Ex Parte Melling et al

Patent Trial and Appeal Board

Dec 31, 2013

10923606 (P.T.A.B. Dec. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS G. MELLING,
RONALD WENCEL,
GREG SHRIBER,
RICHARD BOONE,
DONALD MURRAY, and
ROBERT THOMAS
____________

Appeal 2012-001102
Application 10/923,606
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on April 2, 2013.
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STATEMENT OF THE CASE
Thomas G. Melling, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-52. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method in a computing system having a processor and
memory for collecting specified information in conjunction
with the submission of an invoice on behalf of a vendor,
comprising:
providing a mechanism usable by users associated with
the vendor to provide the specified information, wherein the
specified information is separate from the invoice;
receiving the invoice from a user associated with the
vendor;
accepting the received invoice without imposing
conditions on such acceptance;
after the invoice has been accepted, determining by the
processor whether the mechanism has been used by a user
associated with the vendor to provide the specified information;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 1, 2010) and Reply Brief (“Reply Br.,” filed Sep. 29, 2011),
and the Examiner’s Answer (“Ans.,” mailed Jul. 29, 2011).
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in response to determining that the mechanism has been
used by a user associated with the vendor to provide the
specified information, making the received invoice available for
payment;
in response to determining that the mechanism has not
been used by a user associated with the vendor to provide the
specified information:
providing a notification to at least one user
associated with the vendor that identifies specified information
that must be provided before the received invoice will be made
available for payment;
holding the received invoice in the memory until
the mechanism has been used by a user associated with the
vendor to provide the specified information; and
only when the mechanism has been used by the
user associated with the vendor to provide the specified
information, using the processor to make the received invoice
available for payment.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Oney
Heinemann

US 2004/0034578 A1
US 6,882,986 B1
Feb. 19, 2004
Apr. 19, 2005
The following rejections are before us for review:
1. Claims 51 and 52 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
2. Claims 51 and 52 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
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distinctly claim the subject matter which Appellants regard as the
invention.
3. Claims 1-52 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heinemann and Oney.

ISSUES
Regarding the rejection of claims 51 and 52 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter, the issue is whether
independent claim 51 “is directed to neither a ‘process’" nor a ‘machine,’
but rather embraces or overlaps two different statutory classes of invention
set forth in 35 U.S.C. [§] 101 which is drafted so as to set forth the statutory
classes of invention in the alternative only” (Ans. 5).
Regarding the rejection of claims 51 and 52 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention,
the issue is whether independent claim 51 as drafted (“A data transmission
network conveying . . .”) is a hybrid claim covering either an apparatus or a
process and thereby rendered indefinite.
Regarding the rejection of claims 1-52 under 35 U.S.C. § 103(a) as
being unpatentable over Heinemann and Oney, the issue is whether the
Examiner erred in finding the claimed subject matter would have been
obvious over Heinemann and Oney to one of ordinary skill in the art.

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FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
Claims 51 and 52 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
We will reverse the rejection because, giving claim 51 the broadest
reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art, it is directed to a “data
transmission network” functioning so as to convey a notification data
structure comprising the two specific pieces of information described in the
claim. We do not find that claim 51 “embraces or overlaps two different
statutory classes of invention” as the Examiner has concluded (Ans. 5).
Rather, claim 51 has been drafted to define a “data transmission network” in
functional terms.

