Ex Parte Lam et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10155853 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DUC LAM and XUAN (SUNNY) MCRAE
____________
Appeal 2009-004569
Application 10/155,853
Technology Center 3600
____________

Decided: April 29, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004569
Application 10/155,853

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM and enter new grounds of rejection under 35 U.S.C.
§ 112, second paragraph.

THE INVENTION
Appellants claim an electronic system and method associated with
financial transactions. (Specification 2: 23)
Claims 1 and 12, reproduced below, is representative of the subject
matter on appeal.
1. A method for effecting a transaction between two parties
comprising:
receiving electronic data regarding management relationships
between respective employees at a first party of the two parties;
receiving from a second party an electronic document related to the
transaction;
providing an interface through which users can take actions with
respect to documents, including the electronic document, wherein the actions
include authorization of a plurality of invoices and applying signatures to
checks;
sending a notification regarding the electronic document to an
electronic mail account of a user who is responsible for at least an aspect of
the transaction; and
if the user does not take a particular action within a particular period,
determining a manager of the user based on the electronic data and
automatically sending an invoice to the manager of the user.
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12. A system for effecting a transaction
between two parties comprising:
means for receiving electronic data regarding management
relationships between respective employees at a first party of the two parties;
means for receiving from a second party an electronic document
related to the transaction;
means for providing an interface through which users can take actions
with respect to a plurality of documents, including the electronic document,
wherein the actions include authorization of a plurality of invoices and
applying signatures to checks;
means for sending a notification regarding the electronic document to
an electronic mail account of a user who is responsible for at least an aspect
of the transaction; and
means for, if the user does not take a particular action within a
particular period, determining a manager of the user based on the electronic
data and automatically sending an invoice to the manager of the user.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kolling US 5,920,847 Jul. 6,1999
Hallihan US 2001/0047316 A1 Nov. 29, 2001

The following rejections are before us for review.
The Examiner rejected claims 1-12 under 35 U.S.C. § 103(a) over
Hallihan in view of Kolling.
The Examiner rejected claim 5 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
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ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 1-
11 on appeal as being unpatentable under 35 U.S.C. § 103(a) over Hallihan
in view of Kolling on the grounds that a person with ordinary skill in the art
would understand that data regarding management relationships between
respective employees would be part of the Human Resources Management
System of Hallihan and since that system is inextricable connected to an
interconnectivity program module, a user may use this module to access the
management relationship data?
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
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Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that
it would be so recognized by persons of ordinary skill. Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification describes a system which:
… includes invoice generation logic 119, dispute
logic 120, receive notifications logic 121 and
receipt logic 122. Invoice generation logic 119 is
in communication with invoice 103 of payer
system 101. Dispute logic 120 is in communication
with dispute logic 111 of payer system 101.
Receive notifications logic 121 is in
communication with send notification logics 114
of payer system 101, and receipt logic 122 of
payee system 102 is in communication with
payment logic 115 of payer system 101.
(Specification 11:1-6).
2. It is our understanding that a Human Resources Management
System would include data regarding the management relationships between
respective ones of the employees under its control.
3. Hallihan discloses “…an interconnectivity software program that
provides the interfacing and interconnecting of data between one or more
independent applications.” (¶ [0015])
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4. Hallihan discloses “… an interconnectivity program module 100
interfaces with a Human Resources Management System (HRMS) server
120 and a financials server 110, as shown in FIG. 1. The interconnectivity
program module 100 provides communications to each of the servers by way
of an HRMS interface 125 and a financials interface 115.” (¶ [0016]).
5. Hallihan discloses a financial server 100 which includes a project
system module 140 (Figure 1) and an accounts payable system module 130
which is interfaced with a data in the time and expenses database 105, a
payroll data 390 and an expense data 490. (¶¶, [0028], [0029])
6. Hallihan discloses that:
payroll data 390 and the expense data 490
processed by the payroll-processing program 180
(FIG. 1) and the accounts payable program 460
(FIG. 4), respectively, are sent to the projects
system module 140 by way of the projects
interface 145 (FIG. 1). At step 600, the data entry
operator 150 runs the projects interface 145, which
incorporates all payroll, labor, expenses and
vendor costs into the data processing system. In
step 601, the projects interface 145 sends the data
to a billing program 650. In step 602, the billing
program 650 picks up the appropriate transactions
entered in step 600 for standard billing processing.
The billing program 650 then generates an invoice
660 to customers. In step 603, the data entered
from step 600 is made available to generate a
report 670. There are a number of reports and
analyses that can be generated, including reports
that detail expenses, efficiency, etc.
(¶ [0029])
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7. Kolling discloses that a “…signed check serves as the second
common element of a bill pay transaction: authorization.” (Col. 5, ll. 11-12)

