Ex Parte Duro-Emanuel et al

Patent Trial and Appeal Board

Nov 7, 2013

10645060 (P.T.A.B. Nov. 7, 2013)

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.
10/645,060 08/21/2003 Olaseni B. Duro-Emanuel 101612-5026-US 6554
28977 7590 11/08/2013
MORGAN, LEWIS & BOCKIUS LLP (PH)
1701 MARKET STREET
PHILADELPHIA, PA 19103-2921
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
11/08/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte OLASENI B. DURO-EMANUEL, DIANE M. RINNOVATORE,
KENT PEER-NOUS, MICHELLE SUZANNE WERNLI, and
KONSTANTIN BRAUN
____________________

Appeal 2011-011420
Application 10/645,060
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
THOMAS F. SMEGAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-011420
Application 10/645,060

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 35-42, 51-66, and 70-75. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).1

BACKGROUND
Appellants’ invention relates to financial securities, and more
particularly, to an arrangement in which a collection of principal for a first
financial instrument is allocated to a second financial instrument (Spec. 1,
ll. 7-9).
Claim 35, reproduced below, is representative of the subject matter on
appeal:
35 A system comprising:
memory operable to store at least one program; and
at least one processor communicatively coupled to the
memory, in which the at least one program, when executed by
the at least one processor, causes the at least one processor to
perform a method comprising: providing liquidity to a financial
transaction in which a term note and a money market note are
issued by, upon receiving a payment for principal of the term
note, crediting the payment to principal of the money market
note if the principal of the money market note is not fully
credited, and crediting the payment to principal of the term note

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
April 11, 2011) and Reply Brief (“Reply Br.,” filed June 22, 2011) and the
Examiner’s Answer (“Ans.,” mailed April 28, 2011).
Appeal 2011-011420
Application 10/645,060

3
if the principal of the money market note is fully credited,
wherein the term note and the money market note have a same
credit risk rating.

THE REJECTION
The following rejection is before us for review:
Claims 35-42, 51-66, and 70-75 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.

ANALYSIS
We are persuaded that the Examiner erred in rejecting claims 35-42,
51-66, and 70-75, which are all of the pending claims, under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement (App. Br. 7-11 and Reply Br. 2-5).
The Examiner maintains that the rejection is proper because “the
specification does not disclose a system comprising memory operable to
store at least one program and at least one processor coupled to the memory
which when executed by the processor causes the processor to perform the
method of the applicable claims” and “also does not disclose a computer
readable medium having stored thereon computer executable instructions
that configure the computer to perform the method of the applicable claims”
(Ans. 6). However, as the Examiner acknowledges, the subject matter of a
claim need not be described literally (i.e., using the same terms or in haec
verba) in order for the disclosure to satisfy the written description
requirement. Instead, the fundamental factual inquiry is whether the
Specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, Appellants were in possession of the invention,
Appeal 2011-011420
Application 10/645,060

4
as now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991).
Here, we agree with Appellants that although the Specification does
not use the terms “computer,” “memory,” “processor,” “computer readable
storage medium,” or “computer executable instructions,” the description in
the Specification of how the method of providing liquidity is performed, and
the descriptions that the collecting and crediting steps can be performed
electronically (see, e.g., Spec. 4, ll. 15-25) and that the money market note
and the term note may be embodied in an electronic form (see, e.g., Spec. 5,
ll. 12-17), convey with reasonable clarity that Appellants were in possession
of the claimed invention at the time the application was filed.
Therefore, we will not sustain the Examiner’s rejection of
claims 35-42, 51-66, and 70-75 under 35 U.S.C. § 112, first paragraph.
New Ground of Rejection
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
Non-Statutory Subject Matter
Each of independent claims 70-72 recites a “computer readable
storage medium having stored thereon computer executable instructions that,
when executed on a computer, configure the computer to perform a method
comprising” a number of recited steps.
The phrase “computer readable storage medium,” when given its
broadest reasonable interpretation in light of the Specification, includes
transitory signals, which are non-statutory subject matter. See In re Nuijten,
500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter); see also Ex parte Mewherter, 2013 WL
Appeal 2011-011420
Application 10/645,060

5
3291360 at *6-7 (PTAB May 8, 2013) (precedential) (finding a machine
readable storage medium non-statutory under § 101).
Therefore, we will enter a new ground of rejection of claims 70-72
under 35 U.S.C. § 101.

DECISION
The Examiner’s rejection of claims 35-42, 51-66, and 70-75 under
35 U.S.C. § 112, first paragraph, is reversed.
A NEW GROUND OF REJECTION has been entered for
claims 70-72 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

Appeal 2011-011420
Application 10/645,060

6
REVERSED; 37 C.F.R. § 41.50(b)

mls