Ex Parte Sgaraglio et al

Board of Patent Appeals and Interferences

Nov 17, 2010

10108934 (B.P.A.I. Nov. 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.
10/108,934 03/27/2002 Michael L. Sgaraglio 20375-023900 1070
20350 7590 11/17/2010
TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834
EXAMINER
MALHOTRA, SANJEEV
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
11/17/2010 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 MICHAEL L. SGARAGLIO
KARIN A. ERIKSON
EDWARD J. LONG JR.
___________

Appeal 2009-015198
Application 10/108,934
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, 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.
Appeal 2009-015198
Application 10/108,934

2
STATEMENT OF THE CASE
Michael L. Sgaraglio et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 2-4, 6 7, 10, 13-15, and
17. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Claims 1, 5, 8, 9,
11, and 12 have been canceled.

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
This invention is “various methods for establishing credit services
with merchants, and to evaluate how accounts are being serviced.”
Specification [07].
Claims 2, 7, and 10, reproduced below, are illustrative of the subject
matter on appeal.
2. A method for analyzing merchant account
information, the method comprising:
receiving at a server computer application
information on merchants applying for credit
service accounts;
electronically storing the application
information at a storage location;
receiving at the server computer from a user
computer information on how at least some of the

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Mar. 17, 2009) and the Examiner’s Answer (“Answer,” mailed Jun. 1,
2009).

Appeal 2009-015198
Application 10/108,934
3
accounts are being serviced;
storing the servicing information at the
storage location;
receiving at the server computer a request
from the user computer to generate a report on
how at least one of the accounts is being serviced;
generating the report at the server computer;
and
sending the report to the user computer;
wherein the requested report comprises a
report showing approval rates of the accounts.

7. A method for managing how merchant accounts
are being serviced, the method comprising:
receiving at a user computer over a network
a document having fields for entering information
on how a merchant account is being serviced;
entering servicing information into at least
some of the fields; and
transmitting the servicing information to a
server computer over the network;
wherein the fields are listed in a sequence
according to a timeline of how servicing events are
to proceed and wherein the fields elicit information
selected from a group consisting of whether a
merchant has received a welcome kit, the date the
welcome kit was received, whether the merchant
has contacted a primary bank, the date the primary
bank was contacted, any reason why the bank was
not contacted, whether the primary bank has
spoken to the merchant, whether the primary bank
has all necessary information to process a switch,
the date of the primary bank confirmation, any
reason for not receiving a confirmation, and
general comments.
Appeal 2009-015198
Application 10/108,934
4

10. A method for providing information to
merchants, the method comprising:
receiving at a server computer application
information on merchants applying for credit
service accounts;
electronically storing the application
information at a storage location;
receiving at the server computer from a user
computer a request to identify merchants of a
certain group; and
sending a document from the server
computer the user computer containing
information for generating letters to the identified
merchants;
wherein the request to identify merchants of
a certain group includes those merchants that need
to receive a welcome letter, and wherein the
document sent from the server computer contains
information for generating such welcome letters.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Velez
Woloshin
US 6,064,375
US 2002/0026410 A1
May 16, 2000
Feb. 28, 2002
The following rejections are before us for review:
1. Claims 2-4, 6, 7, 10, 13-15, and 17 are rejected under 35 U.S.C.
§102(a) as being anticipated by Woloshin.
2. Claims 2-4, 6, 13-15, and 17 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Woloshin and Velez.
Appeal 2009-015198
Application 10/108,934
5

ISSUES
The first issue is whether claims 2-4, 6, 13-15, and 17 are anticipated
by Woloshin. Specifically, the issue is whether Woloshin describes a step of
“sending the report to the user computer; wherein the report comprises a
report showing approval rates of the accounts and a server computer that is
configured to perform this step.”
The second issue is whether claim 7 is anticipated by Woloshin.
Specifically, the issue is whether the Examiner has established a prima facie
showing of anticipation in rejecting claim 7.
The third issue is whether claim 10 is anticipated by Woloshin.
Specifically, the issue is whether the Examiner has established a prima facie
showing of anticipation in rejecting claim 10.
The fourth issue is whether claims 2-4, 6, 13-15, and 17 are
unpatentable over Woloshin and Velez. Specifically the issue is whether the
combination of Woloshin and Velez teaches a step of “sending the report to
the user computer; wherein the report comprises a report showing approval
rates of the accounts and a server computer that is configured to perform this
step.”