ANALYSIS
Initially, as we explain below, we find claim 12 is unpatentable under
35 U.S.C. § 112, second paragraph, as being indefinite and we thus cannot
determine the scope of claim 12. That finding is dispositive of the
patentability of these claims. Accordingly, we do not reach the prior art
rejection of claim 12. Cf. Ex parte Gutta, 93 USPQ2d 1025, 1036 (Bd. Pat.
App. & Int. 2009) (precedential):
As to these prior art rejections, our decision is dispositive with
respect to patentability since (1) claims 1, 3-9, 11-14, 16-19,
and 21-23 on appeal do not recite patent-eligible subject matter
under § 101, and (2) we cannot determine the scope of claim
20. We therefore need not reach the question of whether claims
1, 3-7, 9, 11, 12, 14, 16, 17, and 19-23 would have been
anticipated under § 102 and claims 8, 13, and 18 would have
been obvious under § 103. See Diehr, 450 U.S. at 188;
Comiskey, 554 F.3d at 973 (declining to reach obviousness
rejection on appeal after concluding many claims were
nonstatutory under § 101); Bilski, 545 F.3d at 951 n.1 (noting
that § 101 is a threshold requirement and that Examiner may
reject claims solely on that basis); In re Rice, 132 F.2d 140, 141
(CCPA 1942) (finding it unnecessary to reach rejection based
on prior art after concluding claims were directed to
nonstatutory subject matter). See also In re Steele, 305 F.2d
859, 862 (CCPA 1962) (supporting not presenting an art
rejection when considerable speculation into the scope of the
claim is required).

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We affirm the rejection of claims 1-11 under 35 U.S.C. § 103(a).
Appellants do not provide a substantive argument as to the separate
patentability of claims 2-11 that depend from claim 1 which is the sole
independent claim among those claims. Therefore, claims 2-11 fall with
claim 1.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants argue with regard to claim 1 that:
There is no mention of data regarding the
relationship between employees, whether the
employees are employees of a company or an
employee and the data entry operator. There is no
teach, suggestion, or motivation provided
anywhere else in Hallihan of receiving data
regarding the relationship between employees.
Accordingly, the cited portions of Hallihan cannot
support the Examiner's rejection of claim 1 and 12.
(Appeal Br. 7).
We disagree with Appellants. While there may not be an explicit
disclosure of data regarding the management relationships between
respective employees at a first party of the two parties in Hallihan, we find
that the system in Hallihan nevertheless inherently includes this information
(FF 2). That is, Hallihan discloses an interconnectivity software program
that provides the interfacing and interconnecting of data between one or
more independent applications. (FF 3) One of these applications is a Human
Resources Management System (HRMS) which through an interconnectivity
program module 100, interfaces with the Human Resources Management
System (HRMS) server 120 and a financial server 110 (FF 4). The financial
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server 100 includes a project system module (Figure 1) which interfaces
with a billing program 650 to generate an invoice 660 to customers. (FF 5)
We thus find that in Hallihan, the Human Resources Management System is
inextricably connected to the financial server and billing components such
that one of ordinary skill in the art reading Hallihan would recognize that, in
such a system, data regarding the management relationships between
respective employees would be part of the Human Resources Management
System and be accessible to a user via the interconnectivity program module
100.
“Appellants take exception to the Examiner's assertion that generating
a check in paragraph [0025] necessitates signing a check.” (Appeal Br. 8)
We disagree with Appellants. First, Hallihan discloses at ¶ [0025] that “[i]n
step 303, the payroll-processing program 180 confirms the payroll data and
generates a check 370 or a direct deposit 380 for an employee.” Since
Hallihan discloses using direct deposit as the equivalent of generating a
check, it follows then that the generated check in Hallihan must be signed in
order to be treated in the same way as direct deposit, e.g., as cash.
In addition, Kolling nevertheless explicitly discloses that a “…signed
check serves as the second common element of a bill pay transaction:
authorization.” (FF 7) We thus find that a person with ordinary skill in the
art would know to authorize a payment by accessing the payroll-processing
program 180 using the interconnectivity program module 100 of Hallihan to
confirm payroll data by issuing a signed check.
Finally, Appellants assert that Kolling fails to disclose the claimed
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feature of if the user does not take a particular action within a particular
period, determining a manager of the user based on the electronic data and
automatically sending an invoice to the manager of the user. (Appeal Br. 10)
In reply, the Examiner argues that “…the step of determining a
manager of a user and contacting them is something one of ordinary skill in
the art would have been able to determine the manager of an employee if it
is deemed necessary. Furthermore, the process of going up the chain of
command is old and well known not only in the art but in life.” (Answer 10).
We agree with the Examiner because the nature of the noticed subject matter
is something which is “capable of such instant and unquestionable
demonstration as to defy dispute.” In re Ahlert, 424 F.2d at 1091. In
addition, Appellants did not respond to this Notice by Reply Brief and thus
have not traversed the Official Notice. In re Boon, 439 F.2d 724, 728
(CCPA 1971). We therefore find that a person with ordinary skill in the art
would know to use the interconnectivity software program in Hallihan to
access the Human Resources Management System (HRMS) to thus
determine a manager of the user when a particular action is not acted on in a
particular period.
The remaining arguments directed at Kolling by Appellants are to
aspects of the claims which the Examiner found disclosed by Hallihan and
thus are unpersuasive. Appellants’ arguments thus fail because they attack
the Kolling reference individually when the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968).
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Regarding the rejection of claim 5 under 35 U.S.C. § 112, second
paragraph, Appellants’ Brief does not address this rejection, and thus we
affirm this rejection as conceded.

