Ex Parte Coolman et al

Board of Patent Appeals and Interferences

Feb 19, 2009

10747929 (B.P.A.I. Feb. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JERON WAYNE COOLMAN, DAVID RYAN PLACKO, 8
and TUHIN GOSH 9
___________ 10
11
Appeal 2008-3791 12
Application 10/747,929 13
Technology Center 3600 14
___________ 15
16
Decided:1 February 19, 2009 17
___________ 18
19
Before HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. 20
FISCHETTI, Administrative Patent Judges. 21
22

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).
FETTING, Administrative Patent Judge. 23
24
25
DECISION ON APPEAL 26
27
STATEMENT OF THE CASE28
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Jeron Wayne Coolman, David Ryan Placko, and Tuhin Gosh 1
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 2
1-20, the only claims pending in the application on appeal. 3
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 4
(2002). 5
We AFFIRM-IN-PART. 6
The Appellants invented an electronic marketplace that enables buyers 7
to purchase items from multiple suppliers (Specification Page 3, first 8
paragraph). 9
An understanding of the invention can be derived from a reading of 10
exemplary claims 1, 4-6, 9, and 10, which are reproduced below [bracketed 11
matter and some paragraphing added]. 12
1. A system to support an electronic market place, comprising: 13
[1] a communication network to communicate purchase 14
requests; 15
[2] one or more buyers coupled to the network to issue a 16
purchase order specifying items from two or more suppliers; 17
and 18
[3] a server coupled to the network to receive the purchase 19
order, the server accessing a Central Contract Registry (CCR) 20
for supplier data and generating sub-orders from the purchase 21
order and sending the sub-orders to the two or more suppliers 22
for fulfillment and paying the suppliers based on CCR data. 23
24
4. The system of claim 2, 25
further comprising means for importing the CCR data 26
into a public data storage and a private data storage. 27
28
5. The system of claim 4, 29
wherein the importing means further comprises means 30
for transferring data over a secure protocol. 31
32
6. The system of claim 2, 33
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further comprising means for using the CCR data to 1
Register Vendors, Search and Select Vendors for 2
solicitation of services and/or delivery of supplies; 3
View Vendor Profile; 4
Search Vendor Profile; or 5
Electronically Transfer Funds for outstanding 6
account payable. 7
8
9. The system of claim 6, 9
wherein the search vendor profile further comprises 10
means for receiving as a search parameter one or more of 11
the following: 12
Business Name; 13
DUNS and CAGE Code; 14
Socio Economic Factors; 15
Business Type; 16
Geographic Location; and 17
NAICS/SIC Code. 18
19
10. The system of claim 6, further comprising: 20
[1] means for retrieving CCR public data and private data; 21
[2] means for determining the vendor’s business name and 22
mailing address from the public data; 23
[3] means for determining the vendor’s electronic fund 24
transfer (EFT) information from the private data; and 25
[4] means for using the EFT information to pay the vendor. 26
27
This appeal arises from the Examiner’s Final Rejection, mailed May 28
26, 2006. The Appellants filed an Appeal Brief in support of the appeal on 29
March 18, 2007. An Examiner’s Answer to the Appeal Brief was mailed on 30
July 19, 2007. 31
PRIOR ART 32
The Examiner relies upon the following prior art: 33
King US 5,319,542 Jun. 7, 1994 34
McLauchlin US 6,754,672 B1 Jun. 22, 2004 35
Goodman US 2003/0088475 A1 May 8, 2003 36
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Mascavage US 2003/0126036 A1 Jul. 3, 2003 1
Gieselmann US 2004/0117263 A1 Jun. 17, 2004 2
Byrne US 2005/0060235 A2 Mar. 17, 2005 3
4
5
REJECTIONS 6
Claims 1-2 and 11-12 stand rejected under 35 U.S.C. § 103(a) as 7
unpatentable over Byrne and McLauchlin. 8
Claims 3-5 and 13-15 stand rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Byrne, McLauchlin, and King. 10
Claims 6-8 and 16-18 stand rejected under 35 U.S.C. § 103(a) as 11
unpatentable over Byrne, McLauchlin, and Gieselmann. 12
Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Byrne, McLauchlin, Gieselmann, and Goodman. 14
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as 15
