Ex parte Lockwood

Board of Patent Appeals and Interferences

Sep 27, 2000

08347270 (B.P.A.I. Sep. 27, 2000)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LAWRENCE B. LOCKWOOD
____________
Appeal No. 1997-2678
Application No. 08/347,270
____________
ON BRIEF
____________
Before HAIRSTON, KRASS and HECKER, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 and 11-15, all of the claims pending in the
application.
The invention is directed to a system for processing
business and financial transactions between entities at remote
sites.
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Independent claim 1 is reproduced as follows:
1. An automatic data processing system for processing
business and financial transactions between entities from
remote
sites which comprises:
a central processor programmed and connected to
process a variety of inquiries and orders transmitted from
said
remote sites;
said central processor including:
means for receiving information about said
transactions from said remote sites;
means for retrievably storing said
information;
at least one terminal at each of said remote
sites including a data processor and operational sequencing lists
of program instructions;
means for remotely linking said terminal to
said central processor and for transmitting data back and
forth
between said central processor and said terminal;
said terminal further comprising means for
dispensing information and services for at least one of said
entities including:
a video screen;
means for holding operational data
including programming, informing, and inquiring sequences of
data;
means for manually entering information;
means for storing information, inquiries
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and orders for said transactions entered by one of said
entities via said means for manually entering information, and
data
received through and from said central processor;
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on-line means for transmitting said
information, inquiries, and orders to said central processor;
on-line means for receiving data
comprising operator-selected information and orders fromsaid central processor
via said linking means;
means for outputting said informing and
inquiring sequences on said video screen in accordance
with
preset routines and in response to data entered through said
means for entering information;
means for controlling said means for
storing, means for outputting, and means for transmitting,
including means for fetching additional inquiring sequences in
response to a plurality of said data entered through said
means
for entering and in response to information received from said
central processor;
said informing sequences including
directions for operating said terminal, and for presenting
interrelated segments of said operational data describing a
plurality of transaction operations;
said programming sequences including means
for interactively controlling the operation of said video
screen,
data receiving and transmitting means; and for selectively
retrieving said data from said means for storing;
said means for storing comprising means for
retaining said operational sequencing list and means
responsive
to the status of the various means for controlling their
operation;
said central processor further including:
means responsive to data received from
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one of said terminals for immediately transmitting selected
stored information to said terminal; and
means responsive to an order received
from a terminal for updating data in said means for storing;
whereby said system can be used by
said entities, each using one of said terminals to exchange
information, and to respond to inquiries and orders
instantaneously and over a period of time.
The examiner relies on the following references:
Lockwood et al. (Lockwood) 4,3259,631 Nov. 16, 1982
Young "Computer Firm To Help Buyers Shop for Loans."
Washington Post, published April 7, 1984
Claims 1 and 11-15 stand rejected under 35 U.S.C. § 112,
first paragraph, as relying on an inadequate written
description and a nonenabling disclosure.
Claims 1 and 11-15 stand further rejected under 35 U.S.C.
§ 103 as unpatentable over Lockwood in view of Loan Express.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
We reverse.
Turning first to the rejection under 35 U.S.C. § 112,
first paragraph, at first it appears that the examiner bases
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the rejection only on the written description section of 35
U.S.C.
§ 112 because the examiner alleges that the specification, as
originally filed, “does not provide support for the invention
as is now claimed ” [answer-page 3]. But, later on, at page 4
of the answer, the examiner complains about an “inadequate”
disclosure and a failure “to provide an enabling disclosure”
because the IBM Dictionary material has not been inserted into
the specification.
In any event, whether the rejection is based on only the
written description portion of 35 U.S.C. § 112 or on both the
written description and enablement portions of 35 U.S.C. §
112, we will not sustain the rejection of the claims under 35
U.S.C.
§ 112.
The examiner points to much of the language of the claims
(e.g., “operational,” “controlling,” “fetching,” “means for
outputting,” etc. and contends that these added features of
the claims are not supported by the original disclosure since
the examiner is “unable to find correlation between the new
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added/amended features and corresponding text in the
specification as originally filed” [answer-page 4].
We have reviewed each and every claimed phrase objected
to by the examiner and we find that many of those terms have
clear meanings in the art which would have been understood by
