Ex Parte Haas et al

Patent Trial and Appeal Board

Dec 26, 2012

11289255 (P.T.A.B. Dec. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BERTRAND HAAS and MATTHEW J. CAMPAGNA
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Appeal 2010-006949
Application 11/289,255
Technology Center 2600
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Before DENISE M. POTHIER, JENNIFER L. McKEOWN, AND JAMES
B. ARPIN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 4-10, and 13-17. Claims 2, 3, 11, and 12 have been
canceled. (Br. 2.)1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Throughout this opinion, we refer to (1) the Appeal Brief (Br.) filed
October 15, 2009; and (2) the Examiner’s Answer (Ans.) mailed January 20,
2010.
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STATEMENT OF THE CASE
Appellants’ invention is directed to methods of processing a check
prior to submitting it for an electronic deposit. (See generally Abstract.)
Specifically, Appellants’ invention links the intent of the depositor with an
image of the check for processing. (See generally Abstract; Spec. ¶[0001].)
Claim 1 is illustrative and is reproduced below with key disputed
limitations emphasized:
1. A method of processing a check prior to submitting
the check for deposit, comprising:
receiving from a computer intended amount information
for said check, said intended amount information being an
amount of said check that is indicated by a depositor of said
check;
printing a [sic] intended amount on a front of said check;
generating a first image of said front of said check;
generating an image of said intended amount;
generating a second image of said front of said check
using said first image of said front of said check, said second
image of said front of said check including said image of said
intended amount, wherein said first image of said front of said
check may be obtained from said second image of said front of
said check;
generating a first image of a back of said check;
generating a transaction number for said check and
printing said transaction number on said back of said check
after said step of generating said first image of said back of
said check; and
generating a second image of said back of said check
using said first image of said back of said check, said second
image of said back of said check including an image of said
transaction number, wherein said first image of said back of
said check may be obtained from said second image of said
back of said check;
submitting said second image of said front of said check
to a depository bank;
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wherein said submitting step comprises creating a signed
intent data package for said check, said signed intent data
package including an intent data package and a digital signature
of said intent data package, said intent data package including
first data including said second image of said front of said
check, and
submitting said second image of said back of said check
to the depository bank.

THE REJECTIONS
1. The Examiner rejected claims 1, 4-10, and 13-17 under
35 U.S.C. § 101 for not falling within one of the four statutory categories of
invention. (Ans. 3-4.)
2. The Examiner rejected claims 1, 4-6, 9, 10, and 13-17 under
35 U.S.C. § 103(a) as unpatentable over Jones (US 2003/0059098 A1; pub.
Mar. 27, 2003) and Kunkler (US 5,740,271; pub. Apr. 14, 1998). (Ans. 5-
14.)
3. The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a)
as unpatentable over Jones, Kunkler, and Cousins (US 2003/0115470 A1;
pub. June 19, 2003). (Ans. 14-16.)

STATUTORY SUBJECT MATTER REJECTION
The Examiner concludes that Appellants’ claimed invention does not
fall within one of the four statutory categories of invention. (Ans. 3-4.)
More specifically, the Examiner finds that the steps of the claimed invention,
such as receiving, printing, and generating, can be performed manually and
thus would not be tied to another statutory category. (Ans. 4.) The
Examiner further concludes that the claimed steps are insufficiently tied to
the statutory category of machine. (Id.)
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On the other hand, Appellants argue that the method of claim 1 is tied
to “the operation of a system including a computer, scanner, check and
printer that receive information from the computer, print information,
generate images and submit an image to a bank.” Thus, according to
Appellants, these limitations provide sufficient ties to a statutory class.
(Br. 9.)

ISSUE
Under § 101, has the Examiner erred by finding that the claim
invention does not fall within one of the four statutory categories of
invention?

ANALYSIS
Claims 1, 4-10, and 13-17
Based on the record before us, we find that the Examiner erred in
rejecting claims 1, 4-10, and 13-17 under § 101.2 More specifically, we
agree with Appellants that the invention of claim 1 is sufficiently tied with a
machine.
While the U.S. Supreme Court found that the machine-or-
transformation test is not the sole test in determining patent-eligibility, “the
machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are

2 We note that the Examiner relies on the Federal Circuit decision In re
Bilski, 545 F.3d 943 (Fed. Cir. 2008). In our analysis, we instead rely on the
Supreme Court decision, Bilski v. Kappos, 130 S.Ct. 2735 ( 2010).
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processes under 35 U.S.C. §101.” Bilski v. Kappos, 130 S.Ct. 3218, 3227
(2010). Thus, we consider the machine-or-transformation test here.
Claim 1 recites “[a] method of processing a check prior to submitting
the check for deposit” including a submitting step “compris[ing] creating a
signed intent data package for said check, said signed intent data package
including an intent data package and a digital signature of said intent data
package, said intent data package including first data including said second
image of said front of said check.” (Br. 15 (emphasis added).) Notably, this
claim limitation includes submitting a digital signature, which is a security
mechanism that is used to authenticate electronic documents 3 Thus, the
digital signature, along with data representing the second image of the
check, at least implicitly requires the use of specific computing devices, such
as a computer and scanner. Moreover, in the Specification, Appellants also
describe that these features are implemented through computing devices,
such as a computer and scanner. (See e.g., Spec. ¶¶ [0018], [0022], [0023],
and [0029]; Fig. 1.) Therefore, we find that claim 1 and claims depending
therefrom are sufficiently tied to particular machines and satisfy the machine
prong of the machine-or-transformation test.
Accordingly, we do not sustain the §101 rejection of claims 1, 4-10,
and 13-17.

