Ex Parte Capelli et al

Board of Patent Appeals and Interferences

Apr 29, 2010

09969140 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte NANCY B. CAPELLI, RAJESH CHANDRAN, PRASHANT 8
FULORIA, and SARAT C. SANKARAN 9
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Appeal 2009-001642 12
Application 09/969,140 13
Technology Center 3600 14
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Decided: April 30, 2010 17
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Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH 21
A. FISCHETTI, Administrative Patent Judges. 22
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CRAWFORD, Administrative Patent Judge. 24
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DECISION ON APPEAL27
Appeal 2009-001642
Application 09/969,140

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STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 10, 13 to 15, and 17 to 40. We have jurisdiction under 35 3
U.S.C. § 6(b) (2002). 4
Appellants invented a method and apparatus to allocate spending 5
among recipient departments according to a specified allocation model 6
(Spec. 1, 7). 7
Claim 1 under appeal reads as follows: 8
1. A method providing automatic allocation 9
of a spending limit value among a plurality of 10
recipient departments, the method comprising the 11
computer-implemented steps of: 12
creating and storing a spending plan 13
comprising a plurality of spending limit values, 14
wherein each spending limit value is associated 15
with a department from among a plurality of 16
departments; 17
identifying a first selected department from 18
among the plurality of departments as a source for 19
allocation of a first spending value; 20
identifying one or more recipient 21
departments as recipients of an allocation of the 22
first spending value; and 23
automatically allocating the first spending 24
value among the recipient departments according 25
to a specified allocation model, resulting in 26
creating and storing a plurality of allocated 27
spending limit values, wherein each of the 28
allocated spending limit values is associated with 29
one of the recipient departments. 30
The prior art relied upon by the Examiner in rejecting the claims on 31
appeal is: 32
Foladare US 5,914,472 Jun. 22, 1999 33
Appeal 2009-001642
Application 09/969,140