unpatentable over Byrne, McLauchlin, Gieselmann, King, and Muscavage. 16
17
ISSUES 18
The issues pertinent to this appeal are 19
• Whether the Appellants have sustained their burden of showing that 20
the Examiner erred in rejecting claims 1-2 and 11-12 under 35 U.S.C. 21
§ 103(a) as unpatentable over Byrne and McLauchlin. 22
o This issue turns on turns on whether McLauchlin describes a 23
Central Contact Registry (CCR) and whether it would have 24
been obvious to combine Byrne and McLauchlin. 25
• Whether the Appellants have sustained their burden of showing that 26
the Examiner erred in rejecting claims 3-5 and 13-15 under 35 U.S.C. 27
§ 103(a) as unpatentable over Byrne, McLauchlin, and King. 28
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o This issue turns on whether King describes keeping a local 1
database and whether King describes a means for importing 2
CCR data into public and private data storage. 3
• Whether the Appellants have sustained their burden of showing that 4
the Examiner erred in rejecting claims 6-8 and 16-18 under 35 U.S.C. 5
§ 103(a) as unpatentable over Byrne, McLauchlin, and Gieselmann. 6
o This issue turns on whether Gieselmann describes using the 7
CCR data as claimed. 8
• Whether the Appellants have sustained their burden of showing that 9
the Examiner erred in rejecting claims 9 and 19 under 35 U.S.C. § 10
103(a) as unpatentable over Byrne, McLauchlin, Gieselmann, and 11
Goodman. 12
o This issue turns on whether the Appellants have sustained their 13
burden of showing the Examiner erred in rejecting claims 1 and 14
11. 15
• Whether the Appellants have sustained their burden of showing that 16
the Examiner erred in rejecting claims 10 and 20 under 35 U.S.C. § 17
103(a) as unpatentable over Byrne, McLauchlin, Gieselmann, King, 18
and Muscavage. 19
o This issue turns on whether the cited references describe a 20
means for retrieving CCR public and private data. 21
22
FACTS PERTINENT TO THE ISSUES 23
The following enumerated Findings of Fact (FF) are believed to be 24
supported by a preponderance of the evidence. 25
King 26
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01. King is directed towards a method and system for facilitating 1
the ordering of items from suppliers (column 1, lines 6-10). 2
02. King describes the ability for users of the system to create a 3
local (private) catalog (database) from the public database on their 4
own local computer system (column 3, lines 50-58 and column 4, 5
lines 15-20). A master catalog is maintained by the supplier and 6
the information from the master catalog is transmitted to the 7
public and private catalogs (column 3, lines 63-67). A supplier 8
can set-up a profile which includes business information such as 9
supplier name, number, and address. The private catalog is 10
periodically updated from the pubic catalog (column 4, lines 3-11
33). Access to the catalogs is secure in that only authorized users 12
are enabled to access the catalogs (column 5, lines 10-13). 13
McLauchlin 14
03. McLauchlin is directed towards a system for integrating 15
enterprise wide systems (column 1, lines 15-20). 16
04. McLauchlin describes the past federal systems to be a 17
collection of separated systems (column 1, lines 38-43) and a 18
purchasing agent would need to look up vendor data stored in the 19
CCR system for additional vendor details and in order to pay the 20
vendor (column 1, lines 57-65). 21
Goodman 22
05. Goodman is directed towards a method for conducting, 23
tracking, and promoting internet commerce via a virtual retail 24
outlet (paragraph 0002). 25
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06. Goodman describes a vendor can be found by searching a 1
vendor database by values such as vendor ID, vendor password, 2
vendor name, address, city, state, postal code, contact phone 3
number, fax number, email address, or the percentage net due 4
(paragraph 0061). 5
Mascavage 6
07. Mascavage is directed towards a method of making an online 7
purchase using a payment system (paragraph 0003). 8
08. Mascavage describes transferring funds, via the transfer server, 9
between the user and FTS accounts and then between the FTS 10
accounts and merchants (paragraph 0033). The transfer server 11
minimizes the transfer of private information while conducting 12
