Datatreasury Corporation v. Wells Fargo & Company et al

Filing 292

MOTION to Sever and Stay Claims Related to Ballard Patents Pending Reexamination by BB&T Corporation, Branch Banking and Trust Company, Comerica Incorporated, Comerica Bank & Trust, National Association, M&T Bank Corporation, M&T Bank. (Attachments: #1 Exhibit A#2 Exhibit B#3 Exhibit C#4 Exhibit D#5 Text of Proposed Order Exhibit E)(Williams, E Danielle) Additional attachment(s) added on 10/13/2006 (sm, ).

Datatreasury Corporation v. Wells Fargo & Company et al

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EXHIBIT C

Dockets.Justia.com

Case 2:06-cv-00072-DF-CMC C

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UNITED STATES PATENT AND Ti~e~iuI~IcE O
UfAT5DVANQffOfCCMMUC~ ij.iss~sis. hsis ~ Ttud~t Odiss i ~e~~I$iI0WiR901PA1UflS p.o.~ 4·s 1
A~V~I~Uh1235i4* Tw-s~

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901007,130 24023 7S90

~ ~ 1112512005 0I~6120O6

ATIVINEY oOcUrwO. 6032137

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5962

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A*TLR4IT

MCGIJJREWOODS LLP
ONE JAMES CENTER 901 EAST CARY STREET RICHMOND, VA 232 19-4030

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PI**4W~J

DATE MAIL~ 110612006 0

Please find below and/or attached an Office comunication concerning this appLication or proceeding.

PTO.90C (Rev. I~3~

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UNITIDSTAnB Pam~T ND TARI~OJTI~ A
th151106$usis P~sdSfli*OSc

1/6/2006
ThPD PAgTY*E~.~TC0R&~P0NC~4CEADDa~5 ~S

JEFFREY P. KUSHA

SIDLEY AUS11N BROWN & WOODS LLP 15O1KStREErP4W WASHI*3rON, DC 20005

&PARTh REEXAMINATION COMMUNICATION TRANSMITTAL FORM
REEXAMINATION CON1ROL NO 901007830 PATENT NO. 6,032,137 ART UNI 3900

Endosed Is a copy of the latest communication fmm the United States Patent and Trademark Office In the above identified e parte ree~mlnaUon proceeding (37 CFR 1.550(f)). Where this copy Is supplied after the reply by requester, 37 CFR 1.535, or the. time ftr filing a repily has passed, no submission on behalf of theex parte reexamination requester will be acknowledged or consIdered (37 CFR1.550(g)).

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Order Granting I Denying Request For ExParteReexarninatlon

90/007,830

6032137

--

Examiner
Michael O~Neil

Art Unit
~993

--The MAILING DATE of this communication appears on the cover' sheet with the con~spondence dth~ssa

The request for ex paite reexamination filed 25 November2005 has been considered and a determination has, been made. An IdentifIcation of the claims, the references relied upon, and the rationale supporting the determination are attached. Attachments: a)[J P10-892,
1. ~ b)~P10-1449,
CU Other:
____

The request for ex paite reexamination is GRANTED. RESPONSE liMES ARE SET AS FOLLOWS:

For Patent Owne(s Statement (Optional): iWO MONThS from the mailing date of this communication (37 CFR 1.530(b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
For Requester~s eply (optional): iWO MONThS from `the date of service of any timely filed R Patent Owners Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED. If Patent Owner does not file a timely statement under 37 CFR 1.530(b). then no reply by requester is permitted. · 2. [J The request forexpa,le reexamination is DENIED. This decision is not appealable (35 U.S.C. 303(c)). Requestermay seek review by petition to the Commissioner under 37 CFR 1.181 wIthin ONE MONTH from the mailing date of this communication (37 CFR 1.515(c)). EXTENSION OF TIME TO FLE SUCH A PETITION UNDER 37 CFR 1.181 ARE AVALABLE ONLY BY PET~ON O SUSPEND OR WAIVE THE REGULATIONS UNDER T 37 CFR 1.183. In due course, a refund under 37 CFR 1.26 (c) will be made to requester. a) 0 by Treasury check or, b)

0 by credit to Deposit Account No.

_____·

or

c) [J by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).

