Ex Parte Grant et al

Board of Patent Appeals and Interferences

Aug 2, 2011

10373578 (B.P.A.I. Aug. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM R. GRANT,
MICHAEL W. ROGERS,
MARY LOU CORRIGAN,
MICHAEL F. GALLAGHER, and
TOMY A. MUNIZ
____________

Appeal 2010-006377
Application 10/373,578
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006377
Application 10/373,578

STATEMENT OF THE CASE
William R. Grant, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 10-14, 23, and 25. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for implementing a variable
financial plan, the method comprising:
identifying an account;
accessing a computerized account planning tool, wherein the
account planning tool is an investment projection tool;
presenting a characteristic associated with the account to the
account planning tool;
receiving an account plan from the account planning tool;
authorizing access to a bank account, wherein authorizing
access to the bank account comprises an account owner initiating a
phone call and providing a predetermined passcode to a host
computer;
based at least in part on the account plan, facilitating a funds
transfer from a bank account to the account, wherein transferring

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 23, 2009) and Reply Brief (“Reply Br.,” filed Feb. 24, 2010),
and the Examiner’s Answer (“Answer,” mailed Dec. 24, 2009).
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funds from the bank account to the first account can recur in
accordance with the account plan in the absence of additional
authorization;
monitoring activity in the account using a computer, wherein
monitoring activity in the account includes identifying a change in a
projected rate of growth of the investment account;
modifying the account plan in response to the activity;
performing a plurality of funds transfers from the source of
funds to the account in accordance with the account plan, wherein at
least one funds transfer occurs prior to modifying the account plan,
and another occurs after modifying the account plan;
adding an additional account to the financial plan; and
customizing the combination of the additional account and the
account.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Atkins
Garcia
Wood
US 5,911,136
US 6,088,429
US 7,050,997 B1
Jun. 8, 1999
Jul. 11, 2000
May 23, 2006
The following rejections are before us for review:
1. Claims 10-14 and 23 are rejected under 35 U.S.C. §102(b) as being
anticipated by Atkins.
2. Claims 1 and 25 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Atkins, Wood, Jr. and Garcia.

ISSUES
Does Atkins describe, expressly or inherently, the subject matter of
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claims 10-14 and 23?
Has a prima face case of obviousness been established for the subject
matter of claims 1 and 25?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer (3-7).
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Rejection of claims 10-14 and 23 under 35 U.S.C. §102(b) as being
anticipated by Atkins.
As the Appellants (App. Br. 5) have argued, claim 10, the sole
independent claim rejected under §102, is drawn to “a computer-
implemented method for directing recurring financial transfer operations”
that involves monitoring an account “wherein the account is a mortgage
account, and wherein monitoring activity in the mortgage account includes
identifying a change in one or more characteristics of the mortgage
associated with the mortgage account.” In order for Atkins to anticipate
claim 10, it must describe, expressly or inherently, this mortgage account
limitation.
As the Appellants (App. Br. 5-6) have also argued, the method of
claim 10 requires, furthermore, account plan and an account plan variable
which is an amount of a periodic funds transfer and “modifying the account
plan to maintain the account plan variable [i.e., an amount of a periodic
funds transfer] within a range” (claim 10). In order for Atkins to anticipate
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claim 10, it must describe, expressly or inherently, these account plan and
account plan variable limitations as well.
The Examiner takes the position that the mortgage account limitation
is described in col. 23 with respect to a “HOPE account compliance
routine.” Answer 4.
Col. 23 of Atkins does in fact describe a HOPE account compliance
routine. A HOPE account is a “Home Owner’s Preferred Equity” mortgage
(col. 4, ll. 14-15) and is therefore a mortgage account. The HOPE account
compliance routine involves determining if there is an imbalance in the
account and, if so, creating a secured loan, after which a client may direct
that specific actions be taken to resolve the imbalance. Col. 23, ll. 10-27.
The fact that the HOPE account compliance routine can determine that an
imbalance exists with respect to a mortgage necessarily means the Atkins
process identifies a change in one or more characteristics of the mortgage
associated with the mortgage account. Accordingly, we agree with the
Examiner that Atkins describes the mortgage account limitation at issue.
The Examiner takes the position that the account plan and account
plan variable limitations are described in col. 7, l. 60-col. 8, l. 6 and col. 2, l.
50-col. 3, l. 5, respectively. The former passage describes transfers which
can be made with the HOPE framework. The latter passage describes a
mortgage system whereby a home owner’s total assets “must always be
greater than some imposed minimum standard” and that this must be
“checked frequently to reflect a change in the value or quantity of any asset
or liability which is part of the system.” “If the asset value is less than the
minimum, the client must modify one or more of his account components
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e.g. decrease his liabilities or increase the value of an asset account, to bring
the total value into the permissible range.” Col. 3, ll. 1-5.
The difficulty with the Examiner’s position is that the col. 7, l. 60-col.
8, l. 6 passage does not necessarily describe an amount of a periodic funds
transfer and while the col. 2, l. 50-col. 3, l. 5 passage describes bringing a
total asset value into a permissible range for maintaining a home owner’s
total assets greater than a minimum standard that will support a mortgage,
this does not necessarily entail maintaining an amount of a periodic funds
transfer within a range. We agree that it is possible and it may even be a
conventional way to maintain an account balance above a minimum standard
that will support a mortgage. However, as the rejection is under §102, under
principles of inherency, when a reference is silent about an asserted inherent
characteristic, it must be clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Maintaining an
amount of a periodic funds transfer within a range as claimed is a possible
way to effect the account balance Atkins describes. But “[i]nherency [for
102 purposes], however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient. .. .” Hansgirg v. Kemmer, 102 F.2d 212,
214 (CCPA 1939), quoted in Continental Can Co. USA v. Monsanto Co.,
948 F.2d 1264, 1269 (Fed. Cir. 1991).
For the foregoing reasons, we do not sustain the rejection.

