Ex Parte Michelsen et al

Board of Patent Appeals and Interferences

Aug 27, 2012

10977505 (B.P.A.I. Aug. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. MICHELSEN, PAUL BLAIR, DEAN SEIFERT,
and JOSEPH CACHEY
____________

Appeal 2010-007899
Application 10/977,505
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007899
Application 10/977,505

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 15, 17, 18, and 20 to 31. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

BACKGROUND
Appellants’ invention is directed to systems and methods for verifying
identities in transactions.
Claim 15 is illustrative:
15. A computer-implemented method of obtaining
identification information from an individual involved in a money
transfer transaction, comprising:
entering transaction-related information into a transaction
processing device, including information relating to the identity of
the individual, wherein the individual comprises one of a sender
of money to a recipient of money in a wire transfer of the money
or the recipient of money in a wire transfer of money;
displaying a prompt on the transaction processing device to
enter identification information;
entering identification information, wherein the
identification information verifies the information relating to the
identity of the individual;
storing at least a portion of the transaction-related
information and at least a portion of the identification information
in a transaction record as transaction information;
using the information relating to the identity of the
individual to identify other transaction records relating to the
same sender of money or the recipient of money in a wire transfer
of money; and
processing the transaction.

Appeal 2010-007899
Application 10/977,505

3
Appellants appeal the following rejections:
Claims 15, 17 to 18 and 20 to 26 under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 15, 17 to 18, and 20 to 31 under 35 U.S.C. § 103(a) as
unpatentable over Joseph (US 6,883,709 B2, iss. Apr. 26, 2005) in view of
Kinsella (US 6,914,517 B2, iss. Jul. 5, 2005) and further in view of Konya
(US 5,937,396, iss. Aug. 10, 1999).

ANALYSIS

Non-Statutory Subject Matter
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the recitations of “displaying the prompt” and
“entering transaction-related information into a transaction processing
device” in claim 15 are directly tied to a machine and are thus not extra-
solution activity.
In determining whether the recitation of a machine constitutes extra
solution activity or a field-of-use, i.e., one must determine the extent to
which (or how) the machine or apparatus imposes meaningful limits on the
execution of the claimed method steps. Use of a machine or apparatus that
contributes only nominally or insignificantly to the execution of the claimed
method (e.g., in a data gathering step or in a field-of-use limitation) would
weigh against eligibility. See Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010)
(citing Parker v. Flook, 437 U.S. 584, 590 (1978)), and Cybersource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (while “claim 3
requires an infringer to use the Internet to obtain that data . . . [t]he Internet
Appeal 2010-007899
Application 10/977,505

4
is merely described as the source of the data. We have held that mere ‘[data-
gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”
In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688
F.2d 789, 794 (CCPA 1982))).
We agree with the Examiner that the recitation of “displaying a
prompt” and “entering transaction-related information into a transaction
processing device” is language related to extra-solution activity because the
recitations relate merely to data gathering and contribute only nominally to
the execution of the method.
We are also not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims meet the transformation prong of the
machine or transformation test. We agree with the Examiner that the
method steps of claim 15 do not transform an article or material to a
different state or thing. The transformation of identity information and
transaction information are merely manipulations of data which are not
sufficient to meet the transformation prong under 35 U.S.C. § 101.
Gottschalk v. Benson, 409 U.S. 63, 72 (1972) (prevents the patenting of a
computer based algorithm that merely transforms data from one form to
another).
The Supreme Court has made clear that a patent claim's failure to
satisfy the machine-or-transformation test is not dispositive of the § 101
inquiry. Id. at 1371. However we conclude that, absent any other factors
weighing either toward or against patent eligibility, the two machine-or-
transformation factors both weighing against patent eligibility are alone
sufficient to establish a prima facie case of patent-ineligibility, i.e., are
sufficient to set forth the basis for the rejection so as to put the patent
Appeal 2010-007899
Application 10/977,505

5
applicant on notice of the reasons why the applicant is not entitled to a
patent. Cf. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See Bilski
v. Kappos, 130 S. Ct. 3218, 3227 (2010) (while the machine-or-
transformation test is not the sole test for deciding whether an invention is a
patent-eligible process, it is “a useful and important clue, an investigative
tool, for determining whether some claimed inventions are processes under §
101.”) We conclude that the Examiner correctly determined that claim 1
fails to recite patent-eligible subject matter. Appellants have presented no
arguments that convince us otherwise. Specifically, Appellants have not
pointed to any convincing factors that weigh towards patent eligibility, and
we are unable to find any factors that weigh towards patent eligibility.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 15. We will also sustain this rejection as it is directed to claims 17 and
18 and 20 to 26 because the Appellants have not argued these claims
separately.

Obviousness
We will not sustain the Examiner’s rejection of claims 15, 17, 18, 20
to 27, and 31 as unpatentable over Joseph in view of Kinsella and Konya.
We agree with the Appellants that the Examiner has not established that the
prior art discloses “using the information relating to the identity of the
individual to identify other transaction records relating to the same sender of
money” as required by claim 15. The Examiner relies on Joseph, column 8,
lines 24 to 50, for this subject matter. This portion of Joseph does not relate
to using information to identify other transaction records related to the same
Appeal 2010-007899
Application 10/977,505

6
sender but rather to a process to identify an employee using a stored finger
print in order to cash a payroll check.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 15 and claims 17, 18, 20 to 26, and 31 dependent thereon.
We will also not sustain the Examiner’s rejection of claim 27 because
we do not agree with the Examiner that claim 27 is not patentably distinct
from claim 15. We note that we have not sustained the Examiner’s rejection
of claim 15. In any case, claim 27 positively recites a computer system
programmed to use additional information, the user identification and
password to evaluate whether to allow the operator to operate the transaction
device to process the transaction. The Examiner has not specifically
addressed this limitation in the statement of the rejection.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument with regard to claim 28 that the prior art does not
disclose a system for obtaining identification information from a party to an
“operator-assisted money transfer transaction.” We agree with the Examiner
that the recitation of “operator-assisted money transfer transaction” relates to
the intended use of the system and thus is not determinative of patentability
of claim 28. We will also sustain the Examiner’s rejection of claims 29 and
30 because the Appellants have not addressed the separate patentability of
these claims.
DECISION
We AFFIRM the Examiner’s § 101 rejection of claims 15, 17 to 18,
and 20 to 26.
We REVERSE the Examiner’s § 103(a) rejection of claims 15, 17, 18,
20 to 27, and 31.
Appeal 2010-007899
Application 10/977,505

7
We AFFIRM the Examiner’s § 103(a) rejection of claims 28 to 30.
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) (2011).

AFFIRMED-IN-PART

hh