Ex Parte Grear et al

Board of Patent Appeals and Interferences

Mar 1, 2012

10972152 (B.P.A.I. Mar. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte MICHAEL B. GREAR, GRETCHEN DONLIN, 8
and RICHARD T. BELL 9
___________ 10
11
Appeal 2010-007625 12
Application 10/972,152 13
Technology Center 3600 14
___________ 15
16
17
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and KALYAN K. 18
DESHPANDE, Administrative Patent Judges. 19
DESHPANDE, Administrative Patent Judge. 20
DECISION ON APPEAL 21
22
Appeal 2010-007625
Application 10/972,152

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STATEMENT OF THE CASE1 1
Michael B. Grear, Gretchen Donlin, and Richard T. Bell (Appellants) 2
seek review under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-2 3
and 4-25, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a system for processing data for service 6
industries. Specification 1:19-20. 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A method of storing data for an account by a service provider, said 11
method comprising: 12
[1] providing an account database for use in storing information for 13
a plurality of accounts; 14
[2] generating a first account internal identifier; 15
[3] assigning in said account database as an entry for a first account 16
said first account internal identifier and account data describing said 17
first account; 18
[4] wherein said account data describing said first account 19
comprises an account client identifier. 20
21
The Examiner relies upon the following prior art: 22
Royer et al. US 6,685,088 B1 Feb. 3, 2004
Fei et al. US 2003/0018549 Al Jan. 23, 2003
Gallagher et al. US 7,031,939 Bl Apr. 18, 2006

