Ex Parte Lundberg

Board of Patent Appeals and Interferences

Sep 23, 2009

09240456 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte STEVEN W. LUNDBERG 8
___________ 9
10
Appeal 2009-007188 11
Application 09/240,456 12
Technology Center 3600 13
___________ 14
15
Decided: September 23, 2009 16
___________ 17
18
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
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STATEMENT OF THE CASE 1
Steven W. Lundberg (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-16, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We REVERSE. 8
THE INVENTION 9
The Appellant invented a computerized method and system for the 10
payment of patent and trademark fees (Specification 1:11-15). 11
An understanding of the invention can be derived from a reading of 12
exemplary claims 1 and 15, which are reproduced below [bracketed matter 13
and some paragraphing added]. 14
1. A computer-implemented method for managing patent and 15
trademark fees comprising: 16

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 3, 2007) and the Examiner’s Answer (“Ans.,” mailed
November 14, 2007), and Final Rejection (“Final Rej.,” mailed January 26,
2006).
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[1] inputting identification information for a patent or 1
trademark matter of a client of a law firm and a requested fee 2
associated with the matter for payment to an agency as data 3
representing the identification information into a computer 4
system; 5
[2] deducting a charge for the requested fee against a client 6
account maintained at least in part by an organization separate 7
from the law firm for the client, the client account initially 8
funded by the client such that the client account has a positive 9
balance; 10
[3] the organization generating a fee invoice to the law firm 11
for the requested fee and transmitting the fee invoice to an 12
accounting computer system used by the law firm; 13
[4] generating a client invoice from the accounting computer 14
system including a charge to the client for payment of the 15
requested fee, wherein the payment of the requested fee is used 16
to replenish the client account maintained by the organization, 17
wherein the client invoice corresponds to the fee invoice to the 18
law firm such that payment by the client to the law firm for the 19
client invoice provides funds to replenish the client account; 20
and 21
[5] replenishing the client account with the funds collected 22
from payment of the client invoice for the requested fee. 23
24
15. The method of claim 1, further comprising: 25
[1] transmitting electronically data representing first 26
information regarding the charge for the requested fee from the 27
computer system to a fee computer system maintained by the 28
organization; 29
[2] inputting second information regarding the charge 30
received from an external source as data representing the 31
second information into the fee computer system; and 32
[3] reconciling electronically the data representing the first 33
information regarding the charge with the data representing the 34
second information regarding the charge at the fee computer 35
system. 36
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1
2
THE REJECTIONS 3
The Examiner relies upon the following prior art: 4
Brown WO 96/10235 Sep. 7, 1995
Egendorf US 5,794,221 Aug. 11, 1998
Remington et al. US 6,070,150 May 30, 2000
5
Claims 1-16 stand rejected under 35 U.S.C. § 112, first paragraph, as 6
failing to comply with the written description requirement. 7
Claims 1-16 stand rejected under 35 U.S.C. § 112, second paragraph, as 8
being indefinite for failing to particularly point out and distinctly claim the 9
subject matter the Appellant regards as the invention. 10
Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Remington and Brown. 12
Claims 15-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable 13
over Remington, Brown, and Egendorf. 14
ARGUMENTS 15
Claims 1-16 rejected under 35 U.S.C. § 112, first paragraph, as failing 16
to comply with the written description requirement 17
The Appellant argues these claims as a group. 18
Accordingly, we select claim 1 as representative of the group. 37 C.F.R. 19
§ 41.37(c)(1)(vii) (2008). 20
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The Examiner found that the Specification discusses three computer 1
systems (firm computer system, fee computer system, and accounting 2
computer system) involved in the printing of a check, whereas the claims are 3
in disagreement (Ans. 3). 4
The Appellant contends that, pages 7-8, 11-24, 42-43, 46-47, and 62 of 5
the Specification and the originally filed claims 1-9 and 15-16 support the 6
currently pending claims such that a person with ordinary skill in the art 7
would have recognized that the Appellant had possession of the claimed 8
invention (App. Br. 9-15). 9
10
Claims 1-16 rejected under 35 U.S.C. § 112, second paragraph, as being 11
indefinite for failing to particularly point out and distinctly claim the subject 12
matter the Appellant regards as the invention 13
The Appellant argues these claims as a group. 14
Accordingly, we select claim 1 as representative of the group. 15
