Ex Parte 7822657 et al

Patent Trial and Appeal Board

Sep 25, 2013

95001580 (P.T.A.B. Sep. 25, 2013)

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.
95/001,580 03/18/2011 7822657 16319-18201 5581
7590 09/26/2013
ALAN G. TOWNER
PIETRAGALLO, BOSICK & GORDON
ONE OXFORD CENTRE, 38TH FLOOR
301 GRANT STREET
PITTSBURGH, PA 15219
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

INTUIT INC.
Requester

v.

NOAH SYSTEMS, INC.
Patent Owner and Appellant
____________

Appeal 2013-009089
Reexamination Control 95/001,580
Patent 7,822,657 B2
Technology Center 3900
____________

Before KEVIN F. TURNER, WILLIAM V. SAINDON, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKeown, Administrative Patent Judge.

DECISION ON APPEAL

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Reexamination Control 95/001,580
Patent 7,822,657 B2

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Patent Owner Noah Systems, Inc. (“Appellant”) appeals under 35
U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-8.
1

Third Party Requestor Intuit, Inc. (“Requestor”) did not file any responsive
brief in this appeal.
2
We have jurisdiction under 35 U.S.C. §§ 134(b) and
315(a).
We AFFIRM.

STATEMENT OF THE CASE
United States Patent 7,822,657 B2 (hereinafter the “’657 Patent”),
issued to Gordon T. Brown on October 26, 2010, is the subject of the current
inter partes reexamination.
The ‘657 Patent was also the subject of a Civil Action No. 10-cv-
01420-AJS in the United States District Court for the District of Western
Pennsylvania (hereinafter “ the ’657 Litigation”) which was dismissed. See
App. Br. 1.

THE INVENTION
The ’657 Patent relates to an automated accounting system for an
entity, such as an individual or a business. The system includes establishing

1
See Appellant’s Appeal Brief, filed November 19, 2012 (hereinafter “App.
Br.”), at 2 and 5; Examiner’s Answer, mailed February 4, 2013
incorporating by reference the Examiner’s Right of Appeal Notice, mailed
September 13, 2012 (hereinafter “RAN”).
2
Requestor, however, did submit Third Party Comments after Non-Final
Action, filed September 21, 2011 (hereinafter “TPR Comments”) and
supporting Declaration of Mr. Randolph Johnston, dated September 19,
2011 (hereinafter “Johnston Decl.”), TPR Comments, Ex. 3.
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a file for the entity and receiving in the file data inputs that represent
electronically recorded transactions between the entity and other entities.
Spec. 2:20-24.
Claim 1, which is illustrative of the appealed subject matter, has not
been amended during reexamination and reads as follows:
1. A financial accounting system for providing
financial accounting statements for a first entity,
comprising:
a first computer having at least one file from which
an accounting statement is generated;
a second computer receiving data inputs, said data
inputs including electronically recorded financial
transaction information made between said first entity
and a plurality of other entities; and
an open communication network comprising data
transfer equipment transferring said data inputs from said
second computer to said file of said first computer, said
open communication network connecting said first
computer and said second computer in an accounting
system in which said entities are interconnected for
automated accounting of financial transactions utilizing
standardized codes, wherein said data inputs in said file
of said first computer are used to produce said accounting
statements derived from said financial transaction
information including income, expense, asset or liability
information for said first entity.
App. Br., Claims App’x.

PRIOR ART REJECTION
The Examiner rejected claims 1-8 of the ’657 Patent under 35 U.S.C.
§ 102(a) as anticipated by Microsoft Money Version 3 User's Guide
(hereinafter “the MMUG”).

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ISSUE
Under 35 U.S.C. § 102(a), has the Examiner erred by finding that the
Microsoft Money User’s Guide discloses the disputed claim terms of the
instant claims?

