Ex Parte Ogilvie

Board of Patent Appeals and Interferences

Jan 15, 2003

09472658 (B.P.A.I. Jan. 15, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN W. L. OGILVIE
____________
Appeal No. 2001-2627
Application No. 09/472,658
____________
ON BRIEF
____________
Before FLEMING, RUGGIERO, and BLANKENSHIP, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 23, 25 through 28, 31 through 46 and 50 through
65. Claims 24, 29, 30, 47 through 49 and 66 through 70 have been
canceled.
Appeal No. 2001-2627
Application No. 09/472,658
to allow consumers to set aside for their savings account(s) a
specified amount for a specified percentage of a given
transaction, when the transaction would otherwise not involve the
savings account(s). A portion of the funds charged or received
during the transaction will be directed to the consumer's savings
account or another savings vehicle. See page 4 of the
Appellant's specification.
Independent claim 1 is reproduced as follows:
1. A method of facilitating savings by providing between a
consumer and at least one financial institution an infrastructure
for incremental savings by the consumer, the method comprising
the steps of:
entering an agreement with the consumer under which
specified funds will be directed on the consumer's behalf to a
specified savings vehicle at the financial institution in
response to at least one otherwise unrelated consumer-initiated
covered transaction, the financial institution not a party to the
agreement;
noting at least one covered transaction, which is a
transaction in response to which funds will be directed pursuant
to the agreement, the scope of covered transactions pursuant to
the agreement being limited according to at least one of the time
at which a transaction occurs and the transaction amount; and
directing specified funds on the consumer's behalf to the
specified savings vehicle at the financial institution pursuant
Appeal No. 2001-2627
Application No. 09/472,658
REFERENCES
The references relied on by the Examiner are as follows:
Fernandez-Holmann 5,787,404 Jul. 28, 1998
Simpson 6,070,153 May 30, 2000
(filed Nov. 21, 1997)
REJECTIONS AT ISSUE
Claims 34 through 46 and 50 through 55 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject
matter.
Claims 43 and 44 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Applicant
regards as the invention.
Claims 1 through 22, 25 through 28, 31 through 46 and 50
through 55 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fernandez-Holmann.
Claims 23 and 56 through 65 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Fernandez-Holmann and Simpson.
Appeal No. 2001-2627
Application No. 09/472,658
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the briefs and the answer for the1
respective details thereof.
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner's rejection and the arguments of Appellant
and the Examiner, for the reasons stated infra, we reverse the
Examiner's rejection of claims 1 through 21 and 56 through 60 and
we affirm the Examiner's rejection of claims 22, 23, 25 through
28, 31 through 46, 50 through 55 and 61 through 65.
35 U.S.C. § 101 REJECTION
We now turn to the rejection of claims 34 through 46 and 50
through 55 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. At the outset, we note that the
Appellant states on page 6 of the brief that Group I includes
claims 34 through 46 and Group II includes claims 50 through 55.
We note the Appellant has argued claims 34 through 46 as a single
Appeal No. 2001-2627
Application No. 09/472,658
Group. See pages 8 and 9 of the brief and pages 3 through 5 of
the reply brief. We further note that the Appellant has argued
claims 50 through 55 as a single group. See pages 9 through 12
of the brief and pages 5 through 6 of the reply brief.
37 CFR § 1.192 (c)(7) (July 1, 2000) as amended at 62 Fed.
Reg. 53196 (October 10, 1997), which was controlling at the time
of Appellants filing the brief, states:
For each ground of rejection which [A]ppellant contests
and which applies to a group of two or more claims, the
Board shall select a single claim from the group and
shall decide the appeal as to the ground of rejection
on the basis of that claim alone unless a statement is
included that the claims of the group do not stand or
fall together and, in the argument under paragraph
(c)(8) of this section, [A]ppellant explains why the
claims of the group are believed to be separately
patentable. Merely pointing out differences in what
the claims cover is not an argument as to why the
claims are separately patentable.
We will, thereby, consider the Appellant's claims 34-46 as
standing or falling together and we will treat claim 34 as a
representative claim of that group and we will consider the
Appellant's claims 50-55 as standing or falling together and we
will treat claim 50 as a representative claim of that group.
Appeal No. 2001-2627
Application No. 09/472,658
directed to signals in and of themselves. See pages 7, 9 and 32
through 34 of the answer.
Appellant has responded to this rejection stating that claim
34 is not directed to signals in themselves but instead is
directed to covering signals embodied in a computer system.