Michael O'Neill CRU Examiner Art Unit 3993 cc:R,Que~ ~tI*d ath' reQuester) ( p
U.S. PMsisaid Tssdss.,~i0es,

P101-471 (Rev. 04.01)

OffIce Action In Expajle Reexamkiatlon

Pail of Paper No. 12282005

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Application/Control Number: 90/007,830 Art Unit: 3993

DECISION
A substantial new question ofpatentability affecting claims 1-43 of United StatesPatent Number 6,032,137 is raised by the request for exparie reexamination. Service ofPapers After the filing ofa request for reexamination by a third party requester, any docvment filed by either the patent owner or the third party requester must be served on the other party (or parties where two or more third party requester proceedings are merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFP. 1.550(1). Waiver ofRight to File Patent Owner Statement In a reexamination proceeding, Patent Owner may waive the right under 37 C.F.R. 1.530 to file a Patent Owner Statement. The document needs to contain a statement that Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement and proofofservice in the manner provided by 37 C.F.R. 1.248, if the request fix reexamination was made by a third

party requester, see 37 C.F.R 1.550(f). The Patent Owner may consider using the fbllowing
statement in a document waiving the right to file a Patent Owner Statement:

WAIVER OF RIGHT TO FILE PATENT OWNER STATEMENT Patent Owner waives the right under 37 C.F.R. 1.530 to file a Patent Owner Statement.

Erlensions of Thne Extensions oftime under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of37 CFR 1.136 apply only to `an appIicant~ nd not to parties in a a

Case 2:06-cv-00072-DF-CMC Application/Control Number: 90/001,830 ArtUnit: 3993

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reexamination proceeding. Additionally, 35 U.S.C. 305 requires that exparle reexamination proceedings ~wilbe conducted with special dispátch~(37 CFR 1.550(a)): Extensions oftime in
erparte reexamination proceedings are provided for in 37 CFR. 1.550(c). Amendment in Reexamination F~oceedings

Patent owner is notified that any proposed amendment to the specification and/or claims in this reexamination proceeding must comply with 37 CFR. 1.530(d)4j), must be formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees required by 37 CFB. 1.20(c).
Submissions In order to insure 11tH consideration ofany amendments, affidavits or declarations or

other documents as evidence ofpatentability, such documents must be submitted in response to
the first Office action on the merits (which does not result in a close ofprosecution). Submissions after the second Office action on the merits, which is intended to be a final action, will be governed by the requirements of37 CFR 1.116, after final rejection and by 37 CFR. 41.33 after appeal, which will be strictly enforced. Notification of Concwrent PPoceedings The patent owner is reminded ofthe continuing responsibility under 37 CFR 1.565(a), to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. 6,032,137 throughout the course ofthis reexamination proceeding. Likewise, if present, The third party requester is also reminded ofthe ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding. See MPEP §~207, 2282 and 2286. 2

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Applicition/Control Number: 90/007,830 Art Unit: 3993
Requ&ct's Indications The request indicates that Requester considers:

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Claims I and 26 are unpatentable over Campbell et aL, USPN 5,373,550, (Campbell). Claims 42 and 43 are unpatentable over Campbell. Claims 2, 16, 18,27,29,36 and 38-41 arc unpatentable over Campbell. Claims 3-8 and 28 are unpatentable over Campbell and admitted prior art (APA). Claims 10 and 33 are unpatentable over Campbell and APA. Claims 34 qnd 35 are unpatentable over Campbell, Owens et aL, USPN 4,264,808, (Owens) ("old art" viewed in a new light) and Minoli, Imiging in Corporate Environments
(Minoli). Claims 20 and 21 are unpatentable over Campbell and MinolL

·

Claims 1,2, 1., 26,27 and 29 are unpatentable over ANSI/ABA X9.46-1995, version

0.13 Draft (ANSI.1995) and ANSI X9.46-1997 (ANSI-1997). Claims 9, 11-15, 19 and 30-32 are unpatentable over Campbell, Owens and Minoli. Claims 17, fl-25 and 37 are unpatentable over Campbell and Minoli. Substantial New Question There are substantial new questions ofpatentability (SNQP) is based on Campbell, Minoli, ANSI/ABS X9.46-1995, v. 0.13,and ANSI X9.46-1997. A discussion ofthe specifics now follows: It is agreed that the consideration ofCampbell raises an SNQP as to Claims I and 26 of the Ballard patent (`988 patent or Ballard). As pointed out in the request on pages 5-7, Campbell teaches in col. 5:23-28 "(t]hat a controller (42) may read some data accompanying check images,

