Ex Parte Dudley et al

Board of Patent Appeals and Interferences

Jan 17, 2012

10860287 (B.P.A.I. Jan. 17, 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.
10/860,287 06/04/2004 Christopher A. Dudley 47004.000289 8240
21967 7590 01/18/2012
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
EXAMINER
GREENE, DANIEL LAWSON
ART UNIT PAPER NUMBER
3667
MAIL DATE DELIVERY MODE
01/18/2012 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 CHRISTOPHER A. DUDLEY, CARL SHISHMANIAN,
and ARTHUR F. GUELDA, IV
____________

Appeal 2010-010461
Application 10/860,287
Technology Center 3600
____________

Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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Application 10/860,287

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-22. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). Oral
hearings were held on January 12, 2012.
The claimed invention is directed to processing payments items, for a
merchant with multiple merchant locations, at a Central Processor wherein
the payments items are deposited in a single national account (Spec., para.
[001]). Claim 1, reproduced below, is further illustrative of the claimed
subject matter (numbered bracketing has been added).
1. A computer implemented method for processing
payment items, the computer implemented method comprising
the steps of:
receiving an envelope with a label wherein the envelope
comprises payment items from a merchant location; [1] wherein
the label indicates to a sorter at a mail facility that the envelope
is destined for a central processor and the envelope skips
regular mail channels;
encoding one or more of the payment items at the central
processor;
[2] depositing the payment items into a single national
account associated with a merchant entity, wherein the
merchant entity comprises a plurality of merchant locations;
clearing the payment items through one or more payor
entities; and
providing funds availability information to the merchant
entity through an online interface.

Claims 1-6, 8-16, and 18-22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Antognini (US Pub. No. 2002/0023055 A1, pub. Feb.
21, 2002) in view of Woodward (US Pat. No. 1,985,592, iss. Dec. 25, 1934),
Pintsov (US Pat. No. 5,826,247, iss. Oct. 20, 1998), Douglas S. Armstrong,
Norwest eases difficulty of interstate banking Bank’s customers may use the
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same account number at any branch, Milwaukee Journal Sentinel, 1-3 (Oct.
12, 1995) (hereinafter “Armstrong”) and Yumoto (US Pub. No.
2002/0123948 A1, pub. Sep. 5, 2002); and claims 7 and 17 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Antognini in view of
Woodward, Pintsov, Armstrong, Yumoto, and Official Notice.
We AFFIRM.

ISSUES
Did the Examiner err in asserting that a combination of Antognini,
Woodward, Pintsov, Armstrong, and Yumoto renders obvious independent
claim 11? The issue turns on whether the combination of cited references
renders obvious aspects [1] and [2], and whether the combination of cited
references can be properly combined.
Did the Examiner err in asserting that a combination of Antognini,
Woodward, Pintsov, Armstrong, Yumoto, and Official Notice renders
obvious dependent claim 72? The issue turns on whether the combination of
cited references renders obvious “wherein the funds availability information
is sorted by a merchant location identifier assigned to each merchant
location.”

1 As Appellants set forth the same arguments for independent claims 1, 10,
11, and 20-22, we choose independent claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
2 As Appellants set forth the same arguments for dependent claims 7 and 17,
we choose dependent claim 7 as representative. See 37 C.F.R. §
41.37(c)(1)(vii).
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FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 3-15
of the Examiner Answer.