Appellant argues that the claims are directed to signals embodied
in a distributed computer system in computer memory or in the
network wiring. See page 8 of the brief.
In In re Lowry, 32 F.3d 1579, 1583, 32 USPQ2d 1031, 1034-35
(Fed. Cir. 1994), our reviewing court held that a claim setting
forth a computer readable medium encoded with a data structure
defining structural and functional interrelationship between the
data structure and the media which permits the data structure's
functionality to be realized is statutory. Furthermore, we note
that in Lowry, the court noted that Lowry does not seek to patent
the data model in the abstract, but seeks to patent a data
structure that imposes a physical organization of data that
supports specific data manipulation functions. See, Lowry,
Appeal No. 2001-2627
Application No. 09/472,658
signal embodied in a distributed computing system." We agree
with the Appellant that the claim is directed to the memory as
well as the wiring network of the computer system which provides
structural and functional interrelationship for the data signal
being claimed. Therefore, just as our reviewing court held in
Lowry, we find that the claim is directed to statutory subject
matter. Therefore, we will not sustain the Examiner's rejection
of claims 34 through 46 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
We now turn to claim 50, representing groups of claims 50
through 55. The Examiner has argued that claim 50 is directed to
nothing more than a writing of a contractual agreement and
thereby is not statutory subject matter.
Appellant argues that claim 50 is directed to an embodiment
of an incremental savings agreement. Appellant argues that claim
50 is directed to a practical application of an abstract idea and
should not be denied patent protection merely because the
abstraction is a legal idea rather than a scientific idea or a
Appeal No. 2001-2627
Application No. 09/472,658
The question of whether a claim encompasses statutory
subject matter should not focus on which of the four
categories of subject matter a claim is directed to
. . . but rather on the essential characteristics of the
subject matter, in particular, its practical utility.
The Federal court further states in In re Warmerdam, 33 F.3d
1354, 1359, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994) states that:
As the Supreme Court has made clear, "[a]n idea of
itself is not patentable," Rubber-Tip Pencil Co. v.
Howard, 20 U.S. (1 Wall.) 498, 507 (1874); taking
several abstract ideas and manipulating them together
adds nothing to the basic equation.
Thus, the question for us is whether claim 50 is directed to
subject matter having practical utility or covers nothing more
than an abstract idea.
We note that Appellant's claim 50 recites "[a]n embodiment
of an incremental savings agreement comprising a parties
component and an incremental savings authorization source
component and defining covered transaction . . . ." We agree
with the Appellant that the claim is directed to a legal idea.
However, we fail to find that the claim is directed to subject
matter which has a practical utility but instead is just simply
Appeal No. 2001-2627
Application No. 09/472,658
35 U.S.C. § 112, SECOND PARAGRAPH, REJECTION
Claims 43 and 44 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. The Examiner argues that
claims 43 and 44 respectfully are directed towards loan accounts
and mortgage accounts as savings vehicles. The Examiner argues
that loan and mortgage accounts are not recognized in the
financial community to be savings vehicles. See pages 35 through
37 of the answer.
Appellant argues that the specification provides a special
definition of the term "savings vehicle," which expressly permits
loan and mortgage accounts to be viewed as savings vehicles.
Appellant argues that the present specification definition of
"savings vehicles" must be used, not the Examiner's definition.
See page 12 of Appellant's brief.
Analysis of 35 U.S.C. § 112, second paragraph, should begin
with the determination of whether claims set out and circumscribe
the particular area with a reasonable degree of precision and
particularity; it is here where definiteness of the language must
Appeal No. 2001-2627
Application No. 09/472,658
1235, 169 USPQ 236, 238 (1971). Although an inventor is indeed
free to define the specific terms used to describe his or her
invention, this must be done with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994).
Upon our review of Appellant's specification, we find that
the specification does indeed have a special definition for the
term "savings vehicle." In particular, on page 5 of the
specification, the term "savings vehicle" is defined to include
loans. Therefore, loan and mortgage accounts as claimed, are
within the defined special definition of "savings vehicle."
Because Appellant is allowed to be his own lexicographer, we find
that it is proper to include loan and mortgage accounts as being
"savings vehicles" as claimed. Therefore, we will not sustain
the Examiner's rejection of claims 43 and 44 under 35 U.S.C.
§ 112, second paragraph.
