Ex Parte Bayne

Board of Patent Appeals and Interferences

May 29, 2012

11871992 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/871,992 10/13/2007 Anthony Jeremiah Bayne STL.992 7992
64359 7590 05/29/2012
ANTHONY JEREMIAH BAYNE
25315 ANDREO AVENUE
LOMITA, CA 90717
EXAMINER
DASS, HARISH T
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
05/29/2012 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 ANTHONY JEREMIAH BAYNE
____________________

Appeal 2010-008234
Application 11/871,992
Technology Center 3600
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008234
Application 11/871,992

2

STATEMENT OF CASE
Appellant has filed a Request for Rehearing under § 41.52 of our
decision mailed December 12, 2011.
1. Appellant filed an Appeal Brief on February 5, 2010 and a Reply Brief
on May 7, 2010.
2. Our Decision on Appeal (“Decision”) was mailed December 12, 2011.
3. Our Decision affirmed the rejection of claims 1-6 and 8-15 under 35
U.S.C. § 103(a) over Tucker and Dhar.
4. Our Decision affirmed the rejection of claim 7 under 35 U.S.C. § 103(a)
over Tucker, Dhar, and Ramachandran.
5. Our Decision affirmed the rejection of claims 21, 23, 24, and 26 under 35
U.S.C. § 103(a) over Tucker, Dhar, and Elterich.
6. Our Decision affirmed the rejection of claim 25 under 35 U.S.C. § 103(a)
over Tucker, Dhar, Elterich, and Ramachandran.

Appellant presents the following primary arguments in the Request
for Rehearing.
As to claim 1:
1. The proposed modification of Dhar would render Dhar inoperable
for its intended purpose of applying for a loan “from the
convenience of home.”
2. The proposed combination fails to teach or suggest “presenting loan
terms to the customer via the ATM, when the customer indicates an
interest in receiving the cash loan”.
Appeal 2010-008234
Application 11/871,992

3
3. The Examiner failed to consider all the claim limitations, and so the
rejection was improper.
4. The proposed combination fails to teach or suggest “performing an
entire loan process during an ATM withdrawal that automatically
determines whether a customer qualifies to receive a cash loan
while the customer is at the ATM attempting a withdrawal”.
As to claims 4 and 10:
1. The Examiner mislabeled the rejections of claims 4 & 10 and so
the Board used the wrong standard to affirm the Examiner's
rejections.
2. The proposed combination fails to teach or suggest the special
meaning given by the specification to “available cash.”
3. The Examiner failed to consider all the claim limitations, and so the
rejection was improper.
As to claim 21:
1. Elterich acts after a balance has fallen below a threshold amount.
2. New findings were made by the Board as to Tucker.
3. The Examiner rejected claim 21 based on a limitation provided by
the Examiner that is not in the claim.
4. Tucker teaches away from the claimed invention.
5. The Examiner rejected claim 21 based on a limitation provided by
the Examiner that is not in the claim.
As to claim 23:
1. Since the Board found that claim 23 is identical to that recited in
claims 4 and 10, and "the Examiner in rejecting claim 23 relied only
Appeal 2010-008234
Application 11/871,992

4
on Tucker (Ans. 8)" (Decision 26) that claim 23 is non-anticipated
by Tucker, or made obvious by Tucker & Dhar.

ANALYSIS
Claim 1
Appellant presents three sub-arguments in support of the primary
argument that “the proposed modification of Dhar would render Dhar
inoperable ...” (Req. 2).
Appellant first argues error on the part of the Board, because “[s]ince
the Examiner answered ‘Examiner is not sure what function of Dhar is
destroyed ...’ (Answer 15), the Appellant pointed out that the Examiner's
Answer was non-responsive (Reply 17) and the Board did not comment.”
(Req. 2).
We are not persuaded by Appellant’s argument, because we
considered and addressed this issue when we found that Dhar does not teach
away (Dec. 9), in response to the teaching away argument presented by
Appellant. (App. Br. 11). Additionally, the Examiner considered and
responded to the argument with comments that “each element disclosed by
Dhar merely would perform the same function it did separately and the
result of the combination would be predictable ...” (Ans. 15). The argument
that the Board did not explicitly respond to the comment that the Examiner
was non-responsive is extraneous in that the fundamental response to the
teaching away argument was considered and addressed by the Board.
Appellant next argues error by the Board because “the Board
unnecessarily separates Dhar’s stated purpose of applying for a loan ‘from
Appeal 2010-008234
Application 11/871,992