Claims 51 and 52 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention.
We will reverse this rejection because claim 5, as reasonably broadly
construed, defines a “data transmission network” in functional terms and
does not cover both an apparatus and a process as the Examiner concluded
(Ans. 17-18). The reliance on IPXL Holdings, LLC v. Amazon.com, Inc., 430
F.2d 1377, 1384 (Fed. Cir. 2005) is misplaced because we do not have here
claimed an apparatus and a step of using said apparatus. See Ans. 18. Claim
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51 does not include a step of using the “data transmission network” but
rather defines it in terms of what it does, i.e., functionally.
When a claim limitation is defined in purely functional terms,
the task of determining whether that limitation is sufficiently
definite is a difficult one that is highly dependent on context
(e.g., the disclosure in the specification and the knowledge of a
person of ordinary skill in the relevant art area).
Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed.
Cir. 2008). In that regard, we do not find that the Examiner has determined,
e.g., in light of the disclosure in the Specification and the knowledge of a
person of ordinary skill in the relevant art area, that claim 51 covers two or
more plausible definitions and in doing so established a prima facie case of
indefiniteness in the first instance.

Claims 1-52 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Heinemann and Oney.

The rejection is challenged on four grounds.
First, the Appellants argue that “[t]he Examiner has failed to show
how the combination of Heinemann and Oney discloses or suggests all of
the recited features of claims 1-52, and has thereby failed to establish a
prima facie case of obviousness.” App. Br. 14.
There are five independent claims on appeal: claims 1, 2, 33, 42, and
51. They are argued; the dependent claims are not. The Appellants argued
claims 1 (App. Br. 15), 2 and 33 (App. Br. 18), 42 (App. Br. 19), and 51
(App. Br. 20) as separate groups. We select claims 1, 2, 42, and 51 as the

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representative claims for these 4 groups, and the remaining claims 3-41,
43-50, and 52 stand or fall with claims 2, 42, and 51. 37 C.F.R. §
41.37(c)(1)(vii) (2011).
Claim 1
The Appellants argue that
[i]ndependent claim 1 recites "holding the received
invoice in the memory until the mechanism has been used by a
user associated with the vendor to provide the specified
information" and "only when the mechanism has been used by
the user associated with the vendor to provide the specified
information, using the processor to make the received invoice
available for payment”
(App. Br. 15) and that these limitations are not disclosed in Heinemann and
Oney (App. Br. 16-18).
Claim 1 is drawn to a computer-enabled process for collecting specific
information “in conjunction with the submission of an invoice on behalf of a
vendor.” From a plain reading of the claim, the process is reasonably
broadly construed as covering four steps.
Step 1. A mechanism is provided “to provide the specified
information, wherein the specified information is separate from the
invoice.”
Step 2. “[T]he invoice from a user associated with the vendor” is
received and accepted “without imposing conditions on such acceptance.”
Step 3. “[A]fter the invoice has been accepted,” a determination is
made as to “whether the mechanism has been used by a user associated with
the vendor to provide the specified information.”

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Step 4. This step is conditional on the result of the determination
made via step 3. This step covers a group of actions consisting of (a) an
action when there is a positive determination and (b) an action when there is
a negative determination. Specifically, if the determination is (a) positive,
then:
 “the received invoice [is] made available for payment.”
Or alternatively, if the determination is (b) negative, then:
 “a notification to at least one user associated
with the vendor that identifies specified
information that must be provided before the
received invoice will be made available for
payment” is provided;
 “the received invoice [is held] in the memory
until the mechanism has been used by a user
associated with the vendor to provide the
specified information;” and
 “only when the mechanism has been used by
the user associated with the vendor to provide
the specified information, using the processor
to make the received invoice available for
payment.”
It is not disputed that it would have been obvious over the
combination of Heinemann and Oney to provide “a mechanism . . . to
provide the specified information, wherein the specified information is
separate from the invoice” (step 1), receive and accept “the invoice from a
user associated with the vendor” “without imposing conditions on such
acceptance” (step 2) and, if a “determin[ation is made]” that “the mechanism

