Ex Parte Clarke et al

Board of Patent Appeals and Interferences

Feb 6, 2009

10260385 (B.P.A.I. Feb. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM D. CLARKE, ROBERT A. LAPRADE,
DANIEL M. PALMA, and ANITA RAO
____________

Appeal 2008-6112
Application 10/260,385
Technology Center 3600
____________

Decided:1 February 6, 2009
____________

Before HUBERT C. LORIN, DAVID B. WALKER, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/260,385

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William D. Clarke, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-23. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 2

THE INVENTION
The invention is an electronic billing presentment and payment
(EBPP) system. The system includes “a customizable EBPP system
whereby the base logic for providing notification messages to customers and
to system administrators need not be changed in order to provide customized
event notification messages to suit different billers. Rather, customization
features are stored in data repositories, preferably in XML format.”
(Specification 5:11-15.) A business logic module invokes the messaging
based on the occurrence of predetermined events, such as availability of new
bills. (Specification 6:5-7.) An event messaging logic module has standard
logic components and generates customized messages. (Specification 6:5-
14.) A message delivery means transmits the messages to the recipient.
(Specification 6:15-17.)
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Sep. 24, 2007) and the Examiner’s Answer (“Answer,” mailed Dec. 13,
2007).
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1. An electronic bill presentment computer
system for providing bill information from a biller
to a remote customer over a network, the
electronic bill presentment computer system
generating event notification messages during
operation, the event notification messages being
customized to meet preferences of the biller, the
electronic bill presentment computer system
configured and programmed to include:
an event messaging descriptor repository
storing customized information for event
notification messaging in accordance with biller
preferences;
an event business module processing
predetermined events;
an event messaging logic module responsive
to an occurrence of a predetermined event in the
event business module, the event messaging logic
module generating customized event messages
based on corresponding customized information
stored in the event messaging descriptor
repository;
a message delivery means transmitting said
customized event messages to one or more
recipients; and
wherein the event messaging descriptor
repository is discrete from the event messaging
logic module, thereby providing that said
repository independently reflects the biller's
particular preferences, the information in said
repository being customizable for the biller.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Generous US 2002/0120697 A1 Aug. 29, 2002
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The following rejection is before us for review:
1. Claims 1-23 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Generous.

ISSUES
The issue before us is whether the Appellants have shown that the
Examiner erred in rejecting claims 1-23 under 35 U.S.C. § 102(e). The issue
turns of whether Generous describes an electronic bill presentment system
that generates customized messages as claimed or merely a customized
message delivery system.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim Construction
1. Claim 1 recites “[a]n electronic bill presentment computer
system.”
2. Clam 1 recites “the event notification messages being customized
to meet preferences of the biller.”
3. Claim 1 recites “an event messaging descriptor repository storing
customized information for event notification messaging in
accordance with biller preferences.”
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4. Claim 1 recites “the event messaging logic module generating
customized event messages based on corresponding customized
information stored in the event messaging descriptor repository.”
5. Claim 1 recites “a message delivery means transmitting said
customized event messages to one or more recipients.”
6. Claim 1 recites “the information in said repository being
customizable for the biller.”
7. The Specification does not provide a definition for “customized.”
8. The ordinary and customary meaning of “customized” is “to build,
fit or alter according to individual specifications.” (See Merriam-
Webster’s Collegiate Dictionary 286 (10th Ed. 1998.)(Entry for
“customized.”)
Anticipation
9. Generous describes a system for assembling and delivering
customized messages. (Generous [0085]-[0103].)
10. Generous in paragraph [1271] states, “[p]otential users of the
system may be, e.g., stock trading companies, catalog companies,
electronic bill presentment enterprises, retail outlets, financial
institutions, publishing and global Fortune 1000 companies.”
11. Generous’ system includes a submission database. (Generous
[0316] and [0350].)
12. The submission database stores message templates, message style
sheets and the recipient information. (Generous [0287]-[0317].)
13. Generous’ system includes a submission router, which processes a
submission. (Generous [0352].)
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14. The submission router is informed by the XML Parsers of a new
submission arrival and then begins processing the submission.
(Generous [0086] and [0350].)
15. Generous’ system includes an assembly engine. (Generous
[0418].)
16. The assembly engine creates the customized messages specifically
for the assigned recipient. (Generous [0418], [0421], and [0422].)
17. The messages are created from message templates, message style
sheets, and the recipient information directly from the submission
database. (Generous [0418].)
18. The assembly engine is discrete from the submission database.
(Generous, Fig. 1.)
19. Generous’ system includes four paths for delivery agents: e-mail,
pager, voice, FAX, or instant message. (Generous [0009].)
20. The delivery agents deliver messages to the recipient. (Generous
[0102].)

