Appeal No. 2003-2167 Page 7
Application No. 09/903,500
transmittal charges for return payment comprises the step of determining
whether said return payment is to be made electronically, and if so directing said
computer to compile said transmittal charges for said electronic return payment
into the ones of said invoices generated for each of said selected debtors who
had signed such an agreement.
In the rejection of claim 18 under 35 U.S.C. § 103 (answer, pp. 3-5), the
examiner implicitly ascertained that Comesanas, either expressly or inherently
described, every limitation of claim 18 except for the steps of (1) converting the billing
information for electronic transmission if the billing information was determined to be
transmitted via electronic transmission; and (2) generating an electronic billing
statement from the converted billing information if the billing information was
determined to be transmitted via electronic transmission.
With regard to these differences, the examiner (answer, p. 5) took Official Notice
that it is old and well known within the communications art to convert data to the
appropriate format for transmission, such as HTML for electronic transmissions and the
appropriate print file type for the system printer and then concluded that "it would have
been obvious to one having ordinary skill in the art at the time the invention was made
that the data in Comesanas' system was being converted to the proper format for
printing or electronic transmission." Implicit in this rejection is the examiner's view that
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