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The rejection of claims 1 and 25 under 35 U.S.C. §103(a) as being
unpatentable over Atkins, Wood, Jr. and Garcia
The Appellants do not appear to have addressed the merits of the
rejection of claim 25. All that is said is that “[t]he rejection of claim 25 is
believed to be improper because the rejection does not follow the law
established by the Supreme Court in KSR Int'l co. v. Teleflex Inc., 550 U. S.
398,418 (2007), namely that “[r]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Reply Br. 4. In point of fact, the Examiner did
fully address every limitation in claim 25, explained the differences between
the claimed invention and what the prior art discloses, explained the scope
and content of the prior art, and provided a very clear explanation as to why
the Examiner believed the prior art combination would have led one of
ordinary skill in the art to the claimed invention at the time the invention
was made. See Answer 5-7. It is evident that the Examiner took the
position that the claimed invention arranged elements of the cited prior art
with each element performing the same function as the prior art describes
and without yielding anything unexpected from their combination. “[W]hen
a patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” KSR at 417.
We find that the Examiner did not make mere conclusory arguments but
rather established a prima facie case of obviousness. Since the merits of the
prima facie case of obviousness have not been challenged, the rejection of
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claim 25 is sustained.
We reach the opposite conclusion as to claim 1. The Examiner stated,
in full, that “[c]laim 1 is rejected for analogous reasoning.” Answer 7. But,
as the Appellants illustrate in the Reply Brief, claim1 is not the same as
claim 25. By relying on the facts and reasoning in determining that claim 25
would have been obvious to make the same case for claim 1, various claim 1
limitations remain neglected. For example, claim 1 requires “adding an
additional account to the financial plan.” This is not a limitation in claim 25
and thus has not been addressed. We therefore find that a prima facie case
of obviousness for the subject matter of claim 1 has not been made out in the
first instance.

CONCLUSIONS
The rejection of claims 10-14 and 23 under 35 U.S.C. §102(b) as
being anticipated by Atkins is reversed.
The rejection of claim 25 under 35 U.S.C. §103(a) as being
unpatentable over Atkins, Wood, Jr. and Garcia is affirmed.
The rejection of claim 1 under 35 U.S.C. §103(a) as being
unpatentable over Atkins, Wood, Jr. and Garcia is reversed.

DECISION
The decision of the Examiner to reject claims 1, 10-14, 23, and 25 is
affirmed-in-part.

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AFFIRMED-IN-PART

MP