Ex Parte Hill et al

Board of Patent Appeals and Interferences

Jul 26, 2011

11837002 - (D) (B.P.A.I. Jul. 26, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/837,002 08/10/2007 Dennis J. Hill P00307-US-UTIL(M01.058/U) 4170
28062 7590 07/26/2011
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
07/26/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENNIS J. HILL,
SANDEEP MALHOTRA,
SARA E. FIEBIGER,
DANA LORBERG,
PATRICK KILLIAN,
ANDREW D. CAMPBELL,
ROBERT K. WALLS, and
DAVID CHAN
____________

Appeal 2010-002768
Application 11/837,002
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002768
Application 11/837,002

STATEMENT OF THE CASE
Dennis J. Hill, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 8-11 and 16-20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention relates to “remittance systems.” Specification 1:6.
Claim 17, reproduced below, is illustrative of the subject matter on
appeal.
17. A method comprising:
initiating a request for a funds transfer by using a first mobile
telephone;
forwarding the request from a first mobile telephone operating
company to a first financial institution;
forwarding the request from the first financial institution to a
payment processing network;
routing the funds transfer via the payment processing network
to a second financial institution;
crediting the funds transfer to a recipient payment card account
at the second financial institution; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jun. 26, 2009) and Reply Brief (“Reply Br.,” filed Oct. 29, 2009),
and the Examiner’s Answer (“Answer,” mailed Aug. 31, 2009).
Appeal 2010-002768
Application 11/837,002

3
using a second mobile telephone operating company to send a
message to a second mobile telephone, the second mobile telephone
owned by a holder of the recipient payment card account, the message
indicating that the funds transfer has occurred.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Judd
Hultgren

US 2003/0233317 A1
US 6,868,391 B1

Dec. 18, 2003
Mar. 15, 2005

The following rejection is before us for review:
1. Claims 8-11 and 16-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hultgren and Judd.

ISSUES
Does Judd disclose “using a second mobile telephone operating
company to send a message to a second mobile telephone, the second mobile
telephone owned by a holder of the recipient payment card account, the
message indicating that the funds transfer has occurred” (claim 17) as the
Examiner has asserted?
Does Hultgren disclose a system whereby "a user of [a] sender mobile
telephone identifies [a] recipient to [a] first mobile telephone operating
company by entering a mobile telephone number of the recipient" (claim 9)?

Appeal 2010-002768
Application 11/837,002

4
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Appellants argued claims 8, 10, 11 and 16-20 as a group (App.
Br. 8). We select claim 17 as the representative claim for this group, and the
remaining claims 8, 10, 11, 16, and 18-20 stand or fall with claim 17. 37
C.F.R. § 41.37(c)(1)(vii) (2007). Claim 9 is separately argued. Br. 10.
The Appellants challenge the rejection of claim 17 on the grounds that
Judd does not disclose “notifying the recipient of the occurrence of a funds
transfer, nor of doing so via the recipient’s mobile telephone” (App. Br. 8).
The argument appears to be directed to the last step in claim 17: “using a
second mobile telephone operating company to send a message to a second
mobile telephone, the second mobile telephone owned by a holder of the
recipient payment card account, the message indicating that the funds
transfer has occurred.”
In establishing the prima facie case of obviousness of the subject
matter of claim 17, the Examiner found that Hultgren discloses all the claim
limitations but for the use of a second telephone system as claimed, for
which Judd was relied upon. Answer 4. According to the Examiner,
Judd, in a similar environment, teaches a funds transfer system,
comprising: a second mobile telephone operating company (Judd:
Abstract; Figures 1, 3-4, 9; Page 1, Paragraph 0007-Page 2, Paragraph
0026; Page 4, Paragraph 0038); the second financial institution
transmits, to the recipient, a notice indicative of receipt of said funds
transfer (Judd: Page 4, Paragraphs 0038-0040; Page 5, Paragraph
Appeal 2010-002768
Application 11/837,002

5
0046-Page 6, Paragraph 0055); a system, wherein said notice is
transmitted via the second mobile telephone operating company and
the mobile telephone owned by the recipient (Judd: Figure 1; Page 1,
Paragraph 0007-Page 2, Paragraph 0026; Page 4, Paragraphs 0038-
0040; Page 5, Paragraph 0046-Page 6, Paragraph 0055).
Answer 4-5.
The Appellants disagreed with the Examiner’s characterization of the
scope and content of Judd, arguing that they could find in these passages no
disclosure of “notifying the recipient of the occurrence of a funds transfer,
nor of doing so via the recipient's mobile telephone” (App. Br. 8).
The Examiner responded by presenting a table listing each limitation
in claim 8 (which is a system claim but parallels process claim 17) and
corresponding locations in the cited prior art said to disclose the limitation.
Answer 8-10. The specified locations are essentially the same as those that
were indicated as being relied upon in the Final Rejection. According to the
Examiner, the notifying limitation is disclosed in Judd at Abstract; Figs. 1, 3,
4, and 9 (and associated text); p. 1 [0007]-p. 2 [0026]; p. 4 [0038-0040]; p. 5
[0046]-p. 6 [0055]. Answer 10. According to the Examiner, the transmitting
of the notice via the recipient’s mobile phone is disclosed in Judd at Fig. 1
(and associated text); p. 1 [0007]-p. 2 [0026]; p. 4 [0038-0040]; and, p. 5
[0046]-p. 6 [0055]. Answer 10.
The Appellants replied by repeating that they find the Examiner’s
characterization of what Judd discloses in these passages to be incorrect.
We have reviewed the passages in Judd the Examiner cited as
disclosing notifying a recipient of the occurrence of a funds transfer and
doing so via the recipient’s mobile telephone.
Appeal 2010-002768
Application 11/837,002