The Examiner found that it is unclear as to why the client account is 16
being replenished and why the bill is being paid twice, as described in the 17
introductory portion (Ans. 4). 18
The Appellant contends that the introductory portion explains how the 19
system works and notes that the claims may include less particularity as to 20
certain details that are not essential to the generalized system and method 21
described in the Specification (App. Br. 15). 22
23
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Claims 1-14 rejected under 35 U.S.C. § 103(a) as unpatentable over 1
Remington and Brown 2
The Appellant argues these claims as a group. 3
Accordingly, we select claim 1 as representative of the group. 4
The Examiner found that Remington describes all of the limitations of 5
claim 1, except for limitation [4] (Ans. 4-5). The Examiner found that 6
Brown describes limitation [4] (Ans. 5). The Examiner took Official Notice 7
of the fact that it was old and well-known in the art of billing paying and fee 8
collection to replenish an account upon payment in order to maintain a 9
positive balance (Ans. 6). The Examiner further found that a person with 10
ordinary skill in the art would have recognized the benefit of transacting 11
with the Patent and Trademark office by implementing a feature to generate 12
an invoice to the client for the amount owed for fees paid for by the funds 13
(Ans. 5-6). The Examiner found that a person with ordinary skill in the art 14
would have found it obvious to combine Remington and Brown (Ans. 6). 15
The Appellant contends that (1) Remington and Brown fail to describe 16
identifying a particular matter of a client of a firm or any system that 17
describes in which a regular client of an organization identifies a particular 18
transaction by inputting matter identification, as required by limitation [1] of 19
claim 1 (App. Br. 15), (2) Remington and Brown fail to describe an account 20
maintained by any other organization analogous to the client account 21
maintained separate from the firm in which deposits are made or that is 22
funded to have a positive balance (App. Br. 16), (3) Remington and Brown 23
fail to describe generating an invoice for services, since neither the services 24
nor account are present and further fail to describe calculating a bill payable 25
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to the account associated with the client in such a way as the account 1
maintains a positive balance (App. Br. 16), and (4) there is no motivation to 2
combine the reference because the problems to be solved by the claimed 3
invention are not found in the references and the Examiner is using 4
impermissible hindsight (App. Br. 16-17). 5
6
Claims 15-16 rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Remington, Brown, and Egendorf 8
The Appellant argues these claims as a group. 9
Accordingly, we select claim 15 as representative of the group. 10
The Examiner found that Remington and Brown fail to describe the 11
additional limitations of claim 15 (Ans. 10). The Examiner found that 12
Egendorf describes all of the additional limitations of claim 15 (Ans. 10-11). 13
The Examiner further found that a person with ordinary skill in the art would 14
have recognized the benefit of facilitating the transfer of information and 15
notice of charges by transmitting charge information to the necessary 16
systems and reconciling the charges (Ans. 10-11). The Examiner found that 17
a person with ordinary skill in the art would have found it obvious to 18
combine Remington, Brown, and Egendorf (Ans. 11). 19
The Appellant contends that Egendorf fails to cure the deficiencies of 20
Remington and Brown with respect to claim 1 (App. Br. 17). 21
ISSUES 22
The pertinent issues to this appeal are: 23
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• Whether the Appellant has sustained the burden of showing that the 1
Examiner erred in rejecting claims 1-16 under 35 U.S.C. § 112, first 2
paragraph, as failing to comply with the written description 3
requirement. 4
o This pertinent issue turns on whether the Specification 5
describes the claimed invention such that a person of ordinary 6
skill in the art would have known the Appellant was in 7
possession of the invention. 8
• Whether the Appellant has sustained the burden of showing that the 9
Examiner erred in rejecting claims 1-16 under 35 U.S.C. § 112, 10
second paragraph, as being indefinite for failing to particularly point 11
out and distinctly claim the subject matter the Appellant regards as the 12
invention. 13
o This pertinent issue turns on whether a person with ordinary 14
skill in the art would have understood what the Appellant is 15
claiming as the invention. 16
• Whether the Appellant has sustained the burden of showing that the 17
Examiner erred in rejecting claims 1-14 under 35 U.S.C. § 103(a) as 18
unpatentable over Remington and Brown. 19
o This pertinent issue turns on whether Remington and Brown 20
describe an account that is managed by an organization, which 21
is independent of the law firm. 22
• Whether the Appellant has sustained the burden of showing that the 23