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has been used by a user associated with the vendor to provide the specified
information” (step 3), make available for payment the “received invoice”
(step 4(a)).
Be that as it may, we nevertheless find the preponderance of the
evidence favors the Examiner’s position that the claimed method would
have been obvious to one of ordinary skill in the art over the combination of
Heinemann and Oney if in practicing the claimed method the alternative
occurred; i.e., a determination (step 3) is made that “the mechanism has not
been used by a user associated with the vendor to provide the specified
information” (step 4(b) emphasis added).
With regard to the three claimed actions to be performed in response
to this alternative determination (step 4(b)), the Appellants do not dispute
that it would have been obvious to provide “a notification to at least one user
associated with the vendor that identifies specified information that must be
provided before the received invoice will be made available for payment”
(claim 1). The dispute is over whether it would have been obvious to further:
hold[] the received invoice in the memory until the
mechanism has been used by a user associated with the vendor
to provide the specified information; and
only when the mechanism has been used by the user
associated with the vendor to provide the specified information,
us[e] the processor to make the received invoice available for
payment.
Claim 1. App. Br. 15.
According to the Examiner
Heinemann discloses an invoice available for payment only
after specified information has been provided (Column 9, Lines
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11-19, Referring to FIGS. 7A, 7B, 8 and 9[)], and the step 316,
once the invoice has passed the automatic comparisons, the
invoice is automatically added to the billable party database 76
for payment processing on the schedule defined by the billable
party in the billable party billing cycle table 72.
Ans. 19. “Oney describes why it is advantageous and necessary to review
supporting documents as well as the invoice itself, before effecting
payment (paragraph 2).” Id. at 19. According to the Examiner:
Therefore, since a computer holds an submitted input in
memory and Heinemann discloses payment only after specified
information is provided, the limitation is met as it would have
been obvious to one of ordinary skill in the art to combine
Heinemann and Oney to result in "holding the received invoice
in the memory until the mechanism has been used by a user
associated with the vendor to provide the specified
information", "a payment gating component that… . . holds the
received invoice until the user interface component has been
used by the submitter to provide the specified information, and
only when the user interface component has been used by the
submitter to provide the specified information, makes the
received invoice available for payment", and "only when the
mechanism has been used by the user associated with the
vendor to provide the specified information, using the processor
to make the received invoice available for payment". Examiner
notes that both Heinemann and Oney describe user interfaces
(Heinemann, Figure 1 and Oney Figure 6) and it would be
obvious to submit any input through a user interface.
For these reasons, Heinemann and Oney clearly teach
holding the received invoice in memory until the mechanism
has been used by a user associated with the vendor to provide
the specified information and only when the mechanism has
been used by the user associated with the vendor to provide the

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specified information, using the processor to make the received
invoice available for payment given the broadest reasonable
interpretation.
Id. at 19-20.
The Appellants disagree, arguing that “[a]t most, Oney discloses that
an invoice may be submitted with supporting attachments separate from the
invoice. . . . Oney does not condition whether an invoice is made available
for payment based on whether a supporting attachment is submitted with an
invoice and, in particular, does not hold an invoice until supporting
attachments are provided.” App. Br. 17. The Appellants also argue that “[a]t
most, Heinemann describes that an invoice can be evaluated for payment by
comparing the invoice to a previous invoice or payment total.” Id. at 18.
Accordingly, the Appellants do not dispute that Oney discloses an invoice
and supporting attachments may be separately submitted or that Heinemann
discloses comparing an invoice with other information before payment.
Rather the Appellants dispute that either Oney or Heinemann individually
discloses holding the invoice until supporting attachments are provided.
Setting aside that, at the time of invention, it was notoriously well known to
put on hold an action based on a document until supporting evidence is
submitted, we find in agreement with the Examiner that given the
combination of Oney and Heinemann, it would have been obvious to make
an invoice available for payment based on submission of a supporting
attachment. The fact that Oney discloses that an invoice may be submitted
with supporting attachments separate from the invoice and that Heinemann
discloses comparing an invoice with other information before payment
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would lead one of ordinary skill in the art to make an invoice available for
payment based on submission of a supporting attachment.
A preponderance of the evidence supports the prima face case of
obviousness whereby the Examiner found it would have been obvious to
to one of ordinary skill in the art over the combination of Heinemann and
Oney to provide “a mechanism . . . to provide the specified information,
wherein the specified information is separate from the invoice” (step 1),
receive and accept “the invoice from a user associated with the vendor”
“without imposing conditions on such acceptance” (step 2) and, if a
determination (step 3) is made that “the mechanism has not been used by a
user associated with the vendor to provide the specified information” (step
4(b)), to provide “a notification to at least one user associated with the
vendor that identifies specified information that must be provided before the
received invoice will be made available for payment” and further:
hold[] the received invoice in the memory until the
mechanism has been used by a user associated with the vendor
to provide the specified information; and
only when the mechanism has been used by the user
associated with the vendor to provide the specified information,
us[e] the processor to make the received invoice available for
payment.
Claim 1.
We find that that the Appellants are unpersuasive as to error in the
rejection of claim 1.