ANALYSIS
The rejection of claims 2-4, 6, 7, 10, 13-15, and 17 under §102(a) as being
anticipated by Woloshin.
Claims 2-4, 6, 13-15 and 17
The Appellants argue that Woloshin does not expressly or inherently
anticipate the step of “sending the report to the user computer, wherein the
Appeal 2009-015198
Application 10/108,934
6
requested report comprises a report showing approval rates of the accounts.”
Br. 4-6. We also note that claim 2 recites a step of “generating the report.”
The Appellants argue that Woloshin’s description of new accounts being
automatically provisioned, which the Examiner cites, does not inherently
describe the step at issue. Br. 5.
The Examiner seems to argue that because Woloshin describes
approving accounts and automatically provisioning the account information
that Woloshin inherently teaches the step at issue. See Answer 4 and 9. The
Examiner states: ‘Examiner notes that, with respect to independent claims 2
and 13, Woloshin’s teaching of “new accounts are automatically
provisioned” represents an ‘approval rate’, which is inherently taught and
can be easily computed by dividing new accounts approved by the total
(approved and non-approved) accounts processed . . .’ Answer 4.
It is well settled that in order for the examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir.
1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1458 (Fed. Cir. 1984).
We find nothing in paragraphs [0008] to [0011] and [0022] and
[0025] of Woloshin, cited by the Examiner (see Answer 7 and 8), that
expressly describes sending a report that contains an approval rate. Further,
we see nothing in these cited passages that establishes that Woloshin
inherently describes this step. Further, while sending a report containing an
Appeal 2009-015198
Application 10/108,934
7
approval rate, may be possible, as the Examiner argues (Answer 4), this does
not establish that the step is inherently performed. “Inherent anticipation
requires that the missing descriptive material is ‘necessarily present,’ not
merely probably or possibly present, in the prior art.” Trintec Indus., Inc. v.
Top-U.S.A. Corp., 295 F.3d 1292, 1295, (Fed. Cir. 2002) (quoting In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). “The fact that a certain
result or characteristic occur or be present in the prior art is not sufficient to
establish the inherency of that result or characteristic.” In re Rijckaert, 9
F.3d 1531, 1534 (Fed. Cir. 1993); In re Oelrich, 666 F.2d 578, 581-82
(CCPA 1981). We find that the Examiner has not established a prima facie
showing of anticipation in rejecting claim 2.
We note that claim 13, unlike claim 2, recites an apparatus and not a
method. However, claim 13, similar to claim 2, recites a server computer
that is configured to send a report to the user computer, where the requested
report comprises a report showing approval rate of the accounts. For the
same reasons as discussed above, the Examiner has not established that
Woloshin describes a server computer having a structure that has such a
configuration.
Accordingly, we find that the Appellants have overcome the rejection
of claims 2 and 13 under 35 U.S.C. § 102(a) over Woloshin.

Claim 7
The Appellants argue that the Examiner has not cited, in any office
action of record, a description in Woloshin that anticipates the claimed
recitation that “the fields are listed in a sequence according to a timeline of
Appeal 2009-015198
Application 10/108,934
8
how servicing events are to proceed and wherein the fields elicit information
selected from a group consisting of . . .” Br. 6.
The Examiner does not respond to this argument. See Answer 8-10.
In the rejection, the Examiner does broadly cite paragraphs [0024] to [0030]
of Woloshin as anticipating both claim 7 and 10, but does not specifically
address this limitation or any of the other limitations of the body of claim 7.
Answer 5.
We find that the Examiner has failed to establish a prima facie case of
anticipation. Paragraphs [0024] to [0030] of Woloshin do not expressly or
inherently describe the limitation at issue, and the Examiner has provided no
claim construction or other explanation. Accordingly, we find that the
Appellants have overcome the rejection of claim 7 under 35 U.S.C. § 102 (a)
as being anticipated by Woloshin.

