Ex Parte Foss et al

Patent Trial and Appeal Board

May 29, 2013

10646150 (P.T.A.B. May. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/646,150 08/22/2003 Sheldon H. Foss JR. 03001.1020 8917
35856 7590 05/29/2013
SMITH RISLEY TEMPEL SANTOS LLC
Two Ravinia Drive
Suite 700
ATLANTA, GA 30346
EXAMINER
ROSEN, ELIZABETH H
ART UNIT PAPER NUMBER
2615
MAIL DATE DELIVERY MODE
05/29/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte SHELDON H. FOSS, JR. and
DENNIS H. JAMES, JR.
____________________

Appeal 2011-009378
Application 10/646,150
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
JAMES A. TARTAL, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009378
Application 10/646,150

2
STATEMENT OF CASE
Sheldon H. Foss, Jr. and Dennis H. James, Jr. (Appellants) seek our
review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims
1-4, 6, 8-11, 13, and 15-23. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.1

THE INVENTION
This invention is directed “to a system and method for dynamically
managing a financial account by observing transaction for a plurality of
financial accounts, aggregating the information regarding the transactions
and modifying the services provided to the financial account based on the
aggregated information” (Spec. 1:9-12).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer system for managing financial
accounts, the computer system comprising:
a processing system configured to execute a
plurality of integrated computer software
components configured to establish a new financial
account for a new customer and manage a plurality
of existing financial accounts for a plurality of
existing customers, the integrated computer
software components comprising:

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Jan. 2, 2011) and the Examiner’s Answer (“Ans.,” mailed Feb. 17,
2011).

Appeal 2011-009378
Application 10/646,150

3
a data collection component configured to
receive account option data and account formation
data pertaining to a new customer;
a decision engine configured to qualify the
new customer for a new financial account based at
least in part on qualification criteria and said
formation data and said account option data;
an account creation component configured
to establish the new financial account for the
qualified customer based at least in part on the
account option data and account formation data;
an account management component
configured to manage account data associated with
said new financial account and a plurality of
existing financial accounts;
a transactional processing component
configured to receive transactions and clear the
transactions against the new financial account and
the plurality of existing financial accounts; and
a data aggregation module coupled with the
account management component, the transactional
processing component, and the decision engine,
the data aggregation module configured to
aggregate data associated with the transactions for
the plurality of existing financial accounts and
provide feedback information related to the
aggregated transaction data to the decision engine
and the account management component, wherein
the decision engine modifies the qualification
criteria based on the feedback information and the
account management component modifies the
account data of one or more of the new financial
account and the existing financial accounts based
on the feedback information.

Appeal 2011-009378
Application 10/646,150

4
THE REJECTION
Claims 1-4, 6, 8-11, 13, and 15-23 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
by introducing new matter.

ISSUE
The sole dispositive issue is whether the amendment of independent
claims 1, 11, and 21 to include a “processing system” introduces new matter.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Authoritative Dictionary of IEEE Standards defines an “engine” as
“[a] dedicated processor, architecture, or system component that is used
for a single and special purpose; for example, an inferencing co-
processor (inferencing engine), floating-point processor, a print engine
in a laser printer, or a database engine (software engine).”2
2. The Authoritative Dictionary of IEEE Standards defines a “module” in
the context of software as “[a] program unit that is discrete and
identifiable with respect to compiling, combining with other units, and

2 Engine Definition. The Authoritative Dictionary of IEEE Standards
Terms, Seventh Edition (2000).
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Appeal 2011-009378
Application 10/646,150

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(Figure 2 depicts a data collection component 210, the decision engine 220,
the account creation component 230, the account management component
240 and the transactional processing component 250.)
(Spec. 4:12-19; See Appendix to the provisional application 18).

ANALYSIS
The rejection of claims 1-4, 6, 8-11, 13, and 15-23 under 35 U.S.C.
§ 112, first paragraph, as introducing new matter.
We are persuaded that the Examiner erred by Appellants’ argument
that Appellants “were in possession of ‘a processing system’ performing the
various claimed functions” of independent claims 1, 11, and 21 (Br. 11)
because of the description in at least pages 3-4 of the Specification, pages 2-
3 of the provisional application, pages 17-21 of the appendix to the non-
provisional application, and Figure 2 of the non-provisional application,
which is the same figure as that depicted on page 18 of the appendix to the
provisional.
New or amended claims which introduce elements or limitations that
are not supported by the as-filed disclosure violate the written description
requirement. See, e.g., In re Lukach, 442 F.2d 967, 968-69 (CCPA 1971).
While there is no in haec verba requirement, newly added claim limitations
must be supported in the specification through express, implicit, or inherent
disclosure. The fundamental factual inquiry is whether the Specification
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, applicant was in possession of the invention as now claimed.
See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991).
Appeal 2011-009378
Application 10/646,150

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Our review of the above mentioned portions of Appellants’
provisional and non-provisional applications confirm that Appellants
originally describe a processor implementing the various functions recited
by claims 1, 11, and 21, and depicted by the flow diagram of Figure 2. FF 4-
6. Even though the term “computer” is not recited explicitly in the
Specification, we find one of ordinary skill would recognize that the
components of system 200 (FF 6) are implemented by a computer or
processor. That is, while the “engine” and “modules” depicted by Figure 2
may not necessarily be structure, in and of themselves (FF 1-3), they may
not be implemented or achieve functionality without the use of a computer
or processor, and as such, implicitly support the Appellants possession of a
general “processing system.”
Moreover, we find the computer terminal utilized in the general
enrollment process of Appellants’ invention (FF 5) conveys with reasonable
clarity to those skilled in the art that the Appellants were in possession of “a
processing system” for implementing the various claimed functions of
independent claims 1, 11, and 21, including those directed to the general
enrollment process, at the time of the invention. Identity of terminology is
not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). Therefore, the
introduction of the broad term “processing system” in the claims does not
represent new matter.
For these reasons, we reverse the rejection of claims 1-4, 6, 8-11, 13,
and 15-23 under 35 U.S.C. § 112, first paragraph.

Appeal 2011-009378
Application 10/646,150

8
DECISION
The decision of the Examiner to reject claims 1-4, 6, 8-11, 13, and 15-
23 is REVERSED.

REVERSED

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