Ex Parte Jones et al

Patent Trials and Appeals Board

Feb 24, 2016

13014823 - (D) (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/014,823 01127/2011
41230 7590 02/26/2016
CUMMINS-ALLISON CORP.
C/O NIXON PEABODY LLP
70 West Madison, Suite 3500
CHICAGO, IL 60602
FIRST NAMED INVENTOR
John E. Jones
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.
247 l 71-000350USC6 1453
EXAMINER
ULLAH MASUD, MOHAMMAD R
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
02/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketingchicago@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. JONES, PAUL A. JONES, WILLIAM J. JONES,
RONALD M. GAFRON, and DOUGLAS U. MENNIE
Appeal2013---010988
Application 13/014,823
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
John E. Jones, Paul A. Jones, William J. Jones, Ronald M. Gafron, and
Douglas U. Mennie (Appellants) seek review under 35 U.S.C. § 134 of a
final rejection of claims 1-20, the only claims pending in the application on
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed May 22, 2013) and Reply Brief ("Reply Br.," filed September 10,
2013), and the Examiner's Answer ("Ans.," mailed July 10, 2013), and Final
Action ("Final Act.," mailed October 9, 2012).
Appeal2013-010988
Application 13/014,823
appeal. 2 Oral arguments were presented January 28, 2015. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a check processing system which receives a
check, images the check, transmits the check image to an accounting system
and adjusts an account associated with the check. Specification 1 :22-24.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system for electronically depositing checks comprising:
[ 1] a scanner adapted to scan and generate images of checks to
be deposited into a customer's financial account associated with
a financial institution having an accounting system,
the scanner being located remote from the financial institution,
the scanner being adapted to accept and process a stack of
checks,
the scanner further adapted to extract character data from the
images,
the character data indicative of informational content of the
checks including checking account numbers;
and
[2] means for sending the images of the checks to a network
associated with the financial institution,
the means for sending the images allowing the images to be
immediately available to the financial institution for settlement
by the accounting system
2 The Claim Appendix in the Appeal Brief begins with stating that claims 1,
2, 4--6, and 8-20 are those remaining. This is erroneous, and all of claims 1-
20 are recited in the Claims Appendix. An amendment offering to cancel
claim 3 and 7, along with an amendment to claim 1, after the Final Action
was not entered.
2
Appeal2013-010988
Application 13/014,823
such that the customer's financial account receives an
immediate credit for the deposited checks.
The Examiner relies upon the following prior art:
Nally us 4,201,978 May 6, 1980
Kaneko us 4,231,561 Nov. 4, 1980
Carlson us 5,053,607 Oct. 1, 1991
Lawlor us 5,220,501 June 15, 1993
Betts us 5,251,273 Oct. 5, 1993
We additionally rely on the following prior art:
Campbell
Yeskel
us 5,373,550
us 6,115,509
Dec. 13, 1994
Sept. 5, 2000
Claims 1, 2, and 4--6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nally, Carlson, and Betts.
Claims 3, 7, 10-14, and 16-20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Nally, Carlson, Betts, and Lawlor.
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Nally, Carlson, Betts, and Kaneko.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Nally, Carlson, Betts, Lawlor, and Kaneko.
ISSUES
The issues of obviousness tum primarily on whether the art describes
transmitting a check image to a financial institution over a network.
3
Appeal2013-010988
Application 13/014,823
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "image."
02. The ordinary meaning of "image" is a representation of the form
of a person or object. 3
03.A negotiable instrument is an unconditional promise or order to
pay a fixed amount of money, with or without interest or other
charges described in the promise or order, if it: (1) is payable to
bearer or to order at the time it is issued or first comes into
possession of a holder; (2) is payable on demand or at a definite
time; and (3) does not state any other undertaking or instruction
by the person promising or ordering payment to do any act in
addition to the payment of money. U.C.C. § 3-104(a).
04.A check is a draft, other than a documentary draft, payable on
demand and drawn on a bank. U.C.C. § 3-104(±).
05. An order that meets all of the requirements of subsection (a),
except paragraph ( 1 ), and otherwise falls within the definition of
"check" in subsection (t) is a negotiable instrument and a check.
U.C.C. § 3-104(c).
3 The American Heritage Dictionary of the English Language, Fifth Edition,
2015 https://www.ahdictionary.com/word/search.html?q=image
4
Appeal2013-010988
Application 13/014,823
Facts Related to Appellants' Disclosure
06. The funds may be made immediately for credit based on a bank
employee decision to accept the check after reviewing the image
on the terminal. Spec. 24:8-10.
07.A business could receive immediate credit for checks
electronically through the accounting system located at the bank
business based on scanning the documents through the scanner at
the business's location. The check images and other images
would immediately be available via the accounting system at the
bank for settlement purposes. Spec. 32:5-10.