transactions (paragraph 0040), which is done by requiring 13
authorization and authentication (paragraph 0028) and through the 14
use of encryption and digital signatures (paragraph 0041). 15
Gieselmann 16
09. Gieselmann is directed towards a procurement system which 17
enables a plurality of users within a purchasing organization to 18
procure goods/services from an on-line marketplace (paragraph 19
0001). 20
10. Gieselmann describes an initial registration process of a 21
company (paragraph 0054). An employee of the company 22
accesses the on-line marketplace and submits a request to register 23
(paragraph 0054). The system prompts the user to enter company 24
specific information (paragraph 0054). The user can enter the 25
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VAT-Number of the company as a unique identifier or the DUNS-1
Number of the company (paragraph 0054). 2
11. Gieselmann is solves the problem of automating the registration 3
process by eliminating the need of dedicated in-house computer 4
resources at the customer-site (paragraph 0014). 5
Byrne 6
12. Byrne is directed to a method to integrate the coordination of 7
suppliers, buyers, carriers, and service providers of goods/services 8
with respect to a customer (paragraph 0001). 9
13. Byrne describes a networked system that receives purchase 10
orders (paragraphs 0040 and 0052). 11
14. Buyers are enabled to submit integrated orders, where a single 12
order contains multi-product, multi-supplier, multi-carrier, multi-13
service provider, and/or multi-sub orders (paragraph 0027). 14
15. When a buyer submits an order, multiple orders are submitted 15
to multiple appropriate suppliers to fulfill the order (paragraph 16
46). 17
16. Suppliers acknowledge receipt of the order and the ability to 18
fulfill the order (paragraph 0052). 19
Facts Related To The Level Of Skill In The Art 20
17. Neither the Examiner nor the Appellants has addressed the level 21
of ordinary skill in the pertinent art of online procurement 22
systems. We will therefore consider the cited prior art as 23
representative of the level of ordinary skill in the art. See Okajima 24
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 25
absence of specific findings on the level of skill in the art does not 26
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give rise to reversible error ‘where the prior art itself reflects an 1
appropriate level and a need for testimony is not shown’”) 2
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 3
F.2d 158, 163 (Fed. Cir. 1985)). 4
Facts Related To Secondary Considerations 5
18. There is no evidence on record of secondary considerations of 6
non-obviousness for our consideration. 7
8
PRINCIPLES OF LAW 9
Obviousness 10
A claimed invention is unpatentable if the differences between it and 11
the prior art are “such that the subject matter as a whole would have been 12
obvious at the time the invention was made to a person having ordinary skill 13
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S. 14
Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 15
(1966). 16
In Graham, the Court held that that the obviousness analysis is 17
bottomed on several basic factual inquiries: “[(1)] the scope and content of 18
the prior art are to be determined; [(2)] differences between the prior art and 19
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 20
in the pertinent art resolved.” 383 U.S. at 17. See also KSR Int’l v. Teleflex 21
Inc., 127 S. Ct. at 1734. “The combination of familiar elements according to 22
known methods is likely to be obvious when it does no more than yield 23
predictable results.” KSR, at 1739. 24
“When a work is available in one field of endeavor, design incentives 25
and other market forces can prompt variations of it, either in the same field 26
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or a different one. If a person of ordinary skill can implement a predictable 1
variation, § 103 likely bars its patentability.” Id. at 1740. 2
“For the same reason, if a technique has been used to improve one 3
device, and a person of ordinary skill in the art would recognize that it would 4
improve similar devices in the same way, using the technique is obvious 5
unless its actual application is beyond his or her skill.” Id. 6
