Ex Parte Rourk

Board of Patent Appeals and Interferences

Apr 27, 2009

10621940 (B.P.A.I. Apr. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER J. ROURK
____________

Appeal 2009-1487
Application 10/621,940
Technology Center 3600
____________

Decided:1 April 27, 2009
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
DAVID B. WALKER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Christopher J. Rourk (Appellant) seeks our review under 35 U.S.C. §
134 of the final rejection of claims 1-4, 6-7, and 10-23. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART but add new grounds of rejection under 35
U.S.C. § 112, second paragraph and 35 U.S.C. § 101. 2

THE INVENTION
The invention is a payment system for a spending account that
performs pre-authorization of expenses before providing reimbursement.
(Specification [005].) The system determines whether a source or item is
authorized for reimbursement without user input and allows for automatic
reimbursement to a program participant. (Specification [007].) The system
includes 1) a qualified vendor system, such as a point of sale system at a
doctor’s office, that generates purchase data and point of sale data, such as a
co-pay amount, a credit card number, and a point of sale device identifier.

2 We note that the Examiner entered a second Examiner’s Answer on Dec. 9,
2008 and that the Appellant filed a second Reply Brief on Dec. 15, 2008.
However, the second Examiner’s Answer was entered after jurisdiction over
the proceedings had passed to the Board and without the Board subsequently
relinquishing jurisdiction. See 37 C.F.R. § 41.35 (a)-(b) (2007) or Manual of
Patent Examining Procedure (MPEP) § 1210 (8th ed., Rev. 7, Jul. 2008).
Therefore, our decision is based upon and will make reference to the
Appellant’s Appeal Brief (“App. Br.,” filed Jul. 3, 2007) and Reply Brief
(“Reply Br.,” filed Jan. 3, 2008), and the Examiner’s Answer (“Answer,”
mailed Dec. 13, 2007).
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(Specification [006].) The system also includes an account management
system that receives the purchase data and point of sale data and generates
authorized purchase data, such as by determining whether payment of co-
pay can be automatically authorized based on pre-qualification of the
doctor’s office as an authorized source. Id.
Claims 1 and 14, reproduced below, are illustrative of the subject
matter on appeal.
1. A payment system for spending accounts
comprising:
a payment processing system receiving
credit card registration data from a user;
a qualified vendor system generating
purchase data and point of sale data;
an account management system receiving
the purchase data and point of sale data and
generating authorized purchase data if the credit
card registration data is associated with the point
of sale data.

14. A payment method for spending accounts
comprising:
receiving source data and purchase data;
determining whether a source is qualified
based on the source data;
determining whether a purchaser is a
program participant based upon credit card
registration data entered by the program
participant; and
generating payment data if the source is
qualified and the purchaser is a program
participant.

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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Praisner US 2002/0174030 A1 Nov. 21, 2002

The following rejection is before us for review:
1. Claims 1-4, 6-7, and 10-23 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Praisner.

ISSUES
The first issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-4, 6-7, 10-13, and 21-23 under 35
U.S.C. § 102(e) as being anticipated by Praisner. The major issue turns on
whether Praisner describes 1) a qualified vendor that generates point of sale
data and 2) an account management system receiving the purchase data and
point of sale data and generating authorized purchase data if the credit card
registration data is associated with the point of sale data and whether claim 1
requires that purchase data must be received with point of sale data after a
purchase is made.
The second issue before us is whether the Appellant has shown that
the Examiner erred in rejecting claims 14-17 under 35 U.S.C. § 102(e) as
being anticipated by Praisner. The major issue turns on whether Praisner
discloses generating source data and determining whether a purchaser is a
program participant based upon credit card registration data entered by the
program participant.
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The third issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 18-20 under 35 U.S.C. § 102(e) as being
anticipated by Praisner. The major issue turns on whether Praisner discloses
generating source data and determining whether a purchaser is a program
participant based upon credit card registration data entered by the program
participant.

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. Claim 1 recites “a qualified vendor system generating purchase
data and point of sales data.”
2. The Specification does not provide a definition for “qualified.”
3. The ordinary and customary meaning of “qualify” is “to declare
competent or adequate: CERTIFY.” (See Merriam-Webster’s
Collegiate Dictionary 955 (10th Ed. 1998.)(Entry for “qualify.”)
4. Claim 14 recites “receiving source data and purchase data.”
5. Claim 14 recites “determining whether a source is qualified based
on the source data.”
6. Claim 14 recites “determining whether a purchaser is a program
participant based upon credit card registration data entered by the
program participant.”
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7. Claim 18 recites “determining whether a purchaser is a program
participant based upon registration data that identifies the program
participant.”
8. Claim 21 recites, “the payment processing system comprises
means for receiving an identification number and determining
whether it is to be registered or used to transmit payment data.”
9. Figure 9 of the Specification is reproduced below.