DISCUSSION
Appellant makes similar arguments with respect to each of
independent claims 1, 7 and 8. Compare App. Br. 13-20 with App. Br. 23-
20-26, and App. Br. 26-28. We address claim 1 as being representative of
all of the claims on appeal. Appellant presents separate argument for
dependent claims 2 and 6. App. Br. 32-33.

Findings of Fact
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

The ’657 Specification
FF1. The ’657 Specification discloses a financial accounting system
that captures, analyzes, reviews, adjusts, processes, and transmits financial
transaction information between a first entity and other entities and uses the
information to generate accounting statements. See, e.g., Abstract and Spec.
1:11-20.
FF2. In one embodiment, the first entity establishes a master ledger
on a first computer. Spec. 2:51-54. Other entities each maintain a
subsidiary ledger for automated record keeping and reporting. The
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subsidiary ledger will record each financial transaction between the first
entity and that particular entity. Spec 3:22-27 and 4:8-12. For example, a
merchant will record in the subsidiary ledger each purchase by the first
entity. Id. at 4:52-54.
FF3. The master ledger receives data inputs from the subsidiary
ledger. Spec. 5:13-16. These data inputs are transferred from the subsidiary
ledger to the master ledger through use of a modem or other data transfer
equipment. Id.
FF4. The ’657 Specification describes that:
The key idea is for all of these entities to electronically record,
collect, process, store and transmit all financial transactions by
all of the entities, including the first entity, that enter into
financial transactions with that particular entity. In this way, all
of the entities can be connected in a network fashion so that
accounting information can be fully and accurately developed
among all of the entities. Spec. 3:37-48.

Thus, any particular entity then will have electronic records for each
transaction it has with the first entity and also each transaction it has with
any other entity. Spec. 4:8-12.
FF5. The financial accounting system can also provide various
accounting statements or reports to the first entity based on the received data
inputs. Spec. 5:61-64. In particular, the ’657 Specification discloses that
“the system is truly a self service system in that the first entity can select the
desired accounting reports from a large menu of available reports.” Spec.
6:1-3. As shown in box 240 of Fig. 3 below, various exemplary reports are
identified, including, for example, periodic bank account activities, loan or
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mortgage payment/status, and income/expense transactions by category or
by disposition.

Box 240 of the’657 Patent Identifying Various
Types of Accounting Statements

Spec. 5:62-64; 6:1-3; and Fig. 3 (box 240).
FF6. The system allows a user to select automatic coding preferences.
Spec. 3:1-2. Typically, a standardized account menu for business and
personal financial transactions is established. Spec. 3:11-14. Subcategories
of income and expense items may also be included. Spec. 3:15-21.
FF7. The ’657 Specification also explains additional transaction
types, such as check, ATM transactions, and credit card purchases also can
be coded. See Spec. 4: 54-61.

Microsoft Money User’s Guide
FF8. The MMUG provides user instructions for Microsoft Money
Version 3 (hereinafter “Microsoft Money”), which is a computerized system
to manage finances. MMUG p. 1. The MMUG discloses that Microsoft
Money can manage all of a user’s finances or merely can keep records for a
few accounts. MMUG p. 1.
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FF9. Microsoft Money’s “On-Line Services” allows a user to update
account records and perform other banking tasks directly from a user’s
computer. MMUG p. 271. Bank On-Line services are available for a user’s
“credit card, line-of-credit, or bank account at a participating bank or
financial institution.” MMUG p. 286.
FF10. Microsoft Money’s “On-Line Services” are available through
use of a modem. See MMUG p. 271 (identifying that a user will need a
modem to use the on-line features and describing that a modem is a device
that allows your computer to communicate over a telephone line with the
user’s banks and/or financial institutions).
FF11. Microsoft Money may also receive information from additional
entities. For example, the MMUG discloses that when a user pays bills on
line, confirmations are sent back to the user’s computer through the Pay On-
Line service. See MMUG p. 276.
FF12. Microsoft Money can generate various types of reports for a
user. The MMUG identifies at least eight different types of reports, such as
transaction reports, income and expense reports, and summary reports.
MMUG p. 63. A transaction reports lists all of a user’s transactions in a
particular account. See MMUG p. 63 and pp. 68-69. An income and
expense report provides an overview of your finances by providing subtotal
transactions by category or subcategory. See MMUG p. 71.
FF13. Microsoft Money automatically assigns categories to
transactions. See, e.g., MMUG pp. 293 and 301; see also 32. In particular,
the MMUG describes that
“[Microsoft] Money even assigns categories based on the payee
(for Bank Accounts) or based on the type of business a payee is
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in (for Credit Card Accounts). For example, for a credit card
transaction with a restaurant, [Microsoft] Money assigns the
category Food and the subcategory Dining Out.” MMUG p.
293.