Claim 10
Similar to their argument for claim 7 above, the Appellants argue that
the Examiner has not cited, in any office action of record, a description in
Woloshin that anticipates the claimed step of “receiving at the server
computer from a user computer a request to identify merchants of a certain
group . . . wherein the request to identify merchants of a certain group
includes those merchants that need to receive a welcome letter, and wherein
the document sent from the server computer contains information for
generating such welcome letters.” Br. 6.
Again, the Examiner does not respond to this argument (see Answer
8-10) and, in the rejection, broadly cited paragraphs [0024] to [0030] of
Woloshin as anticipating both claim 7 and 10, but does not specifically
Appeal 2009-015198
Application 10/108,934
9
address this step or any of the other steps recited in the body of claim 10.
Answer 5.
For the same reasons as above with regard to claim 7, we find that the
Examiner has failed to establish a prima facie showing of anticipation.
Paragraphs [0024] to [0030] of Woloshin do not expressly or inherently
describe the step at issue, and the Examiner has provided no claim
construction or other explanation. Accordingly, we find that the Appellants
have overcome the rejection of claim 10 under 35 U.S.C. § 102 (a) as being
anticipated by Woloshin.

The rejection of claims 2-4, 6, 13-15, and 17 under §103(a) as being
unpatentable over Woloshin and Velez.
As with the rejection of claim 2 under 35 U.S.C. § 102(a) above, the
Appellants argue that neither Woloshin nor Velez teaches a step of “sending
the report to the user computer, wherein the requested report comprises a
report showing approval rates of the account.” Br. 4-6. In addition to the
argument made against the Woloshin reference above, the Appellants argue
that Velez’s description of “Record 1 of 3328,” cited by the Examiner, does
not teach the step at issue. Br. 6.
The Examiner asserts Velez explicitly teaches this step. Answer 6.
The Examiner states:
Examiner notes that Velez teaches generating “a
plurality of different reports” about merchants
(Col. 2, lines 8--11) and that the ‘approval rate’ for
any report by a merchant category is taught that
can be easily determined/seen by looking at Figure
4, which shows for example how many records are
in that particular report, for instance, it is shown to
Appeal 2009-015198
Application 10/108,934
10
be “Record 1 of 3328” in the said type of merchant
report displayed.
Id.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citing
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
While column 2, lines 8-11 of Velez describes creating and sending
reports, Velez does not teach that the report is a report that shows approval
rates of the accounts. The reference to “Record 1 of 3328” in Figure 4 refers
to the number of the record that is displayed out the total records. See Velez
col. 2, ll. 30-36. This does not teach a report that shows approval rates of
accounts, but merely the number of the record that is displayed. Since
neither Woloshin nor Velez teaches the step at issue and the Examiner has
provided no other claim construction or explanation, we find that the
Examiner has failed to establish a prima facie showing of obviousness in
rejecting claim 2.
Further, as discussed above with regards to the rejection of claim 13
under 35 U.S.C. § 102(a), claim 13 describes an apparatus with a server
computer that is configured to perform these steps. For the same reasons as
discussed above, the Examiner has not established that either Woloshin or
Velez teach a server computer that has a structure with such a configuration.
Accordingly, we find that the Appellants have overcome the rejection
of claims 2 and 13, and claims 3, 4, 6, 14, 15, and 17, dependent thereon,
under 35 U.S.C. § 103(a) as being unpatentable over Woloshin and Velez.

Appeal 2009-015198
Application 10/108,934
11
DECISION
The decision of the Examiner to reject claims 2-4, 6 7, 10, 13-15, and
17 is reversed.
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) (2010).

REVERSED

mev

TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO CA 94111-3834