Appeal No. 2005-1805
Application 09/728,705
the Examiner in the answer. As to the one persuasive argument, Appellant argues at page 3 of
the brief, that the comparing step is “to determine if sufficient funds have been collected.” The
Examiner replied at page 9 of the answer stating, “the features … are not recited in the rejected
claims(s).”
At first analysis this panel reached the same conclusion as the Examiner. However, upon
further review we reach a different conclusion. While we agree that “to determine if sufficient
funds have been collected” is not explicitly stated in claim 1, we find that claim 1 does implicitly
require for a given carrier a determination of whether the pre-processed accounts receivable
(debits) are equal to processed accounts receivable (credits). We base our conclusion on the
preamble language of claim 1.
A preamble is generally not accorded any patentable weight where it merely recites the
purpose of a process or the intended use of a structure, and where the body of the claim does not
depend on the preamble for completeness but, instead, the process steps or structural limitations
are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v.
Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). However, statements in the
preamble reciting the purpose or intended use of the claimed invention must be evaluated to
determine whether the recited purpose or intended use results in a structural difference (or, in the
case of process claims, manipulative difference) between the claimed invention and the prior art.
If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ
458, 459 (CCPA 1963).
The preamble of claim 1 results in a manipulative difference between the claimed
invention and the prior art. Claim 1, line 1, requires “balancing.” The field of the present
invention is accounting and in that field the term “balancing” means to compute the difference
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