“Under the correct analysis, any need or problem known in the field 7
of endeavor at the time of invention and addressed by the patent can provide 8
a reason for combining the elements in the manner claimed.” Id. at 1742. 9
Automation of a Known Process 10
It is generally obvious to automate a known manual procedure or 11
mechanical device. Our reviewing court stated in Leapfrog Enterprises Inc. 12
v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary 13
skill in the art would have found it obvious to combine an old 14
electromechanical device with electronic circuitry 15
to update it using modern electronic components in 16
order to gain the commonly understood benefits of 17
such adaptation, such as decreased size, increased 18
reliability, simplified operation, and reduced cost 19
. . . . The combination is thus the adaptation of an 20
old idea or invention . . . using newer technology 21
that is commonly available and understood in the 22
art. 23
24
Id. at 1162. 25
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ANALYSIS2 1
Claims 1-2 and 11-12 rejected under 35 U.S.C. § 103(a) as unpatentable 2
over Byrne and McLauchlin 3
The Appellants argue these claims as a group. 4
Accordingly, we select claim 1 as representative of the group. 5
37 C.F.R. § 41.37(c)(1)(vii) (2007). 6
The Examiner found that Byrne describes all of the limitations of 7
claim 1 except for “accessing a Central Contract Registry (CCR) for supplier 8
data” and “paying the suppliers based on CCR data” (Answer Pages 12-13). 9
The Examiner found McLauchlin describes these limitations and one of 10
ordinary skill in the art would have known to combine McLauchlin and 11
Byrne in order to increase the system’s interfacing capabilities (Answer 12
Page 13). 13
The Appellants contend (1) Byrne and McLauchlin fail to describe 14
automatically using a Central Contact Registry (CCR) data for processing 15
and payment and (2) it would not be obvious to modify Byrne because 16
McLauchlin teaches away from the claimed invention and there is no 17
reasonable expectation of success in combining Byrne and McLauchlin. 18
The Appellants first contend (1) Byrne and McLauchlin fail to 19
describe automatically using Central Contact Registry (CCR) data for 20
processing and payment. We disagree with the Appellants. The Appellants 21
specifically contend that the claimed invention is different from the Byrne 22
and McLauchlin combination because the combination merely results in an 23

2 We note that the Examiner has withdrawn the previously asserted
rejections to claims 9 and 19 as failing to comply with 35 U.S.C. § 112,
second paragraph (Answer Page 4).
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end user having access to the plurality of systems to perform the tasks of 1
creating sub-orders for vendors, whereas the claimed invention 2
automatically uses CCR data for processing and payment. 3
This argument fails from the onset because it is based on limitations 4
not appearing in the claims. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). 5
There is no limitation found in the claims that requires any of the steps be 6
automated. Furthermore, since the Appellants concede that the Byrne and 7
McLauchlin combination describe the manual performance of the processing 8
and payment (Br. Page 7, first and second paragraphs), the issue turns on 9
whether it would have been obvious to perform these steps automatically. 10
We find that it is generally obvious to automate a known manual process. 11
Leapfrog, 485 F.3d at 1163. The mere automation of this known manual 12
process is the adaptation of an old idea or invention using newer technology 13
that is commonly available and understood in the art and therefore obvious. 14
The Appellants additionally contend (2) it would not be obvious to 15
modify Byrne because McLauchlin teaches away from the claimed invention 16
and there is no reasonable expectation of success in combining Byrne and 17
McLauchlin. We disagree with the Appellants. The Appellants specifically 18
argue that McLauchlin teaches away from the present invention because 19
McLauchlin teaches human viewing of CCR data and not automated 20
processing of CCR data to order and pay vendors. As discussed above, 21
McLauchlin describes a purchasing agent viewing CCR data and using the 22
