Ex Parte Lefner et al

Board of Patent Appeals and Interferences

Mar 4, 2010

10944606 (B.P.A.I. Mar. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENT LEFNER and
SUSAN ZABRAN
___________

Appeal 2009-006221
Application 10/944, 606
Technology Center 3600
____________

Decided: March 4, 2010
____________

Before HUBERT C. LORIN, FRANCISCO C. PRATS, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Kent Lefner et al. (Appellants) seek our review under 35 U.S.C. §
134 (2002) of the final rejection of claims 1-17. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter new grounds of rejection under 37
CFR 41.50(b). 1

THE INVENTION
This invention is “a credit approval monitoring system and method
[that] provides a gateway for businesses to market credit related products to
consumers by using combined information, architecture and technology of
credit monitoring products and decisioning or screening products that
analyze a consumer’s credit file using credit attributes.” Specification 5:9-
14.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A credit approval monitoring method comprising:
continually monitoring a credit report of a consumer;
notifying the consumer when any changes are made to
the consumer’s credit report;
periodically screening the credit report to determine if the

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jun. 6, 2008) and Reply Brief (“Reply Br.,” filed Oct. 14, 2008),
and the Examiner’s Answer (“Answer,” mailed Aug. 19, 2008).

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consumer satisfies select criteria of a credit grantor; and
notifying the consumer if the screening determines that
the consumer satisfies the select criteria.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Chapman
Brody
US 7,028,052 B2
WO 01/45012 A2
Apr. 11, 2006
Jun. 21, 2001

The following rejection is before us for review:
1. Claims 1-17 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Chapman and Brody.

ARGUMENT
The issue disputed by the Appellants and the Examiner is whether
Brody’s “pre-approved offer function” teaches periodically screening a
credit report to determine if the consumer satisfies select criteria of a credit
grantor as recited in claim 1. See Answer 30-33, App. Br. 7-10, and Reply
Br. 4-6. The Appellants and the Examiner do not dispute that Chapman fails
to teach this limitation. See Answer 16, App. Br. 8, and Reply Br. 5. The
Appellants and the Examiner also do not dispute that Brody’s “pre-approved
offer function” teaches screening a credit report to determine if the consumer
satisfies select criteria of a credit grantor. See Answer 16, App. Br. 9 and
Reply Br. 5. The Appellants and the Examiner do dispute whether Brody’s
pre-approved offer function’s screening occurs periodically.
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In the rejection, the Examiner cited portions of Brody related to a pre-
approval function to teach periodically screening the credit report. See
Answer 18. The Examiner asserts that “periodically screening” does not
require the screening to occur at a specific interval but can be given a
broader interpretation. Answer 31. However, the Examiner does not
provide an explanation of how Brody’s pre-approval function meets that
interpretation. See Answer 31.
The Appellants argue that Brody’s pre-approve offer function
performs screenings at the request of the consumer (App. Br. 9) or “on
demand” (Reply Br. 5-6). The Appellants assert that “[s]creening on
demand does not comprise screening at a specific interval.” Reply Br. 6.

ISSUES
The first issue is whether claims 1-11 are obvious under 35 U.S.C.
§103(a) as being unpatentable over Chapman and Brody. Specifically, the
issue is whether Brody’s pre-approved offer function to periodically screen a
credit report to determine if the consumer satisfies select criteria of a credit
grantor as asserted b the Examiner.
The second issue is whether claims 12 and 17 are obvious under 35
U.S.C. §103(a) as being unpatentable over Chapman and Brody.
Specifically, the issue is whether the Appellants have shown that Brody’s
device has a structure that is not capable of periodically screening a credit
report to determine if the consumer satisfies select criteria of a credit
grantor. The rejection of claims 13 and 14 also turn on this issue.
The third issue is whether, in regards to the rejection of claims 15 and
16 under 35 U.S.C. §103(a) as being unpatentable over Chapman and Brody.
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Specifically, the issue is whether the Appellants have shown that the
combination of Chapman and Brody does not teach a monitoring system that
has a structure that is capable of transmitting an email.