Figure 9 depicts a flow chart of a method of receiving a number
and using the number to process expense reimbursements.
10. Paragraph [0065]-[0066] of the Specification states:
Method 900 begins at 902, where an
identification number is received. In one
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exemplary embodiment, the identification number
can be a credit card number, a social security
number, a frequent flyer number, a driver's license
number, or other suitable data. The method then
proceeds to 904 where it is determined whether the
number is to be registered. If the number is to be
registered, such as when a user is being prompted
to enter identification numbers for registration in
an expense reimbursement program, the method
proceeds to 906 where the identification numbers
are stored in a suitable log file, filter list, or other
suitable locations. In one exemplary embodiment,
the identification numbers can be used to filter a
list of credit card transaction data, pharmacy
switch transaction data, or other suitable data, such
as by querying the list with each number,
performing a database compare, or in other
suitable manners. The identification data stored at
906 can be stored as needed to support such
processes.
If it is determined at 904 that the
identification number does not need to be
registered, such as where the identification number
has been received to locate transaction data, the
method proceeds to 908 where transaction records
are searched using the identification number. As
discussed, a list search, filter process, database
match, or other suitable processes can be used to
extract transaction records associated with the
identification number from a database, a data
stream, or in other suitable manners. The method
then proceeds to 910.

Praisner
11. Praisner relates to dynamic payment cards and a dynamic payment
card management system for corporate purchasing which allows
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for the dynamic modification of card control settings. (Praisner
[0011].)
12. Figure 1, reproduced below, shows a block diagram of the dynamic
payment card management system environment.

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Figure 1 show vendor 140, payment card processing system 130,
and purchasing management system 100.
13. Praisner describes providing each user with a dynamic payment
card having a unique number, which could be a social security
number. (Praisner [0054].)
14. Praisner describes the user using the purchase management system
100 to set approval parameters in the approval parameters database
132 of the card processing system 130. (Praisner [0060].)
15. The approval parameters can include approved vendors and
approved transaction amounts. (Praisner [0133].)
16. The approval parameters can also include credit limits, velocity,
slots, PoS Ids, maximum transaction amounts and diversion
accounts. (Praisner [0090].)
17. The approval parameters can include SIC (standard industrial
codes) or MMC (merchant category codes). (Praisner [0149].)
18. Paragraph [0134] of Praisner states:
In block 210, the dynamic approval parameters are
provided to the dynamic payment processing
system that will process the transaction, along with
the associated dynamic payment identifier and any
other desired information. These approval
parameters, which represent approval requirements
for a given purchase order, are then dynamically
stored with respect to the dynamic payment
identifier used for the purchase request in block
204. The storing of these dynamic approval
parameter can be implemented, for example,
through a review by the purchasing management
system of the approval parameters that are
associated with the dynamic payment identifier
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and that are currently stored by the processing
system and then through appropriate parameter
management commands, such as add, delete or
modify commands, sent by the purchasing
management system to the processing system to
cause to be stored approval parameters in a state
that will allow the approved transaction to proceed.
In block 212, the user initiates a transaction
utilizing the dynamic payment identifier, which
may be, for example, a dynamic payment card. In
block 214, the transaction details are correlated to
the dynamic approval parameters stored for that
dynamic payment identifier. It is noted that each
dynamic payment identifier may have a plurality
of different sets of approval parameters with one
set being associated with each approved
transaction and related purchase order. Thus, the
correlation that occurs in block 214 would be to
identify which set of approval parameters should
be used for the initiated transaction. For example,
vendor information may first be utilized to limit
the initiated transaction to a reduced number of the
sets of approval requirements. From there,
transaction amount or product/service types may
be utilized to further determine which set of
approval requirements to utilize. Alternatively,
another identifying number or other identifier
could be stored and utilized to directly relate
initiated transactions with approved purchase
orders.
19. Praisner describes a transaction being approved if it falls with in
the approval parameters. (Praisner [0135].)
20. Praisner describes a transaction either being rejected if it falls
outside the approval parameters or being passed on from further
processing. (Praisner [0135].)
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21. Praisner describes that the transaction details are provided back to
the purchase management system from the card processing system.
(Praisner [0136].)
22. Praisner describes a reverse flow where a purchase request and
purchase order are synthesized using the purchasing management
system and data provided by the card processing system to
synthesize a purchase request and/or purchase order for a
transaction if not already done. (Praisner [0127].)
23. Praisner also describes forward flow where a purchase request is
approved prior to a purchase transaction and a purchase order and
approval parameters are generated. (Praisner [0132]-[0133].)
24. Praisner states that the dynamic payment identifier could be a
social security number. (Praisner [0054].)
25. Praisner also describes allowing a vendor to provide an interface
through which a purchase request can be generated for the
purchase management system. (Praisner [0146] and Fig. 3.)

