Ex Parte Chenevich et al

Board of Patent Appeals and Interferences

Sep 11, 2012

10799378 (B.P.A.I. Sep. 11, 2012)

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.
10/799,378 03/12/2004 William Chenevich 055555-0233 7289
23524 7590 09/11/2012
FOLEY & LARDNER LLP
150 EAST GILMAN STREET
P.O. BOX 1497
MADISON, WI 53701-1497
EXAMINER
TIMBLIN, ROBERT M
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
09/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM CHENEVICH, LINDA K. GARNER,
GARY LYNN HODGE, LAKHBIR LAMBA,
ANDREW J. LANG, JON D. RUNDQUIST, and
PAIGE WHITE VINALL
____________________

Appeal 2010-004111
Application 10/799,378
Technology Center 2100
____________________

Before SALLY C. MEDLEY, STEPHEN C. SIU, and JENNIFER S. BISK,
Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3, 6-12, and 14, which are all the remaining claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The Invention
Appellants’ invention relates to “techniques for electronically
organizing financial information, and more particularly, to systems and
methods for storing, creating, and organizing financial information
electronically.” Spec. [0001]. The specification describes an embodiment
enabling customers of an on-line financial information warehouse to
securely store, create, and organize digital financial information, such as
credit card payments, debit card transactions, imaged checks, electronic bill
payments, and account statements, in a customizable and searchable
hierarchy of folders. Spec. [0010].

The Rejections on Appeal
1. Claims 1-3 and 6-9 stand rejected under § 103(a) as unpatentable over
Fallon (US 2002/0111946 A1; Aug. 15, 2002), Shutt (US 7,146,367 B2;
Dec. 5, 2006)
1
, and Kumar (US 6,859,212 B2; Feb. 22,). Ans. 3-6.
2. Claims 10-12 and 14 stand rejected under § 103(a) as unpatentable over
Fallon and Kumar. Ans. 7-9.

1
Because Appellants do not make any arguments related to Shutt, the
discussion in this opinion focuses on Fallon and Kumar.
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ANALYSIS
Fallon describes a system for aggregating personal information,
including legal, financial, medical information, for “personal legacy
planning” at a secure central site accessible over a network. Fallon [0008],
[0010], [0028]. The information and documents may be submitted from
various sources and are organized as a set of folders. Fallon [0013]. Fallon
describes an embodiment in which documents and information are sent to an
electronic mailbox from which “only the user can move the information
and/or documents into the user’s storage space.” Fallon [0033].
Kumar describes software for managing, over a network, data
aggregated from multiple data sources. Kumar 4:35-40. A preferred
embodiment provides an interface for viewing transactions related to
financial accounts. Kumar 4:41-54. The user can assign categories to
transactions and view transactions according to the category, account, and
time period. Kumar 4:56-59. The user can also create categories for certain
types of transactions, which will be automatically categorized according to
user preference. Kumar 39:11-15.
Obviousness Rejection of Claims 1-3 and 6-9
The Examiner rejected claims 1-3 and 6-9 under § 103(a) as obvious
over Fallon, Shutt, and Kumar. Claim 1, reproduced below with emphasis
added, is illustrative of the claimed subject matter.
1. A method of storing, creating, and organizing financial
information electronically, the method comprising:
establishing a communication session between a first system and a
second system;
communicating information associated with a financial document
from the second system to the first system the financial document
associated with a first account;
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receiving user selected filing preferences at the second system
from the first system;
providing an online environment by the second system configured
to allow a customer user at the first system to create a folder in the
online environment hosted at the second system, the folder being one
of a plurality of folders associated with the first account; and
to automatically and without human intervention associate the
financial document with the created folder based on the received user
selected filing preferences so that the financial document is included
in the created folder in the online environment hosted at the second
system, wherein the online environment displays the financial
document in the created folder.
The Examiner finds each element of Appellants’ claims present in
Fallon except (1) “creating a folder in the online environment so that the
financial document can be included and displayed in the created folder,” and
(2) “receiving user selected filing preferences and associating the financial
document with the created folder based on the received user selected filing
preferences.” Ans. 3-5. The Examiner cites Shutt as teaching (1) and Kumar
as teaching (2). Id. Appellants challenge the Examiner’s findings and assert
that neither Fallon nor Kumar discloses automatically associating a financial
document with a created folder based on user preferences as claimed. App.
Br. 9-14.
We do not find the Appellants’ arguments persuasive. First, we are
not persuaded by Appellants’ argument that neither Fallon nor Kumar
discloses every portion of the above highlighted limitation and that by
finding one part of this limitation in Fallon and another in Kumar, the
Examiner impermissibly considers the claim element in isolation rather than
the claim as a whole in violation of MPEP § 2141.02. App. Br. 10-11. We
disagree.
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The test for obviousness is “what the combined teachings of the
references would have suggested to those of ordinary skill in art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
We agree with the Examiner that the combination of Fallon and
Kumar describes all of the elements of the limitation “automatically and
without human intervention associate the financial document with the
created folder based on the received user selected filing preferences.” The
Examiner points to language in both Fallon and Kumar to support each of
the claimed pieces of this limitation. Ans. 9-11. The Examiner also
articulates a rational justification for the conclusion that a person of ordinary
skill in the art would have had reason to combine the teachings of Fallon and
Kumar. Ans. 11 (finding that Kumar provides “an automated way to
associate information to categories (or, folders) that would have benefited
Fallon by providing a more efficient filing method and further reducing the
amount of time and effort to organize information.”). Appellants do not
provide persuasive argument or evidence to rebut the Examiner’s findings.
Second, we are not persuaded by Appellants’ argument that a
transaction is not equivalent to the claimed document. We agree with the
Examiner’s broad, but reasonable, interpretation of “document,” as including
a record of interaction with a bank—a transaction as described by Kumar.
Ans. 13 (citing several dictionary definitions). Appellants do not provide an
alternate definition, but appear to narrowly interpret the term to exclude a
record in a database, and therefore a transaction. App. Br. 13; Reply Br. 15-
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16. However, the term “document” is not explicitly defined in the
specification. Appellants do not point to any persuasive evidence in the
specification or provide persuasive evidence from another source that
supports such a narrow interpretation.
Third, we are not persuaded by Appellants’ argument that Kumar’s
categories are not equivalent to the claimed folders. We agree with the
Examiner’s broad, but reasonable, interpretation of “folder,” as including a
category. Ans. 14. Appellants do not provide a different definition, but
appear to narrowly interpret the term to exclude categories. App. Br. 11-13.
However, as with the term “document,” the term “folder” is not narrowly
defined in the specification. Moreover, as pointed out by the Examiner,
when referring to “folders,” the specification uses the term interchangeably
with “categories.” Ans. 14 (quoting Spec. [0013] (“The method includes . . .
associating the financial information with a folder, category, or group in the
first system.”)). Appellants do not provide any persuasive evidence that
supports this narrow interpretation.
Finally, Appellants appear to argue that the cited references do not
disclose or suggest that the process is done “automatically and without
human intervention” because one embodiment of Fallon states that “only the
user can move the information and/or documents into the user’s storage
space.” See Ans. 9-10; Reply Br. 9. However, as explained by the Examiner,
Fallon describes other embodiments in which “informational items and
documents submitted from diverse sources are automatically integrated
across folders.” Ans. 9 (citing Fallon [0013]).
Thus, the Examiner has made a prima facie case of obviousness.
Appellants’ conclusory statements, without accompanying persuasive
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explanation or evidence, do not adequately rebut the prima facie case. See,
e.g., In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005) (holding that once a
prima facie case of obviousness is made, the burden shifts to the Appellants
“to come forward with evidence or argument in rebuttal”).

