Ex Parte Wright

Board of Patent Appeals and Interferences

Nov 28, 2008

09766934 (B.P.A.I. Nov. 28, 2008)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL A. WRIGHT
____________

Appeal 2008-3272
Application 09/766,934
Technology Center 3600
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Decided: November 28, 2008
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
DAVID B. WALKER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Carl A. Wright (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 24-29 and 32. Claims 30 and 31 have been
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2008-3272
Application 09/766,934

SUMMARY OF DECISION
We REVERSE. 1
THE INVENTION
“The present invention relates generally to billing services; and, more
particularly, to an automated method and system for the production of
invoices, each invoice individually customized according to the preferences
of the customer or client.” Specification 1:6-8.
The methods of the current art, however, fail to provide billing
or account services particularized to a set of preferences. For
example, a client may want specific fields of information that
are not included under a general format to appear on the bill, or
may prefer to have the information content displayed according
to a particular layout.[Specification 2:1-4.]

The present invention addresses the shortcomings of the current
art with an automated system and method that permits a
provider of the same (hereafter, the provider) to customize
invoice and bill formats as well as their contents for service
organizations (hereafter, customers) or recipients of services
(hereafter, clients). Under the system and method of the present
art, a format customized to an individual account or client
drives the invoice-generation process. This format consists of a
plurality of invoice specification software objects that "pull"
information on to the output page from other sources of data.
Each specification software object acts as a machine to generate
its goal output. A structured grouping of these objects working
together generate the goal output, e.g. a telephone bill.
[Specification 2:12-21.]

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sep. 17, 2007) and Reply Brief (“Reply Br.,” filed Dec. 17,
2007), and the Examiner’s Answer (“Answer,” mailed Oct. 17, 2007).
Appeal 2008-3272
Application 09/766,934

Claim 24, the sole independent claim, is reproduced below and
illustrative of the subject matter on appeal.
24. A method of providing customized billing
services, comprising the steps of:
providing a plurality of software objects, at
least certain of which are capable of accessing an
outside source, accessing one or more other
software objects, or creating one or more new
software objects, each object being operative to
acquire and process data specific to a bill or the
recipient thereof;
configuring a subset of the software objects
to generate customized bill content for a particular
bill recipient;
repetitively invoking the software objects of
the subset, and any software objects that they
access or create, until all of the objects have
completed the data acquisition and processing
actions required to generate the customized bill
content; and
producing a bill by formatting the
customized bill content for the particular bill
recipient.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ensel
Lakritz
US 6,493,685 B1
US 2003/0140316 A1
Dec. 10, 2002
Jul. 24, 2003

The following rejections are before us for review:
Appeal 2008-3272
Application 09/766,934

1. Claims 24-29 are rejected under 35 U.S.C. §102(e) as anticipated by
Ensel.
2. Claim 32 is rejected under 35 U.S.C. §103(a) as unpatentable over
Ensel and Lakritz.
ISSUES
The issue is whether the Appellant has shown that the Examiner erred
in rejecting claims 24-29 under 35 U.S.C. §102(e) as anticipated by Ensel
and claim 32 under 35 U.S.C. §103(a) as unpatentable over Ensel and
Lakritz. The issue turns on two questions: (1) does Ensel describe software
objects “capable of accessing an outside source, accessing one or more other
software objects, or creating one or more new software objects, each object
being operative to acquire and process data specific to a bill or the recipient
thereof” (claim 24) and (2) does Ensel describe “repetitively invoking the
software objects of the subset, and any software objects that they access or
create, until all of the objects have completed the data acquisition and
processing actions required to generate the customized bill content” (Id.).