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
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broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
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).

ANALYSIS
The Appellants argued claims 1-23 as a group (Br. 5). We select
claim 1 as the representative claim for this group, and the remaining claims
2-23 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellants argue that Generous does not describe a system that 1)
is customizable, 2) is configured to generate messages, and 3) is an
electronic bill presentment system as claimed in claim 1. (Br. 5.) Therefore,
Appellants argue that Generous does not anticipate claim 1.
First, Appellants state, “[h]owever, the claims of this application are
not directed to a general concept of sending customized messages. Rather,
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the claimed features are to the new architecture that allows the system to be
customized to meet a biller’s event messaging needs.” (Br. 5.)
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. Because the PTO is
entitled to give claims their broadest reasonable
interpretation, our review of the Board's claim
construction is limited to determining whether it
was reasonable. In re Morris, 127 F.3d 1048,
1055 (Fed. Cir. 1997). Secondly, the Board must
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).

In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Construing claim 1, we find that claim 1 does not require a
customizable system. The Appellants’ argument is thus not commensurate
in scope with what is claimed, but rather based on a limitation not found in
the claim. Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of
appellant’s arguments fail from the outset because, . . . they are not based on
limitations appearing in the claims . . . .”) However, claim 1 does require
customized messages and customizable information. Claim 1 recites “the
event notification messages being customized to meet preferences of the
biller” (FF 2) and “an event messaging descriptor repository storing
customized information for event notification messaging in accordance with
biller preferences” (FF 3). The Specification does not include an express
definition of “customized.” (FF 7.) The ordinary and customary meaning of
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“customized” is to build, fit, or alter according to individual specifications.
(FF 8.) Therefore, Claim 1 requires event messages that are built, fit or
altered according to the biller and information built, fit or altered according
to the biller and stored in the event messaging descriptor repository.
We find that Generous discloses the claimed customized event
messages and customized information. In Generous, each message is built
for an assigned recipient according to a template or style input by the client.
(FF 15-17.) The information in the submission database (i.e., template, style
or recipient information) is built according to the data input by the client.
(FF 11-12.) Therefore, we find that Generous describes the claimed
customized messages and customized information.
Next, the Appellants argue that Generous is directed to message
delivery and not message generation as required by the claims. Therefore,
Generous only discloses the “message delivery means” of claim 1 and the
“transmitting” step of claim 12. Appellant states, “Generous includes no
disclosure of the remainder of elements which are directed to the structures
and steps for generating messages.” (Br. 5.)
We find that Generous does disclose a system that generates messages
as well as delivers messages. (FF 16 and 19.) Claim 1 recites “the event
messaging logic module generating customized event messages based on
corresponding customized information stored in the event messaging
descriptor repository.” (FF 4.) The Generous system includes an assembly
engine which creates customized messages from the message template,
message style sheet and recipient information in the submission database.
(FF 16-17.) Although not specifically mentioned by the Examiner,
Generous does describe all of the limitations of claim 1. (FF 10-20.) See In
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re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that patents are
"relevant for all they contain").
Finally, the Appellants state, “Generous make[s] no mention of
electronic bill presentment at all.” (Br. 5.) Claim 1 recites “an electronic
bill presentment computer system.” We find that Generous does mention
electronic bill presentment. (FF 1.) Generous states, “[p]otential users of
the system may be, e.g., stock trading companies, catalog companies,
electronic bill presentment enterprises, retail outlets, financial institutions,
publishing and global Fortune 1000 companies.” (Emphasis added.)
(Generous [1271].)
We find that Generous anticipates claim 1. Claim 12, the only other
independent claim, is a corresponding method claim with similar limitations.
Claims 2-11 and 13-23 are dependent claims, which are not argued
separately. Therefore, we find that the Appellants have not shown that the
Examiner erred in rejecting claims 1-23 under 35 U.S.C. § 102(e).

CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 1-23 under 35 U.S.C. § 102(e) as anticipated by
Generous.
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DECISION
The decision of the Examiner to reject claims 1-23 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)(1)(iv) (2007).

AFFIRMED

hh

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