Ex Parte Hahn-Carlson et al

Board of Patent Appeals and Interferences

Aug 29, 2011

11120630 (B.P.A.I. Aug. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/120,630 05/03/2005 Dean W. Hahn-Carlson USBA.153PA 1463
40581 7590 08/29/2011
CRAWFORD MAUNU PLLC
1150 NORTHLAND DRIVE, SUITE 100
ST. PAUL, MN 55120
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
08/29/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DEAN W. HAHN-CARLSON,
ELIZABETH A. BECK,
and DAVID A. SUITS
____________

Appeal 2010-001876
Application 11/120,630
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001876
Application 11/120,630
2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-23 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to data processing
interactions and the management of accounting data (Spec. 1:11-13). Claim
1, reproduced below with the numbering in brackets added, is representative
of the subject matter on appeal.

1. A classification engine for processing transaction documents
having line item accounting data, the classification engine comprising:
an association processor arrangement configured and arranged,
for each of a plurality of transaction parties, to
[1] access user profiles including information about each
transaction party for controlling each transaction party's access to the
classification engine and for associating transaction documents with a
particular transaction party, [2] and
associate transaction documents with a transaction party as a
function of the user profiles and information in the transaction
document; and
a classification processor configured and arranged, for each
transaction document associated with a particular one of the
transaction parties by the association processor
arrangement, to
[3] retrieve classification rules for the particular transaction
party as a function of the association of the transaction document with
the particular transaction party, the classification rules including
information for classifying accounting data for the particular
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transaction party,
[4] identify, in response to and as a function of the associated
transaction document, line item accounting data, and
assign an accounting code to the identified accounting data for
each line item as a function of the classification rules.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Furphy US 2002/0107794 A1 Aug. 8, 2002
Tawara US 2003/0050876 A1 Mar. 13, 2003

The following rejections are before us for review:
1. Claims 21-23 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 21-23 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter of the invention.
3. Claims 1-23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Furphy and Tawara.

THE ISSUES
With regards to the rejection under 35 U.S.C. § 101 the issue turns on
whether the rejected claims are directed to only an abstract idea.
With regard to the rejection under 35 U.S.C. § 112, second paragraph,
the issue turns on whether the rejected apparatus claims includes functional
language rather than method steps.
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With regards to the rejection of claims 1-20 under 35 U.S.C. § 103(a)
the issue turns on whether Tawara discloses claim limitation [3].
With regards to the rejection of claims 21-23 under 35 U.S.C. §
103(a) the issue turns on whether a prima facie case of obviousness has been
established.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1 Additional facts may appear in
the Analysis section below.
FF1. Furphy has disclosed a system for processing business transactions
between trading partners. Purchase order and invoice data are compared to
identify matching information and non-matching information. If the
information matches, the invoices are processed for payment. (Abstr.).
FF2. Tawara has disclosed an accounting system and method for
processing transaction data (Title).
FF3. Tawara at paragraphs [0041]-[0043],[0074]-[0075], [0082], and
[0090] does not disclose retrieving classification rules for the particular
transaction party as a function of the association of the transaction document
with the particular transaction party, the classification rules including
information for classifying accounting data for the particular transaction
party.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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ANALYSIS
Rejections under 35 U.S.C. § 101
The Appellants argue that the rejection of claims 21-23 under 35
U.S.C. § 101 is improper (Reply Br. 8-9). We agree with the Appellants.
Claim 21 includes a recitation for “a general ledger assignment engine”
which serves a machine and not a mere abstract idea. Accordingly, the
rejection of record for claim 21 and its dependent claims under 35 U.S.C. §
101 is not sustained.

Rejections under 35 U.S.C. § 112, second paragraph
The Examiner has determined that the rejection of claims 21-23 is
proper because the claims are directed to an apparatus but also recite method
steps as well making it unclear whether an apparatus or method is being
claimed (Ans. 3). In contrast, the Appellants argue that the claims are
directed to “a general ledger assignment engine” that is configured and
arranged to carry out various functions (Reply Br. 9).
We agree with the Appellants. Claim 21 states that “a general ledger
assignment engine” is “configured and arranged to” and then recites the
various functions carried out by the assignment engine. In claim 21 it is not
unclear that an apparatus is being claimed with certain functions. For this
reason the rejection of claim 21, and claims 22-23 which contain similar
language under 35 U.S.C. § 112, second paragraph, is not sustained.

Appeal 2010-001876
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Rejections under 35 U.S.C. § 103(a)
Claims 1-20
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art does not disclose claim limitation [3] (Br. 6-8, Reply Br.
3). In contrast, the Examiner has determined that Tawara discloses the cited
claim limitation [3] at paragraphs [0041]-[0043], [0074]-[0075], [0082], and
[0090]. (Ans. 6, 12).
We agree with the Appellants. Claim limitation [3] requires that the
processor is configured and arranged to:
[3] retrieve classification rules for the particular transaction
party as a function of the association of the transaction document
with the particular transaction party, the classification rules including
information for classifying accounting data for the particular
transaction party[.] [(Claim 1, emphasis added).]

Tawara at paragraphs [0041-0043], [0074]-[0075], [0082], and [0090] fails
to disclose claim limitation [3] (FF3). For instance, Tawara at paragraphs
[0041]-[0043] discloses that a “‘business code’” is standardized in all
divisions, not that classification rules are retrieved for the particular
transaction party as claimed in the cited claim limitation. Tawara at
paragraphs [0074]-[0075] does state that “‘credit/debit section’” and
“‘accounting title code’” are predetermined according to “various rules” but
these rules are not shown for the retrieval of classification rules for the
particular transaction party as a function of the association of the
transaction document as claimed. Similarly, Tawara fails to disclose the
cited claim limitation at paragraphs [0082] and [0090] (FF3). For these
reasons the rejection of claim 1 and its dependent claims is not sustained.

Appeal 2010-001876
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Claims 21-23
The Appellants’ arguments in the Brief do not address specific claim
limitations as missing from claims 21-23. While the Appellants have argued
specifically that claim limitations [1] and [3] are not present in claim 1 (Br.
6-8), these claim limitations are not present in claims 21-23. The
Appellants’ arguments for claims 21-23 are directed to the combination of
references not being obvious because the references teach away from the
combination and because hindsight is used (Br. 9-12).
In contrast, the Examiner has determined that the combination of
references are properly combined in the rejection of record (Ans. 6, 13-14).
A basis for the Examiner’s rejection of the claims is that Tawara teaches
“retriev[ing] classification rules for the particular transaction party” as
recited in claim limitation [3] but our finding is that Tawara does not teach
this (FF3). The rejection of record for claims 21-23 provides no other
rationale for combining Tawara with Furphy and since the cited claim
element is not found in Tawara a prima facie case of obviousness has not
been established and for this reason the rejection of record of claims 21-23 is
not sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 21-23 under 35 U.S.C. § 101.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 21-23 under 35 U.S.C. § 112, second paragraph.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-23 under 35 U.S.C. § 103(a) as unpatentable over Furphy
and Tawara.
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DECISION
The Examiner’s rejection of claims 1-23 is reversed.

REVERSED

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