Ex Parte Gilbert

Board of Patent Appeals and Interferences

Mar 24, 2009

09728152 (B.P.A.I. Mar. 24, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL H. GILBERT
___________

Appeal 2009-0323
Application 09/728,152
Technology Center 3600
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Decided: 1March 24, 2009
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and DAVID B.
WALKER, Administrative Patent Judges.

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FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Michael H. Gilbert (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1-18, the only claims pending in the application on appeal.
1 The two month time period for filing an appeal or commencing a civil action, as
recited in 37 CFR § 1.304, begins to run from the decided date shown on this page
of the decision. The time period does not run from the Mail Date (paper delivery)
or Notification Date (electronic delivery).

Appeal 2009-0323
Application 09/728,152

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We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R §41.50(b).
The Appellant invented a billing and payment processing system (Specification
Page 1, lines 2-5).
An understanding of the invention can be derived from a reading of exemplary
claims 1, 6, and 7, which are reproduced below [bracketed matter and some
paragraphing added].
1. A method of generating and processing billing and payment
information utilizing computing units connected to a network for a
service provided cooperatively by multiple tiers, the method
comprising the steps of:
[1] collecting by a first computer unit usage information by a direct
feed of raw data of the service from a meter by a customer from one
of a first tier of the multiple tiers or a third party;
[2] integrating by a second computer unit the usage information
with customer profile information of the customer provided by a
second tier of the multiple tiers;
[3] generating by a third computer unit billing information based
on the usage information, the customer profile information, and rate
information for the service; and
[4] transmitting by a fourth computer unit a bill, based on the
billing information to the customer.

6. The method according to claim 5, wherein the step of transmitting
the bill to the customer includes the steps of: printing the bill at an
optimal mailing location based on address information of the
customer; and mailing the bill from the optimal mailing location.

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7. The method according to claim 6, wherein the optimal mailing
location is determined based on at least one of a zip-code of the
customer, a transportation cost, an environmental impact, or a mailing
capacity of a mail distribution center.

This appeal arises from the Examiner’s final Rejection, mailed August 9, 2007.
The Appellant filed an Appeal Brief in support of the appeal on January 4, 2008.
An Examiner’s Answer to the Appeal Brief was mailed on March 13, 2008.
PRIOR ART
The Examiner relies upon the following prior art:
Savage et al. US 2002/0023694 A1 February 28, 2002
Carlin et al. US 6,697,843 B1 February 24, 20042

REJECTIONS 12
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Claims 1-5 and 8-18 stand rejected under 35 U.S.C. §102(e) as anticipated
by Savage.
Claims 6 and 7 stand rejected under 35 U.S.C. §103(a) as unpatentable over
Savage and Carlin.

2 The Examiner’s Answer lists Gilbert (US 2002/0069163) as a reference cited,
however, Carlin is used in the actual rejection.
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ISSUES
The issues pertinent to this appeal are
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 1-5 and 8-18 under 35 U.S.C. §102(e) as
anticipated by Savage.
o The pertinent issue turns on whether Savage describes a direct feed of
raw data from a meter of a customer to the provider.
• Whether the Appellant has sustained its burden of showing that the
Examiner erred in rejecting claims 6 and 7 under 35 U.S.C. §103(a) as
unpatentable over Savage and Carlin.
o The pertinent issue turns on whether Carlin describes determining an
optimal mail production facility based on the zip code of the
customer.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Savage
01. Savage is directed to a system and method for creating combined
billing statements for customers of multiple vendors on a single periodic
statement (paragraph 0001).
02. Savage is concerned with decreasing the number of resources required
for services by automating processes (paragraphs 0009 and 00023).
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03. The billing system supports the processes of marketing, customer
care, bill calculation, retail company bill aggregation, statement
generation, receivables management, and settlements (paragraph 0061).
04. The customer information system maintains customer profile
information. The customer profile information includes a transaction
history of all of the goods and services purchased by the customer
(paragraph 0076). The customer is associated with the supplier’s
information in the bill calculation system (paragraph 0094).
05. The usage database compiles energy usage data and creates and sends
a flat file of usage and meter detail to the bill calculator (paragraph
0094). The bill calculation module receives usage data. For example,
raw energy usage in kilowatt hour for used electricity or gas is received
from an energy vendor and placed on the bill. The bill calculation
module converts the usage data into a rated bill (paragraph 0098). Bill
calculation by computer systems 114 of financial institution 100
involves receiving and validating energy usage data feed, for example,
from a vendor 140, such as energy retailer 104 shown in FIG. 1,
automatically calculating charges and taxes based on the energy pricing
parameters of the energy retailer 104, and generating usage, accounting,
and settlement reports to the energy retailer 104 (paragraph 0055).
06. The system collects all charges associated to the customer and
aggregates them on to a single bill. The bill is delivered to the customer
in the customer’s desired format. The bill format is available in both
paper and electronic forms (paragraph 0110).
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07. If energy usage is in dispute, a meter re-read request is submitted to a
vendor technician who re-reads the customer’s meter and logs the re-
read data in to the wires and pipes database (paragraph 0088).