Obviousness Rejection of Claims 10-12 and 14
The Examiner rejected claims 10-12 and 14 under § 103(a) as obvious
over Fallon and Kumar. Claim 10, reproduced below with emphasis added,
is illustrative of the claimed subject matter.
10. A system for storing, creating, and organizing financial
information associated electronically, the system comprising:
a host computer coupled to a network and configured to run
programmed instructions to provide an on-line environment for a
customer user at a customer user computer connectable to the network
to organize, send, search, create, and save financial information using
a hierarchy of folders defined by the customer user in the online
environment hosted at the host computer, wherein each folder in the
hierarchy of folders includes a financial document that includes
multiple indicators, wherein the financial document is automatically
and without human intervention associated with a folder in the
hierarchy of folders based on customer user selected filing
preferences received from the customer user computer, wherein the
host computer is configured to provide a search across folders.
The Examiner finds each element of Appellants’ claims present in
Fallon except associating the financial document with a folder based on
customer user selected filing preferences. Ans. 7-8. The Examiner cites
Kumar as teaching this limitation. Id. Appellants challenge this finding
asserting that neither Fallon nor Kumar discloses (1) a hierarchy of folders
defined by the customer user in the online environment (App. Br. 16) or
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(2) a host computer configured to provide a search across folders (App. Br.
17).
We do not find the Appellants’ arguments persuasive. First, we are
not persuaded by Appellants’ argument that neither Fallon nor Kumar
discloses a hierarchy of folders defined by the customer user in the online
environment. Fallon explicitly states that “in the preferred embodiments of
the invention . . . information and documents are organized as folders”
which “preferably contain information organized in a hierarchical fashion.”
Fallon [0169], [0203], [0213]. The Examiner explains that in Fallon, the
hierarchy of folders is defined based on the legacy plan. Ans. 15. Since the
legacy plan is developed by the user, the hierarchy of folders is also,
indirectly, defined by the user. Id. (citing [0028]). The claim language does
not preclude that the hierarchy of folders is indirectly based on customer
preferences. Moreover, Figure 3-1 depicts a folder hierarchy, which is
named for the particular user—“John Smith,” and “Mary Smith.” Fallon Fig.
3-1. This folder name—and therefore the hierarchy of folders—to some
extent must therefore be “based on customer user selected filing
preferences” as claimed. Ans. 15-16.We agree with the Examiner’s findings.
Second, we are not persuaded by Appellants’ argument that neither
Fallon nor Kumar discloses a host computer configured to provide a search
across folders. The Examiner points to paragraphs [0183] and [0184] in
Fallon as disclosing this limitation. Ans. 16-17. These paragraphs discuss an
embodiment in which information is stored in a database where Structured
Query Language (SQL) is used to “define, access, and manipulate data.”
Fallon [0183]. Appellants argue that these paragraphs, however, do not even
mention the term “search.” App. Br. 17 (citing Fallon [0184]-[0185]). The
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Examiner explains that SQL is a well-known retrieval language with an
access function that is equivalent to a search. Ans. 16-17. Thus, even though
the word “search” does not appear in the cited paragraphs, the Examiner
finds that they disclose searching across all the folders. Id. In addition, the
Examiner points to several places in Fallon that discuss finding user
documents, which inherently requires searching the folders. Ans. 17 (citing
Fallon [0007], [0039]). We agree with the Examiner’s findings.
The Examiner has therefore made a prima facie case of obviousness.
Appellants’ conclusory statements, without accompanying persuasive
explanation or evidence, do not adequately rebut the prima facie case.

DECISION
The Examiner’s decision rejecting claims 1-3, 6-12, and 14 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).

AFFIRMED

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