CCR data to pay vendors (FF 04). This describes the manual steps of the 23
claimed invention. Automation of these steps is obvious as found in 24
Leapfrog. Since McLauchlin is directly teaching manual steps of the 25
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claimed invention, the Appellants’ contention that McLauchlin is teaching 1
away from the claimed invention is not persuasive. 2
With respect to the Appellants’ contention that there is no reasonable 3
expectation of success in combining Byrne and McLauchlin, we disagree. 4
Byrne describes a system that handles the submission of orders and the 5
generation of sub-orders to multiple suppliers from the order (FF 14). 6
McLauchlin describes a system that provides supplier details (FF 04) which 7
expedites the processing of orders by keeping vendor information on-hand. 8
Since both references are concerned with the purchase of goods and the 9
routing of orders to vendors, one of ordinary skill in the art would have 10
looked to McLauchlin from Byrne in order to increase the efficiency of the 11
system at the time of the invention and one would have a reasonable 12
expectation of success in combining Byrne and McLauchlin. 13
The Appellants have not sustained their burden of showing that the 14
Examiner erred in rejecting claims 1-2 and 11-12 under 35 U.S.C. § 103(a) 15
as unpatentable over Byrne and McLauchlin for the above reasons. 16
17
Claims 3-5 and 13-15 rejected under 35 U.S.C. § 103(a) as unpatentable 18
over Byrne, McLauchlin, and King 19
The Examiner found that the combination of Byrne and McLauchlin 20
describe all of the limitations of claims 3 and 4 except “keeping a local copy 21
of the CCR database in a system database” (Answer Page 14) and 22
“importing the CCR data into a public data storage and a private data 23
storage” (Answer Page 15). The Examiner found that King describes this 24
limitation (Answer Page 14) and one of ordinary skill in the art would have 25
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known to combine King with Byrne and McLauchlin in order to provide a 1
reduction of customer maintenance of their private data (Answer Pages 14-2
15). 3
The Appellants contend that (1) King fails to describe “keeping a 4
local copy of the CCR database in a system database” as per claim 3, (2) 5
King fails to describe “importing the CCR data into a public data storage 6
and a private data storage” as per claim 4, and (3) claim 5 is allowable for 7
the same reasons asserted for claim 1. 8
The Appellants first contend (1) King fails to describe “keeping a 9
local copy of the CCR database in a system database” as per claim 3. 10
McLauchlin describes the use of a CCR database (FF 02). King describes a 11
public catalog requisition system where users are enabled to maintain a local 12
private copy of the public and master catalogs (FF 02). As such, King 13
explicitly describes claim 3. Claim 13 recites the same limitations and is 14
described by King for the same reason discussed above. 15
The Appellants further contend (2) King fails to describe “importing 16
the CCR data into a public storage data and a private data storage” as per 17
claim 4. The Appellants specifically argue that King is inconsistent with one 18
implementation discussed on pages 16-17 of the Specification. We agree 19
with the Appellants. Claim 4 is drafted using means-plus-function language. 20
In construing means-plus-function claim language in accordance with 35 21
U.S.C. § 112, sixth paragraph, one must “look to the specification and 22
interpret that language in light of the corresponding structure, material, or 23
acts described therein, and equivalents thereof, to the extent that the 24
specification provides such disclosure. In re Donaldson Co., 16 F.3d 1189, 25
1193 (Fed. Cir. 1994). The specification describes that the data is separated 26
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into a CCR public file and a CCR private data file in the system database 1
(Specification Page 15). As such, the data is separated in to two distinct 2
files by a device or structure. Although King describes the use of importing 3
data from the master catalog into public and private catalogs (FF 02), King 4
fails to describe a device that separates the data into public and private data. 5
