Ex Parte Knowles et al

Board of Patent Appeals and Interferences

Feb 28, 2011

10370676 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313- 1450
www uspto go".
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. I
101370,676 02/21/2003 W. Jeffrey Knowles 7074.0003 1034
84278 7590 03/02/20 1 1
Robert D. Atkins
605 W. Knox Road, Suite 104
Tempe, AZ 85284
EXAMINER
KARMIS, STEFANOS
r ARTUNIT 1 PAPERNUMBER 1
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
03/02/2011 ELECTRONIC
main @plgaz.com
moneill @plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Exparte W. JEFFREY KNOWLES,
RUSSELL HALES DAY,
DAVID J. MATTHEWS,
JEFFREY R. BURKE,
SCOTT E. WESSMAN,
A. CARL0 OKOLOWITZ, and
JOSEPH B. EMIG
Appeal 2009-013 187
Application 101370,676
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-013 187
Application 101370,676
STATEMENT OF THE CASE
W. Jeffrey Knowles et al. (Appellants) seek our review under 35
U.S.C. 5 134 (2010) of the final rejection of claims 1-7,9-14, and 16-21. We
have jurisdiction under 35 U.S.C. 5 6(b) (2010). Claims 21 and 23-28 are
canceled. ' App. Br. 2.
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
This invention is a "system and method of electronically processing
data transactions." Specification [0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for processing financial transactions
between first and second parties, comprising:
a first financial institution having an
electronic communication link for providing
access to a credit instrument for the first party;
' In the Appeal Brief, the Appellants indicate that claims 21 and 23-28 are
canceled. App. Br. 3. However, the Answer includes claims 21 and 23-28
in the rejection under 35 U.S.C. 5 103(a) over Weiss, Kozlowski, and Kling
as on review. Answer 3. We will only address the rejection of claims 1-7,
9-14, and 16-20. Upon return of the application to the Examiner,
appropriate action should be taken on claims 21 and 23-28. See 37 C.F.R
5 41.33 (2010).
3 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed May 22, 2007) and the Examiner's Answer ("Answer," mailed Sep. 24,
2007).
Appeal 2009-013 187
Application 101370,676
a second financial institution having an
electronic communication link for acquiring
transactions from the second party;
an association having an electronic
communication link to the first financial institution
for providing data processing services; and
a transaction processing center operating
with electronic communication links between the
second financial institution and the association,
wherein the transaction processing center includes:
(a) a data separation processor receiving and
separating the transactions into high-throughput
purchase transactions and low-throughput batch
transactions, the data separation processor
separating the high-throughput purchase
transactions from the low-throughput batch
transactions by message content or file attribute
associated with the high-throughput purchase
transactions and the low-throughput batch
transactions, the data separation processor further
formatting the high-throughput purchase
transactions and the low-throughput batch
transactions for transmission through the
transaction processing center,
(b) a first data processing channel coupled to
a first output of the data separation processor and
dedicated to transmitting the high-throughput
purchase transactions within the system, the first
data processing channel being continuously open
and active for high-throughput processing, and
(c) a second data processing channel,
separate from the first data processing channel,
coupled to a second output of the data separation
processor and dedicated to transmitting the low-
throughput batch transactions within the system
with a lower system priority than the high-
throughput purchase transactions, the second data
processing channel including an incoming queue
Appeal 2009-013 187
Application 101370,676
for receiving the low-throughput batch
transactions, a data processor for reading the low-
throughput batch transactions from the incoming
queue and placing the low-throughput batch
transactions in local storage, and an outgoing
queue for receiving the low-throughput batch
transactions from the local storage and transmitting
the low-throughput batch transactions through the
second output of the data separation processor.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
Kling US 5,878,215 Mar. 2, 1999
Weiss US 200210174031 A1 Nov. 21,2002
Kozlowski US 6,513,070 B1 Jan. 28,2003
The following rejection is before us for review:
1. Claims 1-7, 9-14 and 16-21 are rejectedunder 35 U.S.C.
§103(a) as being unpatentable over Weiss, Kozlowski, and
Kling .
ISSUE
The issue is whether claims 1-7, 9-14, 16-21, and 23-28 are
unpatentable under 35 U.S.C. 9 103(a) over Weiss, Kozlowski, and Kling.
Specifically, the issue is whether the Examiner has established a prima facie
showing that one of ordinary skill in the art would have been led by the
combination of Weiss, Kozlowski, and Kling to limitation (c) above.
Appeal 2009-013 187
Application 101370,676
ANALYSIS
Claims 1-6
The Appellants argue that the combination of Weiss, Kozlowksi, and
Kling fails to teach or suggest:
(c) a second data processing channel . . . the
second data processing channel including an
incoming queue for receiving the low-throughput
batch transactions, a data processor for reading the
low-throughput batch transactions from the
incoming queue and placing the low-throughput
batch transactions in local storage, and an outgoing
queue for receiving the low-throughput batch
transactions from the local storage and transmitting
the low-throughput batch transaction through the
second output of the data separation processor.
Claim 1.
Br. 19-21
In response, the Examiner characterizes this limitation as a recitation
of the intended use of the claimed invention and asserts that "Weiss in view
of Kozlowski in further view of Kling is capable of utilizing an
incomingloutgoing queue for processing the communication over the low-
throughput batch transaction data channel." Answer 10- 1 1.
However, we find that the Examiner has mischaracterized the
limitation at issue as a recitation of an intended use. The limitation at issue
contains structural limitations (e.g., a data processor and local storage),
which must be shown to be taught by the Examiner's proposed combination.
In the rejection, while the Examiner does not mention the data processor or
local storage when addressing the second data channel limitation. See
Answer 4. We find that the Examiner has failed to establish a prima facie
Appeal 2009-013 187
Application 101370,676
showing of obviousness in rejecting claim 1. Accordingly, we find that the
Appellants have overcome the rejection of claim 1, and claims 2-6
dependent thereon, under 35 U.S.C. 5 103(a) over Weiss, Kozlowski, and
Kling .
Claims 7 and 9-1 3
Like claim 1 above, claim 7 also recites a second data processing
channel that includes an incoming queue for receiving the low-throughput
batch transactions, a data processor for reading the low-throughput batch
transactions from the incoming queue and placing the low-throughput batch
transactions through the second output of the data separation processor. The
Examiner relied upon the same rationale to reject claim 7 as used to reject
claim 1. Answer 5. For the reasons discussed above with regard to claim 1,
we find that the Examiner has failed to establish a prima facie showing of
obviousness. Accordingly, we find that the Appellants have overcome the
rejection of claim 7, and claims 9-13, dependent thereon, under 35 U.S.C.
5 103(a) over Weiss, Kozlowski, and Kling.
Claims 14 and 16-20
Claim 14 recites a method, which includes a step of "locally storing
the low-throughput transactions in a data storage device within the second
data processing channel." The Examiner relied upon the same rationale to
reject claim 14 as used to reject claim 1. Answer 5. For the reasons
discussed above with regard to claim 1, we find that the Examiner has failed
to establish a prima facie showing of obviousness. Accordingly, we find
that the Appellants have overcome the rejection of claim 14, and claims 16-
Appeal 2009-013 187
Application 101370,676
20, dependent thereon, under 35 U.S.C. 5 103(a) over Weiss, Kozlowski,
and Kling .
DECISION
The decision of the Examiner to reject claims 1-7, 9-14, and 16-20 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2010).
REVERSED
mev
Robert D. Atkins
605 W. Knox Road, Suite 104
Tempe AZ 85284