Ex Parte Kane

Board of Patent Appeals and Interferences

Feb 24, 2010

11162815 (B.P.A.I. Feb. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARRY J. KANE
____________

Appeal 2009-012994
Application 11/162,815
Technology Center 3600
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Decided: February 24, 2010
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012994
Application 11/162,815

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STATEMENT OF THE CASE
Larry J. Kane (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-4. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention relates to “a method of preventing identity theft.”
Specification: [Para 2].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of preventing identity theft, comprising the steps
of:
assigning document identification information and a
personal control document number to a document;
transmitting the document identification information and
the personal control document number over an electronic
network to a database controlled by a service provider;
presenting the document and the personal document
control number at a point of encashment; and
contacting the service provider to verify that the personal
document control number and the document identification
number presented match the transmitted information in the
service provider database.

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Jul. 8, 2008) and the Examiner’s Answer (“Answer,” mailed Oct. 8,
2008).
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Steger US 5,925,865 Jul. 20, 1999
The following rejection is before us for review:
1. Claims 1-4 are rejected under 35 U.S.C. §102(b) as being anticipated
by Steger.

ISSUES
The issue is whether the Steger describes, expressly or inherently, “a
database controlled by a service provider” and a “service provider database”
as claimed.

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).
The prior art
1. Steger relates to automatic check verification and tracking.
2. The Examiner states that the claim step “transmitting the document
identification information and the personal control document number
over an electronic network to a database controlled by a service
provider” is described at, inter alia, col. 5, ll. 5-55 of Steger. Answer
3.
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3. According to the Examiner, “The merchant sends the information to
financial institution (C5, L44-50). The financial institution then
verifies the validity of the check (C5, L5-55).” Answer 3.
4. Col. 5, ll. 5-55 of Steger describes a customer, presenting a check to a
merchant; the merchant scans the bar code of the check using a
scanner at a terminal. The terminal contacts the proper financial
institution to which the check’s account number and transaction
information is transmitted. Based on the received information, the
financial institution verifies the checking account status and balance
and transmits the account information back to the terminal.
5. Col. 5, ll. 5-55 does not recite “service provider” or mention a
database controlled by the “service provider.”
6. The Examiner also relies on col. 2, ll. 52-59 of Steger.
7. Col. 2, ll. 52-59 discusses communication with a financial institution
and also does not recite “service provider” or a database controlled by
the “service provider.”
8. As to the claim step “contacting the service provider to verify that the
personal document control number and the document identification
number presented match the transmitted information in the service
provider database,” the Examiner relies on Steger, col. 5, ll. 44-45.
Answer 5 (“contacting the financial institution (column 5, lines 44-45)
and financial institution verifying the validity of the check
information”).
9. The Examiner equates the claimed “service provider” to Steger’s
“financial institution”. See top of Answer 5 (“Service Provider :
financial institution”).
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10. The Examiner appears to find that the financial institution’s act of
verification necessarily requires a database. See Answer 4: “Merchant
contacts financial institution/service provider for verification (col. 5,
ll. 44-50), and based on the information provided the financial
institution verifies the account information (col. 5, ll. 52-57) (database
is necessarily in order to perform the verification).”

PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
Anticipation is determined by first construing the claims and then
comparing the properly construed claims to the prior art. In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002).
The Examiner broadly construed the claim phrase “service provider”
to read on Steger’s financial institution. The Appellant disagrees with that
construction. However, we need not resolve whether the record supports the
reasonableness of the construction the Examiner has given the claim term
“service provider” because we find Steger does not describe a database.
Claim 1 requires not just a “service provider” but “a database
controlled by a service provider” and a “service provider database”. Steger
must identically describe such a database, expressly or inherently, for it to
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anticipate the claimed subject matter. No such database is mentioned in
passages cited by the Examiner in support of the rejection. Nor could we
find any mention of one anywhere else in the patent (a “database” is
mentioned at col. 5, l. 62, but that refers to a state driver’s license database
computer).
The Examiner appears to consider the Steger disclosure of a financial
institution verifying the checking account status and balance as necessarily,
that is, inherently, involving a database. FF 10. We do not see it that way.
A financial institution can verify a checking account status and balance
without resorting to a database. While it is possible that a financial
institution might employ a database, “[i]nherency, 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). We recognize that databases are ubiquitous and it is reasonable to
conclude that it would have been obvious for a financial institution to
employ a database. But the fact is that a financial institution does not
necessarily need a database to verify a checking account status and balance.
“If it is necessary to reach beyond the boundaries of a single reference to
provide missing disclosure of the claimed invention, the proper ground is not
§ 102 anticipation, but § 103 obviousness.” Scripps Clinic & Research
Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991).
For the foregoing reasons, we find that Steger does not identically
disclose, expressly or inherently, all the elements of the claimed subject
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matter. Accordingly, a prima facie case of anticipation has not been
established in the first instance.

CONCLUSIONS
We conclude that claims 1-4 should not have been rejected under
35 U.S.C. §102(b) as being anticipated by Steger.

DECISION
The decision of the Examiner to reject claims 1-4 is reversed.

REVERSED

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