Ex Parte Eckl

Board of Patent Appeals and Interferences

Mar 29, 2007

09903500 (B.P.A.I. Mar. 29, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN K. ECKL
____________

Appeal 2006-001650
Application 09/903,500
Technology Center 3600
____________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR and
ANTON W. FETTING, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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STATEMENT OF CASE
This is a decision on rehearing in Appeal No. 2006-001650. We have
jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision. 37 C.F.R.
§ 41.52.
ISSUES ON REHEARING
Appellant raises two issues in the Request for Rehearing. The first
issue relates to the construction of the claim term “delivery preferences” and
whether the disclosure in Comesanas of a signed written agreement by the
customer to pay a mandatory electronic billing fee can be regarded as a
customer or recipient delivery preference. Request for Reh’g 2-5.
Appellant included a second set of arguments in the Request entitled
“Res Judicata Rejections.” Request for Reh’g 6. Appellant goes on to argue
that this is not a situation where res judicata applies. We agree. This is not a
situation in which res judicata applies. The applicable principle at issue is
one of waiver—specifically, the disposition of claims which Appellant has
declined to separately argue. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Therefore,
the second issue upon rehearing is whether the Panel erred by deciding a
second appeal with a finding that the Appellant waived any further argument
to claims which the Panel had previously found properly rejected in the first
appeal.

Issue I. Prior Art Rejections
In our 2007 decision we held that even if the claims were construed so
that “delivery preferences” referred solely to the choice of a printed or an
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electronic invoice, Comesanas rendered the claimed subject matter prima
facie obvious. Decision of Mar. 29, 2007, 7-8. Appellant, in the Request for
Rehearing, after quoting the sentence from Comesanas on which we based
our decision, states that we have drawn an incorrect conclusion from the
sentence that is a starting point for a flawed line of reasoning. Appellant
states that our conclusion that “unless the debtor/customer chooses to pay
the fee, the debtor customer cannot receive electronic billing” is neither
stated nor implied. Request for Reh’g 5, citing Comesanas, col. 3, ll. 17-26.
We disagree. In an e-commerce regime in which there is a charge for
payment of a bill online and the creditor is “unwilling” to pay the charge,
then the debtor must pay the fee to be allowed to receive electronic billing.
There are only two parties to the transaction--the creditor who is owed the
invoice amount and the debtor/customer. One of these parties must pay. In
the e-commerce universe that Comesanas posits, in which there is a fee for
paying the invoiced amount online, and the creditor is unwilling to pay the
fee, then to receive electronic billing with online payment the
debtor/customer must pay the fee. It is as simple as that. This is why
Comesanas requires a written agreement on the part of the customer to pay
the fee. There must be an acknowledgement on the customer’s part that he
prefers electronic billing even with the attendant fee.
Appellant argues that confusion has resulted from the fact that e-
commerce has evolved without charges for individual electronic transmittals.
We agree that an e-commerce regime that charges for individual electronic
transmittals has not been widely adopted, but this is simply irrelevant to the
express written disclosure of Comesanas which envisions such a fee.
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Appellant makes much of the phrase “all-electronic business
environment” as it appears in the contested sentence of Comesanas. We
agree that a proper interpretation of this expression is important to an
understanding of Comesanas’ invention. Comesanas is stating that his
invention has an all-electronic mode that the debtor/customer can opt in to
by signing a print written agreement that he authorizes being billed for
electronic transmittal charges. Comesanas, col. 3, ll. 17-24. We agree with
Appellant’s characterization of this as an electronic counterpart to the
printed implementation. However, we read this sentence to require the
debtor/customer to participate in the prepayment feature to also participate
in the electronic system. In other words, we do not agree with Appellant’s
contention that in declining to participate in the prepayment feature the
debtor/customer would still be allowed to participate in the electronic
system. In short, this sentence in Comesanas links participation in the
electronic system with a willingness to pay the charges for electronic return
payment. No amount of sophistry on the part of Appellant can alter this
simple fact.
We must further emphasize that Appellant’s argument that an “all-
electronic business environment” might include a user “left to his own
means to put on his own stamp” or otherwise return the payment physically
to the billing party hardly describes an all-electronic system. Thus, since an
“all-electronic” payment system must include electronic payment and there
is a charge for such a payment, and the debtor customer must accede to this
charge before electronic payment can be utilized, Comesanas certainly
contemplates a business method in which a recipient’s delivery preference,
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i.e., the preference to pay for the electronic transmittal fee, is stored and
matched to the recipient in the biller’s processing of the billing statement.

Issue II. Waiver
To the extent that our 2007 Decision dismissed the Appeal as to
claims 21-36, we are of the view that the Decision overreached.
Accordingly, the Request for Rehearing is granted to the extent that we
vacate our decision to dismiss the Appeal with respect to claims 21-36. We
reinstate claims 21-36 in the Appeal.
We note Appellant’s statement in the Request that claims 21-36 stand
or fall with claim 18. Request for Reh’g 6, ll. 27-29. Since we have affirmed
the rejection of claim 18 at Issue I. of this decision, we hold that claims 21-
36 fall with claim 18.
CONCLUSION
Nothing in Appellant’s request has convinced us that we have
overlooked or misapprehended the disclosure of Comesanas as argued by
Appellant. Accordingly, we granted the Request for Rehearing to the extent
that we reconsidered our holding that all claims on appeal are unpatentable,
but we deny the request insofar as it asks for changes to that holding.
We granted Appellant’s request to the extent that we reinstated the
Appeal with respect to claims 21-36. We upheld the rejections of these
claims for the reasons given with respect to claim 18, with which they fall.

REHEARING GRANTED-IN-PART and DENIED-IN-PART
AFFIRMED

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