Ex Parte Michelsen et al

Board of Patent Appeals and Interferences

Jan 10, 2012

10806484 (B.P.A.I. Jan. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. MICHELSEN, DAN CANNING,
ROBERTO OCHOA, RODOLFO ZAVALETA, and RODRIGO SADA
____________

Appeal 2010-011470
Application 10/806,484
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-17, 21-24, and
27-32. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and
6.
The claimed invention is directed to money transfers directly into a
recipient’s foreign bank account (Spec. [0001]). Claim 1, reproduced below,
is further illustrative of the claimed subject matter.
1. A computerized method for transferring money,
the method comprising:
receiving at a host computer system from a point of sale
device transactional information that includes information on a
bank account this is to receive the money, wherein the money is
provided in cash at the point of sale device;
storing the transaction information at the host computer
system;
transmitting at least some of the transaction information
to an intermediary computer system that is configured to
interact with a plurality of banking networks in different
countries;
determining with the intermediary computer system
which one of the banking networks is associated with the bank
account that is to receive the money; and
transmitting a request from the intermediary computer
network to a local banking network information on the bank
account that is to receive the money and an amount of money to
deposit.

Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Gustin (US 6,012,048, iss. Jan. 4,2000) in view of Knight (US
2001/0034682 A1, publ. Oct. 25, 2001); claims 18, 20-21, 23-27, and 29-30
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gustin in view
of Barbara (US 2002/0016769 A1, publ. Feb. 7, 2002) and Kosuda (US
2001/0051923 A1, publ. Dec. 13, 2001); claim 19 stands rejected under 35
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U.S.C. § 103(a) as unpatentable over Gustin in view of Barbara, Kosuda,
and Apostolides (US 2005/0075968 A1, publ. Apr. 7, 2005); claims 22 and
28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gustin in
view of Barbara, Kosuda, and Orcutt (US 2005/0097050 A1, publ. May 5,
2005); claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gustin in view of Knight and Silverstein (US 2009/0070230 A1, publ.
Mar. 12, 2009); and claim 32 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Gustin in view of Barbara, Kosuda, and Silverstein.
We AFFIRM and enter a NEW GROUNDS of Rejection because our
rationale differs from that of the Examiner’s (37 C.F.R. § 41.50(b)).

ISSUES
Did the Examiner err in asserting that a combination of Gustin and
Knight renders obvious independent claim 11? The issue turns on whether
Knight explicitly or inherently discloses (1) an intermediary computer
system and (2) “determining with the intermediary computer system which
one of the banking networks is associated with the bank account that is to
receive the money,” as recited in independent claim 1.
Did the Examiner err in asserting that a combination of Gustin and
Kosuda renders obvious independent claim 212? The issue turns on whether
Kosuda renders obvious
wherein the transaction identifier comprises an eighteen
digit number, with the first three digits corresponding to the

1 We choose independent claim 1 as representative of independent claims 1,
5, 11, and 14, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
2 We choose independent claim 21 as representative of independent claims
21 and 27, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
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bank name, the second three digits corresponding to the bank
location, the next eleven digits corresponding to the account
number, and the last digit corresponding to a check digit.
as recited in independent claim 21.

FINDINGS OF FACT
Knight
FF1. Knight discloses provider bank 120, which serves as an
intermediary between client bank 100 and a German bank ([0010], [0024],
[0033], [0035]).
FF2. Knight discloses determining the particular clearing system 220
that the German bank is a member of, and formatting the payment for
transmission to that clearing system ([0034]).

Kosuda
FF3. Kosuda discloses account information including a bank code, a
branch code, an account number, an optional field, a spare field, and a
validity code being a number of a plurality of digits ([0050]).

ANALYSIS
Independent Claim 1
We are not persuaded the Examiner erred in asserting that a
combination of Gustin and Knight renders obvious independent claim 1
(App. Br. 6-8; Reply Br. 1-2). Appellants assert Knight does not disclose an
intermediary computer system (App. Br. 6-8). However, Knight does
disclose such a system as provider bank 120 (FF1).
Appellants assert that Knight does not disclose “determining with the
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intermediary computer system which one of the banking networks is
associated with the bank account that is to receive the money,” as recited in
independent claim 1 (App. Br. 6-8; Reply Br. 1-2). However, Knight
discloses determining the particular clearing system 220 that the German
bank is a member of (FF2). Appellants appear to be making two errors.
First, it is provider bank 120, and not the German bank, that is doing the
determining in Knight. Thus, it is irrelevant that the German bank is only a
member of one network. Second, Appellants appear to assert that for the
recipient German bank that is a member of multiple clearing systems, the
determining includes deciding which of the clearing systems to use.
However, none of those aspects are set forth in the claims. See CollegeNet,
Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the
specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims).

Independent Claim 21
We are not persuaded the Examiner erred in asserting that a
combination of Gustin and Kosuda renders obvious independent claim 21
(App. Br. 8-9). Gustin is cited for disclosing a transaction identifier
(Exam’r’s Ans. 10). Kosuda is cited for disclosing various numerical
account information, including a bank code, a branch code, an account
number, an optional field, and a spare field (FF3). The optional field or
spare field may include a check number so as to include all relevant
transactional information in the transaction identifier. The Examiner asserts
it would have been obvious to incorporate this information of Kosuda into
the single transaction identifier of Gustin in order to codify the transaction
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message (Exam’r’s Ans. 10). For the claimed digit number and sequence,
the Examiner asserts that it would have been obvious to rearrange the
information of Kosuda into the claimed digit number and sequence to be
compliant with the requirements of the banking network (Exam’r’s Ans. 10-
11, 13-14). As Appellants argue Kosuda alone, without any reference to
either Gustin or the various rationales for modification offered by the
Examiner, we sustain this rejection. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (the argument that a single reference alone does
not disclose the recited claimed steps is not persuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”).
Insofar as our findings of fact and rationale may differ from that set
forth by the Examiner, pursuant to our authority under 37 C.F.R. § 41.50(b),
we enter a new rationale of rejection under 35 U.S.C. § 103(a).

DECISION
The rejection of claims 1-17, 21-24, and 27-32 is AFFIRMED.
We enter a NEW GROUNDS of rejection for independent claims 21
and 27 under 35 U.S.C. § 103(a).
This decision contains a new grounds of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new grounds of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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