Ex Parte Falk et al

Board of Patent Appeals and Interferences

Nov 4, 2009

10163964 (B.P.A.I. Nov. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte ELIZABETH ROSS FALK and ANDREW STEWART ROSS
____________________
Appeal 2009-005317
Application 10/163,964
Technology Center 3600
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Decided: November 4, 2009
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Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Final
Rejections of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.1

THE INVENTION
Appellants’ claimed invention relates to methods for a voice enabled
bill presentment and payment system which operates over a telephone
system. (Spec. p. 1, ll. 1-4).
Independent claim 1, which is deemed to be representative, reads as
follows:
1. A method for audibly providing billing services
from an electronic billing server to a user, comprising:
initiating telephony connection between the
electronic billing server and the user;
providing billing details in a spoken language from
the electronic billing server to the user relating to a
billing account associated with the user through the
telephony connection;
providing payment instructions from the user to
the electronic billing server relating to a payment
associated with the user's billing account through the
telephony connection, the step of providing payment
instructions including the step of authenticating the user's
voice via the voice recognition system after the telephony

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Apr. 18, 2008) and the Examiner’s Answer (“Ans.,” mailed Jun. 13,
2008).
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connection has been established between the user and the
electronic billing server, and
initiating an order from the electronic server to a
user's bank to initiate the payment instructions associated
with the user's billing account.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ensel et al. 6,493,685 B1 Dec. 10, 2002
Talmor et al. 6,510,415 B1 Jan. 21, 2003
The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) as being
unpatentable over Ensel and Talmor.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants did not make in the Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE
Have Appellants shown the Examiner erred in rejecting claims 1-18
under 35 U.S.C. § 103(a) as being unpatentable over Ensel and Talmor?

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
1. Ensel is directed to an Information Interface Provider (IIP) which
acts as the interface between a biller and its customers for both the
presentment of electronic bills to the customers and for the processing of
payments from the biller's customers. (Abs.).
2. Ensel’s electronic bill payment and presentment system functions
via any and all channels of distribution which are effective in reaching its
customers. (col. 3, ll. 66-67 and col. 4, l. 1).
3. Ensel’s electronic bill payment and presentment system
authenticates a user by a password stored in the enrollment database. (col.
10, ll. 19-27).
4. Specifically, Ensel’s system discloses voice response units and
telephones as channels of distribution. (col. 4, ll. 1-16).
5. Ensel discloses that a telephone line can be used to review and pay
bills through a Voice Response Unit (VRU) system. (col. 9, ll. 62-64).
6. Ensel discloses an enrollment database which contains all relevant
customer information. This information includes, but is not limited to, a
preferred channel of distribution (e.g., telephone), alternative channels of
distribution (e.g., cellular phone), and a preferred time of bill presentment
(e.g., present my bill as soon as possible, present my bill at the end of
month). (col. 10, ll. 19-49).
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7. Ensel’s enrollment database contains a preferred payment
mechanism and alternative payment mechanisms which are used through the
VRU. (col. 10, ll. 40-41).
8. Talmor is directed to a voice authentication system which uses a
user’s voice print to provide a user’s identity. (col. 1, ll. 38-41).
9. Talmor’s system compares a voice print of a user with each of a
plurality of stored voice prints and provides authentication only if a match is
determined. (col. 8, ll. 8-12).

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404 (CCPA 1969); In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“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, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. 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
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reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 407. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417.
The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only
if this initial burden is met does the burden of coming forward with evidence
or argument shift to the Appellants. In re Oetiker, 977 F.2d at 1445; see
also In re Piasecki, 745 F.2d at 1472. Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Oetiker, 977 F.2d at 1445; In re Piasecki, 745 F.2d at 1472.

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ANALYSIS
Claims 1-18 rejected under 35 U.S.C. § 103(a) as being unpatentable over
Ensel and Talmor.

