Ex Parte Kuykendall et al

Board of Patent Appeals and Interferences

Oct 27, 2009

09929460 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES B. KUYKENDALL and
THOMAS G. CLEVELAND JR.
____________

Appeal 2009-006567
Application 09/929,460
Technology Center 3600
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Decided: October 27, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
James B. Kuykendall, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-10 and 26-30. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention relates to remote fund transfers.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for performing push-model fund transfers between at
least one user and at least one payor, the system comprising:
at least one payor interface comprising software operative to
permit the at least one payer to provide information identifying a
desired fund transfer;
a gateway having at least one gateway account, said gateway
being operative:
to receive said information;
to receive incoming funds from the payor via a push-
model transfer into said at least one gateway account after receiving
said information;
to inform the user that the payor has provided an
appropriate amount of funds via a push-model transfer if said

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 25, 2008) and Reply Brief (“Reply Br.,” filed Jan. 21, 2009),
and the Examiner’s Answer (“Answer,” mailed Nov. 18, 2008).
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incoming funds received are of an appropriate amount according to
said desired fund transfer; and
to send corresponding outgoing funds to the user after
receiving said incoming funds.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Jennings
Elgamal
US 5,659,165
US 6,138,107
Aug. 19,1997
Oct. 24, 2000
The following rejections are before us for review:
1. Claims 1-10 and 26-28 are rejected under 35 U.S.C. §102(e) as being
anticipated by Elgamal.
2. Claims 28-30 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Elgamal and Jennings.

ISSUES
Have the Appellants shown error in the rejections of claims 1-10 and
26-28 under 35 U.S.C. §102(e) as being anticipated by Elgamal and claims
28-30 under 35 U.S.C. §103(a) as being unpatentable over Elgamal and
Jennings?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer (Ans.
3-6) and Final Office Action (2-5).

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PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-10 and 26-28 under 35 U.S.C. §102(e) as being
anticipated by Elgamal.
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The Appellants argued claims 1-10 as a group (App. Br. 8-10 and
Reply Br. 4-5). We select claim 1 as the representative claim for this group,
and the remaining claims 2-10 and 26-28 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellants have not shown error in the rejection. “Many of
appellants’ arguments fail from the outset because, . . . they are not based on
limitations appearing in the claims.” In re Self, 671 F.2d 1344, 1348 (CCPA
1982).
The Appellants argue two distinctions over Elgamal.
According to the Appellants, the claimed invention involves “real”
funds (Reply Br. 4: “[in Elgamal] real funds are not even transferred directly
to the PG; rather, electronic money is credited to the PG’s EMA.”) rather
than “virtual” funds (Reply. Br. 4: “there is not so much as a hint that it [i.e.,
Elgamal] could support transactions by means other than drawing down the
virtual funds . . . .”). See also App. Br. 8 (“real” currency vs. Elgamal’s
“pseudo-currency”). However, claim 1 makes no distinction as to the type
of funds. Throughout the claim the term “funds” is used without
qualification. There is neither an express definition in the Specification for
“funds” to narrow the construction to be given the claim term “funds” nor
does the subject matter as claimed limit the scope of the “funds” used to that
which is “real” in contrast to “virtual.” Accordingly, this argument is not
persuasive as to error in the rejection.
The Appellants also argue that Elgamal does not describe the use of
push-model transfers. App. Br. 10 and Reply Br. 4. According to the
Appellants, the use of the terms “push-model” in the claim limits the
claimed subject matter “to systems in which the transactions are push-model
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transfers of actual funds - not merely an extension of debits and credits by a
private entity, as in Elgamal” (Reply Br. 4). The principle difficulty with
this argument is that the Appellants do not explain in what way the claim
terms “push-model” limits the scope of the claimed subject matter to
transfers of “actual” funds. The Appellants have not pointed to an express
definition in the Specification or presented evidence of knowledge in the art
at the time of the invention to support narrowing the scope of the claimed
subject matter to the use of “actual” funds. Accordingly, this argument is
not persuasive as to error in the rejection.
The Appellants also discuss various advantages for the claimed
invention to suggest that Elgamal would not accomplish. For example,
“[a]nother advantage of the instant invention is improved privacy and
security, because the payor need not provide information identifying his or
her bank account, credit card number, or such information.” App. Br. 9. Be
that as it may, claim 1 does not limit the information the payor provides.
Moreover, claim 1 (as with all the claims on appeal) is directed to a system.
Claim 1 defines the system as one “for performing push-model fund
transfers between at least one user and at least one payor” and which
comprises two elements: (1) “at least one payor interface comprising
software operative to permit the at least one payer to provide information
identifying a desired fund transfer” and (2) “a gateway having at least one
gateway account.” Claim 1 expresses these two elements in terms of
function only. The Appellants do not appear to dispute that Elgamal
describes these two elements. Accordingly, the question of anticipation
turns on whether Elgamal describes, expressly or inherently, a system
capable of performing the functions recited in the claim for these two
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elements. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In that
regard, the Appellants have not explained in what way Elgamal fails to
describe, expressly or inherently, a system where these two elements are
capable of performing the functions recited in the claim, notwithstanding the
advantages alleged to flow from the invention.
The Appellants have not shown error in the rejection of claims 1-10
and 26-28 under §102 over Elgamal.

The rejection of claims 28-30 under 35 U.S.C. §103(a) as being
unpatentable over Elgamal and Jennings.
The Appellants argued claims 28-30 as a group (App. Br. 10-12;
Reply Br. 4-5). We select claim 28 as the representative claim for this
group, and the remaining claims 29 and 30 stand or fall with claim 28.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The arguments against this rejection are unpersuasive as to error in the
rejection because, as with the arguments challenging the 102 rejection, they
are not commensurate in scope with what is claimed. For example, the
Appellants argue that “as discussed above with respect to the rejections
under 35 U.S.C. § 102, the prior art does not teach or suggest a system that
uses the deposit of actual funds through a push-model transfer, such that a
private, secure, and final transaction can be accomplished much more
quickly that in the prior art” (App. Br. 10-11). However, there is nothing in
claim 28 that calls for the use of a deposit of “actual” funds. Claim 28
further defines the payer interface as comprising a transaction reviewer
having certain capabilities. Claim 28 does not require using a deposit of
“actual” funds.
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The Appellants also argue that “[n]o suggestion or motivation to
modify Elgamal to produce the claimed invention has been found or cited”.
App. Br. 12. In point of fact, the Examiner did present a motivation. See
Answer 6: “[o]ne would have been motivated to do so in order to
automatically compute appropriate exchange rate and display them to the
user for user’s authorization.” Accordingly, in contradistinction the
Appellants’ argument, the Examiner did provide an apparent reasoning for
the legal conclusion of obviousness.
The Appellants have not shown error in the rejection of claims 28-30
under §103 over Elgamal and Jennings.

CONCLUSIONS
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 1-10 and 26-28 under 35 U.S.C. §102(e) as being
anticipated by Elgamal and claims 28-30 under 35 U.S.C. §103(a) as being
unpatentable over Elgamal and Jennings.

DECISION
The decision of the Examiner to reject claims 1-10 and 26-30 is
affirmed.

AFFIRMED

mev
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