5
the convenience of home’ from it’s means of doing so, in finding a second
purpose.” (Req. 3).
In our Decision, we found that Dhar is not limited to applying for
loans from the convenience of a home (Dec. 9), and applying Dhar’s
teaching to Tucker does not render Dhar inoperable for its intended purpose
(Dec. 9). As we explained, Dhar describes a workflow engine for rendering
instant workflow decisions (Dec. 9), as stated in Dhar’s Abstract and at col.
1 ll. 52-59 (Dec. 5). As we stated, we find Dhar’s intended purpose of a
workflow engine for rendering instant workflow decisions is not rendered
inoperable by combination with Tucker (Dec. 9).
Finally, Appellant argues “Accordingly, since the proposed
modification of Dhar would render Dhar inoperable for at least (one of)
Dhar's intended purpose of applying for a loan ‘from the convenience of
home’, a prima facie case of obviousness was not established ...” (Req. 4).
We disagree, because Dhar’s invention is a workflow engine, with the
purpose of rendering instant workflow decisions (Dec. 5 FF 2), would not be
rendered inoperable by combination with Tucker. Appellant’s argument
speculating about other possible purposes in Dhar is extraneous to the
finding which is based on the four corners of the Dhar disclosure.
Appellant next argues the combination of Tucker and Dhar fails to
disclose the limitation of “presenting loan terms to the customer via the
ATM, when the customer indicates an interest in receiving the cash loan”
with four sub-arguments as follows:
Appellant first argues our decision conveys “an impression, but does
not convey information, as the Board avoids the issue raised by Appellant’s
Appeal 2010-008234
Application 11/871,992

6
argument, namely that the proposed combination fails to teach or suggest
‘presenting loan terms to the customer via the ATM’” (Req. 5).
We disagree, because we affirmed the rejection of claim 1 over the
combination of Dhar and Ramachandran, stating:
We find that one of ordinary skill in the art would recognize
Tucker's automated loan terms process lends itself to
application to the ATM loan process disclosed by Tucker and
Dhar, such that presenting loan terms via the ATM would be an
obvious application of Tucker's loan term presentment to the
use of an ATM to deliver loans.
(Decision 11). We therefore responded to the argument (Appeal Br. 14-15),
and are not in error.
Appellant next argues we did not “explain how the ‘process’ of
automatically determining loan terms is the equivalent to where those terms
are presented (i.e. ‘presenting loan terms via an ATM’), or how the ‘process’
would lead a person of ordinary skill in the art to conclude that ‘loan terms’
should be presented to a customer ‘via an ATM’ ....” (Req. 6-7).
We are not persuaded of error in our Decision. In our Decision we
explained that Tucker discloses loan terms are communicated to a customer
(Dec. 5 FF 6), and since Tucker and Dhar disclose loan services delivered
via automated teller machines, it would be an obvious modification within
the skill of the ordinary artisan to deliver those loan terms via the ATM used
for the loan services (Dec. 11).
Appellant next argues “there is no evidence to support the Board’s
Decision that Tucker, alone or in combination with Dhar, teach or suggest
‘presenting loan terms via an ATM’ ....” (Req. 7).
We are not persuaded by Appellant’s argument. Our Decision was
based on disclosures by Tucker and Dhar (Dec. 11), as well as the finding
Appeal 2010-008234
Application 11/871,992

7
that it is within the skill of the ordinary artisan to use the ATM to present the
terms the Examiner found Tucker presents to customers at para. [0049]
(Dec. 5 FF 6). Therefore, there is evidence to support our decision in the
record.
Appellant finally argues we “fail to address the limitation of ‘when the
customer accepts the terms presented’” (Req. 7-8).
We disagree. Our Decision explained “Tucker discloses disbursing
the loan only after approval (FF 9), which is after the customer accepts the
terms (FF 10) ...” (Dec. 12). Tucker explains “the customer is
communicated the terms of the loan before approval of the loan request”
(Dec. 6 FF 10), which meets the claim language, “providing the cash loan to
the customer via the ATM, when the customer accepts the terms presented.”
Appellant next argues the Examiner failed to consider the claim term
“cash loan” because our Decision says “...both Tucker (FF 5) and Dhar (FF
11) disclosure of “on-line systems, which the one of ordinary skill in the art
would recognize are applied to a ‘cash loan’ ....” (Req. 8).
We are not persuaded by Appellant’s argument, because the Examiner
articulated the rejection with multiple recitations of the term “cash loan”
along with citations to Tucker and Dhar (Ans. 4-5), thus demonstrating that
the claim term was properly considered at all four instances in claim 1.
Additionally, we found that an ATM is a type of on-line system (FF 5, 11)
because ATM’s are interconnected with banking systems via established
networks. Appellant’s argument mischaracterizes our Decision, because we
explained that Tucker and Dhar provides disclosures that meet “the
requirements of each instance of the claim term ‘cash loan.’” (Dec. 12).
Appeal 2010-008234
Application 11/871,992