Examiner erred in rejecting claims 15-16 under 35 U.S.C. § 103(a) as 24
unpatentable over Remington, Brown, and Egendorf. 25
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o This pertinent issue turns on Egendorf curies the deficiencies of 1
Remington and Brown discussed supra. 2
3
FACTS PERTINENT TO THE ISSUES 4
The following enumerated Findings of Fact (FF) are believed to be 5
supported by a preponderance of the evidence. 6
Facts Related to Appellant’s Disclosure 7
01. A recirculating retainer feature is described in the Specification 8
(Specification 42:4). An account is maintained by an organization 9
separate from the firm and the account itself is for the client 10
(Specification 42:14-16). A charge, payable against the 11
maintained account, is issued for a matter of a client for payment 12
to an agency (Specification 42:11-16). The account, initially 13
funded by the client, is replenished when the client submits 14
payments for a client invoice for the amount charged against the 15
account (Specification 42:20-24 and 43:1-6). 16
Facts Related to the Prior Art 17
Remington 18
02. Remington is directed to electronic bill presentment and 19
payment remittance systems (Remington 1:5-6). 20
03. The system allows for a biller to create a bill and payment 21
remittance information in any desired format the biller chooses 22
(Remington 5:46-49). The biller submits the bill electronically to 23
a consumer and the bill is presented to the consumer using a user 24
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interface (Remington 5:49-52). The consumer is in direct control 1
of the amount to be paid, the payment date, and the account to be 2
debited for payment (Remington 5:66-67 and 6:1-2). Payment 3
instructions authorized by the consumer are transmitted over the 4
Internet back to the biller or an intermediary service to initiate 5
payment of the bill (Remington 6:14-17). 6
Brown 7
04. Brown is directed to an automated accounting system for an 8
entity in which a plurality of data inputs are made to a file 9
established for the entity (Brown 1:2-8). 10
05. The system includes a master ledger and subsidiary ledgers for 11
all of the entities with which a first entity will enter into financial 12
transactions (Brown 5:14-17). Personal and business code 13
numbers for transaction recordings are assigned (Brown 7:5-7). 14
Individual job accounting may be automatically facilitated by an 15
alphanumeric identifier (Brown 7:9-11). The automatic codes are 16
entered into systems where the subsidiary ledgers are maintained 17
and the codes are used to identify methods for fund transfers and 18
accounting (Brown 7:15-20). Balances are added to personal 19
company payables and receivable lists when they are not paid in a 20
timely manner (Brown 7:23-25). 21
Egendorf 22
06. Egendorf is directed to a method of billing for commercial 23
transactions over the internet (Egendorf 1:4-5). 24
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07. Customers exchange information with vendors in order to 1
complete a transaction (Egendorf 5:18-21). The exchanged 2
information includes customer identifying information, product or 3
service information, transaction amount, delivery information, and 4
order identification information (Egendorf 5:22-27). The 5
transaction information is obtained by the provider (Egendorf 6
5:30-31). The provider verifies that the transaction is approved by 7
the customer, vendor, and third party credit provider (if necessary) 8
by sending verifying information to the parties (Egendorf 5:35-9
39). The customer’s account is billed by the provider after the 10
item is delivered to the customer (Egendorf 5:42-44). 11
Facts Related To The Level Of Skill In The Art 12
08. Neither the Examiner nor the Appellant has addressed the level 13
of ordinary skill in the pertinent arts of electronic financial 14
transactions. We will therefore consider the cited prior art as 15
representative of the level of ordinary skill in the art. See Okajima 16
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 17
absence of specific findings on the level of skill in the art does not 18
give rise to reversible error ‘where the prior art itself reflects an 19
appropriate level and a need for testimony is not shown’”) 20
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 21
F.2d 158, 163 (Fed. Cir. 1985). 22
Facts Related To Secondary Considerations 23
09. There is no evidence on record of secondary considerations of 24
non-obviousness for our consideration. 25
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PRINCIPLES OF LAW 1
Written Description 2
The first paragraph of 35 U.S.C. 112 requires that the specification 3
shall contain a written description of the invention. This requirement is 4
separate and distinct from the enablement requirement. See, e.g., Vas-Cath, 5
Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir. 1991). 6
The “written description” requirement implements the principle 7
that a patent must describe the technology that is sought to be 8
patented; the requirement serves both to satisfy the inventor's 9
obligation to disclose the technologic knowledge upon which 10
the patent is based, and to demonstrate that the patentee was in 11