As such, the Appellants have sustained their burden of showing the 6
Examiner erred in rejecting claim 4. 7
The Appellants additionally contend (3) claim 5 is allowable for the 8
same reasons asserted for claim 1. Claim 5 is dependant on claim 4. We 9
found the Appellants did sustain their burden of showing the Examiner erred 10
in rejecting claim 4 and as such find that the Appellants have sustained their 11
burden of showing the Examiner erred in rejecting claim 5. 12
Claims 14 and 15 are distinguished from claims 4 and 5 in that they 13
do not recite the requisite means-plus-function language to invoke 35 U.S.C. 14
§ 112, sixth paragraph. Under this light, King discloses the subject matter of 15
claim 14 by describing the importing of the master catalog into public and 16
private catalogs (FF 02). There is no further limitation recited by claim 14 17
that requires the public and private data not to overlap, as was required by 18
the means plus function construction of claim 4. King further describes that 19
only authorized users can direct the transmitting of data between the master, 20
public, and private catalogs (FF 02) which is a secure protocol, as recited by 21
claim 15. 22
The Appellants have sustained their burden of showing that the 23
Examiner erred in rejecting claims 4-5 under 35 U.S.C. § 103(a) as 24
unpatentable over Byrne, McLauchlin, and King for the above reasons. 25
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The Appellants have not sustained their burden of showing that the 1
Examiner erred in rejecting claims 3 and 13-15 under 35 U.S.C. § 103(a) as 2
unpatentable over Byrne, McLauchlin, and King for the above reasons. 3
Claims 6-8 and 16-18 rejected under 35 U.S.C. § 103(a) as unpatentable 4
over Byrne, McLauchlin, and Gieselmann 5
The Appellants argue these claims as a group. 6
Accordingly, we select claim 6 as representative of the group. 7
The Examiner found that the combination of Byrne and McLauchlin 8
describe all of the limitations of claim 2 but fail to describe the additional 9
limitation claimed in claim 6 (Answer Page 17). The Examiner found that 10
Gieselmann describes this limitation and one of ordinary skill in the art 11
would have known to combine Gieselmann, Byrne, and McLauchlin in order 12
to provide registration that does not require dedicated in-house computer 13
resources (Answer Page 17). 14
The Appellants contend that Gieselmann fails to describe the means of 15
using the claimed CCR data as the claimed CCR contains information not 16
available in DUNS. We disagree with the Appellants. Gieselmann 17
describes the CCR information is used to register vendors. This is done by 18
entering the DUNS-Number into the CCR information during registration 19
(FF 10), which mirrors the claimed invention (Specification Page 15). 20
Additionally, McLauchlin describes using CCR data to enable a user to view 21
vendor profile information (FF 04). 22
The Appellants have not sustained their burden of showing that the 23
Examiner erred in rejecting claims 6-8 and 16-18 under 35 U.S.C. § 103(a) 24
as unpatentable over Byrne, McLauchlin, and Gieselmann for the above 25
reasons. 26
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Claims 9 and 19 rejected under 35 U.S.C. § 103(a) as unpatentable over 1
Byrne, McLauchlin, Gieselmann, and Goodman 2
The Appellants argue these claims as a group. 3
Accordingly, we select claim 9 as representative of the group. 4
The Examiner found that Byrne, McLauchlin, and Gieselmann 5
describes all of the limitations of claim 6, but fail to describe the additional 6
limitation presented in claim 9 (Answer Page 19). The Examiner found that 7
Goodman describes this limitation and one of ordinary skill in the art would 8
have known to combine Goodman to Byrne, McLauchlin, and Gieselmann 9
in order to provide a convenient way to find a vendor (Answer Page 19). 10
The Appellants contend that the references fail to describe the 11
limitations of claims 1 and 11 as argued above. The Appellants rely on 12
arguments in support of claims 1 and 11 above, which we found to be 13
insufficient to overcome the Appellants’ burden and so the Appellants have 14
not sustained its burden of showing that the Examiner erred in rejecting 15
claims 9 and 19 under 35 U.S.C. § 103(a) as unpatentable over Byrne, 16
