Ex Parte Kissner et al

Board of Patent Appeals and Interferences

Jul 31, 2012

10707570 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MATTHEW S. KISSNER, JEAN-HIRAM COFFY,
JAMES A. EUCHNER, and ARTHUR J. PARKOS
____________________

Appeal 2010-007896
Application 10/707,570
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-13 and 21-24. Claims 14-16 have
been withdrawn from consideration. We have jurisdiction under 35 U.S.C. §
6(b).

SUMMARY OF THE DECISION
We affirm-in-part and enter new grounds of rejection.

BACKGROUND
Appellants’ invention is directed to a system and method for bill
payment using digital paper bill presentment (Spec., para. [0001]).
Claim 1 is illustrative:
1. A method for presenting a digital paper bill comprising:
receiving data relating to a bill from a merchant to a
consumer;
associating a digital paper pattern with the bill;
associating a stored consumer biometric signature with
the bill;
creating the digital paper bill using the data relating to
the bill and the digital paper pattern; and
providing the digital paper bill to a consumer.
Appellants appeal the following rejections:
Claims 1-5, 8-13, and 21-24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wiebe (WO 02/39378 A1, pub. May 16, 2002) in view of
Silverbrook (US 7,222,098 B2, iss. May 22, 2007).1

1 Although the Answer indicates the rejection of claims 6 and 7 are over
Wiebe and Silverbrook, the analysis articulates that the rejections of these
two claims further depend on Official Notice. Ans. 4-5.
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Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wiebe, Silverbrook, and Official Notice that sending a payment processed
receipt to the consumer related to the payment processed notice is old and
well known.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Wiebe, Silverbrook, and Official Notice that XML-formatted data is old and
well known.

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
Silverbrook teaches associating a stored biometric signature with a
bill through its association with a particular billed customer, where the
“registration server compares the signature captured by the netpage pen with
a previously registered signature, allowing it to authenticate the user's
identity to an e-commerce server.” (Col. 9, ll. 7-11, also Col. 36, ll. 13-32).
Additional facts may be disclosed in the analysis section.