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

Obviousness
Appeal 2008-3272
Application 09/766,934

“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 24-29 under §102(e) as being anticipated by Ensel.
Question (1): does Ensel describe software objects “capable of
accessing an outside source, accessing one or more other software
objects, or creating one or more new software objects, each object
being operative to acquire and process data specific to a bill or the
recipient thereof” (claim 24).
We have carefully reviewed the record and find that Ensel does not
describe the limitation in claim 24 wherein software objects are “capable of
accessing an outside source, accessing one or more other software objects, or
Appeal 2008-3272
Application 09/766,934

creating one or more new software objects, each object being operative to
acquire and process data specific to a bill or the recipient thereof”.
Ensel describes a system for electronically creating, publishing, and
distributing bills and processing payments from a biller’s customers. The
system employs an Information Interface Provider (IIP). The IIP accesses
raw billing data from the biller and formatted for particular customers. Col.
6, ll. 32-50. The formatting is performed using relational and object-oriented
databases. Col. 4, ll. 17-38. Bills can be customized. Col. 11, ll. 4-5. Ensel
describes various databases and corresponding files used to format the
billing data. For example, there is a Summary file (element 210, Fig. 2)
which contains data related to, for example, name and account number. Col.
10, ll. 53-55. There is also an E-bill file (element 215, Fig. 2) which contains
data related to, for example, charges on a credit card. Col. 10, ll. 59-62.
“In a preferred embodiment of the present invention, the E-bill file 215 is
an object oriented file in which the E-bills are stored as objects.” Col. 10,
ll. 63-65.
We have had a difficulty understanding precisely what in the Ensel
system the Examiner is equating to the claimed “software object.” The
Answer variously refers to Ensel’s IIP, databases, database files, and plug-
ins without explicitly stating which of these is to be viewed as teaching the
claimed “software object.” In that regard, the Examiner did not do a claim
construction analysis leading to a finding as to the meaning the phrase
“software object” should be given. Compare In re Crish, 393 F.3d 1253,
1256 (Fed. Cir. 2004). “A determination that a claim is anticipated under
35 U.S.C. § 102(b) involves two analytical steps. First, the Board must
interpret the claim language, where necessary.… Secondly, the Board must
Appeal 2008-3272
Application 09/766,934

compare the construed claim to a prior art reference and make factual
findings that ‘each and every limitation is found either expressly or
inherently in [that] single prior art reference.’ Celeritas Techs. Ltd. v.
Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998).”
The Examiner appears to have focused on Ensel’s database files.
According to the Examiner, Ensel
disclose[s] that the sets of data used for bill contents are stored
as a plurality of software objects, that is a subset of objects, in
an object oriented E-bill file 215. This indicates that the subset
of objects required for to provide bill contents for a particular
bill recipient are instantiated, i.e. created or generated whenever
invoked and in order to generate a plurality of data… . [Answer
7-8.2]
The Appellant argues that Ensel’s objects (those the Examiner equates as
objects) do not actually acquire and process data while also operative, for
example, to access an outside source, as claimed. App. Br. 3 and Reply Br.
1. According to the Appellant, the objects to which the Examiner refers
function simply as data. App. Br. 4 and Reply Br. 1.
The question is whether Ensel’s objects (e.g., E-bill file 215) are
“capable of accessing an outside source … [and] operative to acquire and
process data specific to a bill” (claim 24) as the Examiner has argued.
Taking the E-bill 215 file as an example, this file appears to be simply a
database with no other function than to store data related to an E-bill. This
view is supported by Ensel’s description of E-bill file 215: “database … an

2 We are aware of the Examiner’s reliance on the Board decision in prior
appeal 2006-1123 where the panel indicated that the claim term “objects”
implied they were “created or generated whenever invoked and in order to
generate a plurality of data” (see p. 6 of the decision). However, the claims
before us are different from those that were before the panel in 2006-1123.
Appeal 2008-3272
Application 09/766,934

E-bill file 215 containing both current and historical data related to E-Bills.”
Col. 10, ll. 7-11. The E-bill file does not appear to include instructions
giving the file a capability to perform the claimed functions. We note that
the Examiner did argue that Ensel teaches “plug-ins” that can perform the
formatting of the data in the databases. Answer 5. The salient passage in
Ensel reads: “[a]pplication ‘plug-ins’ residing on application server 240
[which] accomplish the actual formatting of the electronic bills” (col. 13, ll.
57-62). The “plug-ins” Ensel describes do appear to have a function
rendering them operative to process data specific to a bill. But what is not
clear is whether they are also capable of “accessing an outside source …
[and] operative to acquire … data specific to a bill” (claim 24). While the
Ensel’s “plug-ins” could have those functions, there is no evidence that they
would necessarily, i.e., inherently, have them. “Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted in
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991).
Accordingly, we agree with the Appellant that Ensel does not
explicitly or inherently describe the claimed software objects which are
“capable of accessing an outside source, accessing one or more other
software objects, or creating one or more new software objects, each object
being operative to acquire and process data specific to a bill or the recipient
thereof” (claim 24).