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Claims 2 and 33
The Appellants rely on the same arguments used to challenge the
rejection of claim 1. See App. Br. 19. For the same reasons we found those
arguments unpersuasive as to error in the rejection of claim 1, we find them
equally unpersuasive as to error in the rejection of claims 2 and 33.
Claim 42
The Appellants rely on the same arguments used to challenge the
rejection of claim 1. See App. Br. 19-20. For the same reasons we found
those arguments unpersuasive as to error in the rejection of claim 1, we find
them equally unpersuasive as to error in the rejection of claim 42.
Claim 51
The Appellants rely on the same arguments used to challenge the
rejection of claim 1. See App. Br. 20-21. For the same reasons we found
those arguments unpersuasive as to error in the rejection of claim 1, we find
them equally unpersuasive as to error in the rejection of claim 51.
Second, the Appellants argue that “[t]he combination of Heinemann
and Oney fails to disclose or suggest all of the recited features of claims 1-
52, and is therefore incapable of supporting any proper rejection under
35 U.S.C. § 103(a).” App. Br. 21. This argument is unpersuasive as to error
in the rejection. The Appellants list the limitations alleged not to be
disclosed in Heinemann and Oney. But the question is whether the claimed
subject matter as a whole would have been obvious to one of ordinary skill
in the art at the time of the invention given the combination of Heinemann
and Oney, not whether claim limitations are disclosed. The Examiner’s

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position is very clearly based on one of ordinary skill in the art reaching the
claimed subject matter given the combined disclosures of Heinemann and
Oney.
Third, the Appellants argue that “[t]he Examiner has failed to show a
rational apparent reason for combining Heinemann and Oney, and has
thereby failed to establish a prima facie case of obviousness” App. Br. 22.
This is incorrect. The Examiner did not fail to show a rationale for
combining Heinemann and Oney in making the legal conclusion of
obviousness. The reasoning is in fact quite extensive. See Ans. 6-15 and 18-
26.
Fourth, the Appellants argue that “[t]here is no apparent reason to
combine Heinemann and Oney, and therefore their combination is incapable
of supporting any proper rejection under 35 U.S.C. § 103(a).” App. Br. 22.
No other arguments remaining and no evidence of secondary
considerations of nonobviousness having been provided for our
consideration, the rejection is sustained.
Accordingly, the rejection of claim 1, claims 2 and 33, and claims 3-
32 and 34-41 which stand or fall with claims 2 and 33, claim 42, and claims
43-50 which stand or fall with claim 42, and claim 51, and claim 52 which
stands or falls with claim 51, is sustained.

CONCLUSIONS
The rejection of claims 51 and 52 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter is reversed.

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The rejection of claims 51 and 52 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention
is reversed.
The rejection of claims 1-52 under 35 U.S.C. § 103(a) as being
unpatentable over Heinemann and Oney is affirmed.

DECISION
The decision of the Examiner to reject claims 1-52 is affirmed.
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)(1)(iv).

AFFIRMED

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