Ex Parte Boys

Board of Patent Appeals and Interferences

Sep 24, 2008

10016831 (B.P.A.I. Sep. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK ANDREW BOYS
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Appeal 2008-2637
Application 10/016,831
Technology Center 3600
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Decided: September 24, 2008
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Before: MURRIEL E. CRAWFORD, ANTON W. FETTING and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
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The Appellant appeals under 35 U.S.C. § 134 (2002) from the final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C § 6(b)
(2002). We AFFIRM.
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The claims on appeal relate to a system for managing donations
which, according to the Appellant’s Specification, permits potential donors
to gain access to details of individual persons and families associated with
certain disasters and other projects. The Appellant asserts that the system
permits donors to make contributions directly and immediately to those
particular qualified recipients that meet their own particular criteria for
giving. (Specification 15, ll. 13-19). Claim 1 is typical of the claims on
appeal:

1. A system for managing donations comprising:
an Internet-connected server accessible by
donors using an Internet browser;
a data store accessible to the server and
storing information about individuals or families,
pre-qualified for donations and associated each
with a specific account with a financial institution,
the account enabling the potential donors to make
contributions and the pre-qualified individuals or
families to withdraw donated funds; and
software executing on the server, enabling
donors to obtain specific information about the
pre-qualified individuals or families, and also
enabling the donors to select one or more of the
pre-qualified individuals or families and to make
donations to the specific accounts associated with
the selected pre-qualified individuals or families.

ISSUES
The issue in this appeal is whether the Appellant has shown that the
Examiner erred by:
rejecting claims 1-12 under 35 U.S.C. § 112, ¶ 2 (2002)
as being indefinite for failing to particular point out and
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distinctly claim the subject matter which the Appellant regards
as the invention;
rejecting claims 1-7 and 13-19 under 35 U.S.C. § 103(a)
as being unpatentable over Gruber (Publ. US 2002/0029179
A1, dated 7 Mar. 2002); and
rejecting claims 8-12 and 20-24 under § 103(a) as being
unpatentable over Gruber and Cohen (U.S. Patent 6,422,462,
issued 23 Jul. 2002).
These issues turn, at least in part, on whether the clause “storing
information about individuals or families, pre-qualified for donations and
associated each with a specific account with a financial institution, the
account enabling the potential donors to make contributions and the pre-
qualified individuals or families to withdraw donated funds” patentably
distinguishes the teachings of Gruber.

FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Gruber discloses a computer system established by a
fundraising organization or its agent for the purpose of providing
information to potential donors, soliciting contributions and receiving
pledges and donations. (Gruber 2, ¶ 0033).
2. The system includes a central process server linked to a data
storage device. The central process server and the data storage device are
used to store information for presentation to potential donors as well as to
receive information from potential donors. (Gruber 3, ¶ 0034).
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3. A web page in a charitable organization’s website includes
information concerning the charitable cause. (Gruber 3, ¶ 0037). The initial
web page includes a link directing potential donors to a web page in which
the potential donor sees virtual plaques honoring previous donors or
pledgers. (Gruber 3, ¶ 0038).
4. The page on which the potential donor sees the virtual plaques
includes a link directing potential donors to a web page wherein the viewer
sees various donation options. (Gruber 3-4, ¶ 0047). Fig. 5 suggests that
these various donor options are various recipients to whom the potential
donor may contribute.
5. Gruber’s system can charge installment payments automatically
to a donor’s credit card or bank account. (Gruber 4, ¶ 0049).

PRINCIPLES OF LAW
A claim is subject to rejection under section 112, ¶ 2, if the claim fails
in “particular pointing out and distinctly claiming the subject matter which
the applicant regards as his invention.” Compliance with the definiteness
requirement of section 112, ¶ 2 ensures adequate notice to those of ordinary
skill in the art concerning the scope of issued claims; encourages others to
design around the claimed subject matter; and assists others in assessing
whether the claimed subject matter is patentable. United Carbon Co. v.
Binney & Smith Co., 317 U.S. 228, 236 (1942); General Elec. Co. v.
Wabash Appliance Corp., 304 U.S. 364, 369 (1942). In light of these
policies, the language of a claim satisfies § 112, ¶ 2 only if “one skilled in
the art would understand the bounds of the claim when read in light of the
specification.” Exxon Research & Eng’ring Co. v. United States, 265 F.3d
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1371, 1375 (Fed. Cir. 2001). During examination, one may look both to the
Specification and to the prior art in determining whether a claim is definite.
In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
“the differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the
art to which said subject matter pertains.” In Graham v. John Deere Co.,
383 U.S. 1 (1966), the Supreme Court set out factors to be considered in
determining whether claimed subject matter would have been obvious:

Under § 103, the scope and content of the prior art
are to be determined; differences between the prior
art and the claims at issue are to be ascertained;
and the level of ordinary skill in the pertinent art
resolved. Against this background, the
obviousness or nonobviousness of the subject
matter is determined.