One exemplary report, depicted below, includes assigned categories, i.e.
codes, such as bank charges, food, housing, taxes, etc. MMUG p. 301.

Exemplary Budget Report from MMUG Listing
Itemized Entries With Associated Assigned Categories

FF14. Microsoft Money also allows a user to create a separate cash
account to track cash transactions. MMUG p. 183.

Analysis
Claim 1
On this record, we find the Examiner did not err in rejecting claim 1
as anticipated by the MMUG. In particular, we agree with the Examiner that
the MMUG teaches every limitation of the claimed invention.
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Appellant first contends that the MMUG fails to disclose a financial
account system and financial accounting statements. App. Br. 13-14. More
specifically, Appellant asserts that the “term ‘accounting’ never appears in
the MMUG, nor do the terms ‘financial accounting system’ or ‘financial
accounting statements’ as recited in claim 1.” App. Br. 13. Appellant then
concludes that because these terms are not present, these features are absent
from the MMUG. Id. We disagree.
It is well established that there is no ipsissimis verbis test for
determining whether a reference discloses a claim element, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
In other words, a prior art reference is anticipatory regardless of the specific
words used, as long as it discloses the substance of each element of the
claimed invention.
While the MMUG does not recite the term “financial accounting
system,” the MMUG describes a system to manage all of a user’s finances or
merely keep records for a few accounts. FF8. Similarly, the MMUG may
not use the term “accounting statement,” but the MMUG describes that
various different types of reports can be generated from account information,
including for example transaction reports and account and expense reports.
FF12. Appellants fail to provide any persuasive argument as to why
Microsoft Money’s management of financial accounts or Microsoft Money’s
generation of the disclosed reports fails to satisfy the claimed limitations.
Appellant also applies the same flawed reasoning to numerous other
claim terms recited in claim 1. In each instance, Appellant merely identifies
that the exact language is missing from the MMUG and then concludes that
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the MMUG fails to disclose the limitation. See e.g., App. Br. 14-15
(“accounting statement”), App. Br. 16 (“accounting system”), App. Br. 17
(“automated accounting”), and App. Br. 18-19 (“accounting statement
report” and “accounting statement”). For the same reasons as discussed
above, these arguments are unpersuasive.
Appellant’s additional arguments with respect to financial accounting
system are likewise unavailing. Appellant, citing the Court’s Claim
Construction Order in the the’657 Litigation, asserts that the MMUG fails to
disclose “a total accounting system in which diverse entities involved in
financial transactions are interconnected for automated accounting of
financial transactions among the entities and generation of useful accounting
information for the entities or users and generation of useful accounting
information for users of the system.” App. Br. 14.
Notably absent, however, is any persuasive explanation or argument
that a skilled artisan would understand the proposed total accounting system
construction to be the broadest reasonable interpretation in light of the
specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004); In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010); In re Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012). As
the Examiner explains, under the broadest reasonable interpretation, a skilled
artisan would understand financial accounting as “the record keeping
associated with financial transactions.” RAN. 12. Appellant’s unsupported
arguments to the contrary are unpersuasive.
Even further, Appellant here merely repeats the proposed construction
