Ex Parte Thompson et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10032796 (B.P.A.I. Sep. 27, 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.
10/032,796 12/26/2001 Mark Thompson 026595-005900US 7212
20350 7590 09/28/2010
TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834
EXAMINER
JACOBS, LASHONDA T
ART UNIT PAPER NUMBER
2457
MAIL DATE DELIVERY MODE
09/28/2010 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 MARK THOMPSON, FRANCIS AARON HENRY,
and DAVID A. OWEN
_____________

Appeal 2009-007616
Application 10/032,796
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR.,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MANTIS MERCADER, 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 2009-007616
Application 10/032,796

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-16. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention is directed to auditing forms. Database
14 includes a record of current forms. This record may include identifiers
that are also displayed on the forms. Such identifiers may be a string of
alphanumeric characters, other symbols, or bar codes. A user of the forms
may be requested to provide this identifier so an audit may be performed on
the form being used. The identifier is transmitted to host computer 12 by
terminals 16, or by a customer service computer 18. Host computer 12
compares the identifier with the record in database 14 to determine if the
correct form is being used. See Spec. ¶ [19].
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for auditing forms, the method comprising:
issuing a request to provide a form identifier that is
associated with a form;
receiving the identifier at a host computer; and
verifying with the host computer whether the identifier is
a valid identifier for the form being used.

Appeal 2009-007616
Application 10/032,796

3
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Klingman US 5,799,285 Aug. 25, 1998
Blando US 6,185,583 B1 Feb. 6, 2001
The following rejections are before us for review:
1. The Examiner rejected claims 1-3, 5, 6, and 11-16 under 35 U.S.C.
§ 102(e) as anticipated Blando.
2. The Examiner rejected claims 4 and 7-10 under 35 U.S.C. § 103(a)
as unpatentable over Blando in view of Klingman.

ISSUE
The pivotal issue is whether Blando teaches the limitation of:
“verifying with the host computer whether the identifier is a valid identifier
for the form being used” as recited in claim 1.

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence:
1. Blando teaches that the validation system can include more than one
checker (i.e., module stored as set of instructions to process the form
fields) where “the incoming form includes an identifier that identifies
the appropriate checker to use to evaluate that form” (col. 3, ll. 28-36,
53-56 (emphases added)).
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2. Blando further teaches that “different versions of the form may require
using different checkers” (col. 3, ll. 56-58 (emphasis added)).

ANALYSIS
Analysis with respect to the rejection of claims 1-3, 5, 6, and 11-16
Appellants argue that Blando’s process of verifying data in forms by
using field identifiers, determining the type of an order, and determining
whether the order contains all necessary forms, is different than determining
whether the current version is being used by verifying whether a particular
“form identifier” is a valid identifier for a particular form (App. Br. 6). We
are not persuaded by Appellants’ argument.
Blando teaches that the validation system can include more than one
checker (i.e., module stored as set of instructions to process the form fields)
where “the incoming form includes an identifier that identifies the
appropriate checker to use to evaluate that form” (FF 1). Blando further
teaches that “different versions of the form may require using different
checkers” (FF 2). Thus, Blando teaches that, depending on the particular
form “identifier” associated with that form, the validation system will
identify the correct version of the form and use the particular checker
associated with that version to check the form fields. In other words, if the
identifier is not valid, then the appropriate checker will not be identified, and
the form fields will not be checked. This inability to check the form fields
would indicate that the identifier is not a valid form identifier. Otherwise, if
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the form is checked, then the identifier is a valid identifier for that form
version.
For the reasons articulated supra, we will affirm the Examiner’s
rejection of claim 1 and for similar reasons the rejections of claims 2, 3, 5, 6,
and 11-16 because Appellants did not present any additional patentability
arguments with respect to these claims.
Analysis with respect to the rejection of claims 4 and 7-10
For the same reasons as set forth above, we will also affirm the
Examiner’s rejections of claims 4 and 7-10 due to their dependency from
claim 1 and because Appellants do not present any additional patentability
arguments with respect to these claims.

CONCLUSION
Blando teaches the limitation of: “verifying with the host computer
whether the identifier is a valid identifier for the form being used.”

ORDER
The decision of the Examiner to reject claims 1-16 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)(1)(v).

AFFIRMED

Appeal 2009-007616
Application 10/032,796

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