Id., 383 U.S. at 17.

ANALYSIS
A. The Rejection of Claims 1-12 Under § 112, ¶ 2
Claim 1 recites “a data store accessible to the server and storing
information about individuals or families, pre-qualified for donations and
associated each with a specific account with a financial institution.”
(Emphasis added.) The Examiner finds that the term “associated each” is
indefinite because the term could refer to donations or to recipients. (Ans.
7). We agree with the Appellant (App. Br. 5) that the term would be clear to
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one of ordinary skill in the art. In particular, we agree with the Appellant
(see Reply Br. 6) that claim 1 uses the two verbs “pre-qualified” and
“associated” conjunctively to refer to the same subject, “individuals or
families.” Since the verbs “pre-qualified” and “associated” are used
conjunctively, it is unlikely that one of ordinary skill in the art would believe
that the object of the verb “pre-qualified” is the subject of the verb
“associated.” Since the word “each” refers reflexively to the subject of the
verb “associated,” one of ordinary skill in the art would understand “each” to
refer to “individuals and families” and not to “donations.” On the record
before us, the Appellant has shown that the Examiner erred in rejecting
independent claim 1 and dependent claims 2-12 under § 112, ¶ 2.

B. The Rejection of Claims 1-3, 5-7, 13-15 and 17-19
Under § 103(a)
The Appellant argues independent claims 1 and 13 together (App. Br.
6) and presents no arguments seeking to show error in the Examiner’s
rejection of claims 2, 3, 5-7, 14, 15 and 17-19 separate from the arguments
presented regarding the rejection of claims 1 and 13 (App. Br. 9). Therefore,
we understand that Appellant to have argued claims 1-3, 5-7, 13-15 and 17-
19 as a group. We select claim 1 as being representative of the group. 37
C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant contends that Gruber does not teach “a data store
accessible to the server and storing information about individuals or
families, pre-qualified for donations and associated each with a specific
account with a financial institution, the account enabling the potential donors
to make contributions and the pre-qualified individuals or families to
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withdraw donated funds.” Gruber teaches a data storage device which is
accessible to a server and which is used to store information for presentation
to potential donors. (FF 2). This information includes information about
recipients to whom the potential donor may contribute. (FF 4).
Even were we to agree for purposes of this appeal only with the
Appellant that Gruber does not teach or suggest a data store accessible to the
server and storing information about individuals or families pre-qualified for
donations, such a finding would not suffice to show that the Examiner erred
in concluding that the subject matter of claim 1 would have been obvious.
Nonfunctional descriptive material cannot render nonobvious an invention
that otherwise would have been obvious. In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
Here, the descriptive information concerning the pre-qualified
individuals and families recited in claim 1 is not functionally related to the
data store. Unlike executable code which may define the tasks performed by
a general purpose computer with which the code is associated and thereby
transform the general purpose computer into a machine dedicated to those
particular tasks, data or information stored by a data store does not alter the
fundamental structure of the data store itself. The Appellant has not
identified how the difference between storing information concerning
charitable organizations and their activities as taught in Gruber and storing
information concerning pre-qualified individuals and families as recited in
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claim 1 alters the function performed by the data store.1 Therefore, this
difference does not distinguish the subject matter of claim 1 from the
teachings of Gruber in terms of patentability.
Likewise, the recitation in claim 1 of software executing on the server
enabling donors to obtain specific information about the pre-qualified
individuals or families does not distinguish the subject matter of claim 1 in
terms of patentability. "[E]xpressions relating the apparatus to contents
thereof during an intended operation are of no significance in determining
patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,
667 (Bd. App. 1969). Furthermore, "inclusion of material or article worked
upon by a structure being claimed does not impart patentability to the
claims." In re Otto, 312 F.2d 937, 940 (CCPA 1963). As discussed in the
preceding paragraphs, the information about individuals or families pre-
qualified for donations is content on which the system operates. The
Appellant has not identified how the particular nature of that information
alters the structure of the system. Hence, the recitation cannot impart
patentability to claim 1.
Claim 1 also recites software executing on the server enabling donors
to make donations to the specific accounts associated with the selected pre-
qualified individuals or families. Each of these accounts is held by a
financial institution. Each of these accounts enables potential donors to