6
Judd expressly teaches notifying a customer that a transfer has
occurred. See Judd, pp. 5-6 [0047] (“The receipt is generated ... when the
transfer is approved and executed. The availability of this receipt permits
the customer to provide proof of the transaction ... .”). See also Judd p. 6
[0053] (“A receipt of the transfer is then generated for the customer ... .”)
Judd also discloses the use by customers of cell phones when
communicating funds transfer information to the funds transfer system. See
Judd, Fig. 1, element 140. See also Judd at [0027] which describes the
ability of a customer to use a cell phone when communicating transfer
information to the system.
What Judd does not appear to disclose, explicitly, is the use of a cell
phone to receive the notification that a transfer has occurred. Judd discloses
the use of a cell phone to communicate transfer information and notifying a
customer that a transfer has occurred but the Judd passages relied upon do
not explicitly teach a customer employing a mobile phone to receive the
notification of the funds transfer.
But the rejection is under §103 and “[a]s our precedents make clear,
however, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In
that regard, the teachings in Judd of a customer using a cell phone to
communicate transfer information to the funds transfer system and of
sending a notification by the funds transfer system to a customer when a
transfer has occurred would lead one of ordinary skill in the art to use the
Appeal 2010-002768
Application 11/837,002

7
cell phone as the means for not only sending transfer information but also
receiving notification when the funds transfer has occurred.
Accordingly, we are not persuaded as to error in the rejection on the
grounds that Judd would not lead one of ordinary skill in the art to “notify[ ]
the recipient of the occurrence of a funds transfer, [or] do[ ] so via the
recipient's mobile telephone” as the Appellants have argued (App. Br. 8).
The rejection of claim 1, and claims 8, 10, 11, 16, and 18-20 which
stand or fall with claim 17, is sustained.

Claim 9 further limits the system of claim such that "a user of the
sender mobile telephone identifies the recipient to the first mobile telephone
operating company by entering a mobile telephone number of the recipient".
The Examiner found this to be disclosed in Hultgren (Abstract; Figs. 1-2;
col. 1, l. 55 – col. 5, l. 4; and claims 1, 13, 15, and 16). Answer 5. The
Appellants disagree, arguing that “nowhere does Hultgren teach or suggest
that the merchant identifier is or could be a mobile telephone number.” App.
Br. 10.
We have reviewed the passages in Hultgren relied upon as disclosing
the subject matter of claim 9. We are in agreement with the Examiner.
Claim 16 of Judd, for example, describes acquiring a merchant ID
from a customer mobile station (col.3, l. 47: “e.g., a mobile telephone”).
Presumably the merchant ID was acquired after being entered into the
customer’s mobile station. “In evaluating such references it is proper to take
into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
Appeal 2010-002768
Application 11/837,002

8
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
The difference between a merchant ID and a telephone number is a
difference in the type of information being input. Patentable weight need not
be given 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). In that regard, the Appellants have not come forward
with evidence sufficient to show that the structure of the claimed system is
functionally affected by “entering a mobile telephone number of the
recipient” as opposed to entering any other type of information such as the
merchant ID as disclosed in Judd. Absent such evidence, it is reasonable to
conclude that the claim limitation of entering “a mobile telephone number of
the recipient” is descriptive and not functionally related to any structure of
the claimed system and as such falls under the category of patentably
inconsequential subject matter. See Ex parte Curry, 84 USPQ2d 1272, 1275
(BPAI 2005) (informative).
Common situations involving nonfunctional descriptive
material are: - a computer-readable storage medium that differs from
the prior art solely with respect to nonfunctional descriptive material,
such as music or a literary work, encoded on the medium, - a
computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the machine
functions (i.e., the descriptive material does not reconfigure the
computer), or - a process that differs from the prior art only with
respect to nonfunctional descriptive material that cannot alter how the
process steps are to be performed to achieve the utility of the
invention.
Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to
Appeal 2010-002768
Application 11/837,002

9
be well within the level of ordinary skill in the art at the time the
invention was made. The difference between the prior art and the
claimed invention is simply a rearrangement of nonfunctional
descriptive material.
See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative). Nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious. In re Ngai, 367 F.3d
at 1339. 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).
Accordingly we are not persuaded as to error in the rejection of claim
9 on the grounds that Hultgren fails to teach or suggest that the merchant
identifier is or could be a mobile telephone number as the Appellants have
argued.
The rejection of claim 9 is sustained.

DECISION
The decision of the Examiner to reject claims 8-11 and 16-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

MP