespective of whether the particular bill has
been previously presented to the consumer terminal. This limitation is drawn
to the structure of the switching network. The switching network is required
to have a structure that routes payments irrespective of whether the
particular bill has been previously presented to the consumer terminal.
Kolling does describe that the central site switch is structured to the routing
of payments. FF 9. In this description, Kolling does not mention that the
central site switch takes in to account whether or not a particular bill has
been previously presented to a consumer terminal. FF 10. Accordingly, we
find that the Appellant has not shown that the Examiner erred in rejecting
claim 26 under 35 U.S.C. §102(b) as anticipated by Kolling.

The rejection of claims 22, 23, and 33 under 35 U.S.C. §103(a) as being
unpatentable over Kolling and Hilt
The Appellant argues against the rejection of claims 22, 23, and 33 for
the same reasons used to argue against the rejection of claims 1 and 17.
(App. Br. 24-25). The Examiner’s rejection relies upon Hilt to teach the
steps of claims 22, 23, and 33, which relate to settlement of the bill and not
to teach a multi-standard switch that communicates with consumer and biller
terminals using first and second standard message protocols. Answer 12-13.
Accordingly, because we the Appellant’s arguments persuasive as to the
rejections of claims 1 and 17, we find them equally persuasive as to error in
the rejection of dependent claims 22, 23, and 33. We find that the Appellant
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has shown that the Examiner erred in rejecting claims 22, 23, and 33 under
35 U.S.C. §103(a) as being unpatentable over Kolling and Hilt.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting:
claims 1-21, 24-25, 31, 32, and 34 under 35 U.S.C. §102(e) as
anticipated by Kolling.
claims 22, 23, and 33 under 35 U.S.C. §103(a) as unpatentable over
Kolling and Hilt.
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claim 26 under 35 U.S.C. § 102(e) as anticipated by
Kolling.
DECISION
The decision of the Examiner to reject claims 1-25 and 31-34 is
reversed and to reject claim 26 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)(1)(iv) (2007).

AFFIRMED-IN-PART

mev

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