Ex Parte Degen et al

Board of Patent Appeals and Interferences

Feb 28, 2012

10091000 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT DEGEN, DUANE RITTER, BRIAN PRENDERGAST,
and DAVID WITTMAN
____________

Appeal 2010-006093
Application 10/091,000
Technology Center 3600
____________

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

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1 to 4, 6 to 14, 16 to 19 and 21 to 27. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-006093
Application 10/091,000

2
Claim 1 is illustrative:
1. A method for evaluating electronic value transfers, the
method comprising:
receiving a plurality of money transfer requests at a host
computer system, wherein the money transfer requests include a
first sender identification associated with a first money transfer
request and at least a second sender identification associated
with a second money transfer request;
electronically storing records of the money transfer
requests in memory at the host computer system;
performing an analysis of the records at the host
computer system wherein the analysis indicates the first sender
identification and the second sender identification are related;
creating a reference designator at the host computer
system, wherein the reference designator is associated with the
first sender identification and the second sender identification,
and wherein the reference designator is stored apart from the
records of the money transfer requests; and
searching the records of the money transfer requests
according to a specified criteria to determine if any of the
money transfer requests associated with the reference
designator are suspicious money transfer requests;
flagging any suspicious money transfer requests at the
host computer system;
wherein the first sender identification is selected from a
group consisting of a sender name, a sender number, an agent
number, a sending data, a sending location, a sender phone
number, a sending time, a sending message, and a sending
amount; and
wherein the suspicious money transfer requests are
selected from a group consisting of;
(a) a transfer from a first sender to a second sender
followed within a specified period by a transfer from the second
sender to the first sender;
(b) a group of transfers from a sender to a group of
receivers, wherein the aggregate amount of the group of
transfers exceeds a specified level;
Appeal 2010-006093
Application 10/091,000

3
(c) one or more transfers from a sender to a receiver,
wherein the aggregate amount of the one or more transfers
exceeds a specified level;
(d) a group of transfers from a group of senders to a
receiver, wherein the aggregate amount of the group of transfers
exceeds a specified level;
(e) two transfers from a first sender to a second sender
that are followed within a specified period by corresponding
transfers from the second sender to a receiver;
(f) two or more transfers from a sender to a receiver,
wherein the two or more transfers are initiated from two or
more distinct locations within a region; and
(g) two or more transfers from a sender to a receiver,
wherein the two or more transfers are received at two or more
distinct locations within a region.

Appellants appeal the following rejection:
1. Claims 1-4, 6-14, 16-19 and 21-27 under 35 U.S.C. §103(a) as
unpatentable over Stewart (US 2003/0135457 A1, pub. Jul. 17, 2003).

ISSUE
Did the Examiner err in rejecting claim 1 because Stewart does not
disclose that suspicious money transfer requests are selected from a group
consisting of the transfers recited in claim 1?
Did the Examiner err in rejecting claim 16 because Stewart does not
disclose accessing a money transfer record which includes a receiver
identifier?

ANALYSIS
The wherein clause of claim 1 establishes a criteria for transfer
requests that are flagged as suspicious transfers. The Appellants argue that
Appeal 2010-006093
Application 10/091,000

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Stewart does not disclose this criteria for flagging suspicious money transfer
requests. The Examiner recognizes that this subject matter is not disclosed
in Stewart but states that the criteria recited in claim 1 could be easily
substituted for the ones named in Stewart and that it would be a predictable
result for one of ordinary skill in the art to adapt Stewart and thus obtain the
instant application. It is true that one of the questions to ask in determining
patentability is whether the improvement is more than the predictable use of
prior art elements according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 401 (2007). In the instant case, however, the
Examiner has failed to establish that the recited criteria for flagging a money
transfer as a suspicious transfer request recited in claim 1 were known in the
prior art at the time of the invention. In fact, the Examiner does not even
assert that the criteria for flagging money transfer requests recited in claim 1
were known at the time of the invention. Therefore, the Examiner has failed
to establish a prima facie case of obviousness. As such, we will not sustain
the rejection of the Examiner as it is directed to claim 1 and claims 2 to 4,
and 6 to 14 dependent thereon. We will also not sustain the rejection as it is
directed to claim 17 to 19, and 21 to 27 because each of these claims
includes the same subject matter.
We will also not sustain the rejection as it is directed to claim 16
because we agree with the Appellants that Stewart does not disclose the step
of accessing a money transfer record that includes a receiver identification.
The Examiner relies on paragraph 0052 for teaching this subject matter.
This paragraph of Stewart discloses that in order to fund the account the web
site presents the customer with a virtual check to complete in which the
customer adds data including the amount with which to fund the account.
Appeal 2010-006093
Application 10/091,000

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This paragraph discloses nothing about a money transfer record. The
Examiner also directs our attention to paragraph 0040. This paragraph
discloses an historical database that includes records of each funding
transaction performed by the institution. This paragraph discloses nothing
about a money transfer record with a receiver identification.. Indeed, we
find that since Stewart is directed to providing online financial account
services over the internet [0002] and relates to funding of transactions
through one institution, no receiver identification would be necessary.

DECISION
We reverse the decision of the Examiner.

ORDER
REVERSED

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