Ex Parte Degen et alDownload PDFBoard of Patent Appeals and InterferencesFeb 28, 201210091000 (B.P.A.I. Feb. 28, 2012) Copy Citation 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 4 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 5 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 mls Copy with citationCopy as parenthetical citation