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
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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).
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
Claim 1
The Appellant argues that paragraphs 80 and 114-122, cited by the
Examiner, do not describe any of the claimed limitations. (App. Br. 11.)
Specifically, the Appellant argues 1) that vendor 140 in Praisner is not a
qualified vendor that generates point of sale data, 2) that purchase data must
be received with point of sale data after a purchase is made and 3) that
Praisner does not disclose an account management system receiving the
purchase data and point of sale data and generating authorized purchase data
if the credit card registration data is associated with the point of sale data.
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First, the Appellant argues that vendor 140 in Praisner is not a
qualified vendor and does not generate point of sale data. The Appellant
states, “these vendor systems are not qualified vendor systems, but rather are
any particular vendor system that might be used by a client 104A-104C of
Praisner.” (App. Br. 11.)
The Examiner contends that Praisner describes vendors, which are
qualified. The Examiner states “[t]he vendor is a qualified vendor based on
whether use of the card has been allowed during programming of the control
settings on the card.” (Answer 7.)
Claim 1 recites, “a qualified vendor system generating purchased data
and point of sale data.” The Specification does not provide an express
definition of “qualified.” (FF 2.) We find that the ordinary and customary
meaning of qualified is declared competent or adequate. (FF 3.) We note
that the claim does not recite any limitations as to the time or manner of
qualification, including that the vendors be qualified before purchase.
We find that Praisner describes a qualified vendor system 140 as
claimed. Praisner describes that approval parameters used to authorize or
reject a transaction includes controls on the vendor. (FF 14-15.) We find
that a vendor system is a qualified vendor system if the vendor is allowed by
the approval parameters. Further, we note that vendor system in Praisner
generates transaction details, which include vendor information (i.e., point of
sale data) and purchase data (i.e., transaction amount). (FF 18.)
Second, the Appellant seems to argue that the claim 1 requires the
purchase data to be data related to an already made purchase and that the
claims require the purchase data to be received at the same time as the point
of sale data. The Appellant states “[a]s such, ‘purchase data’ is not received
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with the point of sale data, only an amount for authorization to be charged
against the associated credit card account.” (App. Br. 12.)
We find that claim 1 does not require the purchase data to be data
about an already made purchase. Claim 1 merely requires purchase data and
is silent about the type of purchase data. (FF 1.) Further, we find that claim
1 does not require the purchase data and the vendor data be received at the
same time. Claim 1 merely requires an account management system that
receives both the purchase data and vendor data.
We find that Praisner described sending transaction amount and
vendor information to the purchasing management system (i.e., the account
management system). (FF 18 and 21.)
Finally, the Appellant argues that Praisner fails to disclose an account
management system that receives the purchase data and the point of sale
data and generates authorized purchase data if the credit card registration
data is associated with the point of sale data. (App. Br. 12-13.)
As discussed above, we find that the purchasing management system
of Praisner is the claimed account management system and that it receives
purchase data and point of sale data. Further, we find that the purchasing
management system generates authorized purchase data if the credit card
registration data is associated with the point of sale data. In Praisner, if a
transaction falls within approval parameters, including vendor parameters,
for a given dynamic payment identifier, then the transaction is approved and
the transaction details are sent to the purchasing management system. (FF
20 and 21.) The purchasing management system then generates a purchase
request or order, which includes the data (i.e., authorized purchase data).
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(FF 21.) We find that purchasing management system of Praisner meets the
limitations of claim 1 drawn to an account management system.
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 1. Accordingly, the rejection of claim 1 is affirmed.

