Ex Parte Turgeon

Board of Patent Appeals and Interferences

Sep 27, 2010

10680081 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/680,081 10/06/2003 Paul Turgeon 020375-042300US 9924
20350 7590 09/28/2010
TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
09/28/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL TURGEON
____________

Appeal 2009-014623
Application 10/680,081
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-014623
Application 10/680,081

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final decision rejecting claims 1 to 13, 17 to 23, and 26 to 33.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b) (2002).
We AFFIRM.
BACKGROUND
Appellant’s invention is directed to a method and system using
information security to transfer funds to deposit accounts (Spec., para.
[0001]).
Claim 1 is illustrative:
1. A method for depositing funds in a deposit
account, the method comprising:
receiving a request to credit a specified
amount to the deposit account at a node of a
financial-services network that comprises a
plurality of interconnected nodes, wherein the
request includes an indirect identification of the
deposit account, wherein the indirect identification
is selected from the group consisting of a name of
a holder of the deposit account, a name of a
relative of the holder of the deposit account, a date
meaningful to the holder of the deposit account,
and a truncated portion of the holder of the deposit
account's social security number;
determining a direct identification of the
deposit account from the indirect identification and
from a nonpublic mapping of a plurality of
respective indirect identifications to respective
direct identifications of respective deposit
accounts, wherein the direct identification is
selected from the group consisting of a primary
account number for the deposit account, a routing
Appeal 2009-014623
Application 10/680,081

3
number for the deposit account, and a transit
number for the deposit account; and
issuing an instruction to credit the deposit
account with the specified amount in accordance
with the determined direct identification.

Appellant appeals the following rejections:
Claims 1 to 13, 17 to 23 and 26 to 33 under 35 U.S.C. § 103(a) as
being unpatentable over Fisher (US Pub. 2003/0126094 A1, pub. Jul. 3,
2003) in view of Jennings (US Pat. 5,825,003, iss. Oct. 20, 1998).

ISSUE
Did the Examiner err in rejecting the claims because Jennings requires
the actions of a third party and the registration of a user?

FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. (Ans. 4 to 7). In
addition we find:
Jennings discloses (1) the step of the user successfully passing various
screening techniques by, for example, correctly entering a preselected
personal identification number and (2) that the user is prompted for the
account number of the destination account (col. 4, ll. 28 to 43).

ANALYSIS
The Appellant’s argument that Fisher requires a third party and
registration by the user and thus fails to teach or suggest the subject matter
of claim 1 is unconvincing. We agree with the Examiner that the claim does
not recite that a third party can not perform the functions of the claim. The
Appeal 2009-014623
Application 10/680,081

4
claim requires that the request to credit a specified amount to deposit in an
account is received at a node of a financial-services network. Fisher
discloses that the request is received at the Persistent Dynamic Payment
Service (“PDPS”) which may be fully integrated with the Payment Processor
which is a financial institution which is part of a financial-services network
as required by claim 1.
In addition, the claim is set out in “comprising” format. The
transitional phrase “comprising” recited in claim 1 is open-ended and does
not exclude additional, unrecited steps such as registration. See Genentech,
Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’” is
a term of art used in claim language which means that the named elements
are essential, but other elements may be added and still form a construct
within the scope of the claim.) Therefore, we find that claim 1 does not
require that the registration is not done. It is Appellant’s burden to precisely
define the invention. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997).
We also agree with the Examiner that the combined teachings of
Fisher and Jennings suggest issuing an instruction to credit the deposit or
destination account with the specified amount in accordance with the
determined direct identification. Jennings discloses that an electronic
message is transmitted to a second host system from a first host system
authorizing a credit to the destination account. Jennings also discloses that
the destination account is identified by the user by an account number.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the Examiner’s rejection of claims 2 to 13, 17
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Application 10/680,081

5
to 23, and 26 to 33 because the Appellant has not argued the separate
patentability of these claims.
DECISION
We AFFIRM the Examiner’s § 103(a) rejection of claims 1 to 13, 17
to 23, and 26 to 33 as unpatentable over Fisher in view of Jennings.

TIME PERIOD
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) (2007).

AFFIRMED

hh

TOWNSEND AND TOWNSEND AND CREW, LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834