Ex Parte Reyes

Board of Patent Appeals and Interferences

Jul 19, 2012

10634635 (B.P.A.I. Jul. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS D. REYES
___________

Appeal 2010-011331
Application 10/634,635
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011331
Application 10/634,635

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STATEMENT OF THE CASE
Thomas D. Reyes (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-35. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
This invention is “a method and system for effecting payment by
checks through the use of image replacement documents.” Spec. 1:6-8.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computerized method for effecting payment
by a check, comprising:
electronically receiving payment
information for a check for a purchase
transaction, the check drawing on a checking
account of a particular account holder, the
payment information comprising a date, a
payee, a dollar amount, a legal amount, and a
signature;
in response to receiving the payment
information:
determining the checking account of
the particular account holder based on the

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Aug. 12, 2009) and Reply Brief (“Reply Br.,” filed May 28,
2010), and the Examiner’s Answer (“Ans.,” mailed Mar. 30, 2010).

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payment information from the purchase
transaction; and
retrieving, from a storage location
storing a plurality of pre-stored image
replacement document templates for each of a
plurality of account holders, an image
replacement document template associated with
the checking account of the particular account
holder used for the purchase transaction, the
plurality of account holders comprising the
particular account holder; and
generating, using one or more
computers, an image replacement document
representative of the check by inserting the
payment information into respective fields of
the image replacement document template.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Buttridge
Robinson
US 2004/0044606 A1
US 6,978,046 B2
Mar. 4, 2004
Dec. 20, 2005

The following rejections are before us for review:
1. Claims 1-16 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
2. Claims 1-35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buttridge and Robinson.

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ANALYSIS
The rejection of claims 1-16 under §112, first paragraph, as failing to
comply with the written description requirement
We are persuaded by the Appellant’s argument that the Examiner
erred in rejecting claims 1-16 under § 112, first paragraph, as failing to
comply with the written description requirement. App. Br. 7-8 and Reply
Br. 1-2. We agree with the Appellant that a literal expression of the
limitation at issue in the Specification is not required (See Reply Br. 1), and
we note that the Examiner provides no explanation as to why the portions of
the Specification, cited by the Appellant on pages 7-8 of the Appeal Brief,
are not an equivalent description of the claimed subject matter.
“Although the exact terms need not be used in haec verba, see
Eiselstein v. Frank, 52 F.3d 1035, 1038 . . . (Fed.Cir.1995) (‘[T]he prior
application need not describe the claimed subject matter in exactly the same
terms as used in the claims . . . .’), the specification must contain an
equivalent description of the claimed subject matter.” Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572.
We find that the Examiner fails to establish a prima facie showing that
claims 1-16 fail to comply with the written description requirement.
Accordingly, the rejection of claims 1-16 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.

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The rejection of claims 1-35 under §103(a) as being unpatentable over
Buttridge and Robinson.
Claims 1-16
We are persuaded by the Appellant’s argument (App. Br. 9-13 and
Reply Br. 2-5) that the Examiner erred in rejecting claims 1-16 under
§103(a) as being unpatentable over Buttridge and Robinson. We agree with
the Appellant that the Examiner has impermissibly applied hindsight
reconstruction in finding that the combination of the teachings of Buttridge
and Robinson would have lead one of ordinary skill in the art to the method
of claim 1. See Id.
Rejections based on § 103 must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the invention from the
prior art. The examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968). Our reviewing court has repeatedly cautioned against
employing hindsight by using the appellant's disclosure as a blueprint to
reconstruct the claimed invention from the isolated teachings of the prior art.
See, e.g., Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907 (Fed. Cir. 1988).
Therefore, we are persuaded by the Appellant that the Examiner erred
in rejecting claims 1-16 under 35 U.S.C. § 103(a) as being unpatentable over
Buttridge and Robinson.

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Claims 17-35
In rejecting independent claims 17 and 29, the Examiner relies upon
the same rationale used to find independent claim 1 unpatentable over the
combination of Buttridge and Robinson. See Ans. 13-14 and 18-19. For the
same reason as discussed above with regards to the rejection of claim 1, we
find that the Examiner erred in rejecting claims 17 and 29, and claims 18-28
and 30-35, dependent thereon, under 35 U.S.C. § 103(a) as being
unpatentable over Buttridge and Robinson.

Accordingly, the rejection of claims 1-35 under 35 U.S.C. § 103(a) as
being unpatentable over Buttridge and Robinson is reversed.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. 41.50(b), we enter a new
ground of rejection on claims 17 and 22 under 35 U.S.C. § 102(e) as being
anticipated by Buttridge. 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).
1. Buttridge describes obtaining an electronic image of a blank check
at a cash register using a check imager 22. Para. [0034]. See also
para. [0031] and Fig. 2, item 125.
2. Buttridge describes the store clerk entering the amount of the
check into the cash register 20 [0033], obtaining a routing number,
account number using the cash register 20, and check number from
an image of a blank check [0034], and obtaining an image of a
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customer’s signature at the cash register [0035]. See also Fig. 2,
items 115 and 155.
3. Buttridge describes the cash register 20 transferring the transaction
data and image data to a remote (see [0032]) store controller 30.
[0038]. See also para. [0040] and Fig. 2, item 165.
4. Buttridge describes a user interface 70 (see para. [0042]) that can
be used to combine the transaction information, check image, and
signature image into a complete check image. Para. [0046].
5. The Specification states: “As used herein, an image replacement
document is a document constructed from electronic information
that replaces an original check and has the same legal effect as the
original check.” Spec. 7:9-12.
We find that Buttridge describes the following limitations recited in claim
17, when claim 17 is given the broadest reasonable interpretation in light of
the Specification (see FF 5):
1) generating, on an output device, an electronic image of a check
drawing on a checking account of an account holder (FF 1);
2) receiving payment information for the check on the
output device (FF 2);
3) generating a snippet of the payment information (see
FF 3); and
4) electronically transmitting the snippet to a remote
location (FF 3) for generation of an image
replacement document representative of the check
based on the snippet (FF 4).
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Claim 22 recites similar limitations. We have exercised our discretion under
37 C.F.R. § 14.50(b) to reject only independent claims 17 and 22. However,
upon any further prosecution, the Examiner should reconsider the
patentability of the dependent claims in light of our new grounds of
rejection.
DECISION
The decision of the Examiner to reject claims 1-35 is reversed. We
enter a new ground of rejection on claims 17 and 22.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
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.

REVERSED; 37 CFR 41.50(b)
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