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Solokl US 6,173,269 B1 Jan. 9, 2001 1
The Examiner rejected claims 1, 2, 5 to 10, 13 to 15, 17 to 22 2
and 24 to 29 under 35 U.S.C. § 101 as being not directed to patentable 3
subject matter. 4
The Examiner rejected claim 1 to 5, 7, 8, 10, 14, 17 to 27, and 30 to 5
40 under 35 U.S.C. § 103(a) as being unpatentable over Solokl in view of 6
Foladare. 7
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ISSUES 9
Did the Examiner err in finding that claim 1 was directed to 10
nonstatutory subject matter? The issue turns on whether the subject matter 11
of claim 1 it is tied to a particular machine or apparatus, or transforms a 12
particular article into a different state or thing. 13
Did the Examiner err in rejecting the claims because Solokl fails to 14
disclose allocation of spending among a plurality of recipient departments 15
according to an allocation model? 16
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FINDINGS OF FACT 18
Solokl discloses a method of executing electronic transactions with 19
teens where the transactions are limited only to those vendors that have been 20
approved by the teen’s parents (Abstr.). The parent may accept a service 21
approval list of appropriate merchants, appropriate merchant categories, or 22
an approved merchant profile to thereby control which items a teen has 23
access to (col. 5, l. 60 to col. 6, l. 2). Parents may also set daily/weekly 24
spending limits or spending limits per session (col. 9, ll. 22 to 25). 25
Appeal 2009-001642
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Foladare discloses a credit card spending authorization control system 1
for controlling the use of someone using an ancillary transaction card (col. 2, 2
ll. 33 to 40). The account holder may be a parent and the user of the 3
ancillary transaction card a child (col. 2, ll. 42 to 44). The parent may set 4
spending limits on the card (col. 2, ll. 58 to 59). 5
Appellant’s Specification states: 6
In certain enterprises, one department is viewed as 7
an internal supplier or source of services or 8
resources to other departments that are consumers 9
or recipients. For example, the Facilities 10
department, which is responsible for maintaining 11
offices, laboratories, equipment, and other 12
facilities used by other departments, provides 13
internal maintenance services and related resources 14
to those other departments. Thus the Facilities 15
department is a source and the other departments 16
are recipients. 17
(Spec. 2, ll. 4 to 10). 18
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PRINCIPLES OF LAW 20
Patent-eligible subject matter 21
A claimed process is patent-eligible under § 101 if: (1) it is tied to a 22
particular machine or apparatus, or (2) it transforms a particular article into a 23
different state or thing. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), 24
cert. granted, 129 S. Ct. 2735 (2009). 25
Appeal 2009-001642
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Obviousness 1
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the 2
Examiner to establish a factual basis to support the legal conclusion of 3
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). 4
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ANALYSIS 6
Statutory Subject Matter 7
The Appellants argue claims 1, 2, 5 to 10, 13 to 15, 17 to 22, and 24 to 8
29 as a single group. (Br. 19 to 20). We select claim 1 as the representative 9
claim, and claims 2, 5 to 10, 13 to 15, 17 to 22, and 24 to 29 stand or fall 10
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009). 11
Appellants argue that the claim is drawn to patent-eligible subject 12
matter because the final result achieved is a useful, tangible, and concrete 13
result. (Br. 20). The Appellants' argument is unavailing because it does not 14
address the failure of the claim to meet the requirements of the machine-or-15
transformation test. See Bilski, 545 F.3d at 959-60 (“the ‘useful, concrete 16
and tangible result’ inquiry is inadequate [to determine whether a claim is 17
patent-eligible under § 101.]”). As such the Appellants have not shown that 18
the Examiner erred in rejecting the claims under 35 U.S.C. § 101. 19
Claim 1 recites a series of steps involved in creating a spending plan 20
which includes a plurality of spending limit values for a plurality of 21
departments. The steps of the method of claim 1 do not transform a 22
particular article into a different state or thing. 23
In addition, the steps of claim 1 are not tied to a particular machine. 24
In this regard, the recitation of “computer implemented” in the preamble of 25
claim 1 is at best a recitation of a general purpose computer and not a 26
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particular machine. Therefore, we will sustain the Examiner’s rejection 1
under 35 U.S.C. § 101. 2
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Obviousness 4
Our affirmance of the rejection under 35 U.S.C. 101 is dispositive of 5
claims 1, 2, 5, 7, 8, 10, 14, and 17 to 27. See Ex parte Gutta, 93 USPQ2d 6
1025, 1036 (BPAI 2009). As such we will address the obviousness rejection 7
as it is directed to claims 3, 4, 23, and 30 to 40 only. 8
We are persuaded of error of the Examiner by Appellants’ argument 9
that the prior art does not teach or suggest disclosing allocation of spending 10
among a plurality of recipient departments. Solokl and Foladare both 11
disclose the spending of a teen or child which is controlled by a spending 12
plan established by a parent. Although the Examiner may be correct that the 13
parents are analogous to source departments and children are analogous to 14
recipient departments such analogy does not form a basis for a rejection 15
under 35 U.S.C. § 103. More importantly, even if we assume that the 16
disclosure of a parent/child spending plan in regard to merchants renders 17
obvious a source department/recipient department spending plan, there is no 18
disclosure in either reference of an allocation of a spending value according 19
to an allocation model among a plurality of merchants as is required by 20
claim 1 from which claims 3, 4, 35 and 36 depend. The only spending plan 21
disclosed in either reference relates to the spending value spent in total or 22
per session or as it relates to the types of items purchased. There is no 23
allocation of a spending value among a plurality of departments according to 24
an allocation model which results in a plurality of allocated spending limit 25
values wherein each spending limit value is associated with one of the 26
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departments as recited in independent claim 1. In addition, there is no 1
disclosure of association of an account with a program value that identifies a 2
project as required by claim 30. As such, we can not sustain the Examiner’s 3
rejection under 35 U.S.C. § 103 as it is directed to claims 3, 4, and 30. 4
Likewise, the prior art does not disclose a spending plan comprising a 5
plurality of accounts each having an associated spending limit value as 6
recited in claim 37 and similarly recited in claim 24. Further, the prior art 7
does not disclose, in fact the Examiner does not even assert that the prior art 8
discloses creating and storing a spending plan comprising a plurality of 9
spending limit values associated with a node of a first hierarchy and 10
generating a consolidated view of the spending limit values for all nodes of a 11
second hierarchy, as recited in claim 37. Therefore, we will not sustain the 12
rejection as it is directed to claims 24 and 37 and claims 31 to 34 and 38 to 13
40 dependent thereon. 14
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CONCLUSION OF LAW 16
On the record before us, the Examiner did not err in rejecting the 17
claims 1, 2, 5 to 10, 13 to 15, 17 to 22, and 24 to 29. The Examiner did err 18
in rejecting claims 3, 4, 23, and 30 to 40. 19
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DECISION 21
The Examiner's rejection of claims 1, 2, 5 to 10, 13 to 15, 17 to 22, 22
and 24 to 29 is sustained. The Examiner’s rejection of claims 3, 4, 23, and 23
30 to 40 is not sustained. 24
Appeal 2009-001642
Application 09/969,140

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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 2
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AFFIRMED-IN-PART 4
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SCHWEGMAN, LUNDBERG & WOESSNER, P.A. 17
P.O. BOX 2938 18
MINNEAPOLIS, MN 55402 19