the artisan as being disclosed, even if not in those exact
words, within the specification as filed. For example, terms
such as “directions,” “storing,” “fetching,” etc. are terms of
art which have clear support in the specification. Sequences
“including directions” clearly refers to the description
whereby communications with an applicant for a loan is
performed through a video screen and instructions and requests
by a simulated loan officer give “directions” to an applicant.
Memory shown in the drawings provides support for “storing.”
The flowcharts of the drawings clearly provide support for
fetching additional inquiring sequences.
Without going into each and every one of the claimed
phrases objected to by the examiner, suffice it to say that we
agree with and adopt appellant’s arguments at pages 4-18 of
the principal brief wherein appellant indicates exactly where
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in the original disclosure support may be found for each and
every one of the contested phrases in the claims.
We suspect that the examiner is attempting to find and
match the exact words of the claims with words or phrases
within the original disclosure. However, if the specification
contains a description of the claimed invention, albeit not in
ipsis verbis (in the identical words), then the examiner, in
order to meet the burden of proof, must provide reasons why
one of ordinary skill in the art would not consider the
description sufficient. In re Alton, 76 F.3d 1168, 37 USPQ2d
1578, 1583 (Fed. Cir. 1996). It is enough that the original
disclosure makes clear that the applicant had possession of
the invention now claimed at the time the application was
originally filed. We hold that it is clear, in the instant
case, that appellant did, indeed, have such possession.
We also note that although appellant painstakingly went
through each and every claimed phrase objected to by the
examiner and pointed out specifically the support for each one
in the original disclosure, the examiner has not convincingly
rebutted such showings, contending only that the “wordings
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[sic] have no correlation to the specific claimed features”
[answer-page 7].
We now turn to the rejection of the claims under 35
U.S.C.
§ 103.
We have reviewed our prior decision of July 31, 1991 in
Appeal No. 91-1232, as well as the arguments of appellant and
the examiner, the declaration of Lois Van Ewijk and the
decisions of the District Court and the Federal Circuit
[Lockwood v. American Airlines Inc., 107 F.3d 1565, 41 USPQ2d
1961 (Fed. Cir. 1997)] affirming the invalidity of U.S. Patent
No. 4,359,631 to Lockwood and we conclude that, in the instant
case, the examiner has failed to establish a prima facie case
of obviousness with regard to the claimed subject matter.
Accordingly, we will not sustain the rejection under 35 U.S.C.
§ 103.
We agree with the examiner that Lockwood generally
discloses an interactive system similar to that claimed in
that the menu-driven system of Lockwood does disclose
“operational sequencing lists of program instructions” since
there is a program which operates to sequentially present
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inquiries to a user and to respond to answers to those
inquiries by the user. Therefore, one can broadly interpret
Lockwood as disclosing the claimed “inquiring sequences of
data.” Since Lockwood presents options to a user and responds
to various selections, Lockwood also may be said to have a
“means for outputting said informing and inquiring sequences
on said video screen,” as claimed. Lockwood also appears to
disclose many of the other claimed features.
However, independent claim 1 also requires a “means for
controlling” the storing means, the outputting means and the
transmitting means. Lockwood clearly has a “means for
controlling.” But claim 1 requires that the means for
controlling includes “means for fetching additional inquiring
sequences in response to a plurality of said data entered
through said means for entering and in response to information
received from said central processor.” While Lockwood may
fetch additional inquiring sequences (as in presenting
additional questions or options to a user) in response to a
user input, we find no suggestion in Lockwood of fetching the
additional inquiring sequences in response to both the user
entry of data and to information received from the central
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processor. This claim language appears to go to the disclosed
feature of the system making a loan application decision based
on both user application form entries and on data received,
for example, from a credit bureau. We find no such teaching
in Lockwood and the rather sparse teachings of Loan Express do
not provide for the deficiencies of Lockwood in this regard.
Further, the examiner has not presented any convincing
explanation as to why this fetching means responsive to both
data entry and information received from the central processor
would have been an obvious modification to Lockwood.
Accordingly, the examiner has not established a prima
facie case of obviousness with regard to the instant claimed
subject matter and we will not sustain the rejection of claims
1 and
11-15 under 35 U.S.C. § 103.
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We have not sustained the rejection of claims 1 and 11-15
either under 35 U.S.C. § 112, first paragraph, or under 35
U.S.C.
§ 103. Thus, the examiner’s decision is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
jg
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Application No. 08/347,270
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Henri J. A. Charmasson
1545 Hotel Circle SO
Suite 150
San Diego, CA 92108