Ex Parte Hinton et al

Patent Trial and Appeal Board

Aug 31, 2016

11779105 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111779,105 07/17/2007
21967 7590 08/31/2016
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Brian D. HINTON
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
47004.000434 1618
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
MAILDATE DELIVERY MODE
08/31/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAND. HINTON, CAROL R. CUSHING,
JASON THOMAS CHRISTENSEN, and KENNETH YUEN
Appeal2014-005036
Application 11/779, 105
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-28. We AFFIRM-IN-PART (37
C.F.R. § 41.50(b)).
1 The Appellants identify JPMorgan Chase Bank, N .A. as the real party in
interest. (Appeal Br. 2).
Appeal2014-005036
Application 11/779,105
THE CLAIMED INVENTION
Appellants' claims relate generally to managing receivables. (Spec.
para. 2). Claim 1 is illustrative of the claimed subject matter2:
1. A computer implemented method for managing receivables,
the method comprising the steps of:
in a database, maintaining a repository for receivables data
comprising payment data;
using a computer processor, applying one or more
automated rules to the payment data for identifying an exception
wherein the exception represents a discrepancy between an
actual payment and an expected payment;
forwarding the exception to one or more designated
recipients for resolution;
tracking the exception;
using the computer processor, evaluating the exception to
identify a root cause of the discrepancy; and
storing data associated with the exception in the
repository.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
2 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the most recent Patent Office
guidance on § 101 found in the May 4, 2016 Memorandum to the Examining
Corps, titled "Formulating a Subject Matter Eligibility Rejection and
Evaluating the Applicant's Response to a Subject Matter Eligibility
Rejection," and the "July 2015 Update on Subject Matter Eligibility,"
80 Fed. Reg. 45429 (July 30, 2015), which supplements the "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014 ), and the "Preliminary Examination Instructions in view of
the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank
International, et al.," Memorandum to the Examining Corps, June 25, 2014.
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Appeal2014-005036
Application 11/779,105
Lam
Bozeman
US 7,437,327 B2 Oct. 14, 2008
US 2004/0236688 Al Nov. 25, 2004
REJECTIONS
The following rejection is before us for review.
The Examiner rejected claims 1-28 under 35 U.S.C. § 103(a) as
unpatentable over Lam and Bozeman.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Lam discloses a system to facilitate identification and resolution of
disputes between buyers and sellers based on an invoice for an order.
(Lam, col. 4, 11. 9-20).
2. Lam discloses its system operates to "find the original purchase order
information and compare such information with the invoice to
determine if there are any discrepancies." (Lam, col. 10, 11. 31-34).
3. Bozeman discloses "a commercial retail store 50, member bank 60,
clearing house 70, and Federal Reserve 80 may match and compare the
information from the check with the transaction record parameters in
the" positive pay system. (Bozeman, para. 126).
4. Appellants Specification describes comparisons using codes based on
transaction details such as shipping cost and taxes. (Spec., para. 62).
5. Bozeman discloses documents used for comparisons such as checks and
other forms of payment. (Bozeman, para. 93).
6. Lam discloses comparing an original purchase order and an invoice.
(Lam, col. 10, 11. 31-34).
7. Lam discloses:
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Application 11/779,105
the user can enter a code that indicates the reason for the dispute.
Such code may be selected from a pre-defined set of reason codes
including:
the price exceeds the order
the quantity exceeds the order
tax is not applicable to this item
the item was not ordered
the goods are unsatisfactory.
(Lam, co 1. 9, 11. 1 0-1 7).
8. Lam discloses the addition of notes, in that "the user can enter a free
form explanation as to why the item is disputed." (Lam, col. 9, 11. 17-
19).
9. Bozeman discloses "the Federal Reserve System, is employed for the
express purpose of moving funds among financial institutions and
individuals in support of commerce." (Bozeman, para. 101 ).
ANALYSIS
Claims 1, 2, 5, 9, 10, 12-15, 18, 22, 23, and 25-27
Appellants argue independent claims 1, 14, and 27 together as a
group. (Appeal Br. 6). Correspondingly, we select representative claim 1 to
decide the appeal of these claims, with remaining claims 14 and 27 standing
or falling with claim 1. Appellants do not provide a substantive argument as
to the separate patentability of claims 2, 5, 9, 10, 12, 13, 15, 18, 22, 23, 25,
and 26 that depend from claims 1and14. Thus, claims 2, 5, 9, 10, 12-15,
18, 22, 23, and 25-27 stand or fall with claim 1. See, 37 C.F.R. §
41.37( c )(1 )(vii).
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Application 11/779,105
Appellants argue that Lam deals with invoices, not "receivables," and,
thus, does not identify an exception "between an actual payment and an
expected payment" as claimed. (Appeal Br. 8-10; see also Reply Br. 3--4).
We are not persuaded by Appellants' arguments. Lam discloses a
system for identifying and resolving disputes based on differences between
an invoice and an order identified by comparing a received invoice to the
order behind the invoice. (FF 1, 2). Similarly, Bozeman discloses a
comparison made in the payment step where a payment is compared to an
expected payment in a "positive pay system," where only authorized checks
that match transaction details are permitted to clear a financial institution.
(FF 3).
We find the ordinary artisan would have recognized that the same
comparing, to identify differences in information from transaction