8
Appellant next presents four arguments to support the assertion that
the Tucker/Dhar combination fails to teach “performing an entire loan
process during an ATM withdrawal that automatically determines whether a
customer qualifies to receive a cash loan while the customer is at the ATM
attempting a withdrawal.” Appellant first argues the preamble limits the
claim, because “the Examiner did not dispute Appellant’s argument” that the
preamble limits the claim and “neither the Examiner nor the Board
heretofore have not shown a combination that is operable to perform and
entire loan at an ATM ....” (Req. 9-10).
We are not persuaded by Appellant’s argument. First, we found that
the term “an entire loan process during an ATM withdrawal” is not given
patentable weight, because it is not “repeated in the body of the claim so as
to breathe life and breath into the phrase.” (Dec. 13). We also found in the
alternative, “[n]otwithstanding, we find Dhar discloses ‘loan services to
customers at the time of deposit or withdrawal of cash’ (FF 4), thus meeting
the claim requirement.” (Dec. 13). That is, Dhar discloses it is well-known
for “ATM machines [to] offer loan services to customers at the time of
deposit or withdrawal of cash.” (Dec. 5 FF 4). We construe the body of the
claim to recite “an entire loan process during an ATM withdrawal,” which
we find obvious based on the Tucker and Dhar combination (Dec. 13).
Appellant next argues “since neither the Examiner nor the Board
found that the prior art, alone or in combination are operable to perform an
entire loan process during an ATM withdrawal, a prima facie case of
obviousness was not established.” (Req. 10).
We disagree with Appellant’s characterization of our Decision. We
found that the Examiner had not made an error in setting forth a prima facie
Appeal 2010-008234
Application 11/871,992

9
case of obviousness of claim 1 over Tucker and Dhar. (Dec. 7-19). The
Examiner explained how each limitation of claim 1 was disclosed or obvious
over Tucker and Dhar (Ans. 4-5). We note that the preamble term “entire”
does not appear in the body of the claim and thus does not constitute a
limitation. See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989) (An element
initially recited in the preamble, is thereafter fully incorporated into the body
of the claim so as to breathe life and breath into it by setting forth the
complete combination). Therefore we find no error because our Decision
rests on Tucker and Dhar disclosing all claim limitations.
Appellant next argues we do “not explain how Dhar's ‘Marketing of
financial services’ example of ‘offering loan services’ via an ATM is
operable to perform ‘an entire loan process during an ATM withdrawal’ as
taught in claim 1, or how the words ‘loan services’ comprise all of claim 1 's
limitations.” (Req. 11).
We are not persuaded by Appellant’s argument, because, as we set
forth above, our Decision confirmed that the Examiner set forth a prima
facie case of obviousness over Tucker and Dhar for all limitations of claim
1. Therefore, the combination discloses an “entire loan process” as
described by the claim.
Appellant next argues Dhar and Tucker are “inoperable to perform an
entire loan process during an ATM withdrawal” because Dhar states that
“customer can click a button, prompting an agent to contact the customer at
a later date.” (Req. 12).
We disagree. Our decision confirmed that Tucker and Dhar disclose
all the claim limitations of claim 1 that therefore represents the entire
Appeal 2010-008234
Application 11/871,992