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Application/Control Number: 90/007,830
Art Unit: 3993

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for example, it may identify that TCP/IP protocol information accompanying those images. That information may instruct the node (12) about the identity ofthe sending institution and the intended receiving institution." In cot. 3:43-58 Campbell teaches "the processing node (12) receives check images and performs certain processing procedures on those images, including at least temporary storage ofthe received check images." Campbell teaches the processing node (12) "transmits frames of digital information representing check images to the network (38) after those images have been processed by the node (12)." 14 Campbell teaches "[a] node controller and router (42) control the routing of check images to their intended destinations, both in the controller and to their ultimate destinations outside the network (38)." Campbell in col. 2:20-22 and 50-63 teaches a communication network being a public switched telephone network either electrically or optically based and/or digital or analog; and suitable digital networks are a packet network and a frame relay network. In cot. 5:55-60 Campbell teaches "[t]he controller (42) may also be configured to handle information encrypted by sending institutions to provide security for the images transported by the network (38). The controller (42) may have its own encryption and decryption equipment to provide a secure environment in the node (12)." In ccl. 5:26-27 Campbell teaches this encrypted information includes check images and also information "about the identity of the sending institution. Thus, there is a substantial likelihood that a reasonable examiner would consider these teachings important in deciding whether or not these claims are patentable. Accordingly, Campbell raises an SNQP as to Claims I and 26, which has not been decided in a previous examination of the Ballard patent. It is agreed that the consideration of Campbell raises an SNQP as to Claims 42 and 43 of the Ballard patent. As pointed out in the request on pages 7-8, in addition to incorporating the

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Application/ControlNumber: 901007,830
Art Unit: 3993

above stated.teachings herein. Campbell ftwther teaches destination identifying data identifies
one ofthe banks involved in the underlying transaction represented by the check and this data may be obtained from the endorsements on the chedc, and this data can be obtained by an operator who views the image ofthe check and manually enters the destination data, thus

verifying the accuracy ofthe endorsement from the image. See Campbell, col. 3:65-67. Thus,
there is a substantial likelihood that a reasonable examiner would consider these teachings important in deciding whether or not these claims arc patentable. Accordingly, Campbell raises an SNQP as to Claims 42 and 43, which has nOt been decided in a previous examination ofthe

Ballard patent.
It is agreed that the consideration ofCampbell raises an SNQP as to Claims 2, 16, 18, 27, 29, 36 and 38.41 of the Ballard patent. In col. 2:64 col. 3:12 Campbell teaches a scanner
-

means. In cot 2:46-49 and Figure 2 Campbell teaches a data collecting subsystem. In cot 7:1527 Campbell teaches tagged, encrypted, compressed bitmap images. In cot 2:27-49 Campbell

teaches having plural remote and central locations. In cot. 3:10-31; cot. 4:56-58 and cot. 2:61
Campbell teaches LANa and a WAN communication architecture. In col. 2:25-33 Campbell

teaches that a collection may occur at a processing node (12) that transmits check images between two or more banks. Thus, there is a substantial likelihood that a reasonable examiner
would consider these teachings important in deciding whether or not these claims are patentable. Accordingly, Campbell raises an SNQP as to Claims 2, 16, 18, 27, 29, 36 and 38-41 which has not been decided in a previous examination ofthe Ballard patent. It is agreed that the consideration ofa combination ofCampbell and APA raises an SNQP as to claims 3-8 and 28 of the Ballard patent. As pointed out in the request on page 10,

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A~p[icatioiilControl umber: 90/007,830 N Art Unit: 3993