1 The Appellant contends that “[t]here is absolutely no teaching or
suggestion in the art of Gruber to teach pre-qualifying individuals . . . .”
(App. Br. 7). Claim 1 does not recite a method step of pre-qualifying
individuals or families but rather a data store storing information about pre-
qualified individuals or families.
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make contributions and the pre-qualified individuals or families to withdraw
donated funds.
We agree with the Examiner (Ans. 8) that claim 1 by its own terms
does not exclude a system in which donations or withdrawals pass through
an intermediary such as a charitable organization. A claim under
examination is given its broadest reasonable interpretation consistent with
the underlying specification when determining whether the subject matter of
the claim is either anticipated or obvious. In re American Acad. of Science
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Limitations not expressed
in the language of a claim cannot be imported from the specification. E-
Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).
Gruber teaches a system established by a fundraising organization.
(FF 1). Since Gruber’s system provides donors with various donor options,
that is, various recipients to whom the donor may contribute (FF 4), it would
have been obvious to one of ordinary skill in the art to set up separate
accounts, each account associated with one of the donor options, so as to
prevent commingling of funds. We agree with the Examiner (Ans. 8-9), that
it would have been obvious for the fundraising organization to set up these
accounts with financial organizations since one of ordinary skill in the art
would have recognized that financial institutions would have greater
expertise than a fundraising organization in holding such accounts.
Claim 1 does not recite that the accounts must enable potential donors
to make contributions directly to such an account or enable pre-qualified
individuals or families to withdraw funds directly from such an account.
Given its broadest reasonable interpretation, the language of claim 1
encompasses accounts which enable potential donors to make contributions
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in the sense that the accounts are available to receive donations via a
fundraising organization which accepts the contributions from the donors.
Likewise, given its broadest reasonable interpretation, the language of claim
1 encompasses accounts which enable pre-qualified individuals or families
to withdraw money in the sense that the accounts provide the fundraising
organization access to the proceeds of the contributions when pre-qualified
individuals or families seek to withdraw funds from the fundraising
organization. Although the Appellant’s Specification asserts that “[a]n
important object of the invention is to make possible direct contribution,
wherein financial aid is passed through, without any monies being delayed,
polled, or retained in the name of the host server system” (Specification 8, ll.
11-14), we cannot import this object from the Specification in order to
distinguish the subject matter of claim 1 from the teachings of Gruber.
On the record before us, the Appellant has not shown that the
Examiner erred in rejecting claims 1-3, 5-7, 13-15 and 17-19 under § 103(a)
as being unpatentable over Gruber.

C. The Rejection of Claims 4 and 16 Under § 103(a)
The Appellant contends that Gruber does not teach or suggest that a
donation made by a donor to an account associated with a pre-qualified
individual or family results in a withdrawal of the donated amount by the
individual or family from an account associated with the donor. (App. Br.
9). We disagree. Gruber’s system can charge installment payments
automatically to a donor’s bank account. (FF 5). Charging an installment
payment for a donation made by a donor via a fundraising organization to
the account associated with the pre-qualified individual or family would
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result in a withdrawal from the bank account associated with the donor. On
the record before us, the Appellant has not shown that the Examiner erred in
rejecting claims 4 and 16 under § 103(a) as being unpatentable over Gruber.

D. The Rejection of Claims 8-12 and 20-24 Under § 103(a)
The Appellant presents no argument suggesting that claims 8-12 and
20-24 might be patentable if claim 1 were not. (See App. Br. 9). In view of
our affirmance of the rejection of claim 1 under § 103(a), we sustain the
rejection of claims 8-12 and 20-24 under § 103(a).

CONCLUSIONS
On the record before us, the Appellant has shown that the Examiner
erred in rejecting claims 1-12 under § 112, ¶ 2. The Appellant has not
shown that the Examiner erred in rejecting claims 1-7 and 13-20 under
§ 103(a) as being unpatentable over Gruber or in rejecting claims 8-12 and
20-24 under § 103(a) as being unpatentable over Gruber and Cohen.

DECISION
We AFFIRM the rejections of claims 1-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). See 37
C.F.R. § 1.136(a)(1)(iv) (2007).

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AFFIRMED

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LV:

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