possession of the invention that is claimed. 12
Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005). 13
One shows that one is “in possession” of the invention by 14
describing the invention, with all its claimed limitations, not 15
that which makes it obvious. [Vas-Cath Inc. v. Mahurkar, 935 16
F.2d 1555, 1563-64 (Fed. Cir. 1991)] (“[T]he applicant must 17
also convey to those skilled in the art that, as of the filing date 18
sought, he or she was in possession of the invention. The 19
invention is, for purposes of the ‘written description’ inquiry, 20
whatever is now claimed.”) (emphasis in original). One does 21
that by such descriptive means as words, structures, figures, 22
diagrams, formulas, etc., that fully set forth the claimed 23
invention. Although the exact terms need not be used in haec 24
verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038 [ . . . ] 25
(Fed.Cir.1995) (“[T]he prior application need not describe the 26
claimed subject matter in exactly the same terms as used in the 27
claims .... ”), the specification must contain an equivalent 28
description of the claimed subject matter. 29
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) 30
It is the disclosures of the applications that count. Entitlement 31
to a filing date does not extend to subject matter which is not 32
disclosed, but would be obvious over what is expressly 33
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disclosed. It extends only to that which is disclosed. While the 1
meaning of terms, phrases, or diagrams in a disclosure is to be 2
explained or interpreted from the vantage point of one skilled in 3
the art, all the limitations must appear in the specification. The 4
question is not whether a claimed invention is an obvious 5
variant of that which is disclosed in the specification. Rather, 6
[an] application itself must describe an invention, and do so in 7
sufficient detail that one skilled in the art can clearly conclude 8
that the inventor invented the claimed invention as of the filing 9
date sought. 10
id at 1571-72. 11
12
Indefiniteness 13
The test for definiteness under 35 U.S.C. § 112, second paragraph, is 14
whether “those skilled in the art would understand what is claimed when the 15
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety 16
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)(citations omitted). 17
18
Obviousness 19
A claimed invention is unpatentable if, “the differences between the 20
subject matter sought to be patented and the prior art are such that the 21
subject matter as a whole would have been obvious at the time the invention 22
was made to a person having ordinary skill in the art.” KSR Int’l Co. v. 23
Teleflex Inc., 550 U.S. 398, 399 and 406 (2007); Graham v. John Deere Co., 24
383 U.S. 1, 13-14 (1966). 25
In Graham, the Court held that that the obviousness analysis is 26
bottomed on several basic factual inquiries: “[(1)] the scope and content of 27
the prior art are to be determined; [(2)] differences between the prior art and 28
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the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 1
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 2
U.S. at 406. “The combination of familiar elements according to known 3
methods is likely to be obvious when it does no more than yield predictable 4
results.” Id. at 416. 5
ANALYSIS 6
Claims 1-16 rejected under 35 U.S.C. § 112, first paragraph, as failing 7
to comply with the written description requirement 8
The Appellant contends that pages 7-8, 11-24, 42-43, 46-47, and 62 of 9
the Specification and the originally filed claims 1-9 and 15-16 support the 10
currently pending claims such that a person with ordinary skill in the art 11
would have recognized that the Appellant had possession of the claimed 12
invention (App. Br. 9-15). The Examiner responds that a person with 13
ordinary skill in the art would not have recognized that the claimed 14
invention is directed towards a recirculating retainer because the Appellant’s 15
Specification describes three computer systems and further describes the 16
printing of a check on a printer (Ans. 12-13). 17
We agree with the Appellant. The Specification describes that an 18
account is maintained by an organization on behalf of a client and charges 19
are deducted from that account for payment to an agency for fees associated 20
with a matter of the client (FF 01). The Specification further describes that a 21
client invoice is generated and sent to the client for payment and the 22
managed account is replenished when payment is received from the client 23
(FF 01). The Specification describes several embodiments of the claimed 24
invention and the recirculating retainer feature is one such embodiment 25
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described therein. As such, the Specification describes the claimed 1
invention such that a person with ordinary skill in the art would have 2
recognized that the Appellant was in possession of the claimed invention. 3
Claims 1-16 rejected under 35 U.S.C. § 112, second paragraph, as being 4
indefinite for failing to particularly point out and distinctly claim the subject 5
