10443205 (B.P.A.I. Jun. 29, 2012)

Ex Parte Guermonprez et al

Board of Patent Appeals and InterferencesJun 29, 2012

10443205 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex part EULALIE GUERMONPREZ, SEBASTIEN MUGNIER, and JUAN JANE ____________________ Appeal 2010-009074 Application 10/443,205 Technology Center 3600 ____________________ Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009074 Application 10/443,205 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b). (2002) SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellants claim a method and devices for self-invoicing based on receipt of completion of services performed by a third-party. (Specification 1:6-7). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of achieving control of invoicing for third-party services, said method comprising: receiving, by a manufacturer from a provider, a proof-or-completion notice notifying the manufacturer that the provider completed said third-party services for the manufacturer; generating, by the manufacturer with a computer, an invoice to self on behalf of the provider in response to said manufacturer receiving said proof-of-completion notice that indicates the provider completed the third-party services for the manufacturer: and sending, by the manufacturer, the invoice to the provider. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Elgamal US 5,671,279 Sep. 23, 1997 Rosen US 5,878,139 Mar. 2, 1999 Aram US 2002/0072988 A1 Jun. 13, 2002 Ludwig US 2003/0004874 A1 Jan. 2, 2003 Hahn-Carlson US 6,697,702 Feb. 24, 2004 Appeal 2010-009074 Application 10/443,205 3 The following rejections are before us for review. The Examiner rejected claim Claims 1-14 are rejected under 35 USC § 101 as being directed to non- statutory subject matter. Claims 1-3, 8-10, 15-17, and 22-24 are rejected under 35 USC § 103(a) as being unpatentable over Hahn-Carlson in view on Aram. Claims 4-7, 11-14, 18-21, and 25-27 are rejected under 35 USC § 103(a) as being unpatentable over Hahn-Carlson in view of Aram and Rosen. FINDINGS OF FACT We find the following facts by a preponderance of the evidence: 1. We adopt the Examiner’s findings as set forth on pages 3-10 of the Answer. 2. Additional findings of fact may appear in the Analysis that follows. ANALYSIS Rejection under 35 U.S.C. § 101 Claims 1-14 fundamentally cover a method of accounting. The Examiner found that these claims are not patent eligible because they “are neither tied to another statutory class of invention (such as a particular apparatus) nor physically transform underlying subject matter (such as an article or materials) to a different state or thing.” (Answer 4). Appeal 2010-009074 Application 10/443,205 4 Appellants however argue patent eligibility because: 1) recitation of a computer in the generating step, and/or, “[t]ransformation to a different state or thing occurs since a physical thing (i.e., an invoice) is being generated.” (Appeal Br. 10-11). We agree with the Examiner. We do not find that the mere recitation of a computer in these claims does anything more than cover typical data gathering and processing functions sufficient to confer patent eligibility. See, CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. Aug. 16, 2011). As to Appellants’ claim of transformation, we do not find that generating an invoice transforms an article into another state. Rather, the invoice is merely a collection of requirements whose status resides in the mind of the one who required and the one who fulfilled the involved requirements. Abstract ideas are not patent eligible. Bilski v. Kappos, 130 S.Ct. 3218, 3231 (June 28, 2010). Rejections under 35 U.S.C. § 103(a). Appellants argue that, “[n]owhere does Aram teach or even suggest that this self-invoicing table is generated in response to the supplier receiving a proof-of- completion notice that indicates the distributer completed the third-party services for the supplier. Aram never suggests when in time this self-invoicing table is generated.” (Appeal Br. 13). We are not persuaded by Appellants’ argument because binding precedent made clear that an obviousness rejection cannot be overcome by attacking references individually—which is precisely what appellants are doing. In re Young, 403 F.2d 754, 757 (C.C.P.A. 1968). Here, the Examiner found that Hahn- Carlson, and not Aram, discloses paying on an invoice only after a POD is received. (Answer 5). To argue that Aram fails to disclose when self-invoicing Appeal 2010-009074 Application 10/443,205 5 occurs ignores that that very teaching exists in Hahn-Carlson, which is taken in combination with Aram. Appellants next argue that “In Hahn-Carlson, the shipper does not generate an invoice on behalf of the carrier.” (Appeal Br. 13). Again, Appellants are attacking the references individually when the Examiner found that Aram discloses this feature. (Answer 6). Even still, the Specification, 18:20-21, describes that the only significance of the sending of the invoice is as a concurrence to the TSP, which we do not find to sufficiently distinguish over the prior art. Appellants also argue that “in Hahn-Carlson, the shipper does not receive proof-of-completion from the carrier. This information is sent to a central processor, and then the shipper must access this central processor to retrieve the information.” (Appeal Br. 14). Appellants’ argument is not persuasive as to error in the rejection because we find that using the intermediary of the central processor to receive the POD does not detract from proof being given to the shipper directly because the central processor in Hahn-Carlson acts as agent for the manufacturer/shipper and processes payment based on the POD being received in the same way that occurs internally with Appellants’ manufacturer. The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (C.C.P.A. 1976). Finally, we are not persuaded by Appellants’ argument that the prior art fails to disclose that the invoices issued to self are deemed to be issued by provider for legal and tax reasons. We find that the requirements of tax and property law are not the jurisdiction of patent laws. Appeal 2010-009074 Application 10/443,205 6 CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-27 under 35 U.S.C. § 103(a). We conclude the Examiner did not err in rejecting claims 1-14 under 35 USC § 101 as being directed to non-statutory subject matter. DECISION The decision of the Examiner to reject claim 1-27 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 MP