Ex Parte Hahn-Carlson

Patent Trial and Appeal BoardSep 12, 2013

12020198 (P.T.A.B. Sep. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DEAN W. HAHN-CARLSON ____________ Appeal 2011-008386 Application 12/020,198 Technology Center 3600 ____________ Before: BIBHU R. MOHANTY, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008386 Application 12/020,198 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1-211. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention relates generally to an auditing and processing system that automatically processes payable aspects of inventory-based transactions involving buyers and service providers (Spec. 1:6-7). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. An automated transaction processing system for processing business transactions involving buyers and providers and pertaining to an inventory of items to which merchant offerings in the transactions apply, the system comprising: a data storage arrangement configured and arranged to store buyer-specific profile information and contract data for each buyer, each of the respective contracts being defined as a function of one of the plurality of buyers and a predefined business relationship between the one buyer and at least one provider; and a transaction processor arrangement adapted to process transactions involving merchant offerings subject to an inventory according to the stored contract data and profile information, the transaction processor arrangement including an auditing engine configured and arranged to audit a transaction involving a buyer and at least one provider using transaction data, inventory data corresponding to an inventory to which the transaction applies, and stored contract data for the transaction, a payment processor configured and arranged to process payment for a transaction on behalf of the buyer 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed November 22, 2010) and Reply Brief (“Rep. Br.,” filed April 4, 2011), and the Examiner’s Answer (“Ans.,” mailed February 3, 2011). Appeal 2011-008386 Application 12/020,198 3 in response to the auditing function indicating that payment is appropriate for the transaction, and a fee assessment engine configured and arranged to assess a transaction processing fee against at least one of the parties to the transaction for which a payment is processed. Claims 1-7 and 9-212 are rejected under 35 U.S.C. § 103(a) as unpatentable over US 2005/0278221 A1, published Dec. 15, 2005 (hereinafter “Hahn”); and claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hahn, and further in view of US 2005/0283434 A1, published Dec. 22, 2005 (hereinafter “Hahn-Carlson”). We REVERSE. ANALYSIS Obviousness Rejection of Independent Claim 1 We are persuaded the Examiner erred in asserting that Hahn discloses or suggests “an auditing engine configured and arranged to audit a transaction involving a buyer and at least one provider using transaction data, inventory data corresponding to an inventory to which the transaction applies, and stored contract data for the transaction,” as recited in independent claim 1 (App. Br. 6-10; Reply Br. 2-7). Independent claims 15, 16, and 21 recite similar limitations. The Examiner asserts that the claimed functional limitations are intended use, and thus should not be given 2 While the heading on page 4 of the Examiner’s Answer indicates that claims 1-20 are unpatentable over Hahn, the analysis of the rejection includes claim 21 and omits claim 8. Furthermore, the “Status of Claims” on page 2 of the Examiner’s Answer, as well as the Final Rejection mailed June 18, 2010, indicates that claims 1-21 are rejected. Accordingly, we treat the heading on page 4 as an inadvertent typographical error. Appeal 2011-008386 Application 12/020,198 4 patentable weight, citing Manual of Patent Examining Procedure (MPEP) § 2106 (8th Ed., Rev. 9, Aug. 2012) for support (Ans. 5-6, 11-12). We disagree. While MPEP § 2106 does suggest that the use of “adapted for. . . may raise a question as to the limiting effect of the claim” (emphasis added), here, the function following the language “adapted for” and “configured and arranged to” imparts functional characteristics to the underlying processor structure, and thus are not intended use. The Examiner blanketly asserts that paragraphs [0014] to [0018] of Hahn disclose or suggest the aforementioned limitation of independent claim 1 (Ans. 5). However, we are unable to readily ascertain which specific features of Hahn correspond to which specific limitations of the recited auditing engine. Accordingly, on its face, “the rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for the rejection,” and thus cannot be sustained. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Moreover, the aforementioned limitation of independent claim 1 recites that a transaction is audited using three separate items: transaction data, inventory data, and stored contract data. As best as we can ascertain from paragraphs [0014] to [0018] of Hahn, taking into account both Appellant’s and the Examiner’s assertions, the Examiner is asserting that features of Hahn correspond to the recited audit limitations as follows: Hahn Independent Claim 1 Transaction Transaction Transaction data Transaction data Line-item entries/rules Inventory data Transaction-based document/contract Stored contract data Appeal 2011-008386 Application 12/020,198 5 Setting aside Appellant’s assertion that the line-item entries/rules of Hahn cannot correspond to the recited inventory data, Hahn discloses the following concerning these features and audits: a transaction is audited as a function of contract terms agreed to by a buyer of merchant offerings and a seller of the merchant offerings. Transaction data, as recorded on behalf of one of the buyer and the seller, is audited against line-item- accounting-classification rules provided by one of the buyer and the seller. This approach may be implemented, for example, to audit in accordance with a particular user’s established accounting approaches, such that a general set of accounting data (e.g., grouped by order, invoice or seller) is specifically classified into appropriate accounting categories on a line-item by line-item basis. (Para. [0015]; emphasis added). In general, the line-item entries correspond to transaction data processed in a transaction processing system that automatically audits and facilitates payment for a multitude of transactions involving different transaction parties. (Para. [0017]; emphasis added). As shown in these paragraphs, Hahn discloses that transaction data is audited against line-item entries/rules (i.e., the recited “inventory data”), while independent claim 1 recites that transactions are audited against both transaction data and inventory data. Thus, even while attempting to parse the Examiner’s blanket citation, we are unable to ascertain an initial case of prima facie obviousness. This analysis also applies to independent claims 15, 16, and 21, as well as claims 2-7, 9- 14, and 17-20, each of which either directly or indirectly recite similar limitations. We do not sustain this rejection. Appeal 2011-008386 Application 12/020,198 6 Obviousness Rejection of Dependent Claim 8 Claim 8 depends from independent claim 1. For the same reasons we do not sustain the rejection of independent claim 1, we also do not sustain the rejection of claim 8. DECISION The decision of the Examiner to reject claims 1-21 is REVERSED. REVERSED hh