without any substantive argument identifying the absent claimed features.
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See App. Br. 14. Therefore, we are not persuaded that the Examiner erred in
finding that MMUG discloses the claimed total accounting system.
Appellant presents similar unsupported conclusory arguments that
additional limitations are absent from Microsoft Money, including, for
example, (1) financial accounting statement, (2) accounting statement, and
(3) accounting statement report (hereinafter “the accounting statement
terms”). App. Br. 14-15. Despite Appellant’s acknowledgment that the
MMUG discloses various types of financial reports, Appellant makes
blanket assertions that none of these reports satisfy the claimed accounting
statement terms. Id.
To the contrary, the MMUG discloses many of the same reports as
those disclosed in the ’657 Patent. From FIG. 3 of the ’657 Patent, examples
of accounting statements are “income/expense transactions by category,”
“periodic bank account activities,” “balance sheet calculations,” and “tax
preparation documents.” FF5. Similarly, the MMUG identifies various
reports are available including income and expense transaction reports
(MMUG p. 64), periodic bank account activities (MMUG pp. 67-68),
balance sheet calculations (MMUG p. 349), and tax preparation documents
(MMUG p. 313). Thus, we agree with the Examiner that the MMUG
discloses these claimed features.
Appellant also argues that MMUG fails to disclose an open
communication network. App. Br. 15-16. Appellant attempts to distinguish
the claimed open communication network because “the disclosed mode of
communication [in the MMUG] is private or closed between the two
computers connected by the telephone line.” App. Br. 16.
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As noted by the Requestor, communication through use of a modem is
the only exemplary form of communication disclosed by the ’657
Specification. See TPR Comments 10; see also FF 3. The MMUG also
identifies that a user’s computer communicates through a modem. FF10.
We agree with the Requestor that at the time of filing ’657 Patent, a skilled
artisan would understand that a modems are used to connect to open
networks. TPR 10-11 (citing Johnston Decl. ¶¶8-9). Moreover, as pointed
out by the Examiner, a telephone communication network itself is an open
communication network, as it is available or accessible by the general
public. RAN 15.
Without more, we find Appellant’s argument that the MMUG
communicates through a closed network is unsupported. Accordingly, we
are not persuaded that the Examiner erred by finding that the MMUG
discloses an open communication network.
Appellants also contend that “MMUG does not disclose any
interconnection among multiple entities in an open communication network
in an accounting system.” App. Br. 17. This argument, however, is not
commensurate with the scope of the claim. Claim 1 merely requires that the
open communication network to connect the first computer and the second
computer. While claim 1 does additionally recite that the first entity and a
plurality of entities are interconnected in an accounting system, it does not
require the open communication network to provide this interconnection.
Instead, the Specification explains that the first entity and multiple
other entities are interconnected through the recording, processing, and
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transmitting of the financial transaction information. See FF4. In particular,
the Specification states:
The key idea is for all of these entities to electronically record,
collect, process, store and transmit all financial transactions by
all of the entities, including the first entity, that enter into
financial transactions with that particular entity. In this way, all
of the entities can be connected in a network fashion so that
accounting information can be fully and accurately developed
among all of the entities. Spec. 3:37-48.