10
claimed loan process (Dec. 7-19). Dhar’s alternative embodiment of using
the ATM to secure a later contact by an agent does not destroy the prima
facie case of obviousness of claim 1 set forth by the Examiner (Ans. 4-5)
and confirmed as without error in our Decision (Dec. 7-19).
Claims 4 and 10
Appellant first argues the wrong standard was used to reject claims 4
and 10, because we cited a case about identity of claim language which
includes the statement that the “elements must be arranged as required by
the claim ....” (Req. 13). Appellant therefore argues that the claim was
rejected under 35 U.S.C. § 102 instead of 35 U.S.C. § 103(a).
Here Appellant mischaracterizes the analysis before him because
claim 4 depends from claim 1, which was rejected under 35 U.S.C. § 103(a),
and therefore the addition of the Tucker citation that meets the limitation of
claim 4 (Ans. 6, Dec. 19-22) does not change the statutory basis of the
rejection. Appellant mischaracterizes the statement, which was included
primarily to convey the remainder of the sentence: “identity of terminology
is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990).” (Dec. 20).
Interpretation of claim of terminology is required in rejections under both 35
U.S.C. § 102 and 35 U.S.C. § 103(a), but does not require identical word
matching.
Appellant next argues the “Examiner did not dispute the Appellant’s
argument that he misinterpreted the claims[] (Reply, 24) and so concedes
the truth of the argument. The Board fails to address the Examiner’s failure
to answer.” (Req. 15).
Appeal 2010-008234
Application 11/871,992

11
We disagree because we responded to Appellant’s arguments related
to the meaning of the term “available cash” from Appeal Br. 20-22 and
Reply Br. 21 (Dec. 20-21), we have addressed this issue.
Appellant argues error on the part of the Board for a “presumption of
correctness in the examiner’s rejection as a starting position.” (Req. 15).
We are not persuaded by Appellant’s argument, because our Decision
establishes a proper prima facie case has been made as supported by findings
from the record, e.g.,:
[W]e find that Tucker discloses "available cash" consistent with
the broadest reasonable interpretation of the term's definition.
That is, Tucker discloses available cash as "an account that
lacks sufficient funds for" a purchase, but without considering
"the prior availability of short-term loans" (FF 13). Tucker's
available cash therefore, only includes the customer's account
balance and excludes "any credit line" (FF 12,13) because
Tucker discloses that customer's purchase will be denied which
we infer means that Tucker does not disclose that available cash
includes a linked account, overdraft protection, overdraft line of
credit, bounce check protection, or overdraft transfer protection.
(Dec. 20). In this instance, we responded to the argument that the
“combination does not teach or suggest the invention’s special meaning
given to the ‘available cash’ limitation ...” (Appeal Br. 21) with a full
explanation of why there is no error by the Examiner in making his prima
facie case (Dec. 20).
Appellant next argues error because our explanation of how Tucker
meets the claim requirements used words not present in Tucker (Req. 16).
Appeal 2010-008234
Application 11/871,992

12
Specifically, Appellant argues error because the phrase “but without
considering”1 does not appear in Tucker (Req. 16).
We are not persuaded by Appellant’s argument, because the language
we choose to use in our analysis particularly in claim interpretation need not
be confined to exact verbiage of the references which in this case would be
impossible because we were dealing with a negative limitation. Our
Decision found that the Examiner that Tucker meets the claim language, as
we explained in our Decision (Dec. 20).
Appellant next argues error on our part because we said “nothing
about the claims being ‘original,’ or the Examiner’s failure to have
established a prima facie case because the Examiner did not consider the
[exclusive of any overdraft protection] limitation.” (Req. 17).
We are not persuaded by Appellant’s argument, because we agree
with the Examiner that Tucker meets the claim language, as we explained in
our Decision (Dec. 20). Additionally, the Examiner considered the correct
claim language when considering the latest version of claims filed on August
19, 2009 (Ans. 18).
Appellant next argues error on our part for providing “no citation for
‘the negative claim limitation’ or explain[ing] how the missing limitation is
necessarily present in Tucker.” (Req. 18). The limitation alleged to be

1 In our Decision, we agreed with the Examiner that Tucker met the recited
“account balance, exclusive of any overdraft line of credit” limitation (Dec.
20), in response to Appellant’s argument that the Examiner failed to
consider that language (Ans. 20). We explained, “Tucker discloses available
cash as ‘an account that lacks sufficient funds for’ a purchase, but without
considering ‘the prior availability of short-term loans’ (FF 13). Tucker's
available cash therefore, only includes the customer's account balance and
excludes ‘any credit line’ ....” (Dec. 20).
Appeal 2010-008234
Application 11/871,992