35 U.S.C. § 103 REJECTIONS
Claims 1 through 22, 25 through 28, 31 through 46 and 50
Appeal No. 2001-2627
Application No. 09/472,658
At the outset, Appellant has grouped the rejections into
three groups. The groups are as follows: Group I is claims 1
through 21 and 50 through 60. Group II is claims 22, 23, 25
through 28 and 31 through 33. Group III is claims 34 through 46
and 61 through 65. See page 6 of the brief. Furthermore, we
note that Appellant has argued these claims according to these
groups. See pages 13 through 16 of the brief and pages 7 through
13 of the reply brief.
Turning to group I, Appellant argues that Fernandez-Holmann
fails to teach which transactions are screened according to the
time of occurrence and/or their amount in order to identify
transactions for which funds are directed to a savings vehicle.
See pages 7 and 8 of the reply brief. We note that independent
claim 1 as well as dependent claims 2 through 21, recite "noting
at least one covered transaction, which is a transaction in
response to which funds will be directed pursuant to the
agreement, the scope of covered transactions pursuant to the
agreement being limited according to at least one of the time[s]
Appeal No. 2001-2627
Application No. 09/472,658
least one of the time[s] at which a transaction occurs and the
transaction amount." Emphasis added. Finally, we note that
independent claim 56 and dependent claims 57 through 60 recite "a
determining means for determining that a consumer-initiated
transaction is a covered transaction pursuant to a savings
agreement with the consumer under which specified funds will be
directed on the consumer's behalf to a specified savings vehicle
at a second financial institution, covered transactions pursuant
to the agreement being determined according to at least one of
the time[s] at which a transaction occurs and the transaction
amount." Emphasis added.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
Appeal No. 2001-2627
Application No. 09/472,658
forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
The factual inquiry whether to combine references under
35 U.S.C. § 103 must "be based on objective evidence of record."
In re Lee, 277 F.3d 1338, 13143, 61 USPQ2d 1430, 1433 (Fed. Cir.
2002). This "showing must be clear and particular." In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). "In other words, the Board must explain the reasons one
of ordinary skill in the art would have been motivated to select
the references and combine them to render the claimed invention
obvious." In re Lee, 277 F.3d at 1343, 61 USPQ2d at 1434 quoting
In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). See also Dembiczak, 175 F.3ed at 999, 50 USPQ2d at
1617 quoting In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453,
1459 (Fed. Cir. 1998). "[T]he Board must not only assure that
the requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed
Appeal No. 2001-2627
Application No. 09/472,658
Upon careful review, we fail to find that the Examiner has
provided requisite findings or reasons in Fernandez-Holmann for
these limitations. Thereby, we will not sustain the rejection of
claims 1 through 21 and 50 through 60 under 35 U.S.C. § 103.
Turning to group II, we note that claims 22, 25 through 28
and 31 through 33 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fernandez-Holmann. Because the Appellant has
grouped and argued these claims as one group, we will treat
claims 22, 25 through 28 and 31 through 33 as standing or falling
together and we will treat claim 22 as the representative claim
of that group.
Appellant argues on pages 14 and 15 of the brief that the
Examiner erred in the rejection of claim 22 because the claimed
limitations, "in response to an otherwise unrelated transaction
authoring funds transfer from a checking account" have not been
identified in the prior art. Appellant argues that Fernandez-
Holmann teaches that funds can be directed from a credit card to
a savings vehicle but does not teach funds to be directed from a
Appeal No. 2001-2627
Application No. 09/472,658
argues that it would have been obvious to one of ordinary skill
in the art to modify the Fernandez-Holmann system to use debit
cards instead of credit cards to allow transfers from a checking
account to a savings vehicle to obtain Appellant's invention as
recited in claim 22. See pages 38 through 40 of the Examiner's
answer.
In response to the answer, Appellant does not dispute that
the use of debit cards to cause electronic currency transfers
from checking accounts is well known. See page 8 of the reply
brief. Appellant argues that the asserted facts are not, in and
of themselves, sufficient to render the claim obvious because
evidence of motivation to combine the official notice with
Fernandez-Holmann is lacking. See pages 8 and 9 of the reply
brief.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all the evidence and arguments." In re
Appeal No. 2001-2627
Application No. 09/472,658
conclusion." In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430,
1434 (Fed. Cir. 2002).