3 See e.g., Microsoft Computer Dictionary 159 (5th ed. 2002) (“digital
signature, n. A security mechanism used on the Internet that relies on two
keys, on public and one private, that are used to encrypt messages before
transmission and to decrypt them on receipt.”)..
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OBVIOUSNESS REJECTION OVER JONES AND KUNKLER
The Examiner finds that Jones discloses every recited limitation of
illustrative claim 1, except “generating a transaction number
for said check and printing said transaction number on said back of said
check after said step of generating said first image of said back of said
check” and “said second image of said back of said check including an
image of said transaction number.” (Ans. 5-7.) The Examiner, however,
finds that the teachings of Kunkler cure these deficiencies. (Ans. 8.)
On the other hand, Appellants argue that Jones fails to teach printing
on the front or back of a check. (Br. 10.) Then, Appellants merely recite a
number of claim limitations and make blanket assertions that the cited prior
art does not collectively teach or suggest these limitations. (Br. 12.)
Similarly, Appellants argue that the Examiner failed to provide a factual
basis for the conclusion of obviousness. (Br. 12-13.)

ISSUES
1. Under § 103, has the Examiner erred by finding that the cited prior
art collectively teaches or suggests printing an intended amount on a front of
said check and printing said transaction number on said back of said check?
2. Has the Appellant identified error to show that the Examiner’s
reason to combine the teachings of these references fails to justify the
Examiner’s obviousness conclusion?

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ANALYSIS
Claims 1, 4-6, 9, 10, and 13-17
On this record, we find that the Examiner did not err in rejecting claim
1 as unpatentable over Jones and Kunkler.
Appellants first maintain that Jones does not teach or suggest printing
any information on the front or back of the check. (Br. 10.) In finding that
Jones teaches printing an intended amount on the front of the check, the
Examiner relies on Jones’ teaching of writing an amount on the front of a
check and finds that written information is analogous to printing. (Ans. 5,
18-19 (citing Jones, ¶ [0119]). Similarly, the Examiner relies on the
Kunkler’s teaching of indicating a transaction number on the back of a check
for the claimed limitation of printing the transaction number on the back of
the check. (Ans. 7-8 and 19-20 (citing Kunkler, col. 9, ll. 29-31).) Thus, the
rejection here hinges on whether a skilled artisan would construe printing to
include written information.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Here, we agree with the
Examiner that, under the broadest reasonable interpretation standard,
“printing,” as recited in claim 1, is properly construed to include writing and
that Appellants are interpreting this recited phrase or term too narrowly.
A pertinent definition of “printing” is “the act of a person or thing that
prints.”4 Further, as the Examiner explains,

4 RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 1049 (2d Random
House ed. 1999) (emphasis added).
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“printing a[n] intended amount” and “printing said transaction
number” [] accomplished solely by a machine printer is
improper because in the check processing art, human beings are
often responsible for writing payment amount and other
information onto checks.

(Ans. 17.) Appellants failed to provide any persuasive response and
therefore we find no error in the Examiner’s findings.
Appellants’ remaining arguments are also unavailing. Appellants
first merely recite claim limitations and assert that the cited prior art fails to
teach or suggest these limitations. This assertion does not constitute an
argument on the merits, because “[a] statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii).
Second Appellants solely recite case law presumably attempting to
challenge the Examiner’s reasoning to support the combination of Jones and
Kunkler. Notably absent, however, is any identification of error in the
Examiner’s findings. We are, therefore, not persuaded that the Examiner
failed to provide some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.
Accordingly, we sustain the obviousness rejection of claim 1 and
claims 4-6, 9, 10, and 13-17, not separately argued with particularity.

THE REMAINING REJECTION
Claims 7 and 8
Claims 7 and 8 depend from independent claim 1, but were rejected
under 35 U.S.C. § 103(a) as unpatentable over Jones, Kunkler, and Cousins.
Appellants rely on the arguments presented for claim 1 and present no
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separate argument for patentability of claims 7 and 8. (Br. 13-14.) Based on
the above discussion, we, therefore, find no error in the Examiner’s rejection
of claims 7 and 8 and sustain the rejection.

CONCLUSION
The Examiner erred in rejecting claims 1, 4-10, and 13-17 under
§ 101. Under § 103, however, the Examiner did not err in rejecting claims 1,
4-10, and 13-17.

ORDER
The Examiner’s decision rejecting claims 1, 4-10, and 13-17 under
§ 101 is reversed, but the Examiner’s decision rejecting claims 1, 4-10, and
13-17 under § 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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