Ex Parte Mistretta

Board of Patent Appeals and Interferences

Jun 4, 2010

10967853 (B.P.A.I. Jun. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte MARRETTA MARIE MISTRETTA 8
___________ 9
10
Appeal 2009-010571 11
Application 10/967,853 12
Technology Center 3600 13
___________ 14
15
Decided: June 4, 2010 16
___________ 17
18
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE 1
Marretta Marie Mistretta (Appellant) seeks review under 35 U.S.C. 2
§ 134 (2002) of a final rejection of claim 5, the only claim pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a way of foreign currency exchange transactions 10
for multiple entities in foreign jurisdictions having differing currencies 11
(Specification 1:10-15). 12
An understanding of the invention can be derived from a reading of the 13
sole remaining claim 5, which is reproduced below [bracketed matter and 14
some paragraphing added]. 15
5. A method of conducting exchanges of currencies for first and 16
second entities being in jurisdictions having differing 17
currencies, said method comprising: 18
[1] evaluating the currency exchange requirements for a first 19
entity having a first currency on a first predetermined time 20

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 23, 2008) and Reply Brief (“Reply Br.,” filed December 29,
2008), and the Examiner’s Answer (“Answer,” mailed October 29, 2008).
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frame for selling said first currency and buying a second 1
currency of said second entity; 2
[2] communicating said currency exchange requirements of said 3
first entity to a central currency exchange management entity; 4
[3] evaluating the currency exchange requirements of said 5
second entity on said first predetermined time frame for selling 6
said second currency and buying said first currency; 7
[4] obtaining a quote of a rates of exchange for selling said first 8
currency and buying said second currency; 9
[5] obtaining a quote of a rates of exchange for selling said 10
second currency and buying said first currency; 11
[6] determining a net amount of currency exchange transactions 12
to satisfy the currency exchange requirements of said first entity 13
and said second entity ; and 14
[7] executing said net currency exchange transactions by having 15
said central currency exchange management entity to conduct 16
said net currency exchanges with a fourth entity to limit the 17
exposures of currency transactions for said first and second 18
entities. 19
THE REJECTIONS 20
The Examiner relies upon the following prior art: 21
Boesch US 5,897,621 Apr. 27, 1999
Claim 5 stands rejected under 35 U.S.C. § 101 as directed to non-22
statutory subject matter. 23
Claim 5 stands rejected under 35 U.S.C. § 112, second paragraph, as 24
failing to particularly point out and distinctly claim the invention. 25
Claim 5 stands rejected under 35 U.S.C. § 102(e) as anticipated by 26
Boesch. 27
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ISSUES 1
The issue of whether the Examiner erred in rejecting claim 5 under 35 2
U.S.C. § 101 as directed to non-statutory subject matter turns on whether the 3
method uses a machine or transforms some article. 4
The issue of whether the Examiner erred in rejecting claim 5 under 35 5
U.S.C. § 112, second paragraph, as failing to particularly point out and 6
distinctly claim the invention turns on whether the absence of a third entity 7
in the presence of first, second and fourth entities in the claim rendered the 8
scope of the claim as to a third entity indefinite. 9
The issue of whether the Examiner erred in rejecting claim 5 under 35 10
U.S.C. § 102(e) as anticipated by Boesch turns on whether the claim requires 11
that only the net amount be transacted and if so whether the applied art 12
describes transacting a net amount. 13
FACTS PERTINENT TO THE ISSUES 14
The following enumerated Findings of Fact (FF) are believed to be 15
supported by a preponderance of the evidence. 16
Facts Related to the Prior Art 17
Boesch 18
01. Boesch is directed to transacting sales in different currencies for 19
the buyer and seller. Boesch 1:6-15. 20
02. Boesch uses a currency server to operate as a third party 21
between the merchant and buyer and may use a fourth party such 22
as a bank or currency broker to establish the rates of exchange. 23
Boesch 8:25-54. 24
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03. Boesch describes its server as aggregating transactions prior to 1
committing to actually exchange currency with an external 2
agency, to obtain preferential exchange rates by converting money 3
in relatively large units. Boesch 8:54-58. 4
ANALYSIS 5
Claim 5 rejected under 35 U.S.C. § 101 as directed to non-statutory subject 6
matter. 7
The Examiner found that claim 5 was a method that failed to use a 8
machine or transform an article into a different state. Answer 3. The 9
Appellant argues that international currency exchanges inherently occur on 10
computer networks and that the claim transforms a currency exchange into a 11
net transaction. Reply Br. 2-3. 12
We disagree with the Appellant. 13
The law in the area of patent-eligible subject matter for process claims 14
has recently been clarified by the Federal Circuit, In re Bilski, 545 F.3d 943 15
(Fed. Cir. 2008) (en banc), cert. granted, 77 USLW 3442 (U.S. Jun. 1, 2009) 16
(No. 08-964). 17
The en banc court in Bilski held that “the machine-or-transformation test, 18
properly applied, is the governing test for determining patent eligibility of a 19
process under § 101.” Bilski, 545 F.3d at 956. The court in Bilski further 20
held that “the ‘useful, concrete and tangible result’ inquiry is inadequate [to 21
determine whether a claim is patent-eligible under § 101.]”. Bilski, 545 F.3d 22
at 959-60. 23
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The court explained the machine-or-transformation test as follows: “A 1
claimed process is surely patent-eligible under § 101 if: (1) it is tied to a 2
particular machine or apparatus, or (2) it transforms a particular article into a 3
different state or thing.” Bilski, 545 F.3d at 954 (citations omitted). The 4
court explained that “the use of a specific machine or transformation of an 5
article must impose meaningful limits on the claim’s scope to impart patent-6
eligibility” and “the involvement of the machine or transformation in the 7
claimed process must not merely be insignificant extra-solution activity.” 8
Bilski, 545 F.3d at 961-62 (citations omitted). As to the transformation 9
branch of the inquiry, the court explained that transformation of a particular 10
