Ex Parte Darrell

Board of Patent Appeals and Interferences

Sep 20, 2010

10615582 (B.P.A.I. Sep. 20, 2010)

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.
10/615,582 07/07/2003 Richard A. Darrell 020375-040200 8946
20350 7590 09/20/2010
TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
09/20/2010 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 RICHARD A. DARRELL
____________

Appeal 2009-006757
Application 10/615,582
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006757
Application 10/615,582

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-5, 7, 9, 11-15,
17, 18, 21, and 23. We have jurisdiction to review the case under 35 U.S.C.
§§ 134 and 6 (2002).
The claimed invention is directed to systems and methods for
electronically displaying transaction receipt information to consumers or
others (Spec., para. [0002]). Claim 1, reproduced below, is further
illustrative of the claimed subject matter.
1. A method of presenting an image of a receipt to a
consumer, comprising:
electronically capturing a receipt;
storing the receipt at a host computer system;
receiving a request at the host computer system from a
computer of the consumer to display the image of the receipt;
transmitting an electronic file comprising the image of
the receipt for display at the consumer computer, the electronic
file further comprising programming that causes at least one
purchase item included on the receipt to appear as a selectable
link to obtain more detailed information about the item;
receiving from the consumer computer information that
defines at least one user-defined category based on product
information;
receiving a request at the host computer from the
consumer computer to display a categorical listing of items
purchased by the consumer, wherein the items are comprised by
a plurality of receipts;
for each of the plurality of receipts, consulting a database
for product information relating to each item of the receipt;
using the product information to sort the items into
categories comprising the at least one user-defined category;
and
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Application 10/615,582

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transmitting a second electronic file from the host
computer system to the consumer computer, wherein the file
comprises a listing of the items sorted into categories
comprising the at least one user-defined category based on
product information for display at the consumer computer.
The references of record relied upon by the Examiner as evidence of
obviousness are:
Thompson US 6,282,552 B1 Aug. 28, 2001
Schultz US 2001/0029470 A1 Oct. 11, 2001
Houvener US 6,397,194 B1 May 28, 2002
Claim 18 stands rejected under 35 U.S.C. § 101 for failing to recite
patentable subject matter; claims 1-5, 7, 9, 11-15, 17, and 18 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Houvener in view of Schultz;
and claims 21 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schultz.
We REVERSE.

ISSUES
Did the Examiner err in asserting that independent claim 18 recites
patentable subject matter under 35 U.S.C. § 101?
Did the Examiner err in asserting that a combination of Houvener and
Schultz render obvious the subject matter of claims 1-5, 7, 9, 11-15, 17, 18,
21, and 23?

ANALYSIS
101 Rejection
We are persuaded the Examiner erred in asserting that independent
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Application 10/615,582

4
claim 18 recites patentable subject matter under 35 U.S.C. § 101 (App. Br.
5; Reply Br. 1). Page 4 of the Appeal Brief lists an image capture device,
host computer system 102, database 106, and financial statement processing
computer 110 as corresponding to the various “means” set forth in
independent claim 18. These devices denote sufficient structure to meet the
machine prong of the machine-or-transformation test. See Bilski v. Kappos,
130 S. Ct. 3218, 3227 (2010) (the machine-or-transformation test may be a
useful and important clue or investigative tool for deciding whether an
invention is a patent-eligible “process” under §101).

Obviousness Rejection
We are persuaded the Examiner erred in asserting that a combination
of Houvener and Schultz renders obvious the subject matter of claims 1-5, 7,
9, 11-15, 17, 18, 21, and 23 (App. Br. 5-9; Reply Br. 1-3). Appellant asserts
that the Examiner has improperly failed to give patentable weight to
“receiving from the consumer computer information that defines at least one
user-defined category based on product information,” as recited in
independent claim 1 (App. Br. 7). We agree because the Examiner has
failed to show how either Houvener or Schultz “defines at least one user-
defined category.” The Examiner is generally correct that a printed matter
rejection is appropriate where the general function is described and all that
differs between the references and the claimed invention is the information
contained within. See In re Gulack, 703 F.2d 1381, 1385-86 (Fed. Cir.
1983) (“[w]here the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability”). Accordingly, because Houvener and Schultz
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disclose computers exchanging information, it is tempting to assert that the
content of the information is irrelevant, and thus ripe for a printed matter
rejection. However, independent claim 1 also recites “using the product
information to sort the items into categories comprising the at least one user-
defined category.” Thus, the “user-defined category” is no longer printed
matter because the content of the information received from the consumer
computer affects the underlying operation of the claimed invention; if no
user-defined categories are received at the host computer, no sorting can be
performed. And contrary to the Examiner’s assertion on page 13 of the
Examiner’s Answer, the sorting is not merely an intended use, as the sorting
step is positively recited within the step of “using the product information.”

DECISION
The Examiner’s decision is REVERSED.

REVERSED

hh

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