The facts of the record are that there is no dispute that
the debit card system was well known in the art at the time of
Appellant's filing of this application. The feature of a debit
card is to allow a checking account to have the convenience of a
credit card. In particular, the debit card appears and functions
the same as a credit card. A debit card is simply a plastic card
which has a magnetic strip that has the account numbers and
related banking information to allow money to be transferred
directly from the debit card holder's checking account to pay for
a purchase. One of the attractive features of debit cards is
that it provides the same convenience as a credit card in that
one does not have to write a check but instead merely has to
swipe a debit card through the reader just as you would a credit
card to quickly and efficiently purchase items. We find that one
of ordinary skill in the art would recognize that to modify
Fernandez-Holmann by substituting a debit card for the credit
Appeal No. 2001-2627
Application No. 09/472,658
through 33 under 35 U.S.C. § 103 as being unpatentable over
Fernandez-Holmann.
In regard to the rejection of claim 23 under 35 U.S.C. § 103
as being unpatentable over Fernandez-Holmann and Simpson, we note
that Appellant has not made an argument to this claim.
37 CFR § 1.192(a) states:
Appellant must, within two months from the date of the
notice of appeal under § 1.191 or within the time
allowed for reply to the action from which the appeal
was taken, if such time is later, file a brief in
triplicate. The brief must be accompanied by the fee
set forth in § 1.17(c) and must set forth the
authorities and arguments on which [A]ppellant will
rely to maintain the appeal. Any arguments or
authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and
Interferences, unless good cause is shown.
Thus, 37 CFR § 1.192 provides that only the arguments made by
Appellant in the brief will be considered and that failure to
make an argument constitutes a waiver on that particular point.
Support for this rule has been demonstrated by our reviewing
court in In re Berger, 279 F.3d 975, 984, 61 USPQ2d 1523, 1528-29
(Fed. Cir. 2002), wherein the Federal Circuit Court stated that
Appeal No. 2001-2627
Application No. 09/472,658
Turning to group III, claims 34 through 46 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Fernandez-
Holmann.
Claims 61 through 65 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Fernandez-Holmann and Simpson.
Claims 34 through 46 have been argued as a single group and
thereby we will treat them as standing or falling together.
Thereby, we will treat claim 34 as the representative claim.
Appellant argues that Fernandez-Holmann fails to teach
direct funding to distinct savings vehicles having different
beneficiaries in response to a single transaction as claimed.
See pages 15 and 16 of the brief.
In response, the Examiner notes that Fernandez-Holmann
teaches an investment account as a destination of funds provided
through the use of the system and further notes that the system
utilizes one or more institutions to receive these investments.
The Examiner points to Fernandez-Holmann, column 4, lines 9
through 11. See pages 40 and 41 of the answer. The Examiner
Appeal No. 2001-2627
Application No. 09/472,658
of the official notice until on appeal. The Examiner argues that
this is not timely to question the official notice and cites MPEP
2144.03.
In response, Appellant argues that even taking the official
notice as fact, there is no evidence of motivation or suggestion
for combining the officially noted facts with the teachings of
Fernandez-Holmann. See page 9 of the reply brief.
Even if the Appellant has not waived the right to object to
the official notice, we fail to find anything in the record that
provides any evidence that the official notice is in error. It
has been well known for many many years prior to the filing date
of Appellant's application to allow direct deposit of one's
paycheck into a variety of accounts. These accounts can be at
different institutions and they could have different
beneficiaries. We find that since the Appellant has not provided
any evidence to refute such official notice, we find that the
Examiner has not erred in taking such.
Furthermore, having found substantial evidence of fact that
Appeal No. 2001-2627
Application No. 09/472,658
money debited from the credit card to be transferred to a first
savings vehicle and second savings vehicle having different
beneficiaries because of the convenience of allowing flexible
investing procedures. In particular, allowing one to use a
second savings vehicle having different beneficiaries would
afford one the safety and flexibility of meeting one's long-term
financial objectives. Therefore, we will sustain the Examiner's
rejection of claims 34 through 46 under 35 U.S.C. § 103 as being
unpatentable over Fernandez-Holmann.
We note that the Appellant has not made an argument as to
the rejection of claims 61 through 65 under 35 U.S.C. § 103 as
being unpatentable over Fernandez-Holmann and Simpson. As
pointed out above, these arguments are thereby waived.
Therefore, we will sustain the rejection of these claims as well.
In conclusion, we have sustained the Examiner's rejection of
claims 22, 23, 25 through 28, 31 through 46, 50 through 55 and 61
through 65. We cannot sustain the rejection of claims 1 through
21 and 56 through 60.
Appeal No. 2001-2627
Application No. 09/472,658
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2001-2627
Application No. 09/472,658
JOHN W. L. OGILVIE
1211 EAST YALE AVENUE
SALT LAKE CITY, UT 84105