Ex Parte Kobeh et al

Board of Patent Appeals and Interferences

Sep 17, 2010

10673431 (B.P.A.I. Sep. 17, 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.
10/673,431 09/30/2003 Gerardo Kobeh 11884/406501 2620
23838 7590 09/20/2010
KENYON & KENYON LLP
1500 K STREET N.W.
SUITE 700
WASHINGTON, DC 20005
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
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 GERARDO KOBEH,
FRANK GODEBY,
JAMES KEITH HARMON, and
JOSEPH THOMPSON
____________

Appeal 2009-012755
Application 10/673,431
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, 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.
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Application 10/673,431
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STATEMENT OF THE CASE
Gerardo Kobeh, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-27. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

THE INVENTION
The invention is a “grants management systems and method that
handle administrative and financial requirements of one or more sponsors.”
Specification [1].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented grants management
method for managing a plurality of grants for a
recipient received from a plurality of grant
sponsors, comprising:
responsive to a transaction request and data
associated therewith, converting values of the
associated data from a domain of a transaction
system to a domain defined for one of the plurality
of grants,
determining if the converted data maps to a
classification that has been defined under the one
of the plurality of grants to be valid,

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 29, 2008) and Reply Brief (“Reply Br.,” filed Apr. 17,
2009), and the Examiner’s Answer (“Answer,” mailed Feb. 20, 2009).
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if so, determining, based on a set of rules
derived from administrative and financial
requirements of the plurality of grants and encoded
in a database, if the converted data causes a limit
defined under the one of the plurality of grants to
be exceeded, and
if not, admitting the requested transaction,
otherwise, rejecting the requested
transaction.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Corrie
Kanefsky
Chen
US 2002/0120538 A1
US 2005/0192826 A1
US 7,111,010 B2
Aug. 29, 2002
Sep. 1, 2005
Sep. 19, 2006
The Examiner took official notice that “it is old and well known in the
art to include multiple databases in systems that are operatively connected.”
Answer 19. [Hereinafter, Official Notice.]
The following rejections are before us for review:
1. Claims 1-10, 13-18, 20, and 22-27 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Corrie and Kanefsky.
2. Claims 11, 19, and 21 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Corrie, Kanefsky, and Official Notice.
3. Claim 12 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Corrie, Kanefsky, and Chen.

Appeal 2009-012755
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ISSUES
The first issue is whether claims 1-10, 14, 26 and 27 are unpatentable
under 35 U.S.C. §103(a) over Corrie and Kanefsky. Specifically, the issue is
whether Kanefsky teaches, as the Examiner asserts, the step of: responsive to
a transaction request and data associated therewith, converting values of the
associated data from a domain of a transaction system to a domain defined
for one of the plurality of grants; and determining if the converted data maps
to a classification that has been defined under the one of the plurality of
grants to be valid. The rejection of claim 11 under 35 U.S.C. §103(a) as
being unpatentable over Corrie, Kanefsky, and Official Notice and the
rejection of claim 12 under 35 U.S.C. §103(a) as being unpatentable over
Corrie, Kanefsky, and Chen also turn on this issue.
The second issue is whether claims 13, 15-18, 20, and 22-25 are
unpatentable under 35 U.S.C. §103(a) over Corrie and Kanefsky.
Specifically, the issue is whether Kanefsky’s Provisional Application
60/496,816 provides proper support for the portions of Kanefsky cited by the
Examiner to teach multiple grantees using a grant management system to
manage grants from multiple grantors. The rejection of claims 19 and 21
under 35 U.S.C. §103(a) as being unpatentable over Corrie, Kanefsky, and
Official Notice also turn on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
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1. The Specification does not contain an express definition of
“converting.”
2. A definition of convert is “to change from one form or function to
another.” See Merriam-Webster’s Collegiate Dictionary 253 (10th Ed.
1998.)(Entry for “convert.”)
3. The Specification describes an example of converting the data as
converting currency values. Specification [16].
4. Paragraph [0033] of Kanefsky describes the grantee entering data to
the grant management service through a data entry module or the
grantor entering grant setup information by importing it from an
electronic file.
5. Figure 1 of Kanefsky is reproduced below.

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Figure 1 depicts the overall architecture of Kanefsky’s grant
management system and depicts multiple grantors being connected to
multiple grantees.
6. Paragraph [0021] of Kanefsky describes Figure 1 and also describes
that multiple grantors and multiple grantees use the grant management
and reporting system.
7. Page 67 of the 60/496,816 provisional application is reproduced
below.

Page 67 depicts the overall architecture of a grant management system
and depicts multiple grantees and grantors connected to the system.
8. Page 14 of the 60/496,816 provisional application, describes an
embodiment of accessing the grant management system and states
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“Grantees that access the system may choose by Grantor . . . All
eligible Grants are displayed based on authorization.”