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).
Claim construction
1. The Specification does not contain an express definition of
“periodically.”
2. A definition of periodic is “1. Having periods or repeated cycles.
2. Occurring or appearing at regular intervals. 3. Taking place now
and then: INTERMITTENT.” See Webster’s II New Riverside
University Dictionary 874 (1984) (Entry for “periodic”).
The scope and content of the prior art
Brody
3. Brody describes a system and a method that, among other options,
provides consumers with pre-approved credit offers. Brody 3:11-
12.
4. Brody’s pre-approved offer function (Brody 23:25-27) uses a
customer’s credit information to determine which offers a
customer is pre-approved for (Brody 24:6-10 and Fig. 4).
5. Brody states “[t]he options accessible to the consumers through
one or more web pages on the system include obtaining
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anonymous pre-approved credit offers from merchants. . . .”
Brody 20:3-5.
6. Brody also states, “after indicating that the consumer wishes to
receive pre-approved offers, the consumer can be directed to a
webpage having a plurality of selections that the consumer can
selectively choose to define the type or types of pre-approved
offers the consumer which to receive.” Brody 24:15-18.
7. Brody states “[a]fter a consumer’s category (or subset) selections
have been received, credit history data relating to the consumer is
retrieved (see block 120) so that pre-approved offers for that
consumer can be determined.” Brody 25:1-3.
8. Brody describes that all of the pre-approved offers for the
consumers are then listed on one page. Brody 27:6-8.
9. Brody describes informing consumers of changes to their credit
report via accesses to a particular webpage or via E-mail. Brody
31:13-17.
Chapman
10. Chapman describes a system and method for monitoring changes
to a credit report related database and notifying a consumer when
changes are made. Col. 1, ll. 8-12.
11. Chapman describes that communication between a server and a
customer may be made by sending an e-mail. Col. 6, ll. 26-32.
12. Chapman also describes that the notification may include a hyper
text link to a web site. Col. 6, ll. 63-64.

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PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a definition
for claim terms, but otherwise apply a broad interpretation. As
this court has discussed, this methodology produces claims with
only justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571
(Fed. Cir. 1984). Further, as applicants may amend claims to
narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Obviousness
Section 103 forbids issuance of a patent when ‘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.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
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in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-17 under §103(a) as being unpatentable over
Chapman and Brody.
Method Claims 1-11
The Appellants and the Examiner dispute whether Brody’s pre-
approval function performs the step of “periodically screening the credit
report to determine if the consumer satisfies select criteria of a credit
grantor” as recited in independent claim 1 and similarly recited in
independent claim 7. The dispute centers on the meaning of “periodically.”
The Appellants seem to argue that “periodically” requires screening at
a definite interval and give the example of daily. Answer 7-8. The
Examiner construed “periodic” to be broader then “occurring at specific
intervals” and to encompass, among other meanings, “intermittently.”
Answer 31.
Notwithstanding that the Examiner’s construction of “periodic” would
appear to be overly inclusive as to the other meanings (Answer 31, Cf. FF 2),
the cited prior art, nevertheless, does not show “periodic” - whether defined
as requiring regular intervals or intermittently. The Examiner cites page 4,
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lines 13-15 and 23-24; page 9, lines 23 through page 10, line 20; and page
12, lines 18-31 of Brody, to teach this limitation. Answer 16. These
passages relate to Brody’s pre-approval function. Brody’s pre-approval
function is used to determine which credit offers a consumer is pre-approved
for by comparing the consumer’s credit report to the merchant’s criteria. FF
4. Brody teaches that these determinations (i.e. screenings) occur in
response to the consumer’s selection of the pre-approved function and
certain options. See FF 5-8. See also Fig. 4. The Examiner provides no
explanation as to how these cited portions of Brody teach periodic screening,
even given the Examiner’s broader construction. Therefore, we find that a
prima facie case has not been established for the method of claims 1-11.
Accordingly, we reverse the rejection of claims 1 and 7, and claims 2-6 and
8-11, dependent thereon, under 35 U.S.C. §103(a) over Chapman and Brody.

Apparatus Claims 12 and 17
The Appellants argued claims 12 and 17 in a group. App. Br. 7-10.
We select claim 12 as the representative claim for this group, and the
remaining claim 17 stands or falls with claim 12. 37 C.F.R. §
41.37(c)(1)(vii) (2009).
In traversing the rejection of claim 12, the Appellants rely upon the
same reason asserted to traverse the rejection of the method claim 1. App.
Br. 10. The Appellants’ rationale is drawn to whether a step of periodically
screening is taught in Brody. See id. at 7-10. However, unlike claims 1 and
7, claim 12 recites an apparatus. “[A]pparatus claims cover what a device is,
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990). The apparatus includes “a watch
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processing system . . . for periodically requesting the screening processing
system to determine if the credit report of a select consumer satisfies the
select criteria.” Claim 12. The periodic screening is recited as the function
of the watch processing system. See In re Schreiber, 128 F.3d 1473, 1477-
78 (Fed. Cir. 1997) (functional language does not confer patentability if
prior art structure has capability of functioning in the same manner). The
Appellants’ arguments, which are focused on the method of claim 1, do not
address whether the structure of the device in Brody is capable of
functioning as claimed.
Accordingly, we find that the Appellants have not overcome the prima
facie case with respect to apparatus claims 12 and 17. We sustain the
rejection of claim 12, and claim 17, dependent thereon, under 35 U.S.C.
§103(a) over Chapman and Brody.