Claim 2
The Appellant argues that the vendor system in the Praisner does not
describe an expense tracking system. (App. Br. 13.) The Examiner
contends that Praisner describes an expense tracking system in paragraph
127. (Answer 8.)
We find that Praisner does not expressly or inherently describe the
vendor system comprising an expense tracking system storing the purchase
data as required by claim 2. “Anticipation requires disclosure of each and
every claim limitation in a single prior art reference, either explicitly or
inherently.” In re Omeprazole Patent Litig., 483 F.3d 1364, 1371 (Fed. Cir.
2007). Further, paragraph 12 of Praisner, which was cited by the Examiner,
describes the purchase management system having a purchasing dashboard
which allows financial managers access to information.
Therefore, we find that the Appellant has shown that the Examiner
erred in rejecting claim 2. Accordingly, the rejection of claim 2 is reversed.

Claim 3
The Appellant argues that Praisner does not describe a purchase
submission system receiving request data and transmitting the purchase data
to the payment processing system because the vendor system 140 instead
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generates request data for authorization of an amount to be charged against
the charge. (App. Br. 13.)
We find that Praisner describes the vendor system having an interface
for generating a purchase request (i.e., purchase submission) that receives
request data. (FF 25.) The vendor system also transmits purchase data to
the payment processing system. (FF 21.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 3. Accordingly, the rejection of claim 3 is affirmed.

Claim 4
The Appellant argues that Praisner does not describe the qualified
vendor system including an expense itemization system storing itemized
data of the purchase data as recites in claim 4. (App. Br. 14.) The Examiner
contends that Praisner describes an expense tracking system in paragraphs
80 and 127. (Answer 8.)
We find that Praisner does not inherently or expressly describe the
vendor system comprising an expense tracking system storing the purchase
data as required by claim 2. Further, paragraph 80 of Praisner, which was
cited by the Examiner, describes the purchase management system
communicating with the corporations. Paragraph 127 of Praisner describes
the purchase management system having a purchasing dashboard which
allows financial managers access to information.
Therefore, we find that the Appellant has shown that the Examiner
erred in rejecting claim 4. Accordingly, the rejection of claim 4 is reversed.

Claim 6
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The Appellant argues that Praisner does not describe the vendor
system includes an item reporting system receiving purchase data and
transmitting item data of the purchase data. (App. Br. 14.)
We find that Praisner describes the vendor system having an interface
for generating a purchase request. (FF 25.) The interface would receive
purchase data from the user to create the purchase request. Further, we find
that the vendor system transmits product/service type data (FF 21) to the
purchase processing system.
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 6. Accordingly, the rejection of claim 6 is affirmed.

Claim 7
The Appellant argues that Praisner does not describe the qualified
vendor system having an account management interface system receiving
request data and transmitting the purchase data to the account management
system. (App. Br. 14.)
We find that Praisner describes the vendor system having an interface
for generating a purchase request. The interface receives request data from a
user and transmits the purchase request, which would include purchase data
to the purchase management system. (FF 25.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 7. Accordingly, the rejection of claim 7 is affirmed.

Claim 10
The Appellant argues that Praisner does not describe the account
management system further comprising a participant payment system
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receiving the purchase data and generating payment data since in Praisner
corporate employees are not paid only merchants are paid. (App. Br. 15.)
We note that claim 10 does not require the claimed “participant” to be
a corporate employee as argued by the Appellant. Claim 10 states, “wherein
the account management system further comprises a participant payment
system receiving the purchase data and generating payment data.” Claim 10
does not preclude a merchant, who participates in the system, from being the
claimed participant.
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 10. Accordingly, the rejection of claim 10 is
affirmed.

Claim 11
The Appellant argues that Praisner does not describe an account
management system further comprises a source authorization system
receiving source data and generating authorization data. (App. Br. 15.)
We find that Praisner describes a purchase request and approval
system 116, 118, 120 (FF 22-23 and 25) which meets the limitation of claim
11. A purchase request includes source data. (FF 18 and 22.) If the
purchase request is approved, the system generates a purchase order and
approval parameters (i.e., authorization data). (FF 23.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 11. Accordingly, the rejection of claim 11 is
affirmed.