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 14, 2009) and the Examiner’s Answer (“Ans.,” mailed
December 22, 2009), and Final Rejection (“Final Rej.,” mailed August 8,
2008).
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Brown et al. US 2004/0158522 Al Aug. 12, 2004
1
REJECTIONS 2
Claims 1-2 and 4-25 stand rejected under 35 U.S.C. § 101 as being 3
directed towards non-statutory subject matter. 4
Claims 1-2, 8, 14-19, and 25 stand rejected under 35 U.S.C. § 102(e) 5
as being anticipated by Royer. 6
Claims 4-7 and 9-11 stand rejected under 35 U.S.C. § 103(a) as 7
unpatentable over Royer and Fei. 8
Claims 12-13 and 20-22 stand rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Royer and Gallagher. 10
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as 11
unpatentable over Royer and Brown. 12
13
ISSUES 14
The issue of whether the Examiner erred in rejecting claims 1-2 and 4-15
25 under 35 U.S.C §101 as being directed towards non-statutory subject 16
matter turns on whether independent claims 1 and 17 are tied to a particular 17
machine and are not directed towards an abstract idea. 18
The issue of whether the Examiner erred in rejecting claims 1-2, 8, 19
14-19, and 25 under 35 U.S.C §102(e) as being anticipated by Royer turns 20
on whether Royer describes limitations [2] and [3] of claim 1 and “assigning 21
an account to account relationship type code” and “associating as an entry 22
said first account internal identifier, said second account identifier, and said 23
account to account relationship type code so as to indicate the relationship 24
between said first account and said second account,” as recited by claim 17. 25
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The issue of whether the Examiner erred in rejecting claims 4-7 and 9-1
11 under 35 U.S.C. § 103(a) as unpatentable over Royer and Fei turns on 2
whether the Appellants’ arguments in support of claims 1 and 17 are found 3
to be persuasive. 4
The issue of whether the Examiner erred in rejecting claims 12-13 and 5
20-22 under 35 U.S.C. § 103(a) as unpatentable over Royer and Gallagher 6
turns on whether the Appellants’ arguments in support of claims 1 and 17 7
are found to be persuasive. 8
The issue of whether the Examiner erred in rejecting claims 23 and 24 9
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Royer and 10
Brown turns on whether the Appellants’ arguments in support of claims 1 11
and 17 are found to be persuasive. 12
13
FACTS PERTINENT TO THE ISSUES 14
The following enumerated Findings of Fact (FF) are believed to be 15
supported by a preponderance of the evidence. 16
Facts Related to the Prior Art 17
Royer 18
01. Royer is directed to a system and method which allows one card, 19
a selecta-card, number to be used for several transaction accounts. 20
Royer 1:7-9. Enrollment for a selecta-card includes the creation 21
of associations to one or more transaction accounts. Royer 6:62-22
66. Upon issuance of a selecta-card, the user is provided with a 23
card or a selecta-card number. Royer 7:21-31. The user 24
subsequently submits information regarding a transaction account, 25
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including the name, account number, and other identifying 1
information. Royer 8:21-26. Associated accounts can be internal 2
to the selecta-card provider, such as a charge card account or a 3
credit card account, or maintained by an external financial 4
institution, such as a debit card account and a stored value 5
account. Royer 4:55-62 and Fig. 1. The information is validated 6
and entered into a lookup table, such as a relational database. 7
Royer 8:27-37. 8
Fei 9
02. Fei is directed to techniques for rapidly updating credit scores or 10
other credit information. Fei ¶ 0003. 11
Gallagher 12
03. Gallagher is directed to systems and methods for effecting 13
person-to-person online financial transactions. Gallagher 1:8-9. 14
Brown 15
04. Brown is directed to enabling a customer payor to make a 16
payment to a payee in a networked environment using a credit 17
card, revolving credit, or other credit account. Brown Abstract. 18
19
ANALYSIS 20
Claims 1-2 and 4-25 rejected under 35 U.S.C. § 101 as being directed 21
towards non-statutory subject matter 22
The Examiner found that independent claims 1 and 17 recite a process 23
that is that is directed towards non-statutory subject matter, as evidenced by 24
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claims 1 and 17 failing to satisfy the machine-or-transformation test. 1
Specifically, the Examiner found that claim 1 fails to recite any process 2
elements or steps that are tied to a particular machine. Ans. 17. The 3
Examiner additionally found that although claim 17 recites storing a data in 4
a computer storage device, such a recitation of a machine is nothing more 5
than a post-solution activity. Ans. 17. 6
The Appellants contend that claims 1 and 17 recite an “accounts 7
database” and Fig. 1b illustrates that the “accounts database” is coupled to a 8
computer. App. Br. 15. The Appellants further contend that claim 17 9
requires a computer because claim 17 requires storing data in “a computer 10
storage device.” App. Br. 15. 11
We agree with the Examiner. Although, Fig. 1b illustrates that the 12
recited database is coupled to a computer, the scope of the claims is not 13
limited to such an interpretation. Since the scope of the claims encompass a 14
database that is independent of a computer, claims 1-2 and 4-25 are not tied 15
to a particular machine. 16
We also agree with the Examiner that the step of claim 17 that require 17
storing an entry in a computer storage device is nothing more than a post-18
solution activity. The processing steps of claim 17 can be performed 19
mentally. The step of storing data that is already processed is nothing more 20
than a post-solution activity. As such, we do not find that the recitation of a 21
“computer storage device” directs claim 17 towards statutory subject matter. 22
As our reviewing court recently held, 23
even if some physical steps are required to obtain information 24
from the database (e.g., entering a query via a keyboard, 25
clicking a mouse), such data-gathering steps cannot alone 26
confer patentability 27
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CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. 1
Cir. Aug. 16, 2011). Simply assigning an identifier in some database in 2