Carlin
08. Carlin is directed to a system and method for distributed hybrid mail
(column 1, lines 7-10).
09. Mail production facilities merge fixed and variable information to
create fully integrated mail. The integrated mail image is printed and
distributed (column 5, lines 17-29).
10. Mailing data is sorted based on zip code information. Mail production
facilities print mail based on the nearest proximity to the listed zip code
(column 4, lines 52-65). This sorting by zip code enables taking
advantage of postage discounts and processing efficiencies (column 3,
lines 53-63).
Facts Related To The Level Of Skill In The Art
11. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art billing and payment processing. We
will therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill
in the art does not give rise to reversible error ‘where the prior art itself
reflects an appropriate level and a need for testimony is not shown’”)
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(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d
158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
12. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Anticipation
"A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). "When a claim covers several structures or compositions, either generically
or as alternatives, the claim is deemed anticipated if any of the structures or
compositions within the scope of the claim is known in the prior art." Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must be
shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged
as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Obviousness
A claimed invention is unpatentable if the differences between it 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.” 35
U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
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In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR, 127 S.Ct. at 1734. “The combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 1739.
“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.” Id. at 1740.
“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.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
Automation of a Known Process
It is generally obvious to automate a known manual procedure or mechanical
device. Our reviewing court stated in Leapfrog Enterprises Inc. v. Fisher-Price
Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary skill in the art would have
found it obvious to combine an old electromechanical device with electronic
circuitry “to update it using modern electronic components in order to gain the
commonly understood benefits of such adaptation, such as decreased size,
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increased reliability, simplified operation, and reduced cost. . . . The combination
is thus the adaptation of an old idea or invention . . . using newer technology that is
commonly available and understood in the art.” Id at 1163.
ANALYSIS
Claims 1-5 and 8-18 rejected under 35 U.S.C. §102(e) as anticipated by
Savage
The Appellant argues these claims as a group.
Accordingly, we select claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found that Savage described all of the limitations of claim 1 and
thus anticipates claim 1 (Answer Pages 3-4). The Appellant contends that Savage
fails to describe limitation [1] of claim 1 (Br. Page 10, second paragraph). We
agree with the Appellant. First, the Appellant does not contest limitations [2] – [4],
and we find these limitations are described by Savage (FF 04, FF 05, and FF 06).
Limitation [1] requires in part a direct feed from a meter of a customer’s raw
usage data. Savage describes a customer’s meter is read and submitted to the
provider as raw data such as kilowatt hours (FF 05). The energy usage data feed is
further validated (FF 05). Savage describes that a vendor technician reads the
meter at re-read requests (FF 07), however, Savage is silent as to how the meter is
otherwise read during the normal course of business. As such, we find no evidence
that Savage describes a direct feed from a meter as required by limitation [1] of
claim 1.
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The Appellant has sustained its burden of showing that the Examiner erred in
rejecting claims 1-5 and 8-16 under 35 U.S.C. § 102(e) as anticipated by Savage
for the above reasons.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1-5 and 8-16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Savage.
Savage describes all of the limitations of claim 1, as we found supra, except for
the limitation of the meter reading being directly fed to the first computer. Savage
describes that when a bill is in dispute, this step is manually performed by a vendor
technician, i.e. a vendor technician reads the meter and logs the results (FF 07).
Savage is silent as to how this step occurs in the initial reading. It is generally
obvious to automate a known manual procedure or mechanical device. Leapfrog
Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007). That is, one
of ordinary skill knew both the benefits of and the implementation requirements of
automating the feed of the meter data to a computer system. The meter is itself a
disclosed instance of automation by which energy usage data is directly fed into
the meter. Savage describes the feeding of data among computer systems. The
only issue is whether applying such data feeds to the initial data entry from the
meter would have been predictable to one of ordinary skill. Our reviewing court
held in Leapfrog at 1163 that simply using newer technology that is commonly
available and understood in the art is predictable and obvious. Thus automating
the step of reading the meter and feeding the data to the provider computer would
have been obvious to one of ordinary skill in the art at the time the invention was
made.
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Further, Savage is concerned with the decreasing of costs associated with
additional resources for performing manual steps by automating these processes
(FF 02). So, additionally, one of ordinary skill in the art would have been
motivated to modify Savage to automate the raw data feed from the meter to the
provider in order to decrease the costs associated with the additional resources
required to perform the manual steps.
As to the remaining claims 2-5 and 8-16, none of the Examiner’s findings
regarding their additional limitations are contested and we accordingly adopt the
Examiner’s findings as to how Savage describes those limitations.
Claims 6 and 7 rejected under 35 U.S.C. §103(a) as unpatentable over Savage
and Carlin
Claim 6 requires printing the bill at an optimal mailing location based on
address information of the customer and mailing the bill from the optimal mailing
location. Claim 7 requires that the optimal mailing location be determined using at
least one of several factors, including that of the zip code of the customer.
The Examiner found that Savage describes all of the limitations of claim 1 and
the additional limitation in claim 6 of “mailing the bill from the optimal location”
(Answer Page 7). The Examiner found that Savage failed to describe the limitation
of “printing the bill” of claim 6 and “the optimal mailing location based on the
address, transportation cost, environmental impact or mail capacity of a distributor
and mailing the bill to the customer” of claim 7 (Answer Page 7). The Examiner
found that Carlin taught these limitations and that one of ordinary skill in the art
would have found it obvious to combine Carlin and Savage to include these
features in order to increase the speed and lower the cost of bill delivery (Answer
Page 7).
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The Appellant contends that (1) Carlin fails to describe the optimal mailing
production facility location of claim 6 (Br. Page 12, first paragraph) and (2) the
cited art fails to describe claim 7 (Answer Page 13, second paragraph).
The Appellant has made no argument regarding the Examiner’s findings, but
has only recited the limitations in claims 6 and 7 and made a general allegation that
they are not described by the art. The Appellant’s arguments with respect to these
claims simply state, in whole or in part, that the references do not disclose or
suggest certain claimed features – without responding to the Examiner’s reasoning
in establishing a prima facie case of obviousness. A general allegation that the art
does not teach any of the claim limitations is no more than merely pointing out the
claim limitations. A statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim. 37 C.F.R. §
41.37(c)(1)(vii).
Nevertheless, we find that Carlin describes how mail is generated at the
appropriately located mail production facilities determined by the zip code of the
customer (FF 10). Carlin is directly concerned with the optimal location for mail
production facilities to take advantage of postage discounts and processing
efficiencies (FF 10). Also, Carlin describes determining the optimal mailing
location by the zip code of the customer (FF 10). As such, Carlin does describe the
printing, determining, and mailing regarding the optimal mailing production
facility location of claims 6 and 7.
The Appellant has not sustained his burden of showing that the Examiner erred
in rejecting claims 6-7 under 35 U.S.C. § 103(a) as unpatentable over Savage and
Carlin for the above reasons. Claims 6 and 7 depend from claim 1, however, and
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claim 1 is now rejected under a new ground. Accordingly, we will denominate the
rejection of claims 6 and 7 as a new ground.

