Ex Parte Nicholls et al

Board of Patent Appeals and Interferences

Jul 1, 2012

10992959 (B.P.A.I. Jul. 1, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/992,959 11/19/2004 Michael K. Nicholls 013647.00019 2033
33649 7590 07/02/2012
Mr. Christopher John Rourk
Jackson Walker LLP
901 Main Street, Suite 6000
DALLAS, TX 75202
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
07/02/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL K. NICHOLLS, LESTER S. MARAGH,
JOAN DETEMPLE, ROSEMARY R. THOMAS,
ZUNORAINE HOLMES, GEORGE E. WILCOX,
KEELEY M. SAPIENZA, and LUBNA SHAD
____________

Appeal 2009-012512
Application 10/992,959
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael K. Nicholls, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-19 and 21. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for dynamic currency conversion comprising:
a bank identifier system determining whether currency
conversion is available for a card-issuing bank of a presented
card;
an exchange rate system determining whether an
exchange rate has expired; and
wherein a card holder is presented with an option for
selecting a foreign currency transaction after it is determined
that currency conversion is available for the card-issuing bank
and that the exchange rate has not expired.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Heinzle
Szoc
Poh Wong
US 6,199,046 B1
US 2002/0023053 A1
US 2002/0099656 A1
Mar. 6, 2001
Feb. 21, 2002
Jul. 25, 2002

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 11, 2008) and Reply Brief (“Reply Br.,” filed May 13, 2009),
and the Examiner’s Answer (“Ans.,” mailed Mar. 13, 2009).
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3
The following rejections are before us for review:
1. Claims 11 and 16 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
2. Claims 1-8, 10-15, and 21 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Szoc.
3. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Szoc and Poh Wong.
4. Claims 16-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Szoc and Heinzle.

ISSUES
The issues are whether (a) process claims 11 and 16 recite patentable
subject matter under § 101, (b) there is error in the prima facie case of
anticipation for the subject matter of process claims 1-8, 10-15, and 21 over
the cited prior art, and (c) there is error in the prima facie case of
obviousness for the subject matter of claims 9 and 16-19 over the cited prior
art.

ANALYSIS
The rejection of claims 11 and 16 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
We will reverse this rejection.
The Examiner stated:
Claims 11 and 16 are rejected under 35 U.S.C. [§] 101 because
the claimed invention is directed to nonstatutory subject matter.
... A method/process claim that fails to meet one of the above
requirements is not in compliance with the statutory
requirements of 35 U.S.C. [§] 101 for patent eligible subject
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4
matter. Here claims 11 and 16 fail to meet the above
requirements because the claims fail to tie in another statutory
class of invention.
Ans. 4. But there is no analysis. Claims 11 and 16 call for “processing a
transaction as a local currency transaction if foreign currency processing is
not allowed by the card-issuing bank for the presented card” and “receiving
a foreign currency conversion status of enable from a payment processor at
the point of sale terminal,” respectively. These limitations arguably involve
an apparatus. But given no claim construction analysis explaining how the
examiner found that the claimed processes are not tied to an apparatus, a
prima facie case of nonstatutory subject matter has not been established in
the first instance.

The rejection of claims 1-8, 10-15, and 21 under 35 U.S.C. § 102(b) as
being anticipated by Szoc.
Independent claim 1 requires “wherein a card holder is presented with
an option for selecting a foreign currency transaction after it is determined
that currency conversion is available for the card-issuing bank and that the
exchange rate has not expired.” The Examiner states that this is described at
paragraph [0084] of Szoc. Ans. 5.
[0084] As an illustrative example of a use of real-time quotes,
reference is made to the quote rates being displayed in the
scrolling quote bar 430. According to the quote information
area 426, the rates quoted are valid until Nov. 03, 2000 at
2:19PM. In this manner, once the client receives the rate quotes,
the client has a period of time to conduct a market transaction,
such as buying foreign currency, paying beneficiaries or
otherwise fulfilling an obligation, etc. For example, if the client
clicks on the pay today link 428 of FIG. 3, discussed below, the
system 100 will dynamically price a selected transaction based
on the currently displayed rate quotes, assuming the period for
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which the quotes are valid has not yet expired. For reference,
the quote information area 432 displays a settlement currency,
illustrated here as the United States dollar (USD).
We do not see in this passage any disclosure expressly or inherently
describing a system whereby “an option for selecting a foreign currency
transaction [is presented] after it is determined that currency conversion is
available for the card-issuing bank and that the exchange rate has not
expired” (claim 1). We agree with the Appellants that “at best this paragraph
only discloses that a client has a period of time to conduct a market
transaction in a foreign currency” (App. Br. 10). While it is possible to
include “an option for selecting a foreign currency transaction [is presented]
after it is determined that currency conversion is available for the card-
issuing bank and that the exchange rate has not expired” (claim 1),
anticipation cannot be based on possibilities. “Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient”
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted in
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991).
We reach the same conclusion as to the other independent claim,
claim 11, which requires “processing a transaction as a local currency
transaction if foreign currency processing is not allowed by the card-issuing
bank for the presented card,” said to be described at paragraphs [0083] and
[0087] of Szoc, but which we do not find expressly or inherently describe
said limitation.

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The rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable
over Szoc and Poh Wong.
Claim 9 depends on claim 1. Because the Examiner relies on the
position that Szoc anticipates the subject matter of claim 1 and we have not
found that position supported by a preponderance of the evidence for the
reasons already explained, the rejection of dependent claim 9 is reversed for
the same reasons.

The rejection of claims 16-19 under 35 U.S.C. § 103(a) as being
unpatentable over Szoc and Heinzle.
The Examiner states that “Szoc discloses a method for changing the
status of a point of sale terminal for foreign currency conversion comprising:
setting a foreign currency conversion status indicator at the point of sale
terminal to enable (Szoc, pages 6-7, paragraph[s] [0073-74]).” Ans. 10. We
have reviewed the cited prior art passages but do not find there the claimed
subject matter asserted to be disclosed there. We agree with the Appellants
that, for example, there is no disclosure of a point-of-sale terminal. A prima
facie case of obviousness has not been made out in the first instance.

CONCLUSIONS
The rejections of claims 11 and 16 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter; claims 1-8, 10-15, and 21 under 35
U.S.C. § 102(b) as being anticipated by Szoc; claim 9 under 35 U.S.C. §
103(a) as being unpatentable over Szoc and Poh Wong; and, claims 16-19
under 35 U.S.C. § 103(a) as being unpatentable over Szoc and Heinzle are
all not sustained.

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DECISION
The decision of the Examiner to reject claims 1-19 and 21 is reversed.

REVERSED

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