Claim 12
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The Appellant argues that Praisner does not describe an account
management system with an item authorization system receiving purchase
data and requesting item authorization data. (App. Br. 16.) The Appellant
specifically argues that Praisner does not describe item-level authorization
but only SIC, MCC, or PoS ID authorization. (App. Br. 16.)
We find that Praisner describes a purchase request and approval
system 116, 118, 120 (FF 22-23 and 25) which meet the limitation of claim
12. A purchase request includes item data. (FF 18 and 22.) If the purchase
request is approved, the system generates a purchase order and approval
parameters (i.e., item authorization data). (FF 23.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 12. Accordingly, the rejection of claim 12 is
affirmed.

Claim 13
The Appellant argues that Praisner does not describe an account
management system having a code authorization system receiving purchase
data and code data and generating authorization data. (App. Br. 16.)
We find that Praisner describes a purchase request and approval
system 116, 118, 120 (FF 22-23 and 25) which meet the limitation of claim
13. A purchase request includes code data. (FF 18 and 22.) If the purchase
request is approved, the system generates a purchase order and approval
parameters (i.e., authorization data). (FF 23.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 13. Accordingly, the rejection of claim 13 is
affirmed.
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Claims 21-23
As further explained below, we will enter a new ground of rejection
on claims 21-23 under 35 U.S.C. § 112, second paragraph, because they are
necessarily based on speculative assumption as to the meaning of the claim.
See In re Steele, 305 F.2d 859, 826-63 (CCPA 1962).35 U.S.C. § 112,
second paragraph, on the ground that claims 21-23 are indefinite. Therefore,
the prior art rejection must fall.

Claim 14
The Appellant argues that paragraphs 80 and 114-119 of Praisner,
which were cited by the Examiner, do not describe any of the steps of claim
14. (Answer 17.) Specifically, the Appellant argues 1) that Praisner fails to
disclose generating source data and 2) determining whether a purchaser is a
program participant based upon credit card registration data entered by the
program participant. (App. Br. 17-18.)
First, the Appellant argues that the only source data described by
Praisner is for purchase requests and is not associated with a qualified
vendor. (App. Br. 17.)
We find that claim 14 does not require the source data to be associated
with a qualified vendor. Claim 14 recites “receiving source data and
purchase data” and “determining whether a source is qualified based on the
source data.”
However, we find that Praisner does describe source data as required
by claim 14 and that, contrary to the Appellant’s argument, Praisner does
describe source data that is not used for purchase requests. Although not
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mentioned by the Examiner, we find that Praisner describes source data (i.e.,
vendor information) provided in transaction details when the user make a
purchase. (FF 18.) See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983)
(explaining that patents are "relevant for all they contain"). The vendor
information is correlated with dynamic approval parameters (FF 18) to either
accept or reject the transaction. (FF 19 and 20.) Therefore, we find that the
step of determining whether a source is qualified based on the source data is
met by correlating the vendor information with the dynamic approval
parameters. The source is qualified if the transaction is approved.
Second, the Appellant argues that the step of determining whether a
purchaser is a program participant since Praisner describes account setup
information entered by an administrator and not credit card registration data
entered by the program participant. (App. Br. 17-18.)
We find that Praisner discloses credit card registration data entered by
the program participant. Praisner described storing a dynamic payment
identifier in the dynamic approval parameters. (FF 18.) We find the stored
dynamic payment identifier to be the claimed credit card registration data.
The dynamic payment identifier can be entered by the corporation (i.e., the
program participant) via the purchasing management system. (FF 14.)
The dynamic payment identifier provided at the transaction is
correlated with the stored dynamic payment identifier with the approval
parameters. If the dynamic payment identifier and the vendor information
are found in the approval parameters then the transaction is approved. (FF
18.)
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We find that Praisner described all of the limitations of claim 14.
Therefore, we find that the Appellant has not shown that the Examiner erred
in rejected claim 14. Accordingly, we affirm the rejection of claim 14.

Claim 15
The Appellant argues that Praisner does not describe the source data
being a point of sale device identification data since Praisner does not
described the claimed source data as discussed with regards to claim 14.
(App. Br. 19.) Further, the Appellant seems to argue that claim 14, from
which claim 15 depends, requires the source data and the purchase data to be
received at the same time. (App. Br. 18-19.)
First, we find that claim 14 does not require receiving the purchase
data and the source data at the same time. Claim 14 states “receiving source
data and purchase data” but does not recite limitations as to when the source
data and purchase data are received. Second, as discussed above, we found
Praisner does describe the source data required by claim 14. Further, we
find that the vendor information (i.e., the source data) in Praisner includes
point of sale device identification data as required by claim 15. (FF 18.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejected claim 15. Accordingly, we affirm the rejection of claim 15.