CONCLUSIONS OF LAW
The Appellant has sustained its burden of showing that the Examiner erred in
rejecting claims under 35 U.S.C. § 102(e) as anticipated over Savage.
A new ground of rejection is entered 37 C.F.R. § 41.50(b) and claims 1-5 and
8-16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Savage.
The Appellant has not sustained its burden of showing that the Examiner erred
in rejecting claims 6-7 under 35 U.S.C. § 103(a) as unpatentable over Savage and
Carlin in light of the new ground of rejection.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1-5 and 8-16 under 35 U.S.C. § 102(e) as anticipated
by Savage is not sustained.
• A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b).
o Claims 1-5 and 8-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Savage.
• The rejection of claims 6-7 under 35 U.S.C. § 103(a) as unpatentable over
Savage and Carlin is sustained.
o This rejection of claims 6-7 is denominated as a new ground of
rejection.
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Our decision is not a final agency action.
In addition to affirming the Examiner's rejection(s) of one or more claims, this
decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.” This Decision contains a new
rejection within the meaning of 37 C.F.R. § 41.50(b) (2007).
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new rejection:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. . . .
Should the Appellant elect to prosecute further before the examiner pursuant to
37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35
U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of
the affirmance is deferred until conclusion of the prosecution before the Examiner
unless, as a mere incident to the limited prosecution, the affirmed rejection is
overcome.
If the Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this case
should be returned to the Board of Patent Appeals and Interferences for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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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)(1)(iv)
(2007).

AFFIRMED-IN-PART 5
41.50(b) 6
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LV:

PITNEY BOWES INC.
35 WATERVIEW DRIVE
PO BOX 3000
MSC 26-22
SHELTON, CT 06484-8000
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