Appellant failed to persuasively identify any disclosure or evidence
that warrants that the first entity and plurality of entities be interconnected
through the open communication network. Further, as discussed above, the
MMUG describes that financial institutions, such banks, credit card
companies, etc., record and analyze financial transactions with the first
entity and then communicate with at least the first entity through use of a
modem. FF1-FF4. Thus, we agree with the Examiner that the MMUG
discloses the claimed interconnection limitation. FF7-8.
Finally, Appellant submits conclusory arguments attempting to
distinguish Microsoft Money from the claimed invention based on lack of
automated accounting utilizing standardized codes. App. Br. 17. Although
the MMUG describes that different categories or subcategories may be
automatically assigned to various transactions (FF13), Appellants assert that
this is insufficient.
According to Appellant, the assigned categories are not “codes” and
further the disclosed categories are not “utilized for automated accounting.”
App. Br. 17. But Appellants again fail to indicate why. As the Examiner
explains, standardized category or subcategory names are automatically
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assigned to each transaction. RAN 16; see also FF13. “For example, the
term ‘adjustment’ is a standard term which is added to transactions involving
account adjustments.” RAN 16. We thus consider Appellant’s argument
unpersuasive.
Accordingly, we sustain the Examiner’s rejection of claim 1 as
anticipated by the MMUG, as well as claims 3-5, not separately argued with
particularity.
Claims 2 and 6
On the record before us, we find that the Examiner did not err in
rejecting claims 2 and 6 as anticipated by the MMUG.
With respect to claim 2, we are not persuaded that the MMUG fails to
disclose a first file for receiving “accrual accounting data inputs.” App. Br.
32-33. Instead, we agree with the Requestor that a skilled artisan would
interpret “accrual accounting data inputs” as data inputs recorded when
income is earned regardless of when payment is actually received. See TPR
Comments at 26-27 (citing Johnston Dec. at ¶13.) As further explained, a
credit card purchase, for example, is recorded as a charge, even though the
user will not typically pay the credit card bill, i.e. pay for the purchase, until
a later point in time. Id. This is also supported by the ’657 Specification,
which distinguishes cash versus accrual interpretations. Spec. 7:5-10.
The MMUG describes that the Bank On-Line service of Microsoft
Money can automatically update credit card account records, including
credit card purchases. FF9. Thus, the MMUG discloses receiving the
claimed “accrual accounting data inputs,” as recited in claim 2. The MMUG
also discloses creating a second account to track cash transactions, as
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required by claim 2. See MMUG at 182-183. We are thus not persuaded
that the MMUG fails to disclose the limitations of claim 2.
Similarly, we find Appellant’s assertions with respect to claim 6
unavailing. Namely, we disagree that the MMUG does not disclose “said
second computer is a personal computer.” The MMUG identifies that
Microsoft Money runs on a personal computer. See, e.g., MMUG at 4, 8-9,
and 317-328.)
Moreover, “[i]t is well settled that the recitation of a new intended use
for an old product does not make a claim to that old product patentable.” In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Merely claiming that the second computer is a personal computer only
identifies the intended use and thus fails to distinguish the claimed invention
from Microsoft Money.
Accordingly, we sustain the Examiner’s rejection of claims 2 and 6 as
anticipated by the MMUG.
Claims 7 and 8
On this record, we find the Examiner did not err in rejecting claims 7
and 8 as anticipated by the MMUG. Appellant presents similar arguments as
those presented for claim 1. For the same reasons addressed above, we
consider these arguments unpersuasive.
Additionally, with respect to claim 7, we disagree with Appellant that
MMUG fails to disclose a ledger file. As the Examiner explains “[t]he term
‘ledger’ is a standard term of art referring to a statement containing debits
and credits.” RAN 18-19. Thus, a ledger file is merely a ledger formed as
part of a computer file. Id.
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The MMUG refers the various account files utilized in the Microsoft
Money, e.g., bank accounts, credit card accounts, and loan accounts, (FF8-
FF9). The MMUG also provides specific examples of “ledgers, having
columns for payments and deposits, stored in an electronic file of [Microsoft
Money].” RAN 19 (citing MMUG pp. 17 and 27).
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 7 and 8 anticipated by the MMUG and therefore we sustain
the rejection.

DECISION
The Examiner’s decision to reject claims 1-8 is affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

PATENT OWNER:

Alan G. Towner
PIETRAGALLO, BOSICK & GORDON
One Oxford Centre, 38
th
Floor
301 Grant Street
Pittsburgh, PA 15219

THIRD-PARTY REQUESTER:

Rajiv P. Patel, Esq.
FENWICK & WEST LLP
801 California Street
Mountain View, CA 94041