ANALYSIS
The rejection of claims 1-10, 13-18, 20, and 22-27 under 35 U.S.C. §103(a)
as being unpatentable over Corrie and Kanefsky.
Claims 1-10 and 27
Claim 1 states “responsive to a transaction request and data associated
therewith, converting values of the associated data from a domain of a
transaction system to a domain defined for one of the plurality of grants.”
To teach this limitation the Examiner cites paragraph [0033] of Kanefsky
(Answer 29), which generally describes the grantee entering data to the grant
management service through a data entry module or the grantor entering
grant setup information by importing it from an electronic file (FF 4).
Referring to the step of converting values of the associated data, the
Examiner states: “Based on a broad and reasonable claim construction, the
limitation in question imports transaction data by converting the respective
data from a transaction file or folder to a file or folder defined for a specific
grant.” Answer 29-30. The Examiner seems to argue that this limitation,
when broadly and reasonably construed, encompasses converting data by
entering it into the grant management service or moving the data between
files.
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
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of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
We find that the Examiner has unreasonably broadly construed this
limitation. The Specification does not contain an express definition of
“converting.” FF 1. A definition of convert is “to change from one form or
function to another.” FF 2. We note that the Specification describes an
example of converting the data as converting currency values. FF 3. Merely
entering data into the grant management system or moving the data between
files does not change the data from one form or function to another.
Therefore, we find that the Examiner has unreasonably broadly construed
the step of converting the data to encompass the uploading of the data
described in Kanefsky.
Independent claims 6, 10, and 27 also recite similar limitations and
our reasoning above equally applies to those claims. Accordingly, we find
that the rejection of claims 1-10 and 27 under 35 U.S.C. 103(a) as being
unpatentable over Corrie and Kanefsky is overcome.
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Claims 13, 15-18, 20, and 22-25
The Appellants argued claims 13 and 15-18, 20, and 22-25 as a group.
App. Br. 8-13. We select claim 13 as the representative claim for this group,
and the remaining claims 15-18, 20, and 22-25 stand or fall with claim 13.
37 C.F.R. § 41.37(c)(1)(vii) (2009).
Independent claims 13, 20 and 23 do not recite limitations similar to
the converting step addressed above. Therefore, the Appellants’ arguments,
with regard to the step of converting, are inapplicable to the rejection of
these claims.
However, the Appellants also argue that Kanefsky is not available as
prior art since Kanefsky’s Provisional Application 60/496,816 does “not
disclose a grant management system for a recipient (Grantee) to manage the
expenditure of grants from multiple Grantors” but instead is merely
concerned with a grant reporting system for a Grantor. App. Br. 9-10 and
Reply Br. 2-5.
The Appellants correctly point out that Kanefsky has a filing date of
August 20, 2004, which is after the filing date of the present application.
App. Br. 9. However, Kanefsky claims priority under 35 U.S.C. § 119(e) to
provisional application 60/496,816, filed Aug. 21, 2003, and that date is
before the filing date of the present application. The test for determining
whether Kanefsky may be relied upon is whether the 60/496,816 provisional
application properly supported the subject matter relied upon to make the
rejection in compliance with 35 U.S.C. § 112, first paragraph. We agree
with the Examiner that it does.
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In the rejection, the Examiner cites to Figure 1 and paragraph [0021]
of Kanefsky to teach the limitation at issue. See Answer 11. Figure 1
depicts the overall architecture of Kanefsky’s grant management system and
depicts multiple grantors being connected to multiple grantees. FF 5.
Paragraph [0021] describes Figure 1 and also describes that multiple
grantors and multiple grantees use the grant management and reporting
system. FF 6. The Examiner points to pages 2, 14, and 67-68 of the
60/496,816 provisional application as having the proper support for the
claimed subject matter. Answer 28. Page 67, while not identical to Figure 1
of Kanefsky, also depicts the overall architecture of a grant management
system and depicts multiple grantees and grantors connected to the system.
FF 7. Further, page 14 of the 60/496,816 provisional application, describes
an embodiment of accessing the grant management system and states
“Grantees that access the system may choose by Grantor . . . All eligible
Grants are displayed based on authorization.” FF 8. Therefore, we find that
the 60/496,816 provisional application does support the subject matter of
Figure 1 and paragraph [0021] of Kanefsky related to multiple grantees
accessing grants from multiple grantees through a grant management
system.
Accordingly, we find that the Appellants have not overcome the
rejection of claims 13, 15-18, 20, and 22-25 under 35 U.S.C. 103(a) being
unpatentable over Corrie and Kanefsky.

Claims 14 and 26
Dependent claims 14 and 26 recite limitations similar to the limitation
at issue with respect to claim 1 above. For the same reasons as discussed
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above with respect to claim 1, we will not sustain the rejections of claims 14
and 26 over the cited prior art. Accordingly, we find that the rejection of
claims 14 and 26 under 35 U.S.C. 103(a) over Corrie and Kanefsky is
overcome.

The rejection of claims 11, 19, and 21 under 35 U.S.C. §103(a) as being
unpatentable over Corrie, Kanefsky, and Official Notice.
As to claim 11, this rejection is directed to a claim indirectly
dependent on independent claim 6 whose rejection we have reversed above.
For the same reasons, we will not sustain the rejections of claim 11 over the
cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.").
As to claims 19 and 21, we also shall sustain the standing 35 U.S.C.
§ 103(a) rejection of dependent claims 19 and 21 as being unpatentable over
Corrie, Kanefsky, and Official Notice since the Appellants have not
challenged such with any reasonable specificity, thereby allowing claims 19
and 21 to stand or fall with parent claims 13 and 20. (see In re Nielson, 816
F.2d 1567, 1572 (Fed. Cir. 1987)).

The rejection of claim 12 under 35 U.S.C. §103(a) as being unpatentable
over Corrie, Kanefsky, and Chen.
This rejection is directed to a claim dependent on claim 10, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejection of claim 12 over the cited prior art. Cf. In re Fritch, 972 F.2d
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1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.").

DECISION
The decision of the Examiner to reject claims 1-12, 14, 26, and 27 is
reversed and to reject claims 13 and 15-25 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) (2007).

AFFIRMED-IN-PART

mev

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