Ex Parte Haley

Board of Patent Appeals and Interferences

Feb 28, 2012

11251039 (B.P.A.I. Feb. 28, 2012)

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.
11/251,039 10/14/2005 David Alan Haley 1934-002 8049
31179 7590 02/29/2012
BOTKIN & HALL, LLP
105 E. JEFFERSON BLVD.
SUITE 400
SOUTH BEND, IN 46601
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
02/29/2012 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 DAVID ALAN HALEY
____________

Appeal 2011-012595
Application 11/251,039
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012595
Application 11/251,039

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 33-37 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 Appellant’s claimed invention is directed to electronic contract
applications using electronic networks (Spec. 3:2). Claim 33, reproduced
below with the numbering in brackets added, is representative of the subject
matter on appeal.

33. A method for using a computer to facilitate a
transaction for purchasing a good or service between at least one of a
plurality of relevant buyers and a least one of a plurality of relevant
sellers, comprising:
[1] the buyer inputting into the computer a conditional early
payment incentive offer ("CEPIO") which is initiated by said buyer,
[2] said CEPIO including an amount to be paid and a time tor said
amount to be paid, said CEPIO offering to pay said seller a lesser
amount than is typically charged by the seller and said time for said
amount within said CEPIO being earlier than in a typical transaction;
presenting said CEPIO over a computer to a plurality of
relevant sellers;
said seller within said plurality of sellers accepting said CEPIO
and communicating acceptance to said buyer;
said seller providing said good or service; and
providing payment over a computer to said seller by said time
designated in said CEPIO.

Appeal 2011-012595
Application 11/251,039

3
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Mason US 2001/0051919 A1 Dec. 13, 2001

The following rejections are before us for review:
1. Claims 33-37 are rejected under 35 U.S.C. § 102(b) as
anticipated by Mason.

THE ISSUES
The issue turns on whether the Mason reference discloses the above
cited claim limitation [1] at Figure 4d, paragraphs [0010], [0032], [0035],
and [0037].

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. Mason has disclosed an early-payment discount for an e-billing
system that enables customers to get a discount for paying their invoice
within a designated number of days from the on-line invoice postdate (Title,
Abstract).

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).
Appeal 2011-012595
Application 11/251,039

4
FF2. Mason at Figure 4d, paragraphs [0010], [0032], [0035], and [0037]
does not disclose the buyer inputting into the computer a conditional early
payment incentive offer ("CEPIO") which is initiated by said buyer.

ANALYSIS
The Appellant argues that the rejection of claim 33 is improper
because Mason fails to disclose claim limitation [1] (Br. 9-11). In contrast,
the Examiner has determined that Mason discloses the cited claim limitation
[1] at Figure 4d, paragraphs [0010], [0032], [0035], and [0037] (Ans. 4, 7-9).
We agree with the Appellant. Claim limitation [1] requires “the buyer
inputting into the computer a conditional early payment incentive offer
("CEPIO") which is initiated by said buyer” (emphasis added). We have
determined that the Mason reference at Figure 4d, paragraphs [0010],
[0032], [0035], and [0037] does not disclose this cited claim limitation [1]
(FF2) as asserted in the rejection. While the cited portions of the Mason
reference do disclose the use of an Early Payment Discount (EPD) it is not
disclosed that this offer “is initiated by said buyer” as the claim requires.
Mason in Fig. 4d for example shows the seller, as opposed to the buyer,
initiating the offer for the Early Payment Discount. As the cited claim
limitation [1] has not been shown in the cited portion of Mason, the rejection
of claim 33 and its dependent claim is not sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 33-37 under 35 U.S.C. § 102(b) as anticipated by Mason.

Appeal 2011-012595
Application 11/251,039

5
DECISION
The Examiner’s rejection of claims 33-37 is reversed.

REVERSED

mls