Ex Parte Eliscu

Board of Patent Appeals and Interferences

Sep 23, 2009

09667391 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte A. MAXWELL ELISCU 8
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Appeal 2009-003856 11
Application 09/667,391 12
Technology Center 3600 13
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Decided: September 23, 2009 16
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. 20
MOHANTY, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL26
Appeal 2009-003856
Application 09/667,391

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STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-3, 5, 8-12, 14-17, 19-35, 37-52, 54, 56-64, and 66-67. We have 3
jurisdiction under 35 U.S.C. § 6(b) (2002). 4
Appellant invented systems and methods for receiving referrals from 5
referring parties, including independent lenders, insurance companies, 6
leasing companies, governmental groups (e.g., local, state, federal, 7
international), business to business web portals or e-commerce marketplaces 8
or any party referring businesses who may be seeking or may benefit from 9
the transaction management and financial services provided by the system 10
(Spec. 1:2-9). 11
Claim 1 under appeal is further illustrative of the claimed invention as 12
follows: 13
1. In a transaction management and 14
financial services system configured to 15
communicate between a server and at least one 16
remote device via a network, a method comprising: 17
providing a screen display indicating an 18
affiliation with a referring party; 19
receiving a referral from the referring party, 20
the referral including information regarding any of 21
a financing-seeking party that has been declined by 22
the referring party, a transaction management-23
seeking party, a trade credit-seeking party, and a 24
credit guarantee-seeking party; 25
receiving commercial transaction 26
information associated with the referral; 27
storing the information regarding the referral 28
and the received commercial transaction 29
information in a storage device; 30
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determining whether the referral satisfies 1
system-based parameters; 2
if the referral satisfies system-based 3
parameters, determining whether the system has 4
sufficient information to engage the referral; 5
if the system has sufficient information, 6
engaging the referral; 7
if the referral becomes engaged, establishing 8
an account for the referral; 9
providing operations which can be 10
performed by the referral, the operations 11
associated with managing a commercial 12
transaction; 13
capturing data access information associated 14
with what data is accessed by the referral using the 15
provided operations; 16
forming a profile for the referral that 17
includes the captured data access information; and 18
storing the formed profile in the storage 19
device. 20
The prior art relied upon by the Examiner in rejecting the claims on 21
appeal is: 22
Kleinberg US 2001/0037265 A1 Nov. 1, 2001 23
Wilkinson US 2001/0049646 A1 Dec. 6, 2001 24
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The Examiner rejected claims 1-3, 5, 8-12, 14-17, 19-35, 37-52, 54, 26
56-64, and 66-67 under 35 U.S.C. § 112, second paragraph, as being 27
indefinite for failing to particularly point out and distinctly claim the subject 28
matter which Appellant regards as the invention; and claims 1-3, 5, 8-12, 14-29
17, 19-35, 37-52, 54, 56-64, and 66-67 under 35 U.S.C. § 103(a) as being 30
unpatentable over Wilkinson and Kleinberg. 31
Appeal 2009-003856
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We REVERSE. 1
ISSUES 2
Did the Appellant show the Examiner erred in asserting that the 3
“referral” is indefinite because it is unclear how the “referral” performs 4
operations and accesses data, as recited in independent claims 1, 56, and 57? 5
Did the Appellant show the Examiner erred in asserting that 6
Wilkinson discloses providing operations which can be performed by the 7
referral, the operations associated with managing a commercial transaction, 8
capturing data access information associated with what data is accessed by 9
the referral using the provided operations, and forming a profile for the 10
referral that includes the captured data access information, as recited in 11
independent claims 1, 56, and 57, because Wilkinson discloses that all data 12
is provided by either the demander or the supplier? 13
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FINDINGS OF FACT 15
Specification 16
Appellant invented systems and methods for receiving referrals from 17
referring parties, including independent lenders, insurance companies, 18
leasing companies, governmental groups (e.g., local, state, federal, 19
international), business to business web portals or e-commerce marketplaces 20
or any party referring businesses who may be seeking or may benefit from 21
the transaction management and financial services provided by the system 22
(1:2-9). 23
Existing customer 761 and target customer 762 of referring party 780, 24
submits applications to referring party 780. Following the submission of an 25
application, referring party can either approve or decline the application. If 26
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financing seeking party 761 or 762 is declined, referring party 780 forward 1
the application for financing to transaction management and financial 2
services system 100 for approval (19:28-30 20:1-12). 3
If approved, marketplace 201 is accessed by the finance seeking party 4
