Ex Parte Clarke et al

Board of Patent Appeals and Interferences

Oct 7, 2009

10153105 (B.P.A.I. Oct. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM D. CLARKE, ROBERT A. LAPRADE, and
DANIEL M. PALMA
____________________

Appeal 2009-005488
Application 10/153,105
Technology Center 3600
____________________

Decided: October 7, 2009
____________________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
KEVIN F. TURNER Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005488
Application 10/153,105

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 6-11 and 15-19. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF THE DECISION
We AFFIRM1.

THE INVENTION
Appellants’ claimed invention relates to a customizable electronic bill
presentment and payment (EBPP) system and method which do not require
the business logic and presentation logic to be changed in order to provide a
customized look and feel to different billers. These custom, individualized
features are stored in data repositories whereby a controller activates
appropriate objects and routines within the business and presentation logic
based on the stored customization features. (Spec. p. 4, ll. 23-30).
Independent claim 6, which is deemed to be representative, reads as
follows:
6. An electronic bill presentment computer system
for providing bill information from a biller to a remote
customer over a network, the customer submitting a
requested transaction to the electronic bill presentment
computer system, the electronic bill presentment
computer system configured and programmed to include:

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jul. 9, 2008) and Reply Brief (“Reply Br.,” filed Oct. 1, 2008),
and the Examiner’s Answer (“Ans.,” mailed Aug. 1, 2008).
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an action descriptor repository including a script of
processing instructions corresponding to the requested
transaction, the script being directed to particular
electronic bill requirements of the biller and including
one or more of the following: (a) an identification of
business objects to instantiate, (b) a method to invoke the
business objects, and (c) a presentation instruction;
a business logic module including a plurality of
business objects for determining electronic billing
results;
a presentation descriptor repository, the
presentation descriptor repository including data
pertaining to the biller's particular look-and-feel for
presentation of electronic billing results to the customer;
a presentation logic module configured for
receiving electronic billing results from the business
logic module and providing a visual presentation of the
electronic billing results to the customer, the presentation
logic module configured for utilizing look-and-feel data
retrieved from the presentation descriptor repository; and
an interaction controller configured for receiving
the requested transaction from the customer and
retrieving the corresponding script of processing
instructions from the action descriptor repository, the
interaction controller configured for invoking business
objects in the business logic module and providing
presentation instructions to the presentation logic module
in accordance with the script of processing instructions;
wherein the action descriptor repository and the
presentation descriptor repository are discrete from the
business logic module, the presentation logic module,
and the interaction controller, thereby providing that said
repositories are the only part of the system directly
reflecting the biller's particular electronic billing needs,
the information in said repositories being customizable
for the biller.

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THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Haseltine 6,578,015 B1 Jun. 10, 2003

Oracle Technology Network, OracleJSP Support for JavaServer Pages
Developer's Guide and Reference: Release 1.1.3.1 (June 2001
Documentation Update), http://www.oracle.com/technology/docs/tech/java/
oc4j/jspl131/genlovw.htm (last visited Jan. 10, 2007) [hereinafter Oracle
June 2001].

Sandeepan Banerjee et al., Oracle 8i- The XML Enabled Data
Management System, (2000), http://ieeexplore.ieee.org/ie1516778118144/
O0839454.pdf?tp=&arnumber=839454&isnumber=18144 (last visited Jan.
10, 2007) [hereinafter Banerjee].

