Ex Parte Bresnan et al

Board of Patent Appeals and Interferences

Oct 9, 2003

09289901 (B.P.A.I. Oct. 9, 2003)

1 Claims 1 and 13 were amended subsequent to the final rejection.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK BRESNAN and JAMES M. VALOVICH
____________
Appeal No. 2003-1606
Application No. 09/289,901
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 6,
13 and 14, which are all of the claims pending in this application.1
We REVERSE.
Appeal No. 2003-1606
Application No. 09/289,901
Page 2
2 Issued October 5, 1999.
3 The position advanced by the examiner regarding this rejection is set forth in the answer (Paper
No. 13, mailed January 14, 2003). The appellants' argument against this rejection is set forth in the brief
(Paper No. 10, filed October 28, 2002) and reply brief (Paper No. 14, filed January 31, 2003).
BACKGROUND
The appellants' invention relates to a router instruction processor for use in a
digital document delivery system and method (specification, p. 1). A copy of the claims
under appeal is set forth in the appendix to the appellants' brief.
Claims 1 to 6, 13 and 14 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by U.S. Patent No. 5,963,9252 to Kolling et al. (Kolling).
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied patent to Kolling, and to the
respective positions articulated by the appellants and the examiner.3 As a consequence
of our review, we conclude that claims 1 to 6, 13 and 14 are not anticipated by Kolling
for the reason which follows.
To support a rejection of a claim under 35 U.S.C. § 102(e), it must be shown that
each element of the claim is found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v. Kimberly-Clark Corp., 713
Appeal No. 2003-1606
Application No. 09/289,901
Page 3
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984).
We have reviewed the disclosure of Kolling, especially those portions cited by the
examiner in the answer, but failed to find therein any teaching of either (1) a Send
Request object containing both a Recipient Preferences element and a Sender
Requirements element as set forth in claims 1 to 6, 13 and 14; or (2) any means or step
to override the Recipient Preferences element instructions to the extent that these
instructions are in conflict with the requirements of the Sender Requirements element
as set forth in claims 1 to 6, 13 and 14. Thus, we find ourselves in full agreement with
the appellants' argument that Kolling does not disclose all the claimed elements recited
in the independent claims on appeal (i.e., claims 1 and 13).
While there is much in common between the claimed subject matter and the
teachings of Kolling, as pointed out by the examiner, Kolling does not teach either of the
above-noted claimed elements. In that regard, the examiner has not identified, and we
have not found, any element in Kolling readable on the Send Request object containing
both a Recipient Preferences element and a Sender Requirements element as set forth
in claims 1 to 6, 13 and 14. While Kolling does permit the consumer financial institution
to present various methods of communications to the consumer and then permit the
Appeal No. 2003-1606
Application No. 09/289,901
Page 4
4 A "no" value in this field indicates that the biller does not wish to continue sending paper
statements to its customers, and desires to send electronic statements. A "yes" value in this field
indicates that the biller still sends paper statements to various of its customers.
consumer to choose one of those methods of communications, Kolling does not
disclose a Send Request object containing both a Recipient Preferences element and a
Sender Requirements element. Likewise, while Kolling does have a paper option field4
which indicates whether a biller still desires to send paper statements through the mail
to various of its customers, Kolling does not disclose that this paper option field
overrides the Recipient Preferences element instructions contained within the Send
Request object.
For the reasons set forth above, the claims 1 to 6, 13 and 14 are not anticipated
by Kolling. Accordingly, the decision of the examiner to reject claims 1 to 6, 13 and 14
under 35 U.S.C. § 102(e) is reversed.
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Application No. 09/289,901
Page 5
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 6, 13 and 14
under 35 U.S.C. § 102(e) is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2003-1606
Application No. 09/289,901
Page 6
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