13
“missing” from Tucker is this: “overdraft line of credit” (Appeal Br. 22),
from the claim recitation “where the available cash is the customer's account
balance, exclusive of any overdraft line of credit....”
We are not persuaded by Appellant’s argument, because we agree
with the Examiner that Tucker meets the claim language, as we explained in
our Decision (Dec. 20). Additionally, we explained “Tucker's available cash
therefore, only includes the customer's account balance and excludes ‘any
credit line’ ....” (Dec. 20). Since we construed the involved claims as not
requiring e.g., “overdraft line of credit” we are not required to make a
showing of a negative limitation in Tucker to meet claim language which we
construed as not being there.
Appellant also argues that the lack of citation proving Tucker does not
consider “overdraft line of credit,” alternatively stated as a new inherency
finding (Req. 18), is a new grounds of rejection (Req. 19).
We disagree, because our Decision (Dec. 20) matches the Examiner’s
findings (Ans. 6), which cites to paras. [0003]-]0009] of Tucker, and which
includes para. [0008] we specifically cited (Dec. 6 FF 13). It is well
established that there is no new ground of rejection when the basic thrust of
the rejection remains the same such that an appellant has been given a fair
opportunity to react to the rejection. In re Kronig, 539 F.2d 1300, 1302-03
(CCPA 1976).
Appellant argues error because our “finding of ‘overdraft protection’
is vague as to what the Board found. Additionally the Board does not
explain how it relates to claims 4 & 10, as those claims name an ‘overdraft
line of credit’ limitation and an ‘overdraft transfer protection’, but not a
more general ‘overdraft protection’ found by the Board.” (Req. 19).
Appeal 2010-008234
Application 11/871,992

14
We find no error in parroting the language used by Appellants in their
Brief to respond to the asserted argument with the same terminology used in
the argument. That is, we responded to Appellant’s own argument that “the
Examiner failed ‘to address Claim 4’s “overdraft protection” element’
(Appeal Br. 22).” (Dec. 20). Our response was that the Examiner did not
commit error because all claim requirements were properly considered (Dec.
20-21).
Appellant finally argues that our affirmance is a new ground of
rejection. (Req. 19).
We disagree, because our conclusion was that the Examiner did not
commit error because all claim requirements were properly considered (Dec.
20-21). Our Decision (Dec. 20) matches the Examiner’s findings (Ans. 6),
which cites to paras. [0003]-]0009] of Tucker, and which includes para.
[0008] we specifically cited (Dec. 6 FF 13). Therefore, our affirmance is not
a new ground of rejection.

Claim 21
Appellant next argues that we erred by contradicting our use of
Elterich as to the claim recitation of “after a balance has fallen below a
threshold amount” (Req. 21).
We disagree, because we did not contradict our own statement or the
reference. Our Decision states without contradiction: “[w]e find one of
ordinary skill would recognize that Elterich may accomplish the minimum
balance through a transfer that is nearly instantaneously following a drop
below the minimum, but would recognize that this is effectively the same as
Appeal 2010-008234
Application 11/871,992

15
doing the transfer nearly instantaneously before the drop in the balance.”
(Dec. 24).
Appellant next argues “the Board's Decision affirming the rejection of
claim 21 disregards Elterich's language that shows the reference is incapable
of preventing an account balance from falling below a threshold amount.”
(Req. 22).
We disagree. Our reasoning (Dec. 24) shows how “one of ordinary
skill would recognize that Elterich may accomplish the minimum balance
through a transfer that is nearly instantaneously following a drop below the
minimum, but would recognize that this is effectively the same as doing the
transfer nearly instantaneously before the drop in the balance.” (Dec. 24).
Appellant argues error by the Board because our explanation includes
the words “nearly instantaneously” which do not appear in Elterich (Req.
22).
We are not persuaded by Appellant’s argument, because our Decision
(Dec. 24) merely restates our understanding of how Elterich maintains
minimum balances by “determining an amount of funds to be transferred
into or out of the account to maintain the balance at the particular level”
(Elterich para. [0004]) and “prompt[ing] the user to identify accounts (called
the source accounts) from which the user would like the system to transfer
money if an account balance falls below the user-defined minimum.”
(Elterich para. [0035]).
Appellant next argues, as to claim 21, that “since the Board found that
Elterich is inoperable to prevent an account balance from falling below a
threshold amount (i.e. the Board found that Elterich discloses ‘'following a
Appeal 2010-008234
Application 11/871,992