Independent claims 1, 11, and 16
Appellants generally argue that that there is no teaching, suggestion or
motivation to combine the voice authentication system of Talmor with the
voice enabled electronic bill presentment and payment system of Ensel. (Br.
11, 14, and 16). To the extent Appellants seek an explicit suggestion or
motivation in the reference itself, this is no longer the law in view of the
Supreme Court’s holding in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). The Examiner has provided an articulated reasoning with rational
underpinning for why a person with ordinary skill in the art would modify
the voice enabled electronic bill payment and present system of Ensel to use
the voice print authentication system of Talmor (FF 1, 8). Specifically, the
Examiner articulates a rationale based on authenticating a user’s identity
after the telephony connection has been established. (Ans. 4, 9, 13). While
Ensel discloses authenticating a user by a password (FF 3), Talmor teaches
authenticating a user by a voice print. (FF 8, 9). A person with ordinary
skill in the art would know from Talmor to apply this known voice print
authentication technique to the voice response unit disclosed in Ensel as an
authentication technique. (FF 4). Therefore, Appellants’ argument is not
persuasive as to error in the rejection.
Additionally, Appellants argue regarding claims 1, 11, and 16 that
Ensel does not disclose storing a voice print in a database for subsequent use
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to authenticate a user’s voice. (Br. 11, 14, and 16). We are not persuaded
by Appellants’ argument and find that although Ensel does not explicitly
disclose storing a voice print, it does disclose an enrollment database which
stores all relevant customer information including a user’s password. (FF 6).
Thus, Appellants are correct in their assessment that Ensel does not disclose
storing a voice print in a database for subsequent use to authenticate a user’s
voice. However, the Examiner did not cite Ensel to disclose this limitation,
but rather Talmor which discloses a system which compares a voice print of
a user with a stored voice print of that user. (FF 9). As discussed supra, it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have stored this voice print sample in the enrollment database
which contains all relevant customer information. Therefore, Appellants’
argument is not persuasive as to error in the rejection.
Additionally, with regard to claims 11 and 16, Appellants’ argue that
there is no mention of an alternate method of communication in the event
that the electronic billing server is unable to contact the user during a
“preferred time period.” (Br. 14, 16). We disagree with Appellants’
arguments and find that the enrollment database of Ensel stores alternative
channels of distribution for contacting a user such as a cellular phone. Since
this cellular phone is considered an alternative channel of distribution (FF
6), it would be obvious that this alternative channel would be used in the
event that the electronic billing server is unable to contact the user. Further,
Ensel discloses a customer preference for preferred time of bill presentment.
(FF 6). Therefore, the combination of Ensel and Talmor discloses an
alternate method of communication in the event that the electronic billing
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server is unable to contact the user during a “preferred time period.”
Accordingly, Appellants’ argument is not persuasive as to error in the
rejection.
Additionally, with regard to claims 11 and 16, Appellants argue that
there is no mention of a user selecting to hear billing details associated with
one of a plurality of billing accounts associated with the user and prescribed
in the electronic billing server. (Br. 14, 16). We are not persuaded by
Appellants’ arguments and find that Ensel discloses a voice response unit
that allows users to pay to review and pay bills over the telephone. (FF 5).
This voice response unit would allow users to hear their billing details
associated with these bills and select the bill or bills they wish to pay over
the telephone. Thus, the combination of Ensel and Talmor discloses a user
selecting to hear billing details associated with one of a plurality of billing
accounts associated with the user and prescribed in the electronic billing
server. Therefore, Appellants’ argument is not persuasive as to error in the
rejection.
Penultimately, Appellants argue regarding claims 11 and 16 that Ensel
does not disclose that the user may select a format of payment instructions
from a plurality of differing payment instructions which are prescribed in the
electronic billing server. (Br. 14, 16). We disagree with Appellants’
arguments and find that Ensel discloses both preferred and alternative
payment instructions which can be selected through the voice response unit.
(FF 7). These preferred and alternate payment instructions are stored in the
enrollment database of Ensel’s electronic billing server. Thus, the
combination of Ensel and Talmor discloses that the user may select a format
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of payment instructions from a plurality of differing payment instructions
which are prescribed in the electronic billing server. Therefore, Appellants’
argument is not persuasive as to error in the rejection.
Lastly, regarding claim 16, Appellants argue that Ensel does not
disclose the way contact is made, whether being initiated by the electronic
billing server or by the user. (Br. 16). We disagree with Appellants’
arguments and find that Ensel discloses preferred time of bill presentment.
(FF 6). This preferred time of bill presentment can be as soon as the bill
becomes available or at the end of the month. (FF 6). Since Ensel’s users
interact with the system through the voice response unit over a telephone
and the user selects the preferred time of presentment, the billing server
would likely initiate contact with the user. In other words, there would be
no need for a user to select a preferred time of bill presentment if they had to
initiate contact with the billing server. Since Appellants have not argued
that the system of Ensel is incapable of initiating contact with the user, we
find such initiation to have been obvious in view of the disclosed preferred
time of bill presentment. Thus, the combination of Ensel and Talmor
discloses the way contact is made between the electronic billing server and
the user. Therefore, Appellants’ argument is not persuasive as to error in the
rejection.

Claims 2-10, 12-15, and 17-18
Appellants’ arguments regarding each dependent claim have been
responded to and discussed supra. With respect to each limitation recited
and argued in the dependent claims, all were also recited in one of the
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narrower independent claims discussed above. As such, Appellants have not
sustained their burden of showing that the Examiner erred in rejecting claims
2-10, 12-15, and 17-18 under 35 U.S.C. § 103(a) as unpatentable over Ensel
and Talmor for the same reasons we found as to claims 1, 11, and 16, supra.

CONCLUSION OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-18 under 35 U.S.C. § 103(a) as being unpatentable over
Ensel and Talmor.

DECISION
The decision of the Examiner to reject claims 1-18 under 35 U.S.C.
§ 103(a) as being unpatentable over Ensel and Talmor 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

ack

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