NEW GROUND
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection.
We reject claim 12 under 35 U.S.C. § 112, second paragraph because
claim 12 fails to particularly point out and distinctly claim the subject matter
which the applicant regards as his invention.
Claim 12 recites a claim element in accordance with 35 U.S.C. § 112,
paragraph 6. It states in pertinent part, “means for providing an interface
through which users can take actions with respect to a plurality of
documents, including the electronic document, wherein the actions include
authorization of a plurality of invoices and applying signatures to checks.”
We have reviewed the Specification, but have not been able to discern
the algorithm corresponding to this claim function. All that the
Specification recites are various computer logics without describing any
algorithm (FF 1).
When a Specification discloses no algorithm corresponding to a
computer-enabled means-plus-function limitation in a claim, an applicant
has necessarily failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112. See also
Aristocrat, 521 F.3d 1328, 1333 (quoting Harris Corp. v. Ericsson Inc., 417
F.3d 1241, 1253 (Fed. Cir. 2005) (“‘[t]he corresponding structure for a § 112
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¶ 6 claim for a computer-implemented function is the algorithm disclosed in
the specification.’ Harris 417 F.3d at 1249.”); Net MoneyIN, Inc. v.
Verisign, Inc. 545 F.3d 1359, 1367 (Fed. Cir. 2008) (‘“[A] means-plus-
function claim element for which the only disclosed structure is a general
purpose computer is invalid if the specification fails to disclose an algorithm
for performing the claimed function.”) See also Blackboard, Inc. v.
Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009) (finding Blackboard’s
means-plus-function claims indefinite because the patent describes an
undefined component, i.e., a black box, that performs the recited function
but does not disclose how the component performs the function). See
further Ex parte Catlin, 90 USPQ2d 1603, 1605 (BPAI 2009) (precedential)
(during prosecution, computer-enabled means-plus-function claims will be
held unpatentable under 35 U.S.C. § 112, second paragraph, as being
indefinite if a Specification fails to disclose any algorithm corresponding to
the recited function in the claims). The Specification fails to disclose an
algorithm corresponding to the recited function at issue in claim 12 such that
one of ordinary skill in the art could determine the scope of claim 12.
Accordingly, we reject claim 12 under 35 U.S.C. § 112, second paragraph,
as being indefinite.
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CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 1-11. The decision of the Examiner to reject claims 1-11
under 35 U.S.C. § 103(a), and claim 5 under 35 U.S.C. §112, second
paragraph, is AFFIRMED, and we enter a new ground of rejection of claim
12 under 35 U.S.C. § 112, second paragraph.
This decision contains new grounds of rejection for claim 12 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 . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).
AFFIRMED; 37 C.F.R. § 41.50(b)

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MP

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