Apparatus Claim 13
Apparatus claim 13 depends upon claim 12 and recites “wherein the
watch processing system periodically requests screening of credit reports for
the select after the consumer has been denied credit and subscribed to the
monitoring processing system.” The Appellants argue against the rejection
of claim 13, for the same reasons used to argue against the rejection of
method claim 1 (i.e. the Brody’s pre-approval function does not periodically
screen). App. Br. 11-12. For the same reasons as discussed above with
regards to claim 12, we find that the Appellants have not overcome the
prima facie case with respect to apparatus claim 13. Accordingly, we
sustain the rejection of claim 13 under 35 U.S.C. §103(a) over Chapman and
Brody.
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Apparatus Claim 14
Claim 14 recites “wherein the watch processing system transmits
daily screening request to the screening system.” The Appellants argue
apparatus claim 14 together with method claim 3. App. Br. 10. However,
the Appellants argue Brody does not describe the step recited in claim 3
because Brody does not describe the act of daily making screening request.
App. Br. 10. However in claim 14 the daily screening is recited as the
function of the watch processing system. See In re Schreiber, 128 F.3d at
1477-78 (functional language does not confer patentability if prior art
structure has capability of functioning in the same manner). The Appellants’
arguments, which are focused on the method of claim 3, do not address
whether the structure of the device in Brody is capable of functioning as
claimed.
Accordingly, we find that the Appellants have not shown that the
Examiner erred in rejecting claim 14 under 35 U.S.C. §103(a) over
Chapman and Brody. For the same reasons as discussed above with regards
to claim 12, we find that the Appellants have not overcome the prima facie
case with respect to apparatus claim 14. Accordingly, we sustain the
rejection of claim 14 under 35 U.S.C. §103(a) over Chapman and Brody.

Apparatus Claims 15-16
The Appellants argue claims 15 and 16 in a group. App. Br. 11. We
select claim 15 as the representative claim for this group, and the remaining
claim 16 stands or fall with claim 15. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
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Claim 15 requires that the monitoring system is operative to notify the
select consumer if the screening determines that the select consumer satisfies
the select criteria by transmitting an email message. The Appellants argue
that “Brody does not disclose transmitting an email message” but instead
credit offers are displayed during an online session. App. Br. 11.
However, in the Rejection, the Examiner found that Chapman taught
sending notification to a consumer by transmitting an email message and
that the email message could include a hyper link to a web page. Answer 23
and 38. See also FF 10-12. When Chapman and Brody are combined as
suggested by the Examiner (Answer 23 and 38), the result is a device which
is structured to notify the select consumer if the screening determines that
the select consumer satisfies the select criteria by transmitting an email
message. We also note that Brody teaches sending notifications of changes
to a credit report by email. FF 9. The Appellants’ argument does not
address the combination of Chapman and Brody made by the Examiner in
the rejection. App. Br. 11.
We find that the Appellants have not overcome the prima facie case
with respect to apparatus claim 15. Accordingly, we sustain the rejection of
claims 15 and 16 under 35 U.S.C. §103(a) over Chapman and Brody.

NEW GROUNDS
Pursuant to 37 CFR 41.50(b), we enter new grounds of rejection on
claims 1-3, 6-8, and 11 under 35 U.S.C. §101 and claims 12-17 under 35
U.S.C. §112, second paragraph.
First, we reject claims 1-3, 6-8, and 11 under 35 U.S.C. §101 as being
drawn to nonpatentable subject matter. Taking claim 1 as representative,
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claim 1 recites a method of monitoring credit approval including 1)
monitoring a credit report of a consumer, 2) notifying the consumer when
changes to the credit report are made, 3) periodically screening the credit
report to determine if the consumer satisfies criteria or a credit grantor and
4) notifying the consumer if the criteria is satisfied. Claim 1 recites steps
and is thus nominally drawn to a process. However,
the proper inquiry under §101 is not whether the process claim
recites sufficient “physical steps,” but rather whether the claim
meets the machine-or-transformation test. As a result, even a
claim that recites “physical steps” but neither recites a
particular machine or apparatus, nor transforms any article into
a different state or thing, is not drawn to patent-eligible subject
matter. Conversely, a claim that purportedly lacks any
“physical steps” but is still tied to a machine or achieves an
eligible transformation passes muster under §101.
In re Bilski, 545 F.3d 943,961 (Fed. Cir. 2008) (en banc).
Here, the claimed method is not tied to a particular machine nor does
it transform a particular article into a different state or thing. Claim 1 does
not recite a machine or apparatus. The method of claim 1 also does not
recite any steps that transform a particular article into a different state or
thing.
Therefore, we reject claims 1-3, 6-8, and 11 under 35 U.S.C. §101 as
being drawn to nonpatentable subject matter.

CONCLUSIONS OF LAW
We conclude that the Examiner has not established a prima facie case
of obviousness in rejecting method claims 1-11 under 35 U.S.C. §103(a)
under Chapman and Brody and that the Appellants have not over come the
prima facie showing of obviousness in the rejections of claims 12-17. We
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enter a new ground of rejection on claims 1-3, 6-8, and 11 under U.S.C.
§101.

DECISION
The decision of the Examiner to reject claims 1-11 is reversed.
The decision of the Examiner to reject claims 12-17 is affirmed. We enter
new grounds of rejection on claims 1-3, 6-8, and 11.
This decision contains new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

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AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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