The Examiner rejected claims 6-8, 15, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Haseltine and Oracle June 2001.
Additionally, the Examiner rejected claims 9-11 and 17-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Haseltine, Oracle June 2001, and
Banerjee2.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this decision. Arguments that Appellants did not make in the Briefs have

2 To clarify, the 35 U.S.C. §112, second paragraph rejection included on
page 3 of the Examiner’s Answer mailed on Aug. 1, 2008 was in error. The
rejection was withdrawn due to Appellants’ reply. This withdrawal was
acknowledged by the Advisory Action filed before the filing of the Appeal
Brief mailed Sept. 4, 2007.
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not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
1. Have Appellants shown that Examiner erred in rejecting claims 6-8,
15, and 16 under 35 U.S.C. § 103(a) as being obvious over Haseltine and
Oracle June 2001?
2. Have Appellants shown that Examiner erred in rejecting claims 9-
11 and 17-19 under 35 U.S.C. § 103(a) as being obvious over Haseltine,
Oracle June 2001, and Banerjee?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
1. Appellants’ Specification describes an “interaction controller . . . as
the central means for directing the operation of the various components of
the system.” (Spec. p. 5, ll. 15-16).
2. Appellants’ Specification describes an “action descriptor
repository[]” as a repository for “stored scripts of processing instructions
corresponding to a wide variety of potential transactions allowed by a
particular biller.” (Spec. p. 5, ll. 4-7).
3. Haseltine is directed towards an electronic bill presentment and
payment (EBPP) system which includes a plurality of bill templates, each of
which may define a distinct appearance for the bill. (Haseltine Abs).
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4. Haseltine discloses a computer system which includes a bus for
communicating information, and a processor coupled with the bus for
processing information. (Haseltine col. 12, ll. 49-54).
5. Haseltine discloses that the process instruction steps of the
electronic bill presentment and payment system are executed by the
processor performing the process instructions which are stored on a storage
device. (Haseltine col. 13, ll. 26-33).
6. Oracle June 2001 is directed towards a reference article for
JavaServer Pages™. The article describes the separation of business logic
from the page presentation. (Oracle June 2001 pp. 1, 4).
7. Banerjee describes technology to enable the storage and querying
of XML data. (Banerjee p. 1).

PRINCIPLES OF LAW
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Center, 367 F.3d 1359,
1369 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is “examined [using] that
meaning, in order to achieve a complete exploration of the applicant's
invention and its relation to the prior art.” In re Zletz, 893 F.2d 319, 321
(Fed. Cir. 1989).
“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., 550 U.S. 398, 406
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(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, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. at 416. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417.
The operative question in this functional approach is thus “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only
if this initial burden is met does the burden of coming forward with evidence
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or argument shift to the Appellant. In re Oetiker, 977 F.2d at 1445. See also
In re Piasecki, 745 F.2d at 1472. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d at 1445; see also In re Piasecki, 745
F.2d at 1472.