16
drop below the minimum’, etc.) that the Examiner's rejections should be
reversed.” (Req. 23).
We are not persuaded by Appellant’s argument, because we found
“one of ordinary skill would recognize that Elterich may accomplish the
minimum balance through a transfer that is nearly instantaneously following
a drop below the minimum, but would recognize that this is effectively the
same as doing the transfer nearly instantaneously before the drop in the
balance.” (Dec. 24).
Appellant next argues our additional citation to para. [0008] of Tucker
to show a limitation we already found disclosed in Elterich is “an incorrect
factual predicate” and “completely without factual support”, and is a new
ground of rejection (Req. 24).
We are not persuaded by Appellant’s argument, because our
explanation that, in addition to Elterich, Tucker discloses the claim
requirements, would not counteract the affirmance of the rejection over
Elterich, even if the assertion about Tucker were true. Additionally, our
Decision is not a new ground of rejection because we agreed with the
Examiner that para. [0004] and [0035] of Elterich meets the claim language.
(Dec. 24-25, Ans. 7-8). This same response is also appropriate for
Appellant’s next argument about our explanation of a threshold at “zero” is
“without factual support.” (Req. 24-25).
Appellant next argues our statement that “[w]e disagree, because the
Examiner used the ‘transfer of funds between accounts’ language only in
articulating the rationale for the combination with Elterich (FF 17), and not
to replace claim terms” (Dec. 25), is “not supported by a scintilla of
evidence” (Req. 25).
Appeal 2010-008234
Application 11/871,992

17
We disagree, since our statement, which discusses the Examiner’s
rationale to combine (Ans. 8), cites to FF 17 (Dec. 25), which in turn cites to
page 8 of the Examiner’s Answer, and thus is supported by substantial
evidence.
Appellant next argues, “nowhere does the Examiner, in the Reply, or
previous papers, respond to the Appellant's argument that Tucker teaches
away from the claimed invention.” (Req. 26-27).
We disagree. As we stated in the Decision, “the Examiner responded
(Ans. 21-22) to the Appellant's ‘Tucker teaches away’ argument (Appeal Br.
24) by referencing (Ans. 22) earlier responses both in the Appeal Brief and
[in] previous papers, and Appellant has not presented any evidence that the
referenced responses are deficient” (Dec. 25). Specifically, the Examiner
responded extensively to the “teaches away” argument at pages 9-14 of the
Answer.
Appellant next argues, based on an argument that the Examiner
examined a term “transfer of funds” which is not in the claim (Appeal Br.
28), “the Board does not cite where in the Examiner’s Reply the Examiner
partially replied.” (Req. 27).
We disagree, because we responded to this argument on page 26 of
our Decision. The complete response is as follows:
Appellant next argues “since a ‘transfer of funds between
accounts’ has never been a claimed limitation of Claim 21, the
Examiner has improperly rejected claim 21 based on a
limitation provided by the Examiner.” (Appeal Br. 28).
We disagree, because the Examiner used the “transfer of
funds between accounts” language only in articulating the
rationale for the combination with Elterich (FF 17), and not to
replace claim terms.
Appeal 2010-008234
Application 11/871,992

18
(Dec. 26).
Appellant argues from this error by the Examiner for “reject[ing] the
claim based on a limitation provided by the Examiner ...” (Req. 28).
We are not persuaded by Appellant’s argument, because, as set forth
on pages 25-26 of our Decision, we found that the Examiner’s analysis uses
the exact terms found in claim 21 and correctly referred to the disclosure in
Elterich to meet the involved claim term. Therefore, the argument is without
merit.
Claim 23
Appellant argues claim 23 by reference to the arguments of claims 4
and 10 (Req. 28).
We find the argument(s) unpersuasive for the same reasons set forth
above at claims 4 and 10.
Appellant states he “reserves the right to argue against the other
rulings and findings of the Board and has only limited the number of
arguments herein for the purpose of expediting the case” (Req. 29).
Arguments which Appellant could have made but chose not to make
in the Briefs are deemed to be waived. See, 37 C.F.R. § 41.37 (c)(1)(vii).

DECISION
Nothing in Appellant’s Request has convinced us that we have
overlooked or misapprehended the Examiner’s rejections as argued by
Appellants. Accordingly, we deny the request.

Appeal 2010-008234
Application 11/871,992

19
DENIED

MP