Ex Parte Owen

Board of Patent Appeals and Interferences

Jan 30, 2006

09728705 (B.P.A.I. Jan. 30, 2006)

The opinion in support of the decision being entered today was not written for publication and is
not binding precedent of the Board.

UNITES STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

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Ex parte EUGENE OWEN, Jr.

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Appeal No. 2005-1805
Application 09/728,705

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ON BRIEF

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Before THOMAS, BLANKENSHIP, AND MACDONALD, Administrative Patent Judges.
MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-23.

We REVERSE.
Appeal No. 2005-1805
Application 09/728,705

Invention
Appellant’s invention relates to methods and systems for tracking and balancing accounts
receivable data. Appellant’s specification at page 7, paragraph [0022].
Claim 1 is representative of the claimed invention and is reproduced as follows:

1. A method of automatically tracking and balancing account receivable data
comprising:
submitting a billing data file to a processing entity, said billing data file
comprising customer account records representing accounts receivable for a given
carrier;
determining each of said customer account records as one of at least two
tracking data sets based on pre-defined criteria;
computing a total amount of accounts receivable for said customer account
records located in each tracking data set related to said given carrier;
generating a total amount of processed accounts receivable related to said
given carrier by adding the computed total amounts of accounts receivable of the
at least two tracking data sets;
comparing a total amount of pre-processed accounts receivable related to
said given carrier to the total amount of processed accounts receivable related to
said given carrier, the total amount of pre-processed accounts receivable being the
total amount of the accounts receivable inputted to the processing entity by said
carrier;
creating a discrepancy report comprising said carrier if the total amount of
pre-processed accounts receivable does not equal the total amount of processed
accounts receivables [sic]; and
creating a settlement report for said carrier if the total amount of pre-
processed accounts receivable equals the total amount of processed accounts
receivable.

References
The references relied on by the Examiner are as follows:
Crooks et al. (Crooks) 5,943,656 August 24, 1999

Northington et al. (Northington) 6,128,602 October 3, 2000

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Application 09/728,705
Rejections At Issue
Claims 1-23 stand rejected under 35 U.S.C. § 103 as being obvious over the combination
of Crooks and Northington.
Throughout our opinion, we make references to the Appellant’s briefs, and to the
Examiner’s Answer for the respective details thereof.1

OPINION
With full consideration being given to the subject matter on appeal, the Examiner’s
rejections and the arguments of the Appellant and the Examiner, for the reasons stated infra, we
reverse the Examiner’s rejection of claims 1-23 under 35 U.S.C. § 103.
Only those arguments actually made by Appellant have been considered in this decision.
Arguments that Appellant could have made but chose not to make in the brief have not been
considered. We deem such arguments to be waived by Appellant [see 37 CFR § 41.37(c)(1)(vii)
effective September 13, 2004 replacing 37 CFR § 1.192(a)].
Appellant has indicated that for purposes of this appeal the claims stand or fall together.
See page 2 of the brief. We will, thereby, consider Appellant’s claims, as standing or falling
together and we will treat claim 1 as a representative claim of all the claims.

1 Appellant filed an appeal brief on May 13, 2004. The Examiner mailed an Examiner’s Answer
on August 26, 2004.
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Application 09/728,705
Whether the Rejection of Claims 1-23 Under 35 U.S.C. § 103 is proper?

It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of ordinary skill in the
art the invention as set forth in claims 1-23. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984). The Examiner can satisfy this burden by showing that some objective
teaching in the prior art or knowledge generally available to one of ordinary skill in the art
suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). Only if this initial burden is met does the burden of coming forward with
evidence or argument shift to the Appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.
See also Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of all the pertinent
evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker, 977 F.2d at 1445, 24 USPQ2d at
1444. “[T]he Board must not only assure that the requisite findings are made, based on evidence
of record, but must also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir.
2002).
With respect to independent claim 1, we find one and only one of Appellant’s augments
persuasive. The remaining arguments are unpersuasive for essentially the reasons set forth by
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Appeal No. 2005-1805
Application 09/728,705
the Examiner in the answer. As to the one persuasive argument, Appellant argues at page 3 of
the brief, that the comparing step is “to determine if sufficient funds have been collected.” The
Examiner replied at page 9 of the answer stating, “the features … are not recited in the rejected
claims(s).”
At first analysis this panel reached the same conclusion as the Examiner. However, upon
further review we reach a different conclusion. While we agree that “to determine if sufficient
funds have been collected” is not explicitly stated in claim 1, we find that claim 1 does implicitly
require for a given carrier a determination of whether the pre-processed accounts receivable
(debits) are equal to processed accounts receivable (credits). We base our conclusion on the
preamble language of claim 1.
A preamble is generally not accorded any patentable weight where it merely recites the
purpose of a process or the intended use of a structure, and where the body of the claim does not
depend on the preamble for completeness but, instead, the process steps or structural limitations
are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v.
Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). However, statements in the
preamble reciting the purpose or intended use of the claimed invention must be evaluated to
determine whether the recited purpose or intended use results in a structural difference (or, in the
case of process claims, manipulative difference) between the claimed invention and the prior art.
If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ
458, 459 (CCPA 1963).
The preamble of claim 1 results in a manipulative difference between the claimed
invention and the prior art. Claim 1, line 1, requires “balancing.” The field of the present
invention is accounting and in that field the term “balancing” means to compute the difference
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Application 09/728,705
between the debits and credits of (an account)” or “to reconcile or equalize the sums of the debits
and credits of (an account).”2 These definitions place a restriction on claim 1 in that the
comparing step requires the pre-processed accounts receivable and processed accounts receivable
be related as debits and credits of the same account. Thus, while Crooks’ comparing current
billing information to the billing information of a prior period meets the language of the
comparing step standing by itself, Crooks’ comparing does not meet the language of the claimed
comparing step when looked at in the full context of claim 1.
Independent claim 16 contains identical “balancing” (preamble) and “comparing” (step)
limitations as found in claim 1. Thus, the result for claim 16 is the same as above.
Therefore, we will not sustain the Examiner’s rejection under 35 U.S.C. § 103.

Other Issues
In our review of this appeal we noted the following items. At claim 1, line 18, “receivables”
should be singular not plural. In paragraphs [0016]-[0026] of the substitute specification filed on
October 17, 2003, the word “pre-processed” is repeatedly misspelled as “pine-processed.” Also,
at paragraph [0006] of the substitute specification the word “determine” is misspelled.

Conclusion
In view of the foregoing discussion, we have not sustained the rejection under
35 U.S.C. § 103 of claims 1-23.

2 Webster’s II New Riverside University Dictionary, 1988, page 148. Copy provided to
Appellant.
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Application 09/728,705

REVERSED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
HOWARD B. BLANKENSHIP ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

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Appeal No. 2005-1805
Application 09/728,705

PHILMORE H. COLBURN II
CANTOR COLBURN LLP
55 GRIFFIN ROAD SOUTH
BLOOMFIELD, CT 06002

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