Ex Parte Stewart et al

Board of Patent Appeals and Interferences

Aug 1, 2011

10221011 (B.P.A.I. Aug. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WHITNEY HILTON STEWART
and
ROBERT L. HILL
____________

Appeal 2010-010460
Application 10/221,011
Technology Center 3600
____________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI, and MICHAEL W.
KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 2, 4-10, 13-17,
19-21, 23-25, 27, and 28. We have jurisdiction to review the case under 35
U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to the provision of financial account
services over the Internet and, particularly, to a method and apparatus for
opening demand deposit accounts via the Internet (Spec. 1:20-22). Claim 1,
reproduced below, is further illustrative of the claimed subject matter.
1. A method of remotely opening a demand deposit
account with a first financial institution using a system having
an interface and a processor executing software, the method
comprising the acts of:
electronically receiving through the interface a request
for a demand deposit account from a device of a remote
customer;
electronically receiving through the interface application
data for the demand deposit account from the device of the
remote customer;
processing the application data with the processor to
assess the risk to the first financial institution of establishing the
demand deposit account for the customer;
electronically communicating through the interface with
device of the remote customer whether the request for the
demand deposit account is approved;
if the demand deposit account is approved, electronically
receiving through the interface account data from the device of
the remote customer, the account data related to a financial
account established at a second financial institution different
than the first financial institution;
processing the account data with the processor
implementing a filter to determine one of if the financial
account at the second financial institution is closed and if the
financial account at the second financial institution has an
insufficient fund warning; and

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electronically transmitting through the interface initiating
a transfer of funds from the financial account at the second
financial institution to the first financial institution to establish
the demand deposit account at the first financial institution if
the account data is successfully processed through the filter.

The Examiner relies upon the following references:

Schrader US 5,903,881 May 11, 1999
Downing US 5,963,647 Oct. 5, 1999
Walker US 6,088,686 Jul. 11, 2000
Oyama US 2002/0007343 A1 Jan. 17, 2002
Cardinal US 6,757,664 B1 Jun. 29, 2004
Schurko US 6,760,414 B1 Jul. 6, 2004

Deena Amato-McCoy, Internet Services Expanded At
BankBoston, Bank Sys. Tech., 35 (Aug. 1998) (hereinafter
“McCoy”).

NetStock Direct Corporation Introduces ShareBuilder, A New
Method of Online Investing; Enables a Lifetime of Investing for
$2 per Transaction, BusinessWire (Oct. 20, 1999)
(http://www.dialogweb.com/cgi/dwclient?dwcommand=
DWEBPRINT%2020-7844657) (last visited Aug. 19, 2008)
(hereinafter “BusinessWire”).

Claims 1-3, 5, 6, 8, 15-17, and 19-20 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Oyama in view of Walker, Cardinal, and
BusinessWire; claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Oyama in view of Walker, Cardinal, BusinessWire, and
McCoy; claims 7 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Oyama in view of Walker, Cardinal, BusinessWire, and
Downing; claims 9, 10, 14, and 23-25 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Oyama in view of Walker, Cardinal,
BusinessWire, and Schrader; claims 13 and 28 stand rejected under 35
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U.S.C. § 103(a) as unpatentable over Oyama in view of Walker, Cardinal,
BusinessWire, Schrader, and Downing; and claim 27 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Oyama in view of Walker, Cardinal,
BusinessWire, Schrader, and Schurko .
We AFFIRM.

ISSUES
Did the Examiner err in asserting that a combination of Oyama,
Walker, Cardinal, BusinessWire, and Schrader renders obvious the subject
matter of independent claims 1, 9, 15, and 23, because the Examiner failed
to provide proper rationales for combining these references?
Did the Examiner err in asserting that a combination of Oyama,
Walker, Cardinal, BusinessWire, and McCoy renders obvious the subject
matter of independent claim 1, because “the other cited references already
appear to offer online banking solutions such as opening new accounts,” and
thus the rationale for incorporating McCoy is unnecessary?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 30-37
of the Examiner’s Answer.