ANALYSIS
Claims 1-3, 8, 10, 11, 21, and 22
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the Examiner’s claim interpretation is erroneous
because of a statement that a bill must be “printed” (Rep. Br. 2), because
both Wiebe (pg. 12, l. 32 to pg. 13, l. 4) and Silverbrook (col. 4, ll. 23-26)
disclose a printed digital paper document.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Silverbrook does not suggest associating a stored
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biometric with a printed digital paper bill. App. Br. 11. Silverbrook teaches
that a stored biometric signature associated with a user is compared to a
signature on a digital paper document (FF 1), and a stored biometric
signature is thus associated with a printed digital paper bill. Therefore, we
sustain the rejection of claim 1, as well as claims 2, 3, 8, 10, 11, 21, and 22
that were not separately argued.
Claim 4
We are persuaded of error on the part of the Examiner by Appellants’
arguments that the combination does not disclose indicating any shortfall to
the consumer (App. Br. 12), or that such teaching is inherent (Rep. Br. 2),
because although the cited portion of Wiebe discloses looking up account
details and processing a payment (pg. 24, l. 32 to pg. 25, l. 14), Wiebe does
not disclose action taken when funds are insufficient. Additionally, it is not
necessarily present that Wiebe must indicate a shortfall to a consumer,
because other options are available, such as a failed payment transaction
without notice. Therefore, we do not sustain the rejection of claim 4 under
35 U.S.C. § 103(a).
Claim 5
We are persuaded of error on the part of the Examiner by Appellants’
arguments that the combination does not disclose receiving a payment-
processed notice (App. Br. 12) because the payment method options (Wiebe
pg. 21, ll. 28-33) and network address (pg. 24, ll. 20-21), apparently received
from a bank, are not payment-processed notices (Rep. Br. 2-3). Neither the
presentment of options the consumer may take for payment, nor a network
address used by a pen to send coordinate information to the bank, are notices
that a payment was processed, because at the time of either receipt no
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payment has yet taken place. Therefore, for this additional reason, we do
not sustain the rejection of claim 5, or dependent claim 6, under 35 U.S.C. §
103(a).
Claims 6 and 7
We are not persuaded of error on the part of the Examiner by
Appellants’ argument regarding the combination, we note Appellants have
not disputed the facts of Official Notice (Rep. Br. 3). In addition, we find
the combinations are reasonable since one would be motivated to provide a
consumer with a payment verification, and motivated to use standardized
XML data format, because each is a standard practice. See KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007) (In making the obviousness
determination one “can take account of the inferences and creative steps that
a person of ordinary skill in the art would employ.”). As such we affirm the
Examiner’s rejection of claims 6 and 7.
However, we note that in the first Office Action, mailed Apr. 23,
2008, dependent claims 6 and 7 were rejected under 35 U.S.C. § 103(a) over
Wiebe and Official Notice (pg. 8), but in the Final Action, mailed July 16,
2009, the unamended claims were rejected under 35 U.S.C. § 103(a) over
Wiebe and Silverbrook (pg. 3). In the Examiner’s Answer, the claims are
presented again as being rejected under 35 U.S.C. § 103(a) over Wiebe and
Silverbrook (pg. 3), but the analysis indicates that the Examiner is relying on
Official Notice as a third factual reference (Ans. 4-5). We agree with the
argument that the Examiner’s Answer should have designated the rejections
of claims 6 and 7 as new grounds, with approval from a Director. Rep. Br.
3.
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Remanding the case to correct this oversight would introduce
additional delays, therefore we denominate our affirmance of the Examiner’s
rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Wiebe, Silverbrook and Official Notice as a new grounds of rejection.
Claim 9
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the combination does not teach a “confirmation
time window.” App. Br. 12, Rep. Br. 3-4. There is an inherent time window
between the time a bill is received by a consumer and the time when the
consumer responds to the bill. The claim does not distinguish which time
window is required, and therefore the inherent time window meets the claim
requirement.
Claim 12
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the combination does not disclose a payment
request that includes a hand-written amount (App. Br. 12), because Wiebe
(pg. 25, ll. 10-11) and Silverbrook (col. 9, ll. 7-11) each disclose an amount
written by hand on the digital paper and read by the pen and transmitted.
Claim 13
We are persuaded of error on the part of the Examiner by Appellants’
arguments that the combination does not disclose that the payment request
includes an indication that the consumer used the digital pen to check a
payment dispute box. App. Br. 13. The cited section of Wiebe merely
informs that bank that a particular invoice has a particular arrangement of
data, but this is not an indicator of responding that the bill is disputed. We
therefore reverse the rejection of claim 13 under 35 U.S.C. § 103(a).
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Claims 23 and 24
We are persuaded of error on the part of the Examiner by Appellants’
arguments that the combination does not disclose associating either a dispute
resolution indicator, or customer support response indicator, with the digital
paper bill. The Examiner did not separately cite any section in conjunction
with the language of claims 23 or 24 (Ans. 3-4), nor respond directly to
argument presented by Appellants. The Examiner thus failed to establish a
prima facie case with respect to these two claims, and therefore we do not
sustain the rejection under 35 U.S.C. § 103(a).
New Grounds of Rejection
Claim 4
Incorporating the previous rejection of claim 4, we reject the claim
under 35 U.S.C. § 103(a) over Wiebe, Silverbrook, and Official Notice that
notifying a customer of a funds shortfall in a payment transaction is old and
well-known. In addition to the Examiner’s reasoning, we add that it would
have been obvious to indicate a shortfall in funds available for a payment
request, because notifying a customer of a funds shortfall in a payment
transaction is a common business practice.
Claim 5
Incorporating the previous rejection of claim 5, we reject the claim
under 35 U.S.C. § 103(a) over Wiebe, Silverbrook, and Official Notice that
providing receipts for payment transactions is old and well-known. In
addition to the Examiner’s reasoning, we add that it would have been
obvious to receive from a bank a notice that a requested payment has been
processed, because providing receipts for transactions is a common business
practice.
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Claims 13, 23, and 24
We reject claims 13, 23, and 24 under 35 U.S.C. § 103(a) over Wiebe
and Silverbrook because we find that the particular content associated with a
printed document is obvious, since the content itself does not receive
patentable weight as mere printed matter. That is, the dispute response
indicator and customer support indicator are merely content printed on the
digital paper that, in the context of claims 23 and 24, are non-functional
descriptive material. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004).
Wiebe discloses associating content with a digital paper bill by printing it
pg. 12, ll. 32-35) which meets the claim requirements.
Additionally, as to claim 13, specific information in a payment
request, such as an indication of a payment dispute, is also non-functional
descriptive material in the context of the claim, because it is merely content,
included in the payment request, that does not perform a function within the
scope of the claim. Wiebe discloses including content, such as coordinates
read from the digital paper (pg. 24, ll. 13-19), included in a payment request
sent to the bank, which meets the claim requirement.

DECISION
We affirm the rejection of claims 1-3, 7-12, 21, and 22 under 35
U.S.C. § 103(a) over Wiebe and Silverbrook, and affirm the rejection of
claim 7 under 35 U.S.C. § 103(a) over Wiebe, Silverbrook, and Official
Notice.
We reverse the rejection of claims 4-6, 13, 23, and 24 under 35 U.S.C.
§ 103(a).
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We enter a new ground of rejection of claims 13, 23, and 24 under 35
U.S.C. § 103(a) over Wiebe and Silverbrook, and a new ground of rejection
of claims 4-6 under 35 U.S.C. § 103(a) over Wiebe, Silverbrook, and
Official Notice.
FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellants may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the
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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). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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