Ex Parte Ferreira et alDownload PDFPatent Trial and Appeal BoardAug 25, 201611583506 (P.T.A.B. Aug. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111583,506 10/19/2006 26161 7590 08/29/2016 FISH & RICHARDSON P,C (BO) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 FIRST NAMED INVENTOR Rui Miguel Ferreira 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 21277-002001 2961 EXAMINER GREGG, MARY M ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 08/29/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUI MIGUEL FERREIRA, ANTONIO PAULO RIVEIRO CONDE, BRUNO JORGE DE JESUS FERREIRA, and LUIS PEDRO DA SILVA Appeal2014-001543 Application 11/583,506 Technology Center 3600 Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, 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 decision rejecting claims 8-13 and 23-32. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. BACKGROUND Appellants' invention is directed to apparatuses, methods and computer program products for guaranteeing payment to a seller of a commodity purchased by a buyer (Spec. 1 ). Appeal2014-001543 Application 11/583,506 Claim 8 is illustrative: 8. A computer-implemented method for funding a transaction between a buyer and a seller, the method compnsmg: electronically receiving an invoice issued by the seller for a commodity delivered to the buyer; electronically receiving, from the buyer, approval of the invoice, the approval indicating that the invoice accurately describes payment due for delivery of the commodity in accordance with a prior sales agreement between the buyer and the seller; electronically notifying a financial institution on a communication device that the approval has been received from the buyer; electronically authorizing the financial institution to pay the seller an amount specified in the invoice regardless of whether the financial institution has received payment from the buyer; and electronically receiving notification that the seller has received payment from the financial institution for the amount specified in the invoice. The Examiner relies on the following prior art references as evidence of unpatentability: Turner Ogilvie Benko US 2003/0033231 Al US 6,547,134 B2 US 2006/0059080 Al Appellants appeal the following rejections: Feb. 13,2003 Apr. 15, 2003 Mar. 16,2006 Claims 8-10, 13, 23-29, and 32 under 35 U.S.C. § 103(a) as unpatentable over Ogilvie and Benko. Claims 11 and 30 under 35 U.S.C. § 103(a) as unpatentable over Ogilvie, Benko, and Official Notice. 2 Appeal2014-001543 Application 11/583,506 Claims 12 and 31 under 35 U.S.C. § 103(a) as unpatentable over Ogilvie, Benko, Official Notice, and Turner. ISSUE Did the Examiner err in rejecting the claims because the invention is concerned with guaranteeing payment of business transactions that have already concluded and Ogilvie is concerned with providing samples to buyers for their verification? Did the Examiner err in rejecting the claims because the Examiner acknowledges limitations in the claims absent from the references? Did the Examiner err in rejecting the claims because the objective evidence provided by the Appellants supports the conclusion that the invention meets the conditions for patentability? We adopt the Examiner's findings as to the patentability of claim 8 as our own. Final Act. 8-10. Additional findings of fact may appear in the Analysis that follows. ANALYSIS We are not persuaded of error on the part of the Examiner by the argument of Appellants that the invention is concerned with guaranteeing payment of business transactions that have already concluded and Ogilvie is concerned with providing samples to buyers for their verification. Appellants specifically argue that the invention has nothing to do with controlling a seller's performance by any intermediaries analyzing samples 3 Appeal2014-001543 Application 11/583,506 of merchandise (App. Br. 13). We initially note that the claims do not recite a method for guaranteeing payment of business transactions that have already concluded and thus cannot be granted patentability on this basis. In addition, in our view, the claims are broad enough to cover the method of Ogilvie which relates to controlling the seller's performance of any intermediary analyzing samples of merchandise because Ogilvie discloses that this is done by implementing the steps recited in claim 8. As we indicated above, we agree with and adopt as our own, the Examiner's findings regarding the teachings of Ogilvie as related to the claims on appeal. We are not persuaded of error on the part of the Examiner by Appellants' argument that the Examiner acknowledges limitations in the claims absent from the references. Appellants make this argument on page 14 of the Brief without further explanation. It is not clear what Appellants are referring to. As such, this argument is not persuasive. We are not persuaded of error on the part of the Examiner by Appellants' argument that the objective evidence provided by Appellants supports the conclusion that the invention meets the conditions for patentability. Appellants have submitted four substantially similar buyer declarations and two substantially similar seller declarations. These declarations are not specifically addressed in the Appeal Brief. Rather, Appellants direct our attention to the declaration of the application owner that has been submitted. Appellants argue that this declaration establishes commercial success and the absence of technical solution available in the market. We do not agree. 4 Appeal2014-001543 Application 11/583,506 The declaration of the application owner relates the turnover values using the invention for 2007-2010 and for the second quarter of 2011. The declaration states that the success is due to the innovative way in which this machine implemented solution was able to meet the needs, which had been long felt, of both buyers and sellers. The declaration states that an essential element for achieving these advantages is electronically authorizing the financial institution to pay the buyer regardless of whether the financial institution has received payment from the buyer (App. Br. 23). No other steps or elements of the invention are discussed in the declaration. "It is well settled 'that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."' In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (quoting In re Tiffin, 448 F .2d 791 ( CCP A 1971 ). Appellants do not show that the thing discussed in the declaration is that of Appellants' claim 8. Therefore, Appellants do not explain how the evidence presented is commensurate with the scope of the claim. For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention. A prima facie case of nexus is generally made out when the patentee shows both that there is commercial success, and that the thing (product or method) that is commercially successful is the invention disclosed and claimed in the patent. See In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008). In addition, Appellants have not provided evidence of market share to show commercial success of the claimed apparatus. See Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151 (Fed. Cir. 1983) ("There was no evidence of market share, of growth in market share, of replacing earlier units sold by 5 Appeal2014-001543 Application 11/583,506 others or of dollar amounts, and no evidence of a nexus between sales and the merits of the invention. Under such circumstances, consideration of the totality of the evidence, including that relating to commercial success, does not require a holding that the invention would have been nonobvious at the time it was made to one skilled in the art."). The Vortel declaration also states that the invention met a long-felt need of the users. Establishing long-felt need requires objective evidence that an art-recognized problem existed for a long period of time without solution. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988); Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379 (Fed. Cir. 1983). Establishing long-felt need also requires objective evidence that the invention satisfies the long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). The Vortel declaration provides no persuasive evidence that there was a long-felt need for the invention as claimed. For example, the Vortel declaration and the declarations of the buyers and sellers do not explain how long this need was felt, or when the problem first arose. See Tex. Instruments, Inc. v. US. Int'! Trade Comm'n, 988 F.2d 1165, 1178 (Fed. Cir. 1993) ("[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem."). When evidence is presented, it is our duty to consider all evidence anew. See, e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990). We are also mindful that objective evidence of non-obviousness in any given case may be entitled to more or less weight depending on its nature and its relationship with the merits of the invention. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983). Accordingly, we consider 6 Appeal2014-001543 Application 11/583,506 anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied upon by the Examiner and the objective evidence of non-obviousness provided by Appellants. Having considered all of the evidence submitted, we do not find Appellants' secondary considerations evidence sufficient to overcome the prima facie case of obviousness set forth by the Examiner. In view of the foregoing, we will sustain the Examiner's rejection of claim 1. We will also sustain the Examiner's rejection of the remaining claims because Appellants do not present argument of their separate patentability. DECISION The decision of the Examiner 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). See 37 C.F.R. § 1.136(a)(l) (2009). AFFIRMED 7 Copy with citationCopy as parenthetical citation