ANALYSIS
Independent Claims 1, 9, 15, and 23
We are not persuaded the Examiner erred in asserting that a
combination of Oyama, Walker, Cardinal, and BusinessWire renders
obvious the subject matter of independent claim 1, as asserted by Appellants,
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because the Examiner failed to provide proper rationales for combining
these references (App. Br. 15-22, 24-25). Appellants assert that Oyama
teaches away from being combined with Walker and Cardinal, because
paragraph [0033] of Oyama “teaches away from adding new levels of
complexities through additional risk assessment and background checking”
(App. Br. 15-17).
However, teaching away requires discouragement, and paragraph
[0033] of Oyama merely discloses that “there will be no need to repeat a like
procedure each time a new application is issued from the same customer.”
See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] reference may be
said to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant”). Just because there is no need for additional
procedures, does not mean additional procedures are discouraged. If
anything, the reduction in the number of procedures supports the position
that changing the number of procedures would have been obvious.
Appellants assert that the Examiner does not provide any rationale for
combining the method for verifying the availability of funds in a checking
account, as disclosed in Cardinal, with the disclosures of Oyama and Walker
(App. Br. 20). However, the Examiner does provide a rationale: “mitigating
the risk of loss as taught by Cardinal” (Exam’r’s Ans. 7-8).
Appellants assert that neither Cardinal nor BusinessWire “discusses
funding a demand deposit account with funds from a second financial
institution nor conditioning the transfer of funds on a successful outcome of
a filter that evaluates account data of the second financial institution” (App.
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Br. 21-22). For the first part, Appellants assert that “[t]here is no indication
in BusinessWire that the designated bank account is associated with a
different financial institution than the financial institution associated with
ShareBuilder.” However, ShareBuilder is an account with Netstock Direct
Corporation, which is a different financial institution than the designated
bank account.
For the second part, independent claim 1 is a method claim with an “if
conditional” limitation concerning “if the account data is successfully
processed through the filter.” As under the broadest scenario, the steps
dependent on the “if” conditional would not be invoked, the Examiner was
not required to find these limitations in the prior art in order to render the
claims obvious. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (“[d]uring examination [of a patent application, a pending
claim is] given [the] broadest reasonable [construction] consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art”)
(internal citation and quotations omitted).
We apply the aforementioned rationales to Appellants’ corresponding
arguments concerning the rejections of independent claims 9, 15, and 23.

Dependent Claim 4
We are not persuaded the Examiner erred in asserting that a
combination of Oyama, Walker, Cardinal, BusinessWire, and McCoy
renders obvious the subject matter of independent claim 1, because “the
other cited references already appear to offer online banking solutions such
as opening new accounts,” and thus the rationale for incorporating McCoy is
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unnecessary (App. Br. 22-23). If anything, the fact that all of the references
are in the same field of online banking solution only reinforces Examiner’s
assertions that one of ordinary skill would have mixed and matched their
disclosures to arrive at the claimed invention. Moreover, the cited portions
of the other references do not disclose several features of McCoy (e.g., 24
hour access), which only further supports the rationale for combining the
references as suggested to add those additional features to the other
references.

Dependent Claims 2, 5-8, 10, 13, 14, 16, 17, 19-21, 24-25, 27, and 28
Appellants assert that the additional rationales and references cited by
the Examiner for rejecting dependent claims 2, 5-8, 10, 13, 14, 16, 17, 19-
21, 24-25, 27, and 28 do not remedy the deficiencies of corresponding
independent claims 1, 9, 15, and 23, from which they depend (App. Br. 22,
23, 26-27).
However, as we are not persuaded that there are deficiencies in the
Examiner’s rejections of independent claims 1, 9, 15, and 23, we sustain the
rejections of dependent claims 2, 5-8, 10, 13, 14, 16, 17, 19-21, 24-25, 27,
and 28 as well.

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DECISION
The decision of the Examiner to reject claims 1, 2, 4-10, 13-17, 19-21,
23-25, 27, and 28 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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