Ex Parte Finch

Board of Patent Appeals and Interferences

Apr 30, 2004

09504502 (B.P.A.I. Apr. 30, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VANCE FINCH
__________
Appeal No. 2003-0205
Application 09/504,502
___________
ON BRIEF
___________
Before BARRETT, OWENS and DIXON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-16,
which are all of the claims in the application.
THE INVENTION
The appellant claims a method for providing and updating
equipment ownership data in a computer database title record.
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Claim 1 is illustrative:
1. A computer-implemented method of operation for a user
production of a title record of preselected data associated with
an equipment piece transaction comprising the steps of:
a. providing a title record format for data to be
associated with a transaction of an equipment
piece;
b. providing a database for storing a plurality of title
records with said format therein;
c. placing said database in a central computer available
for access by a plurality of users on a computer
network;
d. determining whether a user on the network is authorized
to fashion a title record in said database,
otherwise displaying a selected title record for
viewing only to the user on the computer network;
e. if said user is authorized to fashion a title record,
accessing said title record from said database for
a particular equipment piece;
f. if said title record for said equipment piece is not in
said database, creating a new title record for
said equipment piece by entering said data to be
associated with said equipment piece inclusive of
ownership from an available outside source into
said new title record;
g. if the transaction of said equipment piece is a sale
transaction, choosing data from an available bill
of sale inclusive of at least old ownership data
for comparison with corresponding ownership data
in said title record;
h. comparing said chosen bill of sale data to said
corresponding data in said title record inclusive
of at least said old ownership data previously
entered in said title record;
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i. upon a match of said data in step h., entering at least
data from said bill of sale indicative of a new
owner into said new title record;
j. determining whether any collateral information
associated with said equipment and entered into
said title record would preclude the issuance of
an owner’s title; and
k. if not precluded, issuing said title record in a form
indicative of ownership of said equipment piece.
THE REFERENCE
Rose, Jr. 5,521,815 May 28, 1996
THE REJECTION
Claims 1-16 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Rose, Jr.
OPINION
We reverse the aforementioned rejection. We need to address
only the independent claims, i.e., claims 1, 9 and 16.
“Anticipation requires that every limitation of the claim in
issue be disclosed, either expressly or under principles of
inherency, in a single prior art reference.” Corning Glass Works
v. Sumitomo Electric, 868 F.2d 1251, 1255-56, 9 USPQ2d 1962, 1965
(Fed. Cir. 1989).
Each of the appellant’s independent claims requires that
before a title record in a computer database is updated to show
the new owner of a piece of equipment being sold, a check is made
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of the equipment piece’s old ownership data in the computer
database. Claims 1 and 9 require checking the prior ownership
data by comparing it to data in a bill of sale which includes old
ownership data, and claim 16 requires checking the prior
ownership data by comparing it to sales-oriented data which
includes purchaser and seller data from outside sale transaction
sources.
Rose, Jr. discloses a method for tracking transactions for
items of value such as motor vehicles, wherein the items’ title
histories, which include all previous owners and the current
owner, are maintained in a centralized computer database (col. 1,
lines 10-13; col. 7, lines 19-20 and 34-35). If the transaction
is the sale of a used item, the current owner is converted to the
prior owner and the new owner’s name and address and other
appropriate information are entered into the database (col. 13,
lines 23-26). The computer then validates all existing data to
make sure it is accurate (col. 14, lines 23-25). “Once
verification of authenticity of the [used vehicle] asset and its
current owner is made, a digital code is then given to the asset
(and all of its pertinent information) so that, in a future
search application a simple mathematical comparison of the unique
digital coding of the alpha-numeric symbols of the VIN [vehicle
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identification number], the title and the registration tag
numbers are taken from the system and automatically accepted or
rejected by mathematical means” (col. 15, lines 9-16).
The examiner argues: “(Column 13, lines 24-28) state that,
‘if it is a sale of a used vehicle, the “current owner” is
converted to the prior owner 112 and the new owner’s name and
address and other appropriate information are entered 114’, and
(column 15, lines 9-19) show that ‘verification and [sic, of]
authenticity of the asset and its current owner is performed
[sic, made]’” (answer, page 9).
The examiner has not established that Rose, Jr.’s disclosure
that “the ‘current owner’ is converted to the prior owner 112 and
the new owner’s name and address and other appropriate
information are entered” (col. 13, lines 24-26) discloses, either
expressly or inherently, that the current ownership (the seller)
is verified before it is converted to the prior ownership and
replaced by the new ownership (the buyer). As for Rose, Jr.’s
disclosure of verifying the authenticity of the asset and its
current owner, this verifying takes place after the current owner
(the seller) has been replaced by the new owner (the buyer).
Hence, the current owner referred to by Rose, Jr. regarding this
verification step is the buyer, and it is the inputted buyer data
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that is verified. This verification step also includes verifying
the authenticity of the asset. The examiner, however, has not
established that the disclosure of verifying the authenticity of
the asset includes, either expressly or inherently, a disclosure
of verifying the old ownership data before it is replaced by the
new ownership data.
The examiner argues that the appellant has admitted (parent
application no. 08/960,492, response filed January 4, 2000, paper
no. 8, pages 2-4), in response to a nonenablement rejection, that
a title record and a bill of sale both include the seller’s name,
and that to enhance the title process in the appellant’s method a
comparison of ownership data in the bill of sale to ownership
data in the title record must be made (answer, pages 9-10). The
examiner, however, has not established that Rose, Jr. discloses,
either expressly or inherently, this title process enhancing
step.
For the above reasons we find that the examiner has not
carried the burden of establishing a prima facie case of
anticipation of the appellant’s claimed method.
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DECISION
The rejection of claims 1-16 under 35 U.S.C. § 102(b) over
Rose, Jr. is reversed.
REVERSED
)
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH L. DIXON )
Administrative Patent Judge )
TJO/ki
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Dale J. Ream
Harshaw Research Incorporated
P.O. Box 418
Ottawa, KS 66067-0418