matter the Appellant regards as the invention 6
The Appellant contends that the introductory portion explains how the 7
system works and notes that the claims may include less particularity as to 8
certain details that are not essential to the generalized system and method 9
described in the Specification (App. Br. 15). The Examiner responds that 10
limitations from the Specification are not read into the claims (Ans. 13). 11
We agree with the Appellant. The appropriate test for indefiniteness is 12
whether one of ordinary skill in the art would understand what is being 13
claimed in light of the Specification. As such, the claims should be analyzed 14
to determine whether a person with ordinary skill in the art would 15
understand what is being claimed. The Examiner has failed to point to 16
specific limitations or language in the claims that render the claims 17
indefinite. As such, we find that the claims are not indefinite. 18
19
Claims 1-14 rejected under 35 U.S.C. § 103(a) as unpatentable over 20
Remington and Brown 21
We find the Appellant’s second contention to be determinative. The 22
Appellant contends that (2) Remington and Brown fail to describe an 23
account maintained by any other organization analogous to the client 24
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account maintained separate from the firm in which deposits are made or 1
that is funded to have a positive balance (App. Br. 16). We agree with the 2
Appellant. Limitation [2] of claim 1 requires that an account, initially 3
funded by the client, be maintained by an organization on behalf of a client. 4
Limitation [3] further requires that once funds have been deducted from the 5
managed account, the organization bills a law firm for the amount deducted. 6
Limitation [4] requires that the law firm generate an invoice for payment for 7
the amount deducted and submit the invoice to the client. Limitation [5] 8
requires that once payment from the client is received, the account is 9
replenished by the payment. That is, of the three parties (a client, a law firm, 10
and an organization), the organization manages the account. Remington 11
describes a system where a consumer directly pays a biller for products or 12
services rendered (FF 03). Brown describes a system where buyers and 13
sellers have electronically connected ledgers such that transactions between 14
the buyer and seller are automatically captured in the ledgers (FF 05). Both 15
Remington and Brown fail to describe an account managed by an 16
organization that is separate from the law firm. As such, Remington and 17
Brown specifically fail to describe limitation [2] of claim 1. 18
19
Claims 15-16 rejected under 35 U.S.C. § 103(a) as unpatentable over 20
Remington, Brown, and Egendorf 21
The Appellant contends that Egendorf fails to cure the deficiencies of 22
Remington and Brown with respect to claim 1 (App. Br. 17). We agree with 23
the Appellant. Egendorf describes a transaction between a customer, a 24
vendor, and a provider, where the vendor delivers the product to the 25
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customer and the provider bills the customer (FF 07). However, Egendorf 1
fails to describe an account managed by an organization that is separate from 2
the law firm. As such, Remington, Brown, and Egendorf fail to describe 3
claims 15-16. 4
CONCLUSIONS OF LAW 5
The Appellant has sustained the burden of showing that the Examiner 6
erred in rejecting claims 1-16 under 35 U.S.C. § 112, first paragraph, as 7
failing to comply with the written description requirement. 8
The Appellant has sustained the burden of showing that the Examiner 9
erred in rejecting claims 1-16 under 35 U.S.C. § 112, second paragraph, as 10
being indefinite for failing to particularly point out and distinctly claim the 11
subject matter the Appellant regards as the invention. 12
The Appellant has sustained the burden of showing that the Examiner 13
erred in rejecting claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over 14
Remington and Brown. 15
The Appellant has sustained the burden of showing that the Examiner 16
erred in rejecting claims 15-16 under 35 U.S.C. § 103(a) as unpatentable 17
over Remington, Brown, and Egendorf. 18
19
DECISION 20
To summarize, our decision is as follows. 21
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• The rejection of claims 1-16 under 35 U.S.C. § 112, first paragraph, as 1
failing to comply with the written description requirement is not 2
sustained. 3
• The rejection of claims 1-16 under 35 U.S.C. § 112, second 4
paragraph, as being indefinite for failing to particularly point out and 5
distinctly claim the subject matter the Appellant regards as the 6
invention is not sustained. 7
• The rejection of claims 1-14 under 35 U.S.C. § 103(a) as unpatentable 8
over Remington and Brown is not sustained. 9
• The rejection of claims 15-16 under 35 U.S.C. § 103(a) as 10
unpatentable over Remington, Brown, and Egendorf is not sustained. 11
12
REVERSED 13
14
15
16
mev 17
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SCHWEGMAN, LUNDBERG, & WOESSNER, P.A. 21
P.O. BOX 2938 22
MINNEAPLOIS, MN 55402 23