some undefined manner alone cannot confer patentability. More recently, 3
claims were held to be non-statutory where 4
the claims here recite only that the method is “computer aided” 5
without specifying any level of involvement or detail. The fact 6
that certain algorithms are disclosed in the specification does 7
not change the outcome. In considering patent eligibility under 8
§ 101, one must focus on the claims. This is because a claim 9
may “preempt” only that which the claims encompass, not what 10
is disclosed but left unclaimed. 11
Dealertrack v Huber --- F.3d ----, 2012 WL 164439 (Fed Cir 2012). 12
Claims 1-2, 8, 14-19, and 25 rejected under 35 U.S.C. § 102(e) as 13
being anticipated by Royer 14
The Appellants first contend that Royer fails to describe “assigning in 15
said account database an entry for a first account said first account internal 16
identifier and account data describing said first account,” as recited by claim 17
1. App. Br. 7-9. We disagree with the Appellants. Royer describes a 18
system that allows for a single card, a selecta-card, to include information 19
for several transaction accounts. FF 01. A cardholder’s transaction accounts 20
are associated to the selecta-card with separate AI numbers. FF 01. These 21
AI numbers are account internal identifiers. The cardholder also enters 22
information regarding each transaction account. FF 01. This information is 23
account data. As such, we agree with the Examiner’s findings that Royer 24
describes assigning a first account a first account internal identifier and 25
account data describing the first account. 26
The Appellants further contend that Royer fails to describe 27
“generating a first account internal identifier,” as also recited by claims 1 28
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and 17. App. Br. 7-9. The Appellants specifically argue that Royer 1
describes an account identification (AI) number that is supplied by a 2
cardholder to reference an account and the number can include a biometric 3
and therefore the number is not generated. App. Br. 7. We disagree with the 4
Appellants. The Examiner found that claim 1 does not require that the 5
database generates a first account identifier. Ans. 15. We agree with this 6
conclusion. Claim 1 only requires that the first account internal identifier is 7
generated, but does not limit the scope as to who or how it is generated. As 8
such, the input and association of transaction accounts describes the required 9
“generating” step of claim 1. 10
The Appellants additionally contend that Royer fails to describe 11
“assigning an account to account relationship type code” and “associating as 12
an entry said first account internal identifier, said second account identifier, 13
and said account to account relationship type code so as to indicate the 14
relationship between said first account and said second account,” as recited 15
by claim 17. App. Br. 8-9. We disagree with the Appellants. Royer 16
describes that a cardholder enters information regarding the transaction 17
account, including whether the transaction account is a charge card account, 18
a credit card account, a debit card account, or a stored value account. FF 01. 19
Each of these are account types and describe the relationship between each 20
account. As such, Royer describes these limitations of claim 17. 21
Furthermore, the Appellants have only conclusively stated that the 22
claimed invention is distinguished from Royer because of this limitation, but 23
have not provided any persuasive rationale or evidence to illustrate how the 24
claimed invention is distinguished from Royer. As such, we are not 25
persuaded by the Appellants’ argument. 26
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1
Claims 4-7 and 9-11 rejected under 35 U.S.C. § 103(a) as 2
unpatentable over Royer and Fei 3
The Appellants contend that Royer fails to describe claims 4-7 and 9-4
11 for the same reasons asserted in support of claim 1. App. Br. 9-10. We 5
disagree with the Appellants. The Appellants’ arguments were not found to 6
be persuasive supra and are not persuasive here for the same reasons. 7
8
Claims 12-13 and 20-22 rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Royer and Gallagher 10
The Appellants contend that Royer fails to describe claims 12-13 and 11
20-22 for the same reasons asserted in support of claims 1 and 17. App. Br. 12
11-13. We disagree with the Appellants. The Appellants’ arguments were 13
not found to be persuasive supra and are not persuasive here for the same 14
reasons. 15
16
Claims 23 and 24 rejected under 35 U.S.C. § 103(a) as unpatentable 17
over Royer and Brown 18
The Appellants contend that Royer fails to describe claims 23 and 24 19
for the same reasons asserted in support of claim 17. App. Br. 13-15. We 20
disagree with the Appellants. The Appellants’ arguments were not found to 21
be persuasive supra and are not persuasive here for the same reasons. 22
23
CONCLUSIONS OF LAW 24
The Examiner did not err in rejecting claims 1-2 and 4-25 under 35 25
U.S.C. §101 as being directed towards non-statutory subject matter. 26
Appeal 2010-007625
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The Examiner did not err in rejecting claims 1-2, 8, 14-19, and 25 1
under 35 U.S.C. §102(e) as being anticipated by Royer. 2
The Examiner did not err in rejecting claims 4-7 and 9-11 under 35 3
U.S.C. § 103(a) as unpatentable over Royer and Fei. 4
The Examiner did not err in rejecting claims 12-13 and 20-22 under 5
35 U.S.C. § 103(a) as unpatentable over Royer and Gallagher. 6
The Examiner did not err in rejecting claims 23 and 24 under 35 7
U.S.C. § 103(a) as unpatentable over Royer and Brown. 8
9
DECISION 10
To summarize, our decision is as follows. 11
 The rejection of claims 1-2 and 4-25 under 35 U.S.C. §101 as being 12
directed towards non-statutory subject matter is sustained. 13
 The rejection of claims 1-2, 8, 14-19, and 25 under 35 U.S.C. §102(e) 14
as being anticipated by Royer is sustained. 15
 The rejection of claims 4-7 and 9-11 under 35 U.S.C. § 103(a) as 16
unpatentable over Royer and Fei is sustained. 17
 The rejection of claims 12-13 and 20-22 under 35 U.S.C. § 103(a) as 18
unpatentable over Royer and Gallagher is sustained. 19
 The rejection of claims 23 and 24 under 35 U.S.C. § 103(a) as 20
unpatentable over Royer and Brown is sustained. 21
22
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED 5
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msc 9