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Ballard in cot. 6:46-60 teaches "[a)s is known to person ofordinary skill in the art, the DAIs 200 could also. include additional devices for capturing other biometric data for additional security. These devices include facial scans, fingerprints, voice prints, iris scans, retina scans and hand geometry." This APA in combination with the teachings ofCampbell in cot. 7:15-27 of
compressed tagged images and in col. 6:57-60 of digital storage make a substantial likelihood that a reasonable examiner would consider these teachings important in deciding whether or not these claims arc patentable. Accordingly, Campbell in combination with APA raise an SNQP as to Claims 3-8 and 28 which has not been decided in a previous examination ofthe Ballard patent. It is agreed that the consideration of the combination ofCampbell, Owens and Minoli raises an SNQP as to Claims 34 and 35 ofthe Ballard patent. In figure 1 Campbell shows transmitting within a remote subsystem. In cot. 2:26-32 Campbell teaches transmitting between a remote and central subsystem. In col. 3:41-52 Campbell teaches transmitting within a central

subsystem. In col. 3:20-43 Campbell teaches connecting a remote to a central subsystem. In col.
3:32-52 Campbell teaches connecting a central to a remote subsystem. Thea, there is a substantial likelihood that a reasonable examiner would consider these teachings important in deciding whether or not these claims are patentable. Accordingly, the combination ofCampbell,

Owens and Minoli raises an SNQP as to Claims 34 and 35 which has not been decided in a
previous examination ofthe Ballard patent. It is agree that the consideration ofthe combination ofCampbell and Minoli raises an SNQP as to Claims 20 and 2lof the Ballard patent. Campbell teaches temporary and long-term archiving ofthe images at the check processing node (12). Minoli teaches several image storage systems. Thus, there is a substantial likelihood that a reasonable examiner would consider these

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Application/Control Number: 90/001,830 Art Unit: 3993 teachings important in deciding whether or not these claims are patentable. Accordingly, the

combination of Campbell and Minoli raises an SNQP as to Claims 20 and 21 which has not been decided in a previous examination ofthe Ballard patent.
It is agreed that the consideration ofANSI-1995 and ANSI-1997, collectively "ANSI", raise an SNQP as to Claims 1,2,18,26,27 and 29 ofthe Ballard patent. As pointed out in the request on pages 16-19, ANSI teaches an electronic data interchange protocol for exchange of electronic digitized images of financial documents among different financial institutions involved in a paymenttransaction. The exchange occurs across diverse computing platforms and the original imaging application captures images ofpaper transaction data. ANSI teaches a concept offunctional groups that are packaged and interchanged between financial institutions. These functional groups are defined as "items views" and "creation computer. The "item views" include images ofdocuments. The "creation compute?' is a data element which

"conveys the system name ofthe originato?s host computer that was used to create and digitize
the imaging data." See ANSI-l995, page 105; ANSI-1997, page 105. Thus, both images of documents and associated identification information which identifies the source ofthe digitized

images are transmitted through the system. ANSI teaches a system that processes, sends, verifie~
and stores transaction data and identification information. As taught on page 12 of both ANSI1995 and ANSI-l997, "upon receipt ofthe interchanged data, the FlI-translator will parse the incoming data for the receiving imaging application. Then, the receiving imaging application may generate acknowledgements or replies to query requests, and become the originating imaging application for a new image interchange." ANSI teaches a communication network where data may be transmitted within and between financial institutions. As taught in ANSI.

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Ap~p1icItioii/Coiiti~óf mber: 90/007,830 Nu Art Unit: 3993

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1995, page 15-16, and ANSI- 1997 page 16, "packaged interchanged content is delivered from the originating imaging application's financial image interchange translator to the receiving
· imaging application's financial image interchange translator through a computer network by

transrñitting the packaged interchange data electronically." ANSI teaches encrypting data prior
to transmission. As taught on page 57 ofboth ANSI-1995 and ANSI-1997, "encryption key name ·
...

conveys the name ofthe key used to encipher the contents ofthis functional group"

(meaning the image and originator data). "Th[is] name is mutually known to the security originator and the security recipient, is unique for this relationship, and allows a particular key to be specified." Thus, there is a substantial likelihood that a reasonable examiner would consider these teachings important in deciding whether or not these claims are patentable. Accordingly,