ANALYSIS
Independent Claim 1
We are not persuaded the Examiner erred in asserting that a
combination of Antognini, Woodward, Pintsov, Armstrong, and Yumoto
renders obvious independent claim 1 (App. Br. 12-18; Reply Br. 4-10).
Appellants assert that Woodward teaches away from the claimed invention,
because while Woodward discloses handling bank deposits through regular
mail channels, aspect [1] of independent claim 1 recites skipping regular
mail channels (App. Br. 13-14; Reply Br. 4-5). However, a teaching away
requires discouragement, and Appellants have not shown how Woodward
discourages skipping regular mail channels. See In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994) (“[a] reference may be said to teach away when a
person of ordinary skill, upon [examining] the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant”).
Appellants then assert that Pintsov also discloses sending mailpieces
through regular mail channels, and not skipping them as recited in aspect [1]
of independent claim 1 (App. Br. 14, Reply Br. 5). However, Pintsov
discloses sending mailpieces using special services such as express mail
(col. 6, ll. 4-14). The Examiner interprets first class mail as corresponding
to the recited regular mail channels, and thus express mail skips those
channels (Exam’r’s Ans. 4-6). While Appellants may have intended
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“regular mail channels” to include all services performed by the U.S. Postal
Service, including first class mail and express mail, and thus have the
“central processor” fall outside of all such services, such an aspect is not set
forth in the claims. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d
1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for
proper context of a claim term, limitations from the specification will not be
imported into the claims).
Appellants further assert that Armstrong does not render obvious
aspect [2] of independent claim 1, because Armstrong discloses a retailer
using 40 accounts at 40 banks, and not “a single national account” as
claimed (App. Br. 14-15; Reply Br. 5-6). However, the Examiner did not
cite paragraphs 3 to 6 of Armstrong as specifically disclosing the single
national account. Instead, the Examiner cited Armstrong to generally show
that consolidation of accounts was known, in this case from 750 accounts to
40 accounts, thus making further consolidation to a single account obvious
(Exam’r’s Ans. 5-6). We find no error in the Examiner’s logic.
Appellants assert that the Examiner must present a rationale for
combining all five references together, as opposed to just providing
rationales for combining two references at a time (App. Br. 16-17; Reply Br.
7-8). We are aware of no such caselaw or statutory requirement.
Appellants assert that the various rationales provided by the Examiner
to combine the various references, such as “simplify,” make “faster,” and
“streamline” are found nowhere in the references (App. Br. 17-18; Reply Br.
8-9). However, the Examiner has provided such rationales, as well as
support for those rationales in the references, on pages 5-6 of the Examiner’s

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Answer. For example, the disclosure of express mail at column 6, lines 4-14
of Pintsov provides support for the make “faster” rationale.
Appellants assert that Antognini, Woodward, Pintsov, Armstrong, and
Yumoto are non-analogous art (App. Br. 17-18; Reply Br. 8-9). The two-
prong analogous arts test recites that a prior art reference must either be (1)
in the field of Appellant's endeavor or, if not, then (2) be reasonably
pertinent to the particular problem with which the Appellant was concerned,
in order to be relied upon as a basis for rejection of the claimed invention.
See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). To that end, a
cursory review of the references finds that Antognini, Pintsov, Woodward,
and the claimed invention are in the same field of making payments through
the mail, and Armstrong, Yumoto, and the claimed invention are all
reasonably pertinent to solving problems concerning account management.
Regarding dependent claims 2-6, 8, 9, 12-16, 18, and 19, Appellants
set forth headings purportedly arguing them separately (App. Br. 18-21, 32-
35). However, because Appellants do not set forth any substantive
arguments as to how the Examiner’s application of the reference to the
recited aspects was in error, we sustain these rejections.

Dependent Claim 7
We are not persuaded the Examiner erred in asserting that a
combination of Antognini, Woodward, Pintsov, Armstrong, Yumoto, and
Official Notice renders obvious dependent claim 7 (App. Br. 52-54; Reply
Br. 10-11). Appellants assert that the Official Notice is only directed toward
sorting, and ignores “funds availability information” and “a merchant
location identifier,” as recited in dependent claim 7. However, the Examiner
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cites Yumoto for disclosing “funds availability information,” and Armstrong
for disclosing “a merchant location identifier” (Exam’r’s Ans. 25-26). See
In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument
that a single reference alone does not disclose the recited claimed steps is not
persuasive because nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references”).

DECISION
The decision of the Examiner to reject claims 1-22 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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