Ex Parte Trende et al

Patent Trial and Appeal Board

Jan 19, 2017

13164753 (P.T.A.B. Jan. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/164,753 06/20/2011 ROBERT G. TRENDE P00020-US-CON2 2405
98665 7590 01/19/2017
Otterstedt, Ellenbogen & Kammer, LLP
P.0 Box 381
Cox Cob, CT 06807
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
01/19/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT G. TRENDE,
PAUL J. MILA,
CATHLEEN CONFORTI,
PATRICK J. LEATHRUM,
CLIFFORD A. KINNUNEN JR.,
BRIAN D. LOCK,
MATTHEW T. HOLTON,
and JEFFREY M. STARK
Appeal 2014-006281
Application 13/164,753
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JAMES A. WORTH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 18, 2013) and Reply Brief (“Reply Br.,” filed May 5,
2014), and the Examiner’s Answer (“Ans.,” mailed March 14, 2014), and
Final Action (“Final Act.,” mailed May 16, 2013).
Appeal 2014-006281
Application 13/164,753
Robert G. Trende, Paul J. Mila, Cathleen Conforti, Patrick J. Leathrum,
Clifford A. Kinnunen Jr., Brian D. Lock, Matthew T. Holton, and Jeffrey M.
Stark (Appellants) seek review under 35U.S.C. § 134 of a final rejection of
claims 1—7 and 9-12, the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of electronically routing billing
information to customers over a communications network using an open
financial exchange communication protocol. Specification 1:19—24.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for electronically routing billing information over
a communications network, comprising:
[1] allowing first entities and customers to participate in an
electronic system
for at least one of bill payment and bill presentment,
said electronic system having a centrally located
computer system;
[2] allowing a plurality of customer service providers to
interface with one or more of said customers;
[3] obtaining said billing information from said first entities
with respect to one or more of said customers;
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Application 13/164,753
[4] providing a centrally located switching system
which allows for at least one of server to server, file to
server, server to file and file to file connectivity,
in part through the use of a file distribution agent,
coupled to said electronic system,
for coordinating the routing of messages between
said customer service providers and said first
entities;
[5] generating
at a given one of said customer service providers
or at a given one of said first entities
first application files comprising said messages;
[6] forwarding said first application files to said centrally
located computer system;
and
[7] converting
at said switching system
said first application files into an appropriate form
for delivery of said messages to one or more
intended recipients comprising at least one of:
said customer service providers,
and
said first entities.
The Examiner relies upon the following prior art:
Braco US 2002/0002536 A1 Jan. 3, 2002
Claims 1—7 and 9-12 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Braco.
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Appeal 2014-006281
Application 13/164,753
ISSUES
The issues of anticipation turn primarily on whether Braco’s provisional
application describes the conversion recited in independent claims 1 and 6,
and the splitting and sending recited in independent claim 12
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art — Braco
01. Braco is directed to electronic bill presentment and payment
(EBPP) and in particular, to presentment and/or payment of bills
electronically over a network. Braco para. 2.
02. Braco was filed May 9, 2011. Braco claims priority to U.S.
Provisional Application 60/203,038, filed May 9, 2000.
03. Spectrum is an independent, financial industry owned
organization, whose mission is to provide a secure, open and
interoperable infrastructure linking Consumer Service Providers
(CSPs) and Biller Service Providers (BSPs) for the purpose of
presentment and payment of consumer bills — electronically.
Spectrum has defined standards and built the infrastructure to
facilitate the interchange of transactions between multiple BSPs
and CSPs thus eliminating the need for separate bilateral
agreements. Provisional Application 5 (labeled as 1-1).
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Application 13/164,753
04. Spectrum receives Open Financial Exchange (OFX)
transactions from CSPs and proxy (HTTP Protocol) routes them to
destination BSPs. Similarly, BSP responses are proxy routed back
to CSPs. In Release 1.0, Spectrum does not parse or process the
content of OFX messages in real time as they are forwarded in
either direction. In Release 1.1 messages will be edited for syntax
per published OFX Release 1.5.1 standards and message content
will be edited to meet Spectrum requirements. Provisional
Application 6 (labeled as 1-2).
05. The Spectrum switch is an HTTP proxy server. CSPs will
direct messages to a different URL per BSP. Spectrum will
forward transactions to the corresponding BSPs, and Spectrum
will return responses from the BSPs back to the requesting CSP in
real-time. Spectrum has no capability beyond the error recovery
provided for in the protocol to retransmit failed message
transmission. In the event the link is broken before a transmission
is complete, messages will not be stored and retransmitted by
Spectrum upon re-establishment of the connection. It is the
responsibility of the requestor (CSP) to retry transmission until a
satisfactory response is received. CSPs will initiate all OFX
transactions. The transactions will conform to the HTTP and
multi-part MIME structures per Section 2 of the OFX
specification. I n Release 1.0, Spectrum will not process OFX
Headers and OFX SGML blocks, but will pass the information
through unchanged. Neither will Spectrum examine the version,
message set and messages used by CSPs and BSPs. Conformance
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Application 13/164,753
with certification standards will be enforced by log analysis.
Spectrum will not block communication between any pair of CSPs
and BSPs or between any pair of CSPs and Billers. Provisional
Application 19 (labeled as 4-2).
ANALYSIS
The instant Application was filed June 20, 2011 and is a continuation of
Applications 12/796,140 and 09/821,263 filed June 8, 2010 and March 29,
2001 respectively. Thus, the Examiner’s rejection must be supported by
Braco’s provisional application. We are persuaded by Appellants' argument
that Braco’s provisional application fails to describe the conversion recited
in independent claims 1 and 6, or the splitting and sending recited in
independent claim 12.
The main problem for the Examiner is that Braco’s provisional
application is little more than photocopies of pages from several manuals
describing routing services provided by a service known as Spectrum. As a
user manual rather than specification, this is light on implementation details.
There is no reference to the recited conversion, splitting, and sending in the
portions cited by the Examiner. Indeed, the manual explicitly states that any
form of editing is planned for a future release, and so is not enabled by
Braco’s provisional application. As this is a rejection under anticipation, the
predictability of being able to do so in the future release is not pertinent.
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CONCLUSIONS OF LAW
The rejection of claims 1—7 and 9-12 under 35 U.S.C. § 102(e) as
anticipated by Braco is improper.
DECISION
The rejection of claims 1—7 and 9—12 is reversed.
REVERSED
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