McLauchlin, Gieselmann, and Goodman. 17
18
Claims 10 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable 19
over Byrne, McLauchlin, Gieselmann, King and Muscavage 20
The Appellants argue these claims as a group. 21
Accordingly, we select claim 10 as representative of the group. 22
The Examiner found that Byrne, McLauchlin, and Gieselmann 23
describe all of the limitations of claim 6, but fail to describe the additional 24
limitations of claim 10 (Answer Page 20). The Examiner found that King 25
describes limitation [1] and limitation [2] and one of ordinary skill in the art 26
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would have known to combine King with Byrne, McLauchlin, and 1
Gieselmann in order to provide a reduction of customer maintenance of their 2
private data (Answer Pages 20-21). The Examiner further found that 3
Muscavage describes limitation [3] and limitation [4] and one of ordinary 4
skill in the art would have known to combine Muscavage with Byrne, 5
McLauchlin, Gieselmann, and King in order to provide a secure way to 6
transfer funds in ecommerce (Answer Page 21). 7
The Appellants contend (1) the combination of the references do not 8
provide the specific claimed structures of “means for retrieving CCR public 9
data and private data,” “means for determining the vendor’s business name 10
and mailing address from the public data,” “means for determining the 11
vendor’s electronic fund transfer (EFT) information from the private data,” 12
and “means for using the EFT information to pay the vendor” and (2) that 13
the Examiner used impermissible hindsight reconstruction of the present 14
invention in combining the references and there was no reasonable 15
expectation of success when combining the references. 16
We agree with the Appellants with respect to claim 10, but disagree 17
with the Appellants with respect to claim 20. Claim 10 recites means plus 18
function limitations and thus we must look to the Specification for a 19
corresponding structure. As we found with claim 4, the Specification 20
describes that the data is separated into a CCR public file and a CCR private 21
data file in the system database (Specification Page 15). None of the cited 22
references describe a corresponding structure that performs this step. As 23
such, we find that the Appellants have sustained their burden of showing that 24
the Examiner erred in rejecting claim 10. 25
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With respect to claim 20, we disagree with the Appellants. Claim 20 1
is distinguished from claim 10 in that it does not recite the requisite means 2
plus function limitation to invoke 35 U.S.C. § 112, sixth paragraph. King 3
describes the use of public and private catalogs for supplier’s information 4
(FF 02), which is the same as using CCR data. There is no further limitation 5
recited by claim 20 that requires the public and private data to not overlap, 6
as was required by the means plus function construction of claim 10. King 7
further describes that the supplier can set up a profile to include business 8
information such as the business name and mailing address (FF 02). 9
Muscavage describes determining an electronic funds account for a 10
merchant and paying a vendor by transferring funds using a transfer server 11
(FF 08). Thus, the additional limitations of claim 20 are described by the 12
cited references and the Appellants’ argument is not found to be persuasive. 13
The Appellants further contend (2) that the Examiner used 14
impermissible hindsight reconstruction of the present invention in 15
combining the references and there was no reasonable expectation of success 16
when combining the references. We disagree with the Appellants. It must 17
be recognized that any judgment on obviousness is in a sense necessarily a 18
reconstruction based upon hindsight reasoning. But so long as it takes into 19
account only knowledge which was within the level of ordinary skill at the 20
time the claimed invention was made, and does not include knowledge 21
gleaned only from the applicant’s disclosure, such a reconstruction is proper. 22
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner 23
found that, at the time of the invention, one of ordinary skill in the art would 24