ANALYSIS
ISSUE 1
Claims 6-8, 15, and 16 rejected under 35 U.S.C. § 103(a) as unpatentable
over Haseltine and Oracle June 2001.
Appellants argue Haseltine and Oracle June 2001 do not disclose “the
claimed internal system architecture, and interoperation of modules.” (App.
Br. 8). Specifically, Appellants argue that “Haseltine fails to provide any
description or suggestion of a an [sic] ‘interaction controller’ that interacts
with a ‘corresponding script of processing instructions from the action
descriptor repository,’ as recited in claim 6.” (App. Br. 8-9). We are not
persuaded by Appellants’ arguments and we agree with the Examiner’s
findings that Haseltine discloses an “interaction controller” as claimed by
Appellants. (Ans. 5 and 14). Haseltine discloses an electronic bill
presentment and payment system which utilizes a processor coupled with a
bus for processing and transferring information. (FF 3, 4). Albeit, Haseltine
does not refer to the processor and bus as an “interaction controller,” we find
that under the broadest reasonable interpretation consistent with Appellants’
Specification, the processor and bus perform the same function as
Appellants’ “interaction controller” in that it is a central means for directing
the operation of various components. (FF 1). Thus, we interpret the
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processor and bus of Haseltine which process and transfer information to
interact with a “corresponding script of processing instructions from the
action descriptor repository,” to be equivalent to an “interaction controller”
as claimed by Appellants. Appellants make similar arguments regarding
independent claim 15 corresponding to the functionality of the “interaction
controller.” (App. Br. 9). Accordingly, we find the combination of
Hasteltine and Oracle June 2001 makes claims 6 and 15 obvious. Therefore,
Appellants’ argument is not persuasive as to error in the rejection.
Additionally, Appellants argue “Haseltine does not describe the
‘interaction controller,’ the ‘action descriptor repository,’ nor how they are
[sic] operate to invoke the appropriate business objects in the business logic
module.” (App. Br. 9). We are not persuaded by Appellants’ arguments and
we agree with the Examiner’s findings. As discussed and for the reasons
described supra, the combination of Haseltine and Oracle June 2001
discloses the “interaction controller.” Further, we find Haseltine discloses
that the electronic bill presentment and payment system executes sequences
of instructions stored on a storage device. (FF 5). We interpret this storage
device to be equivalent to the “action descriptor repository” claimed, which
Appellants’ Specification describes as a repository for stored scripts of
processing instructions. (FF 2). With regard to how the “interaction
controller,” and “action descriptor repository” operate to invoke the
appropriate business objects in the business logic module, we find that
Haseltine discloses a electronic bill presentment and payment system much
like the electronic bill presentment system claimed by Appellants. (FF 3).
Thus, one of ordinary skill in art would find that the processor and bus of
Haseltine would be capable to operate to invoke the appropriate business
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objects in the business logic module just as Appellants have claimed.
Therefore, Appellants’ argument is not persuasive as to error in the rejection.
Appellants further argue that Haseltine does not disclose “the
limitation of the ‘action descriptor repository’ and ‘presentation descriptor
repository’ being discrete from the disclosed respective logic modules and
the interaction controller.” (App. Br. 9). Contrary to Appellants’ argument,
the Examiner has cited Oracle June 2001 and not Haseltine to teach the
limitation of the “action descriptor repository” and “presentation descriptor
repository” being discrete from the disclosed respective logic modules and
the “interaction controller.” (Ans. 5-6). We find Oracle June 2001 describes
the separation of business logic from the page presentation. (FF 6). We
interpret this separation of business logic from the page presentation to be
equivalent to the “action descriptor repository” and “presentation descriptor
repository” being discrete from the disclosed respective logic modules, and
thus obvious. Accordingly, we find the combination of Haseltine and Oracle
June 2001 makes claims 6 and 15 obvious. Therefore, Appellants’ argument
is not persuasive as to error in the rejection.

Claims 7, 8, and 16
Appellants do not separately argue claims 7, 8, and 16, which depend
from claims 6 and 15 respectively, and so have not sustained their burden of
showing that the Examiner erred in rejecting claims 7, 8, and 16 under 35
U.S.C. § 103(a) as unpatentable over Haseltine and Oracle June 2001 and for
the same reasons we found as to claims 6 and 15, supra.

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ISSUE 2
Claims 9-11 and 17-19 rejected under 35 U.S.C. § 103(a) as unpatentable
over Haseltine and Oracle June 2001 and Banerjee.
Claims 9-11 and 17-19
Appellants argue that Banerjee does not cure the deficiency of claims
6 and 15. (App. Br. 10). However, we find the Examiner has not relied on
Banerjee to reject claims 6 and 15, and thus we find no basis to reach
whether Banerjee cures the alleged deficiency. Therefore, since Appellants
do not separately argue claims 9-11 and 17-19, which depend from claims 6
and 15 respectively, they have not sustained their burden of showing that the
Examiner erred in rejecting claims 9-11 and 17-19 under 35 U.S.C. § 103(a)
as unpatentable over Haseltine and Oracle June 2001 for the same reasons
we found as to claims 6 and 15, supra.

CONCLUSION OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 6-8, 15 and 18 as being obvious over Haseltine and
Oracle June 2001. Additionally, we conclude that Appellants have not
shown that the Examiner erred in rejecting claims 9-11 and 17-19 as being
obvious over Haseltine, Oracle June 2001, and Banerjee.

DECISION
The decision of the Examiner to reject claims 6-11 and 15-19 under
35 U.S.C. § 103(a) is AFFIRMED.

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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

KMF

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