Facts Related to the Prior Art
Nally
08.Nally is directed to control and processing of documents such as
bank checks and more particularly to the automatic reading of
handwritten amount characters located on bank checks for use in
processing such checks through the banking system. Nally, 1 :5-
10.
09.Nally describes processing checks in which a number of
specimens of a customer's checks are processed and analyzed with
respect to the handwritten characters comprising the amount field
for generating data which is to be used in recognizing such
characters. The character recognition data is stored in a storage
unit at an address which comprises the account number of the
customer. Nally, 1 :49-57.
5
Appeal2013-010988
Application 13/014,823
IO.Nally describes transporting a check document past an OCR
reader which scans the face of the document for storing the digital
image of the face of the document. Nally, 5:23-29.
Carlson
11. Carlson is directed to a point-of-sale device specifically adapted to
operate upon checks or other negotiable instruments in order to
complete a business transaction such as a retail sale while the
retailer and the customer are still face to face to provide security.
Carlson, 2:24--31.
12.Carlson Fig. 1 shows the device being less than an order of
magnitude larger than a check and resting on four feet. Carlson,
Fig. 1.
13. Carlson performs an electronic funds transfer and verifies the
transfer of funds at the end of the transaction. Carlson, 9:40-46,
17: 13-21, 18:8-16.
14.Carlson describes scanning a check using an optical read head
with OCR technology as an alternative to an MICR head. It could
read the face of the check as well as its rear side. Carlson, 11 :8-
25, 13:23-35; 28:7-8 (claim 18).
15. Carlson describes creating a transaction data package from the
scanned check and other collected data, and transmitting that
package to a financial institution through a network. This data
package includes the customer's account number. Carlson,
23:60-24:24.
6
Appeal2013-010988
Application 13/014,823
16. Carlson describes immediately transferring the funds during the
transaction and verifying the transfer at the merchant end, much as
with a debit card transaction. Carlson also describes marking the
check with a cancellation mark provided by the financial
institution. Carlson, 24:24--57.
Betts
1 7. Betts is directed to techniques for the repair of character
recognition information derived from scanned document images.
Betts, 1 :9-13.
18.Betts describes optical character recognition as one
implementation for extracting image shapes of textual data into
computer ASCII representations of such textual data. Betts, 3: 13-
17.
Lawlor
19.Lawlor is directed to distributing financial and other services to
remote locations, and more specifically, to providing banking type
financial transaction handling via remote data terminals located in
users' homes, offices or other locations (i.e., "home banking" or
"remote banking"). Still more specifically, the disclosed method
involves using the ATM (automatic teller machine) network as a
data communications network for conducting banking financial
transactions from homes and offices. Lawlor, 1:6-16.
7
Appeal2013-010988
Application 13/014,823
Kaneko
20.Kaneko is directed to an auto document feeder for use with a
duplex copying machine, and more particularly to an auto
document feeder which permits automatic feeding of sheet
originals having images on both sides to an exposure station of the
duplex copying machine in the order of the pages. Kaneko, 1: 6-
12.
Campbell
21. Campbell is directed to transporting images of checks between
banking institutions and the like by way of a public switched
telephone network. Campbell, 1: 6-9.
22. Campbell describes problems associated with conventional check
clearance procedures involving actual transfer of checks between
institutions being solved by transmitting images of checks
between those institutions. These images are transmitted between
institutions by way of a public telephone network. In one
example, a public switched telephone network contains a check
clearance services node which receives an image of a check from
a first institution involved in check clearance. The node
determines the destination of the check from the image itself or
from data stored in the node or data accompanying the image.
The node routes the image to another institution via the public
switched telephone network. One example of the method involves
receiving images of dishonored checks in a special node in a
public switched telephone network and routing those images
8
Appeal2013-010988
Application 13/014,823
through the network to a bank of first deposit. Campbell, l :53-
2:3.
23. Campbell describes extracting the destination information from
the check using optical character recognition to extract the
information from the check image. Campbell, 4:2-9. A check
routing and account number are part of the destination description,
as the check must be returned to the account holder's financial
institution.
Yeske!
24. Y eskel is directed to producing and storing check images. Y eskel,
1:15-18.
25. Yeskel describes how financial institutions are generally required
to maintain archives of financial documents and related data for
several years. The archives may use the original documents,
microfiche images, or electronically generated images. Y eskel,
1:20-28
ANALYSIS
We are persuaded by the Appellants' argument that none of the
references describes sending check images.
CONCLUSIONS OF LAW
The rejection of claims 1, 2, and 4--6 under 35 U.S.C. § 103(a) as
unpatentable over Nally, Carlson, and Betts is improper.
9
Appeal2013-010988
Application 13/014,823
The rejection of claims 3, 7, 10-14, and 16----20 under 35 U.S.C. § 103(a)
as unpatentable over Nally, Carlson, Betts, and Lawlor is improper.
The rejection of claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable
over Nally, Carlson, Betts, and Kaneko is improper.
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Nally, Carlson, Betts, Lawlor, and Kaneko is improper.