Appeal 2008-3272
Application 09/766,934

Question (2): does Ensel describe “repetitively invoking the software
objects of the subset, and any software objects that they access or
create, until all of the objects have completed the data acquisition and
processing actions required to generate the customized bill content”
(claim 24).
The Examiner has taken the position that Ensel describes the claim
limitation “repetitively invoking the software objects of the subset, and any
software objects that they access or create, until all of the objects have
completed the data acquisition and processing actions required to generate
the customized bill content.” Answer 5. (Emphasis added) The Examiner
relies on this sentence in Ensel: “The structure and content of the Summary
file 210 and the E-Bill file 215 varies from biller to biller.” Col. 10, ll. 50-
51. See Answer 8. The Examiner also argues that “Ensel’s system, that is
IIP, in order to generate, format and present bills to customers accesses and
acquires all the billing data needed to publish and present bills to customers
and this will require repetitively invoking the different objects stored in
different files [e.g., E-bill file 215].” Answer 11.
We disagree with the Examiner. The difficulty with the Examiner’s
position is that it does not account for the fact that the claimed method
repetitively invokes the software “until all of the objects have completed the
data acquisition and processing actions required to generate the customized
bill content” (claim 24) and that this refers to the “bill content for a
particular bill recipient” (see step 2 of claim 24). Arguably, Ensel teaches
repetitively invoking software objects, such as database E-bill 215. But there
is no explicit teaching that a repetitious invoking of such a software object is
performed until a customized bill content for a particular bill recipient is
completed. Nor do we find that the Examiner has shown that such a step
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Application 09/766,934

would necessarily flow from the teachings of Ensel. When relying upon the
theory of inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. See Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
While Ensel’s system may possibly be able to do what the method of claim
24 requires, anticipation cannot be based on probabilities.
Accordingly, we agree with the Appellant that Ensel does not
explicitly or inherently teach “repetitively invoking the software objects of
the subset, and any software objects that they access or create, until all of the
objects have completed the data acquisition and processing actions required
to generate the customized bill content” (claim 24).
Because we find that Ensel does not describe software objects
“capable of accessing an outside source, accessing one or more other
software objects, or creating one or more new software objects, each object
being operative to acquire and process data specific to a bill or the recipient
thereof” (claim 24) and “repetitively invoking the software objects of the
subset, and any software objects that they access or create, until all of the
objects have completed the data acquisition and processing actions required
to generate the customized bill content” (Id.), we hold that the Appellant has
shown that the Examiner erred in rejecting claim 24 as anticipated over
Ensel. We reach the same conclusion as to dependent claims 25-29.

Appeal 2008-3272
Application 09/766,934

The rejection of claim 32 under §103(a) as being unpatentable over Ensel
and Lakritz.
Claim 32 depends on claim 24. The Examiner did not address claim
24 in the context of §103 and thus appears to have maintained and relied
upon the position taken in the context of §102 that Ensel describes the afore-
discussed limitations in claim 24 (i.e., software objects “capable of accessing
an outside source, accessing one or more other software objects, or creating
one or more new software objects, each object being operative to acquire
and process data specific to a bill or the recipient thereof” (claim 24) and
“repetitively invoking the software objects of the subset, and any software
objects that they access or create, until all of the objects have completed the
data acquisition and processing actions required to generate the customized
bill content” (Id.)). Because we have found that Ensel does not describe
those steps and no articulation as to their obviousness over Ensel in view of
Lakritz has been presented, we find that a prima facie case of obviousness of
claim 32 has not been established.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 24-29 under 35 U.S.C. §102(e) as being anticipated by
Ensel and claim 32 under 35 U.S.C. §103(a) as being unpatentable over
Ensel and Lakritz.

Appeal 2008-3272
Application 09/766,934

DECISION
The decision of the Examiner to reject claims 24-29 and 32 is
reversed.

REVERSED

vsh

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