Claim 16
The Appellant again argues that Praisner does not describe receiving
purchase data at the same time as receiving source data as required by claim
14, from which claim 16 depends. (App. Br. 19.)
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As discussed above with regards to claim 15, claim 14 does not
require that the source data and the purchase data be received at the same
time. Further, we note that Praisner describes the purchase data including
purchase amount as recited in claim 15. (FF 18.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 16. Accordingly, the rejection of claim 16 is
affirmed.

Claim 17
The Appellant again argues that Praisner does not describe receiving
purchase data at the same time as receiving source data as required by claim
14, from which claim 17 depends. (App. Br. 19.)
As discussed above with regards to claim 15, claim 14 does not
require that the source data and the purchase data be received at the same
time. Further, we note that Praisner describes the purchase data including
credit card information (i.e., the dynamic payment identifier) as recited in
claim 17. (FF 18.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 17. Accordingly, the rejection of claim 17 is
affirmed.

Claim 18
The Appellant argues that the paragraphs 80 and 114-119 of Praisner,
which were cited by the Examiner, does not describe any of the steps of
claim 18. (App. Br. 19.) The Appellant states, “[a]gain, Praisner fails to
disclose the claimed method, because Praisner discloses a system that
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authorizes purchase request, and does not disclose a method that generates
payment data if the source is qualified and the purchaser is a program
participant.” (App. Br. 19.)
Claim 18 is similar to claim 14 except that claim 18 determines
whether a purchaser is a program participant based upon registration data
that identifies the program participant instead of credit card registration data
entered by the program participant. (FF 7.)
As discussed above with regards to claim 14, we find that Praisner
describes the steps claimed in claim 18. Further, we find the stored dynamic
payment identifier can also be considered the claimed registration data that
identifies the program participant. The dynamic payment identifier provided
at the transaction is correlated with dynamic payment identifier stored with
the approval parameters. If the dynamic payment identifier and the vendor
information are found in the approval parameters then the transaction is
approved. (FF 18.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 18. Accordingly, the rejection of claim 18 is
affirmed.
As discussed above with regards to claim 14, we find that Praisner
describes the steps of receiving source data and purchase data and
determining whether a source is qualified based on the source data.
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 18. Accordingly, the rejection of claim 18 is
affirmed.

Claim 19
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The Appellant argues that Praisner does not disclose the registration
data comprising a social security number since paragraph 54 of Praisner.
The Appellant states “[t]he Examiner cites to a new section of Praisner,
paragraph 54, but that section merely discloses that a social security number
can be transmitted ‘along with the transaction information,’ which is a
purchase request.” (Appeal Br. 20.)
We find that Praisner paragraph 54 describes the dynamic payment
cards having unique numbers (i.e., dynamic payment identifiers) and
describes that a social security number is one type of unique number that
could be used. (FF 24.) We find that the dynamic payment identifier is not
only used for purchase orders but also used for purchasing transactions. (FF
18.)
Therefore, we find that the Appellant has not shown that the Examiner
erred in rejecting claim 19. Accordingly, the rejection of claim 19 is
affirmed.

Claim 20
The Appellant argues that Praisner does not describe a pharmacy
payment switch. (App. Br. 20.) The Appellant states that a pharmacy
payment switch is a device that a pharmacy uses to determine the amount of
co-pay that a user is responsible for and is well known in the art. (App. Br.
20.)
The Examiner cites to paragraphs 57 and 80 of Praisner, which
describe the purchasing management system, and states “may be pharmacy
payment switch, depending on type of business utilizing the purchasing
management system.” (Answer 10.)
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“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). We find
that Praisner does not inherently or expressly describe a pharmacy payment
switch.
Therefore, we find that the Appellant has shown that the Examiner
erred in rejecting claim 20. Accordingly, we reverse the rejection of claim
20.