ANSlraisesan'SNQPastoClaims 1,2,18,26,27 and29whichhasnotbeendecided ma
previous examination ofthe Ballard patent.
it is agreed that the consideration of the combiMtion ofCampbell, Owens and Minoli

raise an SNQP as to Claims 9-15, 19 and 30-33 ofthe Ballard patent. As pointed out in the

request on page 11, for Claims 10 and 33, and pages 20-21, for Claims 9, 11-15, 19 and 30-32,
Minoli teaches a "polling serve?'. This teaching causes the teachings ofOwens with respe~o t

its "polling serve?' (col. 12:12-16); the database (cot. 12: 18-21; the report generator (cot. 14:1218); the CPU (cot. 12:27-36); the domain name services program (cot. 21:1-17) and the memory hierarchy (cot 12:23-27) to be viewed in a new light with the teachings ofMinoli as to its

teachings ofa domain name services program, see pages 248-249, along with the "polling
server" teaching found on pages 33 and 350 in Minoli. Minoli teaches using WORM jukebox

and optical storage jukebox to store check images, see pages 30-31 ofChapter 7. On page 33,

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Minoli teaches CD-ROM optical storage being faster than video servers. Owens discusses ways

ofstoring data into predefined fields, i.e. "machine pattern recognition units" which include "a conventional character recognition tender which reads the decompressed image ofa document (18) and ascertains the monetaiy amount thereon." See Owens cot 23:44-47. Owens teaches manners to correct errors, "[w]hen data is missing, the associated image is routed to one Of the processors (396,398) fbr display on one ofthe CRi's (150) where an operator keys in the appropriate data on an associated keyboard (152), See Owens col. 23;47-52. Thus, there is a substantial likelihood that a reasonable examiner would consider these teachings important in deciding whether or not these claims are patentable. Accordingly, the Campbell, Owens and
Minoli combination raise an SNQP as to Claims 9,11-15,19 and 3O-32~which has not been

decided in a previous examination ofthe Ballard patent.
It is agreed that the consideration ofthe combination ofCampbell and Minoli raise an SNQPastoClaims 17,22-25 and 3loftheBsllardpatent Aspointedoutintherequestonpage

22, Mlnoli tearJi~s sing modem connections and connecting several networks in addition to the u hardware typically part ofa communication network. Sec Minoli pages 31,263, 268-271. Also, · Minoli teaches dynamic assigning, see pages 248-249. Likewise, Campbell teaches dynamic assigning, cot. 3:30-39 in addition to polling, col. 3:30-39; and storing, cot 3:43-58. Thus, there is a substantiaL likelihood that a reasonable examiner would consider theseteachings important
in deciding whether or not these claims are patentable. Accordingly, the Campbell and Mmcli combination raise an SNQP as to Claims 17,22-25 and 37 which has not been decided in a previous examination ofthe Ballard patent.

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· AppIiCatiO~/CófltroINumbe~0/007,830 9:

i'age ii

Art Unit: 3993
Issues not within Scope of Reexamination it is noted that an issue not within the scope ofreexamination proceedings has been raised: patent owners' beliefofclaim coverage. The issue will not be considered in a

reexamination proceeding. 37 CFR 1.552(c). While this issue is not within the scope of reexamination, the patentee is advised that it may be desirable to consider filing a reissue application provided that the patentee believes one or more claims to be partially or wholly inoperative or invalid based upon the issue.

·

Conclusion

PcrMPEPç2258 all "live" claims arc reexamined during reexamination.

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Application/Control Number: 90/007,830 Art Unit: 3993 Communications Please mail any communications to: Ann: Mail'Stop "Ex Parte Reexamn" Central Reexamination Unit Commissioner for Patents P. 0. Box 1450 Alexandria,VA 223131450 Please FAX any communications to: · [phone] Central Reexamination Unit Please hand-deliver any communications to: ·
· ·

~Pigc2 1

· ·

Customer Service Window Attn: Central Reexamination Unit Randolph Building, Lobby Level 401 DulanyStreet Alcxandria,VA 22314

·
·

Any inquiry concerning this communication or eamlier communications from the Examiner, or as to the status ofthis proceeding, should be directed to the Central Reexamination Unit at telephonenumber [phone]. Signed:

· ·

Michael O'Neill CRU Examiner GAU3993 [phone]

~.o,,s,s, ,4L ·