Ex Parte Ahuja et al

Board of Patent Appeals and Interferences

Feb 12, 2010

09832863 (B.P.A.I. Feb. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARUN AHUJA, RAMADURAI VAIDYANATHAN, ANAND
TATA, GRIGOR MARKARIAN, JOE PAN, and PETER TOMPSKINS
____________

Appeal 2008-005067
Application 09/832,8631
Technology Center 2400
____________

Decided: February 12, 2010
____________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, and
ST. JOHN COURTENAY, III., and CAROLYN D. THOMAS,
Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed April 12, 2001. The real party in interest is CITIBANK,
N.A.
Appeal 2008-005067
Application 09/832,863

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 1-23, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants invented a system and method for providing a notification
system, including a notification server which generates electronic messages
to register customers upon their request or upon a host business request.
(Spec. 41, Abstract.)

B. ILLUSTRATIVE CLAIMS
The appeal contains claims 1-23. Claims 1, 7, 8, 19, and 23 are
independent claims. Claims 1 and 8 are illustrative:
1. A method for notifying a customer of at least one
requested event comprising:
providing the customer with access to a notification
system, including,
(i) determining a status of the customer as a
member customer or a non-member customer of an institution
providing the notification system,
(ii) generating access data for the customer, and
(iii) prompting the customer for the access data;
prompting the customer to select at least one requested
event, wherein a member customer is provided with more event
choices than a non-member customer;
storing the customer’s at least one requested event
selection in a first database;
Appeal 2008-005067
Application 09/832,863

3
prompting the customer to select at least one method of
notification;
storing the customer’s at least one method of notification
selection in the first database;
prompting the customer to select at least one time for
notification;
storing the customer’s at least one time for notification
selection in the first database;
receiving trigger data from at least a second database into
the notification system that triggers the at least one requested event;
formulating a notification message that includes
information about the at least one requested event; and
sending the notification message to the customer via the
customer’s at least one method of notification at the customer’s at
least one time for notification.

8. A system for notifying a customer of at least one
requested event comprising:
means for generating a customer’s financial notification
preferences which include,
(i) at least one requested event,
(ii) a customer’s notification method
preferences, and
(iii) a customer’s time for notification
preferences;
a database containing the customer’s financial
notification preferences;
a database containing financial information, wherein the
financial information is collected from at least one internal source and
at least one external source;
a notification message generator for comparing the at
least one requested event with the financial information and
Appeal 2008-005067
Application 09/832,863

4
generating a notification message when the financial information
matches the at least one requested event;
a notification gateway for sending the notification
message to the customer according to the customer’s notification
method preferences and time for notification preferences; and
a database for generating a notification report at the
customer’s request, wherein the notification report includes at least
data describing each notification message sent to the customer during
a customer selected period of time.

C. REFERENCES
The references relied upon by the Examiner as evidence in rejecting
the claims on appeal are as follows:
Rajan US 6,633,910 B1 Oct. 14, 2003
Langseth US 6,694,316 B1 Feb. 17, 2004

D. REJECTIONS
The Examiner entered the following rejections which are before us for
review:
(1) Claims 1-3, 5-17, and 19-23 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Langseth; and
(2) Claims 4 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Langseth in view of Rajan.

II. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Appeal 2008-005067
Application 09/832,863

5
Langseth
1. Langseth discloses that “[s]ubscribers may then sign up to receive
output from one or more services from one or more of the channels of
information.” (Col. 3, ll. 20-22.)
2. Langseth discloses that “affiliates may be associated with the
personalized intelligence network to provide an avenue to reach potential
subscribers. Affiliates may then selectively choose the subject matter of
content to be delivered to their subscribers and that selection may be based
on the business of the affiliate.” (Col. 3, ll. 39-43.)
3. Langseth discloses that “[i]f an affiliate-specific channel is created,
that channel may be limited in availability to only the affiliate’s subscribers
or may also be shared with other affiliate’s subscribers.” (Col. 27, ll. 32-35.)
4. Langseth discloses that “[i]n step 916, an affiliate may provide
content to one or more of the channel databases.” (Col. 27, ll. 13-14.)
5. Langseth discloses that “if the affiliate is a bank, the data may
comprise a complete transactional history of the subscriber with that bank so
that the channel database is enriched with a broader base of data from which
to generate reports.” (Col. 27, ll. 25-29.)
6. Langseth discloses that “[t]he data from step 916 may be loaded
either into a pre-existing channel database with other information and/or
transactional data at the PIN (step 920) or may be used to create a specific
channel for that affiliate (step 918).” (Col. 27, ll. 29-32.)

III. PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
Appeal 2008-005067
Application 09/832,863

6
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn. Mining & Mfg.
Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed.
Cir. 1992).
Anticipation of a patent claim requires a finding that the claim
at issue ‘reads on’ a prior art reference. In other words, if
granting patent protection on the disputed claim would allow
the patentee to exclude the public from practicing the prior art,
then that claim is anticipated, regardless of whether it also
covers subject matter not in the prior art.
Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).

IV. ANALYSIS
Grouping of Claims
In the Brief, Appellants essentially argue claims 1-7 and 232 as a
group (App. Br. 7-9). For claims 2-7 and 23, Appellants repeat the same
argument made for claim 1. We will, therefore, treat claims 2-7, and 23 as
standing or falling with claim 1.
Appellants argue claims 8-23 as a group (App. Br. 9-10). For claims
9-23, Appellants repeat the same argument made for claim 8. We will,
therefore, treat claims 9-23 as standing or falling with claim 8. See 37
C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d 588, 590 (Fed. Cir.
1991).
The Anticipation Rejection
We first consider the Examiner’s rejection of the claims under
35 U.S.C. § 102(e) as being anticipated by Langseth.