NEW GROUNDS
Pursuant to 37 C.F.R. § 41.50(b), we enter new grounds of rejection.
Claims 21-23 under 35 U.S.C. § 112, second paragraph
We reject claims 21-23 under 35 U.S.C. § 112, second paragraph as
being indefinite. We take claim 21 as representative.
Claim 21 is written in means-plus-function format and, as admitted by
the Appellant (App. Br. 20-21), invokes 35 U.S.C. § 112, 6th paragraph. The
issue whether the Specification does or does not describe the corresponding
structure so that the scope of the claim can be determined.
It is certainly true that the sufficiency of the
disclosure of algorithmic structure must be judged
in light of what one of ordinary skill in the art
would understand the disclosure to impart. See,
e.g., Intel Corp. v. VIA Techs., 319 F.3d 1357,
1367 (Fed. Cir. 2003) (knowledge of a person of
ordinary skill in the art can be used to make clear
how to implement a disclosed algorithm); Atmel
Corp., 198 F.3d at 1379 (“[T]he ‘one skilled in the
art’ analysis should apply in determining whether
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sufficient structure has been disclosed to support a
means-plus-function limitation.”). That principle,
however, has no application here, because in this
case there was no algorithm at all disclosed in the
specification. The question thus is not whether the
algorithm that was disclosed was described with
sufficient specificity, but whether an algorithm
was disclosed at all.

Aristocrat Techs. Australia Party. Ltd. vs. Int’l Game Tech., 521 F.3d 1328,
1337 (Fed. Cir. 2008).
Claim 21 recites, “the payment processing system comprises means
for receiving an identification number and determining whether it is to be
registered or used to transmit payment data.”
The Appellant states, “[a]s noted, the corresponding structure
disclosed in the specification can be found at 902 and 904 of Figure 9.”
(App. Br. 21.) See App. Br. 83 and Reply Br. 12-13. However, we find that
the Specification does not describe the corresponding structure so that the
scope of the claim can be determined. Figure 9 is a flow chart of a method
of registering identification numbers and using the number to process
expense reimbursement. (Specification [0017].) The flow chart depicts
boxes, two of which are: 902, which states “receive identification number”
and 904, which states “to be registered?” (FF 10.) These boxes provide a

3 We note that in the Summary of the Claimed Subject Matter (App. Br. 8),
the Appellant failed to set forth the structure, material, or acts described in
the Specification as corresponding to each claimed function with reference
to the Specification by page and line number as required by 37 C.F.R.
§ 41.37(c)(1)(v) (2007). The Appellant did make reference to the reference
characters in the drawings but not to the Specification by page and line
number.
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description of the function to be performed but not an algorithm by which it
is performed. Further, we note that the Specification also describes the
function to be performed and the outcome of the function but not an
algorithm by which it is performed. (FF 11.) See Aristocrat, 521 F.3d at
1334-35. Accordingly, we find that the Specification does not describe the
corresponding structure so that the scope of the claim can be determined and
therefore, we reject claims 21-23 under 35 U.S.C. § 112, second paragraph
as indefinite.

Claims 14-20 under 35 U.S.C. § 101
We reject claims 14-20 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. We take claim 14 as representative.
The issue is whether the process as claimed is patent eligible under
35 U.S.C. § 101.
Claim 14 recites a payment method for spending accounts including
1) receiving source data and purchase data, 2) determining whether a source
is qualified; 3) determining whether a purchaser is a program participant
based upon credit card registration data entered by the program participant;
and 4) generating payment data if the source. We note that claim 18 is
similar to claim 14 except that claim 18 recites determining whether a
purchaser is a program participant based upon registration data that
identifies the program participant instead of credit card registration data.
The method claimed 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,"
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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) (footnote omitted.)
Here, the claimed method is not tied to a machine nor does it
transform a particular article into a different state or thing. Claim 14 does
not recite a machine or apparatus. The method of claim 14 also does not
transform a particular article into a different state or thing. Claim 14 does
not transform any other particular article. Claim 1 does recite data but not
computer data per se.
Therefore, we reject claims 14-20 under 35 U.S.C. § 101 as being
drawn to nonpatentable subject matter.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1, 3, 6-7, and 10-19 under 35 U.S.C. § 102(e) as
anticipated by Praisner and that the Appellants have shown that the
Examiner erred in rejecting claims 2, 4, and 20-23 under 35 U.S.C. § 102(e)
as anticipated by Praisner.

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DECISION
The decision of the Examiner to reject claims 1, 3, 6-7 and 10-19 is
affirmed, the decision of the Examiner to reject claims 2, 4, and 20-23 are
reversed, and we enter new grounds of rejection of claims 21-23 under 35
U.S.C. § 112, second paragraph and of claims 14-20 under 35 U.S.C. § 101.
This decision contains new grounds 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 appellant, 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 . . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

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

hh

Mr. Christopher John Rourk
Jackson Walker, LLP
901 Main Street, Suite 6000
DALLAS, TX 75202