have looked to King to provide increase efficiency by reducing maintenance 25
of data by enabling the retrieval of public and private data to determine the 26
Appeal 2008-3791
Application 10/747,929

20
name and address of a vendor (Answer Pages 20-21). The Examiner also 1
found that, at the time of invention, one of ordinary skill in the art would 2
have looked to Muscavage in order to increase the security of the system by 3
determining a vendor’s electronic funds information and paying the vendor 4
using this electronic funds information (Answer Page 21). As such, the 5
Examiner only relied on knowledge within ordinary skill in the art at the 6
time of the invention and did not use impermissible hindsight reconstruction 7
in rejecting claims 10 and 20. Furthermore, one of ordinary skill in the art 8
would have had a reasonable expectation of success in combining King and 9
Muscavage with Byrne, McLauchlin, and Gieselmann because of the known 10
benefits of increasing efficiency and security provided by King and 11
Muscavage respectively. 12
The Appellants have sustained their burden of showing that the 13
Examiner erred in rejecting claim 10 under 35 U.S.C. § 103(a) as 14
unpatentable over Byrne, McLauchlin, Gieselmann, King, and Muscavage 15
for the above reasons. 16
The Appellants have not sustained their burden of showing that the 17
Examiner erred in rejecting claim 20 under 35 U.S.C. § 103(a) as 18
unpatentable over Byrne, McLauchlin, Gieselmann, King, and Muscavage 19
for the above reasons. 20
21
CONCLUSIONS OF LAW 22
The Appellants have not sustained their burden of showing that the 23
Examiner erred in rejecting claims 1-2 and 11-12 under 35 U.S.C. § 103(a) 24
as unpatentable over Byrne and McLauchlin. 25
Appeal 2008-3791
Application 10/747,929

21
The Appellants have not sustained their burden of showing that the 1
Examiner erred in rejecting claims 3 and 13-15 under 35 U.S.C. § 103(a) as 2
unpatentable over Byrne, McLauchlin, and King. 3
The Appellants have sustained their burden of showing that the 4
Examiner erred in rejecting claims 4 and 5 under 35 U.S.C. § 103(a) as 5
unpatentable over Byrne, McLauchlin, and King. 6
The Appellants have not sustained their burden of showing that the 7
Examiner erred in rejecting claims 6-8 and 16-18 under 35 U.S.C. § 103(a) 8
as unpatentable over Byrne, McLauchlin, and Gieselmann. 9
The Appellants have not sustained their burden of showing that the 10
Examiner erred in rejecting claims 9 and 19 under 35 U.S.C. § 103(a) as 11
unpatentable over Byrne, McLauchlin, Gieselmann, and Goodman. 12
The Appellants have sustained their burden of showing that the 13
Examiner erred in rejecting claim 10 under 35 U.S.C. § 103(a) as 14
unpatentable over Byrne, McLauchlin, Gieselmann, King, and Muscavage. 15
The Appellants have not sustained their burden of showing that the 16
Examiner erred in rejecting claim 20 under 35 U.S.C. § 103(a) as 17
unpatentable over Byrne, McLauchlin, Gieselmann, King, and Muscavage. 18
19
DECISION 20
To summarize, our decision is as follows: 21
• The rejection of claims 1-2 and 11-12 under 35 U.S.C. § 103(a) as 22
unpatentable over Byrne and McLauchlin is sustained. 23
• The rejection of claims 3 and 13-15 under 35 U.S.C. § 103(a) as 24
unpatentable over Byrne, McLauchlin, and King is sustained. 25
Appeal 2008-3791
Application 10/747,929

22
• The rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as 1
unpatentable over Byrne, McLauchlin, and King is not sustained. 2
• The rejection of claims 6-8 and 16-18 under 35 U.S.C. § 103(a) as 3
unpatentable over Byrne, McLauchlin, and Gieselmann is sustained. 4
• The rejection of claims 9 and 19 under 35 U.S.C. § 103(a) as 5
unpatentable over Byrne, McLauchlin, Gieselmann, and Goodman is 6
sustained. 7
• The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable 8
over Byrne, McLauchlin, Gieselmann, King, and Muscavage is not 9
sustained. 10
• The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable 11
over Byrne, McLauchlin, Gieselmann, King, and Muscavage is 12
sustained. 13
No time period for taking any subsequent action in connection with 14
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 15
16
AFFIRMED-IN-PART 17
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hh 27
TRAN & ASSOCIATES 28
6788 MEDOW VISTA CT. 29
SAN JOSE, CA 95135 30