Ex Parte SIMPSON et al - Page 7



          Appeal No. 2003-1051                                                        
          Application No. 09/247,134                                                  

               While the examiner recognized that Manduley did not disclose           
          the determination of whether a template exists for a bill and the           
          creation of a template if one does not exist, the examiner                  
          contends that Kolling discloses this and that it would have been            
          obvious “to combine Kolling’s use of template to create                     
          electronic statement and Manduley’s integration of paper and                
          electronic mail handling, in order to include both the paper and            
          electronic mail recipient as taught by Manduley’s” (sic) (answer-           
          page 8).                                                                    
               The examiner again turns to Lech for a scanning of a paper             
          bill to enter specific data contained in the paper bill into a              
          database.                                                                   
               We have thoroughly reviewed the examiner’s rationale for the           
          rejection of claims 1-6 and 8-26 under 35 U.S.C. § 103 and we               
          find that the examiner has not established a prima facie case of            
          obviousness.                                                                
               Claims 1-6 and 8-25 require receiving mail/bills in paper              
          and electronic formats.  The mail is then sorted and data from              
          the paper mail/ bills is obtained in electronic format and an               
          electronic bill statement is issued to a subscriber.                        
               Contrary to this, Kolling discloses only a system for                  
          presenting electronic statements and does not involve itself with           
                                         -7–                                          




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