Ex Parte Castagna et al

Patent Trials and Appeals BoardApr 11, 2019

13966610 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/966,610 08/14/2013 139180 7590 04/15/2019 Baker Botts LLP/Bank of America Corporation 2001 Ross Avenue Suite 900 Dallas, TX 75201 FIRST NAMED INVENTOR Brandon Castagna 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 ATTORNEY DOCKET NO. 015444.0898 (PMN5737US1) CONFIRMATION NO. 3643 EXAMINER WILLIS, AMANDA LYNN ART UNIT PAPER NUMBER 2158 NOTIFICATION DATE DELIVERY MODE 04/15/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ptomaill@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRANDON CASTAGNA, LAITH SHEET, JOHN ARCIDIACONO, BRIAN KUNZIE, SURESH JAGARLAMUDI, TIM MURPHY, and MICHAEL GALLOWAY Appeal 2018-002641 Application 13/966,6101 Technology Center 2100 Before CAROLYN D. THOMAS, NABEEL U. KHAN, and MICHAEL M. BARRY, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Non-Final Rejection of claims 1-20, all the pending claims in the present application. (see Claims Appendix). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants name Bank of America Corporation as the real party in interest (App. Br. 2). Appeal 2018-002641 Application 13/966,610 The present invention relates generally to monitoring transactions (see Spec., Abstract). Claim 1 is illustrative: 1. A system for monitoring one or more transactions, compnsmg: a memory operable to store first metadata, second metadata, and third metadata; and one or more processors communicatively coupled to the memory and operable to: receive information about executing a transaction; determine that executing the transaction comprises executing a first task in a first amount of time, a second task in a second amount of time, and a third task in a third amount of time; receive the first metadata from a first transaction processing system, wherein the first metadata comprises a first identifier and an error for the first task identifying a request to make a first payment to a first party; receive the second metadata from a second transaction processing system, wherein the second transaction processing system is different from the first transaction processing system and wherein the second metadata comprises a second identifier; determine that the second metadata is different from the first metadata; associate the second metadata with the second task in response to determining the second metadata is different from the first metadata; receive the third metadata from a third transaction processing system, wherein the third transaction processing system is different from the first transaction processing system and wherein the third metadata comprises a third identifier for the third task comprising making a second payment to the first party; determine that the first identifier is the same as the third identifier; associate the third identifier with the first metadata comprising the error for the first task in response to determining the first identifier is the same as the third identifier; 2 Appeal 2018-002641 Application 13/966,610 communicate, via a network, information regarding time remaining to complete execution of the first transaction based on the received first metadata, second metadata, or third metadata; and communicate the error to the third transaction processing system to pause the third transaction at the third transaction processing system in response to associating the third identifier with the error for the first task. App. Br. 16 (Claims Appendix). Appellants appeal the following rejections: Rl. Claims 1-20 are rejected under 35 U.S.C. Â§ l 12(a) or 35 U.S.C. (pre-AIA), first paragraph, as failing to comply with the written description requirement (Non-Final Act. 2-3); R2. Claims 1-20 are rejected under 35 U.S.C. Â§ l 12(b) or 35 U.S.C. (pre-AIA), second paragraph, as being indefinite (Non-Final Act. 4-5); R3. Claims 1-6, 8-13, 15-17, 19, and 20 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Finot (US 2014/0351129 Al, Nov. 27, 2014) and Peterson (US 2003/0072263 Al, Apr. 17, 2003) (Non- Final Act. 5-19); R4. Claims 7 and 14 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Finot, Peterson, and Oppenheimer (US 2005/0102226, May 12, 2005) (Final Act. 20-21); and R5. Claim 18 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Finot, Peterson, and Witt (US 2003/0023894 Al, Jan. 30, 2003) (Non-Final Act. 21-22). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 3 Appeal 2018-002641 Application 13/966,610 ANALYSIS Rejection underÂ§ 112,first paragraph The Examiner finds that Appellants' claims fail to comply with the written description requirement because Appellants' Specification "shows where the system correlates three transactions which contain different metadata, but strongly implies that the correlation is made in response to a determination that the different sets of metadata contain the same attribute values" (Non-Final Act. 3), however, "[t]here is no support for the correlation of metadata to the task in response to determining that the metadata is different" (id.). As such, the Examiner's emphasis in the Non- Final Action is on whether the Specification describes when metadata is "different" and doing something in response thereto. Appellants point out that their Specification "explains: 'The one or more processors then determine that !1!ll1!}. of the one or more attributes from the second metadata are the same as any of the one or more attributes from the first metadata and then associate the second metadata with a second transaction"' (App. Br. 7 (citing Spec. 3:13-20)). In other words, Appellants' Specification equate the claimed "different metadata" with the situation whereby none of the attributes from the second metadata are the same as any of the attributes from a first metadata, in which case the different metadata is associated with a second transaction. However, in the Answer, the Examiner then points out that "the specification teaches associating the second metadata with the second transaction, [but] [t]he claims recite associating the second metadata with the second task" (Ans. 3), thus "[t]he cited portion of the specification does not 4 Appeal 2018-002641 Application 13/966,610 appear to be directed to the same embodiment" (id.). We agree with the Examiner in part. For example, claim 1 makes clear that a transaction includes first, second, and third tasks, i.e., executing the