article into a different state or thing “must be central to the purpose of the 11
claimed process.” Bilski, 545 F.3d at 961-62 (citations omitted). 12
Method claim 5 fails to meet requirements of the machine-or-13
transformation test for patent-eligible subject matter, because the claimed 14
method is neither tied to a particular machine or apparatus, nor does it 15
transform a particular article into a different state or thing. 16
Method claim 5 recites a series of process steps for “conducting 17
exchanges of currencies for first and second entities being in jurisdictions 18
having differing currencies.” The claim does not invoke any particular 19
machine or apparatus in the method steps and thus is not tied to any 20
particular machine or apparatus. The wording of claim 5 is broad in that it 21
refers generally to evaluating, communicating, obtaining, determining, and 22
executing. The Appellant argues that such a series of steps implies a 23
network. Even if this is so, which we do not find, the fact that the claim 24
might inferentially refer to communicating over a network is not sufficient to 25
tie the method to a particular machine or apparatus, such communication 26
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would be merely “insignificant extra-solution activity.” Bilski, 545 F.3d at 1
961-62. The claim does not limit the method to implementation using any 2
particular machine or apparatus. As such, the claims fail the first prong of 3
the machine-or-transformation test. 4
The steps of method claim 5 also fail the second prong of the machine-5
or-transformation test because method does not transform any article to a 6
different state or thing. The method steps entail executing foreign exchange 7
transactions. The claims are similar to the claims that were before the court 8
in Bilski, in that the pending claims call for performing method steps that 9
involve transformations or manipulations of relationships. 10
This type of manipulation of relationships between currencies is the very 11
type of abstraction that the court in Bilski found cannot meet the second 12
prong of the machine-or-transformation test. Bilski, 545 F.3d at 963 13
(“Purported transformations or manipulations simply of public or private 14
legal obligations or relationships, business risks, or other such abstractions 15
cannot meet the test because they are not physical objects or substances, and 16
they are not representative of physical objects or substances.”). 17
The method as claimed does not involve the transformation of any 18
physical object or substance, and given that the claim also is not tied to a 19
particular machine or apparatus, the claim entirely fails the machine-or-20
transformation test and is not drawn to patent-eligible subject matter under 21
35 U.S.C. § 101. 22
23
Claim 5 rejected under 35 U.S.C. § 112, second paragraph, as failing to 24
particularly point out and distinctly claim the invention. 25
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The Examiner found that the absence of a third entity in the presence of 1
first, second and fourth entities in the claim rendered the scope of the claim 2
as to a third entity indefinite. Answer 4. The Appellant argues that the 3
central currency exchange management entity recited in the claim is the third 4
entity. Appeal Br. 3. 5
We agree that there is a third entity in claim 5as described by the 6
Appellant. While it would be more clear to state in the claim that the central 7
currency exchange management entity is a third entity, we find that one of 8
ordinary skill would understand this to be the third entity and the claim 9
would not be indefinite as a result. 10
Claim 5 rejected under 35 U.S.C. § 102(e) as anticipated by Boesch. 11
The Examiner found that Boesch at cols. 2-8 anticipated claim 5. 12
Answer 5. The Appellant argues that “the transaction in Boesch is very 13
different from that set forth in Appellant’s Claim 5. [] An advantage clearly 14
set forth in Appellant's Claim 5 is that only the net amount of currency must 15
be exchanged; there is no netting of any exchange in the Boesch disclosure, 16
because the total bill must be paid by whoever is buying something from a 17
seller, and there are only two parties in the buy/sell relationship. In other 18
words, in Boesch there is no possible offset for available currency as there is 19
in the claimed invention.” Appeal Br. 5-6. 20
We disagree with the Appellant. Boesch uses a currency server to 21
operate as a third party between the merchant and buyer and may use a 22
fourth party such as a bank or currency broker to establish the rates of 23
exchange. FF 02. Thus, Boesch uses the four parties recited in the claim to 24
execute a currency conversion transaction. Boesch describes its server as 25
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aggregating transactions prior to committing to actually exchange currency 1
with an external agency, to obtain preferential exchange rates by converting 2
money in relatively large units. FF 03. Thus Boesch nets the transaction at 3
least for relatively large units of currency. Further limitation [7] only recites 4
that the central currency exchange management entity conducts the net 5
currency exchanges with a fourth entity. It does not specify how the net 6
exchange is arrived at or transacted in detail. It would be sufficient for a 7
series of transactions that resulted in the recited net amount to read on this 8
limitation. 9
CONCLUSIONS OF LAW 10
The Examiner did not err in rejecting claim 5 under 35 U.S.C. § 101 as 11
directed to non-statutory subject matter. 12
The Examiner did err in rejecting claim 5 under 35 U.S.C. § 112, second 13
paragraph, as failing to particularly point out and distinctly claim the 14
invention. 15
The Examiner did not err in rejecting claim 5 under 35 U.S.C. § 102(e) 16
as anticipated by Boesch. 17
DECISION 18
To summarize, our decision is as follows. 19
• The rejection of claim 5 under 35 U.S.C. § 101 as directed to non-20
statutory subject matter is sustained. 21
• The rejection of claim 5 under 35 U.S.C. § 112, second paragraph, as 22
failing to particularly point out and distinctly claim the invention is 23
not sustained. 24
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• The rejection of claim 5 under 35 U.S.C. § 102(e) as anticipated by 1
Boesch is sustained. 2
No time period for taking any subsequent action in connection with this 3
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 4
5
AFFIRMED 6
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JEROME R. DROUILLARD 12
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