via the Internet. The financing seeking party accesses and manages the 5
financing provided by transaction management and financial service system 6
100 via marketplace 201 (22:20-24). 7
8
Wilkinson 9
Wilkinson discloses a database used by both demanders and supplier 10
in a financing context. A “demander” is an entity searching for funding and 11
a “supplier” is an entity desiring to supply funds. Searches of the member 12
demander and supplier database may be initiated by suppliers, demanders, or 13
both suppliers and demanders ([0016]-[0022]). 14
The service provider gathers or is provided data from the demander. 15
The data collected by the service provider to create a financial profile of the 16
demander falls within essentially three general areas: general information, 17
the type of financing sought, and the names of suppliers to which the 18
demander previous applied ([0035]). 19
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PRINCIPLES OF LAW 21
Indefiniteness 22
A claim is definite if “one skilled in the art would understand the 23
bounds of the claim when read in light of the specification.” Personalized 24
Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 25
1998). 26
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The second paragraph of 35 U.S.C. § 112 requires claims to set out 1
and circumscribe a particular area with a reasonable degree of precision and 2
particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). 3
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ANALYSIS 5
Referral 6
We are persuaded of error on the part of the Examiner by Appellant’s 7
argument that “referral” is sufficiently definite for the purposes of 35 U.S.C. 8
§ 112, second paragraph (App. Br. 8). The Examiner appears to assert that 9
“referral” is information, and thus that information cannot “perform 10
operations” or “access data” as recited independent claims 1, 56, and 57 (Ex. 11
Ans. 7-8). However, when “referral” is construed in light of the 12
Specification, one of ordinary skill in the art understands that “referral” 13
corresponds to financing seeking party 761, 762 and all information 14
associated with financing seeking party 761, 762. See Media Commc’ns, 15
LLC v. Int’l Trade Comm’n, 161 F.3d at 705. A party can “perform 16
operations” and “access data.” The Appellant could have been clearer by 17
using a less confusing term instead of “referral,” particularly when “referral” 18
is recited as including information. However, 35 U.S.C. § 112, second 19
paragraph, only requires claims to set out and circumscribe a particular area 20
with a reasonable degree of precision and particularity. See In re Johnson, 21
558 F.2d at 1015. As “referral” is sufficiently precise and particular when 22
read in light of the Specification to be a party including information, we will 23
not sustain this rejection. 24
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Capturing Data Access Information 1
We are persuaded of error on the part of the Examiner by Appellant’s 2
argument that Wilkinson does not disclose providing operations which can 3
be performed by the referral, the operations associated with managing a 4
commercial transaction, capturing data access information associated with 5
what data is accessed by the referral using the provided operations, and 6
forming a profile for the referral that includes the captured data access 7
information, as recited in independent claims 1, 56, and 57, because 8
Wilkinson discloses that all data is provided by either the demander or the 9
supplier (App. Br. 9-13). By reciting “data … accessed by the referral using 10
the provided operations,” independent claims 1, 56, and 57 recite that the 11
data capture occurs while the referral is performing an operation. 12
Accordingly, in the corresponding context of Wilkinson, such a claim 13
construction requires capturing search data while the demander/supplier is 14
performing the search, and then saving that information to the 15
demander/supplier’s profile. While Wilkinson may inherently disclose 16
capturing search data into a temporary file during the normal course of 17
processing a search request, the portions of Wilkinson cited by the Examiner 18
do not disclose that such search data, or any other data accessed by the 19
demander/supplier, is then saved into the demander/supplier’s profile. 20
Indeed, the portions of Wilkinson cited by the Examiner appear to disclose 21
that all profile information is provided by the demander/supplier. 22
Accordingly, we will not sustain the rejection of independent claims 23
1, 56, and 57. By virtue of their dependency on independent claims 1, 56, 24
and 57, we also do not sustain the rejection of dependent claims 2-3, 5, 8-12, 25
14-17, 19-35, 37-52, 54, 58-64, and 66-67. 26
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CONCLUSION OF LAW 1
On the record before us, Appellant has shown that the Examiner erred 2
in rejecting claims 1-3, 5, 8-12, 14-17, 19-35, 37-52, 54, 56-64, and 66-67. 3
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DECISION 5
The decision of the Examiner to reject claims 1-3, 5, 8-12, 14-17, 19-6
35, 37-52, 54, 56-64, and 66-67 is reversed. 7
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REVERSED 9
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hh 14
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FOLEY & LARDNER, LLP 16
777 EAST WISCONSIN AVENUE 17
MILWAUKEE, WI 53202-5306 18
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