transaction comprises executing a first task . .. , a second task . .. , and a third task (see claim 1 ). As such, the disclosed "associating the second metadata with the second transaction" (see Spec. 3: 17-20) does not necessarily indicate which task the second metadata is associated with, as required by claim 1. To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that the patentee possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). Here, we find that Appellants' disclosure does not reasonably convey to skilled artisans that they possessed the claimed "associate the second metadata with the second task in response to determining the second metadata is different from the first metadata" (see claim 1) ( emphasis added), given the aforementioned disclosure on page 3 in the specification. However, Appellants further explain in the Reply Brief that "the Application explains how identifiers can be associated between metadata and particular tasks" (Reply Br. 3 (citing Spec. 16:6-11)). For example, Appellants' Specification discloses that "transaction processing system 40b may assign a system-specific identifier to the second task. ... This identifier may be maintained by transaction processing system 40b in metadata 44b" (Spec. 16:6-8). As such, given the additional disclosure, we find persuasive Appellants' contention that their Application discloses an association between identifiers, metadata, and particular tasks, an association 5 Appeal 2018-002641 Application 13/966,610 that would necessarily associate the metadata to not only a transaction but a particular task. For at least the reason noted supra, we disagree with the Examiner that "[t]here is no[] support for the correlation of metadata to the task in response to determining that the metadata is different" (Non-Final Act. 3), given the aforementioned disclosures. Accordingly, we reverse the rejection of claims 1-20 as failing to comply with the written description requirement. Rejection underÂ§ 112, second paragraph Claim 1 recites, inter alia, "wherein the first metadata comprises a first identifier and an error for the first task identifying a request to make a first payment to a first party" (see claim 1 ). The Examiner finds that in claim 1 "[i]t is unclear what is identifying a request to make a first payment to a first party. Is it the first task, the error, or the first identifier?" (Non- Final Act. 4). In response, Appellants contend that "Claim 1 provides sufficient clarity ... because the subject (i.e., 'the error') is closest to the verb (i.e., 'identifying a request'). Thus, it is clear that the error identifies the request" (App. Br. 8). We disagree with Appellants. Upon examination, we find the term "the first task" is closest to the verb "identifying a request," not the term "the error," as proffered by Appellants. As such, Appellants' argument is unavailing. In any case, we agree with the Examiner that in claim 1, as written, it is unclear what is identifying a request, i.e., the first identifier, the error, or the first task. Our reviewing court has guided that "[ a ]n essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be 6 Appeal 2018-002641 Application 13/966,610 removed, as much as possible, during the administrative process." In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Because we agree with the Examiner's legal conclusion that claim 1 is amenable to two or more plausible claim constructions, this issue falls squarely within the precedential holding of Miyazaki ("if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim ... indefinite.") Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). The Miyazaki standard for evaluating indefiniteness is justified, at least in part, because Appellants have the opportunity and the obligation to define the invention precisely during prosecution before the USPTO. Id. Section 112 places the burden of precise claim drafting on Appellants. See In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997). We are also mindful of the guidance of our reviewing court that claims may embrace different subject matter than is illustrated in the specific embodiments in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane). The court in Phillips guides that the description in the specification can limit the apparent breadth of a claim in two instances: (1) where the specification reveals a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess; and, (2) where the specification reveals an intentional disclaimer, or disavowal, of claim scope by the inventor. Id. at 1316. Neither of these considerations are articulated by Appellants in the Brief. For the foregoing reasons, we sustain the Examiner's indefiniteness rejection of independent claim 1, and claims 2-20 for similar reasons. 7 Appeal 2018-002641 Application 13/966,610 Rejections underÂ§ 103 Here, we have determined that it is unclear which interpretation applies when attempting to construe the claims in accordance with their plain language, i.e., does the error or the first task identify a request. As such, we decline to engage in speculative assumptions concerning the meaning of Appellants' claim language. See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). We must be able to reasonably understand the subject matter encompassed by the claims, without resorting to speculation, before we may properly review the Examiner's rejection underÂ§ 103(a). Specifically, because the metes and bounds of the claimed "error" and/or "first task" are unclear, it would be speculative for us to determine if the cited art teaches the same. As such, because the claims fail to satisfy the requirements of 3 5 U.S.C. Â§ 112, second paragraph, and considerable speculation would be required to understand the claim, we are constrained to reverse, proforma, the Examiner's rejections under 35 U.S.C. Â§ 103(a). See In re Steele, 305 F.2d at 862 (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language). DECISION We reverse the Examiner'sÂ§ 112, first paragraph rejection of claims 1-20. We affirm the Examiner'sÂ§ 112, second paragraph rejection of claims 8 Appeal 2018-002641 Application 13/966,610 1-20. We proforma reverse the Examiner's obviousness rejections of claims 1-20 under 35 U.S.C. Â§ 103(a). Because at least one rejection encompassing all claims on appeal is affirmed, the decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a)(l)(iv). AFFIRMED 9