Ex parte Schwartz
Appeal 2010002006; Appl. No. 10/348,145; Tech. Center 3600
Decided December 29, 2010
The application related to automated teller machines. A representative claim on appeal read:
9. A method of operating of a self service terminal to present a user with aggregated account information in relation to a plurality of the user's accounts with individual financial institutions, the method comprising the steps of:
(a) accessing, through the Internet, items of financial information remotely held in different financial institutions at a plurality of different locations; and
(b) incorporating the items of financial information in a single screen for displaying on the display simultaneously.
The Examiner rejected originally filed claim 9 as being anticipated. During prosecution, the Applicant amended from "a screen" to "a single screen" and argued that the reference did not teach "incorporating the financial information [from different financial institutions] in a single screen ... simultaneously." The Applicant agreed that the reference taught financial information from different institutions, but asserted that the reference merely taught an ATM with a single hardware screen. The Applicant explained that the specification used "screen" to mean something different than hardware. Specifically, the term "screen" was defined in the specification to refer to the user interface graphics, text, and controls, rather than the "hardware (for example, the LCD, CRT, or touchscreen) that displays the graphics, text, [and] controls." Since the reference taught a separate login procedure for each account, the account information was displayed "on separate screens, at different times" rather than on "a single screen" as claimed.
In a Final Rejection, the Examiner further explained that the reference taught the limitation at issue as follows:
Most ATMs consist of only a single physical screen, which displays all of the information accessible by the ATM. Therefore, the ATM's disclosed by Antonin consist of a single screen, wherein the screen accesses and displays the information disclosed by Antonin, namely, the information from a number of financial institutions noted by Applicant in his remarks.
The Applicant appealed the anticipation rejection. In the Appeal Brief, the Applicant pointed again to the specification's distinction between a screen and the hardware that displays it. The Applicant then argued that "a 'single screen' in which graphics, text, controls, etc. are presented (as in the present application) is not the same as a single screen in which the screen is a hardware device that can access and display information (as in Antonin)."
In the Answer, the Examiner further explained the rejection as follows:
In short, Appellant argues that Antonin discloses only a "screen" in the sense of a television screen, ATM screen, or computer monitor that comprises glass and a projection means for displaying information, and that this screen does not anticipate the "single screen" of claims 4 and 9, which is directed to a graphical screen, such as a menu screen of an ATM that presents options for a user to select from in order to advance to a subsequent screen ...
The Examiner did not, however, limit his description of Antonin to such an understanding of the word "screen." .... [T]he [XML] content disclosed by Antonin ... includes "screens . . . for guiding a user through the financial transactions" thus employing graphics and text to allow a user to proceed from one screen to the next in order to fulfill the transaction. Thus, the "screens" anticipate the "single screen" in claims 4 and 9 of the instant invention. The Appellant has not addressed these "screens" disclosed in Antonin.
The BPAI agreed with the Examiner. The Board acknowledged the specification's use of "screen" to refer to text and graphics while excluding physical hardware like an LCD or CRT. The Board then interpreted the claim at issue to require "displaying financial information in the form of text and graphics on a software 'screen' or window."
However, the Board found that:
Antonin describes guiding a user through information presented on a single screen in order to complete a financial transaction on an ATM. Furthermore, Antonin describes a screen in both the physical hardware sense and in the software window screen sense that is consistent with the claimed invention.
Therefore, the Board found that the reference did teach a single screen for displaying financial information, and affirmed the rejection.
My two cents: I'm sure some of you reading this will think "even if the Applicant won the anticipation argument, it's OBVIOUS to present account information on a single screen rather than a series of screens." Probably, but that's not interesting so I'm not discussing that aspect.
I think the Board failed to appreciate the simultaneous aspect of the claim: "(b) incorporating the items of financial information in a single screen for displaying on the display simultaneously." I think that single word does distinguish over the reference's series of "software" screens that appear on a single hardware display. I think the Applicant's arguments should have focused more on "simultaneously." The Applicant mentioned this in the first response, but didn't develop the argument in the Appeal Brief. And while the Applicant did a good job of making the software vs. hardware distinction, maybe the argument would be stronger if it was a bit more nuanced: software screen vs. hardware display, rather than software screen vs. hardware screen.
Seems like the Applicant took some care in the spec to make the distinction between a software "screen" and the hardware that displays the screen, and between the invention's single screen which displayed information from multiple institutions simultaneously and the series of screens used in the prior art:
The term "screen" is used herein to denote the graphics, text, controls (such as menu options), and such like, that are displayed on an SST display; the term "screen" as used herein does not refer to the hardware (for example, the LCD, CRT, or touchscreen) that displays the graphics, text, controls, and such like. Typically, when a transaction is being entered at an SST, a series of screens are presented in succession on the SST display. For example, a first screen may request a user to insert a card, a second screen may invite the user to enter his/her PIN, a third screen may invite the user to select a transaction, and so on.
Could the Applicant have better expressed the distinction in the claims? A negative limitation is one way to do that – something like "in a single screen rather than a series of screens." Negative limitations often risk violating the 112 First written description requirement, but I don't think that would be the case here, given the spec paragraph I quoted above.