documents, would have been performed between the invoice and the
shipment details, and between the invoice and the received payments. The
ordinary artisan would have recognized it as a small leap to use the
comparison of information, such as at the invoice and check clearing steps of
the purchasing process disclosed in Lam and Bozeman, to also compare a
received payment to an expected payment, as claimed, by merely
substituting which documents are compared. The information compared,
such as item, quantity, price, tax, and other costs, often was the same
information used in the comparison at each step of a transaction
documenting process, as seen on both the receivable and payable sides.
(See, e.g., FF 4---6). The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Application 11/779,105
Claims 11 and 24
Dependent claims 11 and 24 recite "wherein each exception is
identified by a reason code that identifies a repair reason."
Appellants argue Lam is concerned only with invoices, not payment.
(Appeal Br. 10-11; see also Reply Br. 4).
We are not persuaded by Appellants' argument. Lam discloses a user
entering a code or codes that identify discrepancies such as the price exceeds
the order, the quantity exceeds the order, tax is not applicable, the item was
not ordered, and the goods are unsatisfactory. (FF 7). The ordinary artisan
would have recognized these same codes may apply to the comparison of a
payment and an invoice, and would have identified a "repair" for the
discrepancy, as claimed.
Claims 3, 4, 16, and 17
Dependent claims 3 and 16 recite "wherein the one or more automated
rules are based on one or more payer defined codes." Dependent claims 4
and 1 7 recite "wherein the one or more automated rules are based on one or
more user defined codes."
Appellants argue the Examiner's citation to Bozeman, paragraph 101,
"simply refers to the general characteristics of a payments system, and does
not disclose the application of any sort of automated rules, payer defined
codes, or user defined codes." (Appeal Br. 11-12; see also Reply Br. 5).
We are persuaded by Appellants' argument, because the cited portion
of Bozeman merely discloses basic features of the Federal Reserve System.
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Application 11/779,105
(FF 9). The Examiner has, thus, not established evidence of obviousness of
rules based on codes, as claimed.
Claims 6 and 19
Dependent claims 6 and 19 recite "wherein the payment data
comprises remittance information comprising one or more of check stubs,
invoice payments and coupons."
Appellants argue Lam "does not even mention" the claim features.
(Appeal Br. 12-13; see also Reply Br. 5---6).
First, "the prior application need not describe the claimed subject
matter in exactly the same terms as used in the claims .... " Eiselstein v.
Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995). Second, we find that the
ordinary artisan comparing received payments with expected payments
would have known to rely on various documents, such as remittance advice,
check stubs, invoice payments, and coupons, of which the claim requires
only one. (See KSR at 418.) (In making the obviousness determination one
"can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.") For example, Bozeman discloses
"various documents," such as checks. FF 5. Insofar as our rationale
deviates from that set forth by the Examiner, we designate it as a new
ground of rejection. 37 C.F.R. § 41.50(b).
Claims 7 and 20
Dependent claims 7 and 20 recite "wherein the payment data
comprises data associated with one or more of checks, automated clearing
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Application 11/779,105
house, electronic funds transfer, wire transfers, check returns, electronic data
interchange, image replacement documents."
Appellants argue Lam's disclosure of software "to track invoices and
print payment checks" and "wire transfer" payments does not disclose the
claim language. (Appeal Br. 13; see also Reply Br. 6).
We are not persuaded, because the ordinary artisan comparing
received payments with expected payments would have known to rely on
various documents, such as checks, which meets the claim language. (FF 2-
5). Insofar as our rationale deviates from that set forth by the Examiner, we
designate it as a new ground of rejection. 37 C.F.R. § 41.50(b).
Claims 8 and 21
Dependent claims 8 and 21 recite "wherein one or more supplemental
notes associated with the exception intended for the one or more designated
recipients are added."
Appellants argue Lam discloses changes to an invoice, but not
supplemental notes. (Appeal Br. 13-14; see also Reply Br. 7-8).
We are not persuaded, because Lam discloses a user adding free-form
notes to the records of the system, thus, meeting the claim language. (FF 8).
Independent Claim 28
Appellants do not advance any argument directed to claim 28 in either
the Appeal Brief or Reply Brief, and claim 28 is not even mentioned in the
Appeal Brief section on support for the claims. (See Appeal Br. 3-6).
Appellants thus waive any argument as to claim 28. We, thus, summarily
affirm the rejection of claim 28.
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Application 11/779,105
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1, 2, 5-15, and 18-28.
The Examiner erred rejecting claims 3, 4, 16, 17.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 5-15,
and 18-28 is affirmed. The Examiner's rejection of claims 3, 4, 16, and 17
is reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21(September7, 2004)). 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."
37 C.F.R. § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 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 ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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Appeal2014-005036
Application 11/779,105
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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