2 Claim 23 includes argued limitations found in both claim 1 and claim 8.
Appeal 2008-005067
Application 09/832,863

7

Claims 1-7, and 23
Appellants contend that “[t]here is no status determination between
member and non-member customers. Nor is there prompting of the
customer to select an event, wherein member customers have more event
choices than non-member customers.” (App. Br. 9.)
The Examiner found that “subscribers (member customer) are
customers, however not all customers (non-member customers) are
subscribers. Thus, [the] system has to determine the status of the customer.”
(Ans. 5.)

Issue: Does Langseth describe “determining a status of the customer
as a member customer or a non-member customer of an institution providing
the notification system . . . wherein a member customer is provided with
more event choices than a non-member customer?”
Here, the Examiner concludes that Langseth’s system has to
determine the status of the customer (Ans. 5). We agree.
For example, Langseth discloses that the host system has members,
e.g. subscribers, and a system for finding potential members for affiliates
(FF 1-2). As noted supra, Claim 1 specifically requires “determining a
status of the customer as a member customer or a non-member customer.”
In other words, Claim 1 looks at the customer type of an institution
providing the notification. In Langseth, both the host system and the
affiliates provide output notification services (FF 1-2). Furthermore,
Langseth discloses that if an affiliate-specific channel is created, that
channel may be limited in availability to only the affiliate’s subscribers (FF
Appeal 2008-005067
Application 09/832,863

8
3). It goes to follow that if a channel is only made available to the affiliate’s
subscribers, there must be some inherent means for determining affiliate
members from non-members. Furthermore, by limiting a channel to
members only, in essence Langseth’s system has given a member customer
more event choices than a non-member customer.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 1. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 1 and of claims 2-7,
and 23, which fall therewith.

Claims 8-22
Appellants contend that “[w]here Langseth is lacking is the disclosure
of financial information from an internal source.” (App. Br. 9.)
The Examiner found that Langseth discloses that “if the affiliate is a
bank, the data may comprise a complete transactional history of the
subscriber with that bank so that the channel database is enriched with a
broader base of data from which to generate reports.” (Ans. 31) (emphasis
omitted).

Issue: Does Langseth describe “a database containing financial
information, wherein the financial information is collected from at least one
internal source and at least one external source”?

Here, the Examiner associates Langseth’s transmitted bank affiliate
data with the claimed financial information collected from at least one
internal source. We agree.
Appeal 2008-005067
Application 09/832,863

9
We start by noting that we find the claimed “financial information”
merely represents “non-functional descriptive material” that is not accorded
patentable weight. Non-functional descriptive material refers to data content
that does not exhibit a functional interrelationship with the substrate and
does not affect the way the computing processes are performed. See MPEP
§ 2601.01. In a precedential decision, an expanded Board panel recently
held that elements that do not affect the claimed process are non-functional
material and are merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883
(BPAI 2008).3 As such, the Examiner need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004). See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005)
(nonprecedential) (aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006));
Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious. In re Ngai, 367 F.3d at 1339.
Although the claimed “financial information” is not given patentable
weight, we find that Langseth nonetheless discloses financial information
from an internal source. For example, we find that an “internal source”
includes any source from within that particular notification system, either the
affiliate system or the host system and “financial information” includes any
information related to money or other liquid resources. Thus, the affiliate
can be seen as an internal source and the affiliate’s transactional bank
history can be seen as financial information. In Langseth, the affiliate
provides financial data to a database that it itself can use, i.e., an internal

3 See http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf
Appeal 2008-005067
Application 09/832,863

10
source (FF 4-6). Langseth also discloses that the data may be loaded into a
pre-existing database with other information and/or transactional data (FF
6). In other words, Langseth discloses that the affiliate may load financial
data into a pre-existing database that the affiliate itself can access. Thus, we
find unpersuasive Appellants’ argument that Langseth’s database lacks
financial data from an internal source, given the above-noted findings.
As such, Appellants have not persuaded us of error in the Examiner’s
conclusion of anticipation for representative claim 8. Therefore, we affirm
the Examiner’s § 102 rejection of independent claim 8 and of claims 9-23,
which fall therewith.

The Obviousness Rejection
We now consider the Examiner’s rejection of the claims under 35
U.S.C. § 103(a).
Claims 4 and 18
Here, Appellants merely rely on the arguments presented supra (App.
Br. 11), which we have already found unpersuasive.
Thus, Appellants have not persuaded us of error in the Examiner’s
conclusion of obviousness for claims 4 and 18. Therefore, we affirm the
Examiner’s § 103 rejection of claims 4 and 18.

V. CONCLUSION
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-18.
Thus, claims 1-18 are not patentable over the cited prior art.

Appeal 2008-005067
Application 09/832,863

11
VI. DECISION
In view of the foregoing discussion, we affirm the Examiner’s
rejection of claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED

erc

KING & SPALDING LLP (CITI CUSTOMER NUMBER)
ATTN: GEORGE T. MARCOU
1700 PENNSYLVANIA AVENUE, NW
SUITE 200
WASHINGTON DC 20006