NEW GROUND OF REJECTION
The following new grounds of rejection are entered pursuant to
37 C.F.R. § 41.50(b).
Claims 1, 2, and 4-6 rejected under 35 U.S.C. § 103(a) as unpatentable over
Nally, Carlson, Campbell, Yeske!, and Betts
The Examiner finds that the applied art described all of the limitations of
the claims except for transmitting the check image across the network. We
agree with those findings and adopt the Examiner's findings from Final Act.
2--4. Much of the arguments as to those findings appear to arise from
Appellants' misapprehending how the art was applied. Accordingly we
illustrate how the art describes claim 1.
The Examiner began the analysis with Nally, but Carlson is the more
comprehensive reference. Carlson describes a scanner with either an MICR
or an optical read head. The optical read head uses optical character
recognition to extract character data from the image data an optical read
head would necessarily create. FF. 14. Carlson describes creating and
sending a data package that includes the character data so extracted to the
financial institution for immediate settlement. FF. 15. Carlson describes the
10
Appeal2013-010988
Application 13/014,823
customer's financial account receiving an immediate credit for the
deposited checks. FF. 16.
Because Carlson only describes optical scanning as an alternative to
magnetic scanning for the account number, and so is light on the details of
such an optical scanning alternative, the Examiner applied both Nally and
Betts to show that such optical scanning uses a scanner of some sort to
create an image and extract data from the resultant image. Thus Nally and
Betts were not combined with Carlson, but offered as additional detail on the
implications of the optical reader Carlson describes.
The only limitation remaining is that of transmitting the image over the
network to the financial institution so that it is with the other data that allow
the customer's financial account to receive an immediate credit. The
Examiner only found that Carlson sent its data package, but not that this data
package included the check image.
We find that one of ordinary skill would have known the importance of
adding the check image to Carlson's data package and that the technology
for doing so was already known as of the instant application's priority date.
In particular, Yeskel describes the importance for financial institutions to
retain archives of checks (FF. 25), which is why one of ordinary skill would
have desired to include the check image to the financial institution for the
purpose of allowing an archival copy of a check processed by that
institution, particularly as Carlson's financial institution provides the
cancellation mark imprinted on the check. FF. 16. Campbell describes an
implementation for extracting account (destination) information from a
check using optical character recognition, reinforcing the finding that it was
11
Appeal2013-010988
Application 13/014,823
known to use optical image extraction of the account number as an
alternative to an MICR reader. FF. 23. Campbell also describes an
implementation for transmitting a check image over a network to a financial
institution. Thus it was obvious to add the check image created by Carlson
to its data package that was sent to the financial institution. As there was
already sufficient data for immediate credit, the inclusion of the image
would still make the credit available immediately.
Claims 3, 7, 10--14, and 16--20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Nally, Carlson, Campbell, Yeske!, Betts, and Lawlor
The Examiner finds that the applied art described all of the limitations of
the claims except for transmitting the check image across the network. We
agree with those findings and adopt the Examiner's findings from Final Act.
4--5 and 6-8. We also rely on the findings and analysis regarding Campbell
and Y eskel supra. We are not persuaded by the Appellants' argument that
the art fails to describe the claim 10 limitation of a real time confirmation
(App. Br. 14) because Carlson has the merchant computer verify the transfer
of funds as part of the transaction.
12
Appeal2013-010988
Application 13/014,823
Claims 8 and 9 rejected under 35 U.S.C. § i03(a) as unpatentable over
Nally, Carlson, Campbell, Yeske!, Betts, and Kaneko
The Examiner finds that the applied art described all of the limitations of
the claims except for transmitting the check image across the network. We
agree with those findings and adopt the Examiner's findings from page 5 of
the Final Action. We also rely on the findings and analysis regarding
Campbell and Y eskel supra.
We are not persuaded by the Appellants' argument that Kaneko is
incompatible with a MICR reader (App. Br. 24) because both Carlson and
Campbell show it was known to substitute an optical reader for a MICR
reader.
Claim 15 rejected under 35 U.S.C. § 103(a) as unpatentable over Nally,
Carlson, Betts, Campbell, Yeske!, Lawlor, and Kaneko
The Examiner finds that the applied art described all of the limitations of
the claims except for transmitting the check image across the network. We
agree with those findings and adopt the Examiner's findings from Final Act.
8-9. We also rely on the findings and analysis regarding Campbell and
Y eskel supra.
DECISION
The rejection of claims 1, 2, 4--6, and 8-20 is reversed.
New grounds of rejection of claims 1, 2, 4--6, and 8-20 are entered.
This Decision contains a new ground of rejection within the meaning of
37 C.F.R. § 41.50(b) (2011).
13
Appeal2013-010988
Application 13/014,823
Our decision is not a final agency action.
37 C.F.R. § 41.50(b) provides that Appellants, 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 ....
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)(l)(iv) (2011).
REVERSED; 41.50(b)
14