Ex Parte Michelsen et al

Board of Patent Appeals and Interferences

Mar 28, 2012

10987201 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL J. MICHELSEN,
MARK THOMPSON, and
MARGARET LAPKIN
____________

Appeal 2010-003550
Application 10/987,201
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael J. Michelsen, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-9. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention relates to “notification systems.” Specification [0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of transferring funds from a sender to a recipient,
comprising:
receiving at a first transfer location a transfer request from the
sender, wherein the transfer request includes a notification request to
notify the sender when the recipient receives the funds;
sending the transfer request to a host computer system;
sending a first message from the host computer system to the
recipient that the funds are available for pick up, wherein the message
includes instructions for finding a transfer location at which the
recipient can receive the funds;
receiving at a second transfer location a request from the
recipient to receive the funds;
receiving a message at the host computer system that the
recipient received the funds; and
sending from the host computer system a notification to the
sender that the recipient received the funds.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 17, 2009) and Reply Brief (“Reply Br.,” filed Nov. 20,
2009), and the Examiner’s Answer (“Answer,” mailed Oct. 19, 2009).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
March
Guthrie
Chapman
Baig
US 2002/0016763 A1
US 2002/0052841 A1
US 7,028,052 B2
WO 02/05195
Feb. 7, 2002
May 2, 2002
Apr. 11, 2006
Jan. 17, 2002
The following rejections are before us for review:
1. Claims 6 and 8 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Guthrie and Baig.
2. Claims 1-5 and 9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Guthrie, Baig, March, and Chapman.
3. Claim 7 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Guthrie, Baig, and Chapman.

ISSUE
The issue is whether the cited prior art combination discloses or
would render obvious the claim step “sending a first message from the host
computer system to the recipient that the funds are available for pick up,
wherein the first message includes instructions for finding a transfer location
at which the recipient can receive the funds” (claim 6).

FINDINGS OF FACT
We rely on and adopt the Examiner’s factual findings stated in the
Answer. Additional findings of fact may appear in the Analysis below.

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ANALYSIS
The rejection of claims 6 and 8 under 35 U.S.C. §103(a) as being
unpatentable over Guthrie and Baig.
The Examiner takes the position that “Guthrie et al., at least at
paragraphs [0058]-[0060]; [0072]-[0074]; [0094]-[0095], disclose ...
sending a first message from the host computer system to the recipient that
the funds are available for pick up.” Answer 5. This is not disputed.
Accordingly, we take as accepted that Guthrie discloses sending a first
message from the host computer system to the recipient that the funds are
available for pick up. In that regard, Guthrie sends an email. See [0059].
The Examiner conceded that Guthrie’s email does not “include[ ]
instructions for finding a transfer location at which the recipient can receive
the funds” (claim 6). To meet that aspect of the claimed method, the
Examiner relied on Baig, finding that “Baig et al. teach wherein the first
message includes instructions for finding a transfer location at which the
recipient can receive the funds (see at least pg. 19, ll. 19-20; pg. 8, l. 32
through pg. 9, 1. 7).” Answer 5. The Appellants disagree that it would have
been obvious to add instructions to the Guthrie email. App. Br. 7. See also
Reply Br. 2 (“There can be no question that the hindsight reasoning
employed here was made possible only through the use of the Appellant's
claims as a roadmap.”)
We are not persuaded that the Examiner’s position is flawed. Adding
any information to an email is known. Adding information described in Baig
to the Guthrie email yields predictably, as one of ordinary skill in the art
would expect, an email with a combination of information.
Furthermore, the type of information to be included in an email is not
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patentably consequential. The difference between an email without
instructions as in Guthrie and one with instructions as encompassed by the
claims is a difference in the type of additional textual information included
in the email. Patentable weight need not be given to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir.
1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). In that regard, the
Appellants have not come forward with evidence sufficient to show that the
structure of the email is functionally affected by “includ[ing] instructions for
finding a transfer location at which the recipient can receive the funds.”
Absent such evidence, it is reasonable to conclude that the claim limitation
of “includ[ing] instructions for finding a transfer location at which the
recipient can receive the funds” is descriptive and not functionally related to
any structure and as such falls under the category of patentably
inconsequential subject matter.
Common situations involving nonfunctional descriptive
material are: - a computer-readable storage medium that differs from
the prior art solely with respect to nonfunctional descriptive material,
such as music or a literary work, encoded on the medium, - a
computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the machine
functions (i.e., the descriptive material does not reconfigure the
computer), or - a process that differs from the prior art only with
respect to nonfunctional descriptive material that cannot alter how the
process steps are to be performed to achieve the utility of the
invention.
Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to
be well within the level of ordinary skill in the art at the time the
invention was made. The difference between the prior art and the
claimed invention is simply a rearrangement of nonfunctional
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descriptive material.
Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative). See
also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative).
Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious. In re Ngai, 367 F.3d at 1339. Cf.
In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability).
Accordingly we are not persuaded as to error in the rejection of the
claims on the grounds that the cited prior art fails to teach or suggest
“sending a first message from the host computer system to the recipient that
the funds are available for pick up, wherein the first message includes
instructions for finding a transfer location at which the recipient can receive
the funds” (claim 6).
For the foregoing reasons, the rejection of claims 6 and 8 is sustained.

The rejection of claims 1-5 and 9 under 35 U.S.C. §103(a) as being
unpatentable over Guthrie, Baig, March, and Chapman.
The Appellants challenge the rejection of claims 1-5 and 9 using the
same arguments used to challenge the rejection of claims 6 and 8. App. Br.
7. For the same reasons we found those arguments unpersuasive as to error
in that rejection, we find they are also unpersuasive as to error in the
rejection of these claims.

The rejection of claim 7 under 35 U.S.C. §103(a) as being unpatentable over
Guthrie, Baig, and Chapman.
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The Appellants state: “This rejection IS NOT the subject of the
appeal.” App. Br. 2. Nothing more is said. Given this and that claim 7 has
not been withdrawn from appeal, the rejection is summarily affirmed.

CONCLUSIONS
The rejections of claims 6 and 8 under 35 U.S.C. §103(a) as being
unpatentable over Guthrie and Baig; claims 1-5 and 9 under 35 U.S.C.
§103(a) as being unpatentable over Guthrie, Baig, March, and Chapman;
and, claim 7 under 35 U.S.C. §103(a) as being unpatentable over Guthrie,
Baig, and Chapman, are affirmed.

DECISION
The decision of the Examiner to reject claims 1-9 is affirmed.

AFFIRMED

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