Ex Parte Davis et al

Patent Trial and Appeal Board

Dec 30, 2016

13593061 (P.T.A.B. Dec. 30, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/593,061 08/23/2012 Steven DAVIS 12490003CA 6581
30743 7590 12/30/2016
WHITHAM, CURTIS & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
DASS, HARISH T
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
12/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN DAVIS and STEPHEN A. SCHUTZE
Appeal 2014-003607
Application 13/593,0611
Technology Center 3600
Before, JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method for remote deposit of a check, comprising:
1 Appellants identify EFT Network, Inc. as the real party in interest. Appeal
Br. 2.
Appeal 2014-003061
Application 13/593,061
receiving at least one check into an apparatus
followed by receiving the check-containing apparatus
into a fax machine located at a first location which is a
front-end;
at a second location which is a back-end, receiving
facsimile data corresponding to a facsimile of at least one
of a plurality of checks;
generating digitized images of the checks as a
function of the facsimile data;
obtaining check data from each of the digitized
images; and
processing the check data according to a check
processing procedure to settle transactions referenced by
each of the checks,
wherein a recipient electronic device or a computer
performs the data-receiving, image-generating and
image-processing.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Wolstenholme US 5,297,256 Mar. 22, 1994
Uejo US 2004/0042038 A1 Mar. 4, 2004
Barkan US 2006/0022034 A1 Feb. 2, 2006
Popadic US 2007/0156438 A1 July 5, 2007
The following rejection is before us for review.
Claims 1—10 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Popadic in view of Barkan, Wolstenholme, and Uejo.
2
Appeal 2014-003061
Application 13/593,061
FINDINGS OF FACT
1. The reissue application of US 2007/0156438 correctly identifies its
priority date as Oct. 17, 2005 based on provisional application as 60/727,533
as shown below:
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Above is a copy of the first page of RE44,274 E which is derived
from US 2007/0156438.
ANALYSIS
We begin by finding no error with the Examiner’s reliance on US
2007/0156438 in rejecting claims 1—10 under 35 U.S.C. 103(a) (Final
Act. 2—6), even though US 2007/0156438 was originally printed with a
number incorrectly referencing Provisional 60/727,535. This is because
from the record before us, it is clear that Appellants had knowledge of the
correct provisional application number sufficient to challenge the sufficiency
of its written description in their Brief. (Appeal Br. 10-14). Moreover, at
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Appeal 2014-003061
Application 13/593,061
the time of this decision, U.S. Reissue 44,274 E has been published. It is
derived from US 2007/0156438. The reissue application now correctly
identifies the provisional application as 60/727,533. (FF. 1).
Appellants argue that
The Examiner has not mapped the Popadic 2005 provisional to
the appealed claims. Nor, when the above table was previously
submitted during prosecution, did the Examiner point out any
line-item entry in the above table for which the Examiner
disagreed and believed that such a paragraph, figure, or claim in
the published utility application was found in the Popadic
provisional but had been overlooked by the above table.
(Appeal Br. 13; see Reply Br. 1^4).
In the Answer, the Examiner attempted to map the provisional
application 60/727,533 to US 2007/0156438, finding:
See at least Popadic's Provisional- (Title) "Ubiquitous Imaging
Device Based Check Image Capture", (pages 1-2) remote
transmission of check/negotiable instrument by imaging device,
(pages 3, 7) front-end and back-end of check, (Pages 1-2) fax
receiving check, (pages 1-2, page 6 - processed) generating
images of the check as a function of fax data, and (pages 4, 7)
check data (MICR).
(Answer 4).
We agree with Appellants. We refer to the MPEP. Section
706.02(f)(1)(B), “Examination Guidelines for Applying References Under
Pre-AIA 35 U.S.C. 102(e) [R-07.2015],” states:
The 35 U.S.C. 102(e) date of a reference that did not result
from, nor claimed the benefit of, an international application is
its earliest effective U.S. filing date, taking into consideration
any proper benefit claims to prior U.S. applications under
35 U.S.C. 119(e) or 120 if the prior application(s) properly
supports the subject matter used to make the rejection in
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Appeal 2014-003061
Application 13/593,061
compliance with 35 U.S.C. 112, first paragraph. See MPEP
§ 2136.02.
In our view, the findings made by the Examiner at page 4 of the
Answer which maps selected sections of Provisional Application 60/727,533
to US 2007/0156438, are insufficient to establish a prima facie case of
obviousness that the provisional application properly supports the subject
matter used to make the rejection in compliance with 35 U.S.C. 112, first
paragraph.2 For example, the Final Action cites to the Specification of US
2007/0156438 by paragraph and reference number (Final Act. 2, 3), but the
findings on page 4 of the Answer make only general reference to entire
pages of Provisional Application 60/727,533 without reference to specific
lines and context.
CONCFUSIONS OF FAW
We conclude the Examiner did err in rejecting claims 1—10 under 35
U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1—10 is reversed.
REVERSED
2 Our Decision today is based solely on the findings made by the Examiner
in the Answer on page 4 which we find insufficient to establish a prima facie
case. But, this is not to say that a more detailed review of provisional
60/727,533 would not result in a finding that the provisional application
properly supports the subject matter of US 2007/0156438 used to make the
rejection in compliance with 35 U.S.C. 112, first paragraph.
5