Ex Parte Gilbert

Board of Patent Appeals and Interferences

May 9, 2011

09728152 (B.P.A.I. May. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
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Ex parte MICHAEL H. GILBERT 8
___________ 9
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Appeal 2011-000629 11
Application 09/728,152 12
Technology Center 3600 13
___________ 14
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 17
ANTON W. FETTING, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed March 8, 2010) and the Examiner’s Answer (“Ans.,” mailed June
9, 2010).
Michael H. Gilbert (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 8, 17, and 18. We have jurisdiction 3
over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 4
This is the second time this application has come before the Board. The 5
same art that was applied in the prior appeal is applied here, although the 6
manner in which they are applied differs. The sole independent claim, claim 7
1, has been amended since the prior appeal. Out of claims 1-18 standing 8
rejected, the Appellant appeals only dependent claims 8, 17, and 18. 9
The Appellant invented a billing and payment processing system 10
(Specification Page 1, lines 2-5). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1 which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. A method of generating and processing billing and payment 15
information utilizing computing units connected to a network 16
for a service provided cooperatively by multiple tiers, the 17
method comprising the steps of: 18
[1] collecting by a first computer unit usage information by a 19
direct feed of raw data of the service from a meter by a 20
customer from one of a first tier of the multiple tiers or a third 21
party; 22
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[2] integrating by a second computer unit the usage 1
information with customer profile information of the customer 2
provided by a second tier of the multiple tiers; 3
[3] generating by a third computer unit billing information 4
based on the usage information, the customer profile 5
information, and rate information for the service; 6
[4] generating by a fourth computer unit the bill based upon the 7
billing information to the customer in the form of electronic 8
data with billing information suitable for printing; and 9
[5] transmitting by a fourth computer unit the bill, to an 10
optimal mailing location for printing and mailing to the 11
customer. 12
The Examiner relies upon the following prior art: 13
Savage et al. US 2002/0026394 A1 Feb. 28, 2002
Carlin et al. US 6,697,843 B1 Feb. 24, 2004

Claims 1-5 and 8-16 stand rejected under 35 U.S.C. § 103(a) as 14
unpatentable over Savage. 15
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable 16
over Savage and Carlin. 17
ISSUES 18
The issue of obviousness turns on whether Savage describes the 19
limitations added by claims 8, 17, and 18. 20
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Savage 5
01. Savage is directed to a system and method for creating 6
combined billing statements for customers of multiple vendors on 7
a single periodic statement (paragraph 0001). 8
02. Savage is concerned with decreasing the number of resources 9
required for services by automating processes (paragraphs 0009 10
and 00023). 11
03. The billing system supports the processes of marketing, 12
customer care, bill calculation, retail company bill aggregation, 13
statement generation, receivables management, and settlements 14
(paragraph 0061). 15
04. The customer information system maintains customer profile 16
information. The customer profile information includes a 17
transaction history of all of the goods and services purchased by 18
the customer (paragraph 0076). The customer is associated with 19
the supplier’s information in the bill calculation system (paragraph 20
0094). 21
05. The usage database compiles energy usage data and creates and 22
sends a flat file of usage and meter detail to the bill calculator 23
(paragraph 0094). The bill calculation module receives usage 24
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data. For example, raw energy usage in kilowatt hour for used 1
electricity or gas is received from an energy vendor and placed on 2
the bill. The bill calculation module converts the usage data into a 3
rated bill (paragraph 0098). Bill calculation by computer systems 4
114 of financial institution 100 involves receiving and validating 5
energy usage data feed, for example, from a vendor 140, such as 6
energy retailer 104 shown in FIG. 1, automatically calculating 7
charges and taxes based on the energy pricing parameters of the 8
energy retailer 104, and generating usage, accounting, and 9
settlement reports to the energy retailer 104 (paragraph 0055). 10
06. The system collects all charges associated to the customer and 11
aggregates them on to a single bill. The bill is delivered to the 12
customer in the customer’s desired format. The bill format is 13
available in both paper and electronic forms (paragraph 0110). 14
07. If energy usage is in dispute, a meter re-read request is 15
submitted to a vendor technician who re-reads the customer’s 16
meter and logs the re-read data in to the wires and pipes database 17
(paragraph 0088). 18
Carlin 19
08. Carlin is directed to a system and method for distributed hybrid 20
mail (column 1, lines 7-10). 21
09. Mail production facilities merge fixed and variable information 22
to create fully integrated mail. The integrated mail image is 23
printed and distributed (column 5, lines 17-29). 24
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10. Mailing data is sorted based on zip code information. Mail 1
production facilities print mail based on the nearest proximity to 2
the listed zip code (column 4, lines 52-65). This sorting by zip 3
code enables taking advantage of postage discounts and 4
processing efficiencies (column 3, lines 53-63). 5
ANALYSIS 6
Claims 1-5 and 8-16 rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Savage. 8
We are unpersuaded by the Appellant’s argument that Savage fails to 9
describe the computers processing payments and allocating payments to pay 10
service providers in claim 8. As the Examiner found, 11
Savage teaches that the account management system maintains 12
the payment hierarchy by determining business rules and 13
allocating payment to products (paragraph 0096). Savage 14
further teaches calculating the charges (paragraph 0096). 15
Savage further teaches that the user that the user receives a bill 16
with the various payment amounts from different billers 17
(paragraph 0110 and Figs. 24-29). Savage then teaches a 18
payment processing system which receives payment and posts 19
the payment to the appropriate accounts including forwarding 20
payment to clients (paragraph 0110; Examiner notes this is 21
analogous to allocating payment based on the billing and 22
payment information to pay the service providers, i.e. long 23
distance carriers, etc.). 24
Answer 6. 25
We are unpersuaded by the Appellant’s argument that Savage fails to 26
describe the data mining and using those results in claims 17 and 18. As the 27
Examiner found: 28
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Savage teaches that advantages of the system include upselling 1
customers of the financial institution's clients to become credit 2
card customers and maximizing data mining opportunities 3
across the system (paragraph 0013). Savage teaches that the 4
financial institution's revenues are increased through marketing 5
and information data mining in which marketing information 6
includes customer information and payment information 7
(paragraph 0020-0021 and 0060-0061 and 0063). Examiner 8
notes that Appellant states the advantage of the claim limitation 9
is that customers benefit by receiving one (or a fewer number) 10
of integrated bills which provide them valuable information to 11
optimize their selection of providers in each tier in a vertical 12
multi-tier service (see Appeal Brief, page 10). Similarly, 13
Savage teaches incentivizing users by allowing them to have 14
combined billing in dealing with various providers including 15
add on or supplemental offers (paragraphs 0018-0021 and 16
0060-0061 and 0063). 17
Answer 6-7. 18
The Appellant made no arguments in support of the remaining claims. 19
Claims 6 and 7 rejected under 35 U.S.C. § 103(a) as unpatentable over 20
Savage and Carlin. 21
The Appellant made no arguments in support of these claims. 22
CONCLUSIONS OF LAW 23
The rejection of claims 1-5 and 8-16 under 35 U.S.C. § 103(a) as 24
unpatentable over Savage is proper. 25
The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable 26
over Savage and Carlin is proper. 27
DECISION 28
To summarize, our decision is as follows. 29
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 The rejection of claims 1-5 and 8-16 under 35 U.S.C. § 103(a) as 1
unpatentable over Savage is sustained. 2
 The rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as 3
unpatentable over Savage and Carlin is sustained. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 6
§ 1.136(a)(1)(iv) (2007). 7
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AFFIRMED 9
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