Ex Parte Phelan et al

Board of Patent Appeals and Interferences

May 9, 2011

10112208 (B.P.A.I. May. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte TIMOTHY PHELAN and 8
CHRISTINE SMYTH-BOYCE 9
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Appeal 2010-004227 12
Application 10/112,208 13
Technology Center 3600 14
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 22, 2009) and the Examiner’s Answer (“Ans.,” mailed
August 3, 2009).
Timothy Phelan and Christine Smyth-Boyce (Appellants) seek review 2
under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-35, the only 3
claims pending in the application on appeal. We have jurisdiction over the 4
appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a way of processing queries which requires 6
access to a plurality of different data sources to satisfy (Specification 1:20-7
22). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. In a system in communication with a database pool having a 12
plurality of data sources therein, each data source containing 13
information of a respective type, a method of processing user 14
queries to the system comprising the steps of: 15
[1] receiving a user query via an electronic network; 16
[2] determining types of data required to satisfy the query; 17
[3] identifying target data sources from the plurality of data 18
sources that contain information of the determined types; 19
[4] retrieving data from the target data sources; 20
[5] combining the retrieved data to generate a response to the 21
query; and 22
[6] returning the response to the user; 23
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[7] wherein the query comprises a request for information on 1
financial transactions of interest to the user. 2
The Examiner relies upon the following prior art: 3
Melchione US 5,966,695 Oct. 12, 1999
Rosen US 6,122,625 Sep. 19, 2000
Claims 1-6, 9-21, and 24-35 stand rejected under 35 U.S.C. § 102(b) as 4
anticipated by Melchione. 5
Claims 7, 8, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Melchione and Rosen. 7
ISSUES 8
The issue of anticipation turns on whether Melchione queries financial 9
transaction data. The issue of obviousness turns on whether it was 10
predictable that some of Melchione’s data be foreign currency exchange 11
data. 12
FACTS PERTINENT TO THE ISSUES 13
The following enumerated Findings of Fact (FF) are believed to be 14
supported by a preponderance of the evidence. 15
Facts Related to the Prior Art 16
Melchione 17
01. Melchione is directed to an electronic sales and service support 18
system that provides improved identification of sales targets and 19
that allows a bank to predict and take advantage of the rare times 20
when inertia is overcome and a customer is open to changing 21
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banks or opening new accounts while at the same time allowing 1
the bank to build or cement a relationship with existing and new 2
customers. Melchione 5:24-34. 3
02. Melchione stores, in one location, information from various 4
businesses and markets within a financial institution. The central 5
database may include information concerning existing customer 6
financial information. Melchione 6:43-47. 7
03. Among the accounts Melchione retrieves data from are 8
financial investment, including brokerage, accounts. Melchione 9
Fig. 3. 10
04. Melchione relies on electronic networks for data retrieval. 11
Melchione Fig. 2. 12
Rosen 13
05. Rosen is directed to an electronic monetary system for 14
implementing electronic money payments as an alternative 15
medium of economic exchange to cash, checks, credit and debit 16
cards, and electronics funds transfer. Rosen utilizes electronic 17
representations of money which are designed to be universally 18
accepted and exchanged as economic value by subscribers of the 19
monetary system. Rosen 1: 9-19. 20
06. Rosen describes having foreign currency exchange transactions 21
among its transactions. Rosen 49:38-50:52. 22
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ANALYSIS 1
Claims 1-6, 9-21, and 24-35 rejected under 35 U.S.C. § 102(b) as 2
anticipated by Melchione. 3
We are unpersuaded by the Appellants’ argument that Melchione fails to 4
describe the claim 1 limitation [7], and similar limitation in claims 9, 24, and 5
29, that the query comprises a request for information on financial 6
transactions of interest to the user. Appeal Br. 17-24. The Appeal Brief 7
actually imports a copy of Melchione Fig. 3 showing that investment and 8
brokerage accounts, to say nothing of bank and credit card accounts, are 9
among those queried by Melchione. FF 02 and 03. 10
Certainly any transaction against any of these accounts is financial in 11
nature. Beyond that, the specific type of data retrieved, absent some 12
functional application of that data within a claim after retrieval, cannot 13
distinguish the claim over the prior art. See In re Lowry, 32 F.3d 1579, 14
1583-84 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). 15
Similarly, we are unpersuaded by the arguments that Melchione fails to 16
describe queries to a financial transaction processing system in claim 24. As 17
the Examiner found at Answer 19, Melchione collects data from across 18
various areas within a financial institution to feed its database. FF 02. Since 19
this data feed is part of Melchione’s system, and the data is collected from 20
the financial transactions processing of the financial institution, Melchione is 21
within the scope of the limitation. 22
To the extent the argument further contends the electronic network as 23
claimed (Appeal Brief 22), the claim does not further narrow the nature or 24
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technology employed to create the network. In any event, Melchione shows 1
such a network in its Fig. 2. FF 04. 2
Claims 7, 8, 22, and 23 rejected under 35 U.S.C. § 103(a) as unpatentable 3
over Melchione and Rosen. 4
We are unpersuaded by the Appellants’ various arguments that the 5
references are incompatible (Appeal Brief 25-30) because the Examiner 6
applied Rosen only to show that it was known that the financial transactions 7
in Melchione could include foreign currency transactions. Answer 16. 8
Including such transactions in Melchione’s data would neither hinder 9
Melchione nor be otherwise incompatible with Melchione. Indeed, anyone 10
who has traveled abroad and made purchases or withdrawn money has seen 11
such currency exchange transactions in their bank data. And as we 12
discussed supra with the data in the independent claims, the nature of the 13
data by itself cannot distinguish over the prior art. 14
CONCLUSIONS OF LAW 15
Rejecting claims 1-6, 9-21, and 24-35 under 35 U.S.C. § 102(b) as 16
anticipated by Melchione is proper. 17
Rejecting claims 7, 8, 22, and 23 under 35 U.S.C. § 103(a) as 18
unpatentable over Melchione and Rosen is proper. 19
DECISION 20
To summarize, our decision is as follows. 21
 The rejection of claims 1-6, 9-21, and 24-35 under 35 U.S.C. § 102(b) 22
as anticipated by Melchione is sustained. 23
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 The rejection of claims 7, 8, 22, and 23 under 35 U.S.C. § 103(a) as 1
unpatentable over Melchione and Rosen 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). See 37 C.F.R. 4
§ 1.136(a)(1)(iv) (2007). 5
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AFFIRMED 7
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