Ex Parte 7,983,951 B1 et alDownload PDFPatent Trial and Appeal BoardMay 30, 201895002003 (P.T.A.B. May. 30, 2018) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/002,003 06/01/2012 7,983,951 B1 P33953US00/25723.002 9712 43536 7590 05/30/2018 MUSKIN & FARMER LLC 100 West Main Street SUITE 205 Lansdale, PA 19446 EXAMINER PEIKARI, BEHZAD ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/30/2018 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 PATENT TRIAL AND APPEAL BOARD ____________ CAN CAPITAL, INC., Requester, v. KABBAGE, INC., Patent Owner. ____________ Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 Technology Center 3900 ____________ Before STEPHEN C. SIU, JEREMY J. CURCURI, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge NEW DECISION UNDER 37 C.F.R. § 41.77(f) Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 2 BACKGROUND The ’951 patent was the subject of inter partes reexamination Appeal 2016-000895, for which the Board’s decision was mailed on March 31, 2016, the (“’895 Decision”). In the ’895 Decision, the Board affirmed the Examiner’s decision to reject claims 1–4 and 7–9. The Board also entered new grounds of rejection of claims 1–9 pursuant to 37 C.F.R. § 41.77(b). Specifically, the Board rejected claims 1–8 under 35 U.S.C. § 103(a) as unpatentable over May (US 2006/0116957 Al, published June 1, 2006), claim 3 under 35 U.S.C. § 103(a) as unpatentable over May and Wilson (US 2009/0144152 Al, published June 4, 2009 (claiming priority to a provisional application having a filing date of November 30, 2007)), and claim 9 under 35 U.S.C. § 103(a) as unpatentable over May and Weksler (US 2006/0149665 Al; published July 6, 2006). ’895 Decision 27. In response to the ’895 Decision, the Patent Owner requested reopening of prosecution under 37 C.F.R. § 41.77(b)(1) on May 31, 2016. The Request to Reopen (“Req.”) sought amendments to claims 1–5 and 7–9 and introduced new evidence, namely a declaration by William C. Kitchen (“the Kitchen Declaration”). The Requester filed comments in response thereto on June 29, 2016. In the Order Remanding Inter Partes Reexamination Under 37 C.F.R. § 41.77(d) to the Examiner, mailed April 27, 2017, the Board granted the Patent Owner’s Request to Reopen with regard to claims 1–9 but refused entry of the amendments, as well as Patent Owner’s and Requester’s comments regarding the amendments. Pursuant to 37 C.F.R. § 41.77(d), the Examiner issued Examiner’s Determination on July 6, 2017 (“Ex. Det.”), determining that the new Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 3 evidence does not overcome the rejections of claims 1–9. In response, Patent Owner submitted Patent Owner’s Comments Under 37 C.F.R. § 41.77(e) on August 7, 2017 (“PO Cmts.”) and Requester filed Requester’s Response Under 37 C.F.R. 41.77(d) on September 7, 2017 (“Req. Cmts.”). This reopened reexamination is now before the Board for issuance of a New Decision under 37 C.F.R. § 41.77(f). A New Decision “is deemed to incorporate the earlier decision, except for those portions specifically withdrawn.” 37 C.F.R. § 41.77(f). ANALYSIS Because Patent Owner argues claims 2–9 based on arguments with respect to claim 1 and argues only the rejection of claim 1 as obvious over May (see ’895 Decision 20–25; see also PO Cmts. 4–17), the sole issue before us is whether the Examiner erred in finding that the entered portion of the Kitchen Declaration does not overcome the new ground of rejection of claim 1 as obvious over May. We are not persuaded the Examiner erred and remain convinced that claim 1 is unpatentable as obvious over May for the reasons detailed in our ’895 Decision. See ’895 Decision 20–25. In support of the contention that claim 1 is not obvious over May, Patent Owner presents the following five arguments: 1) the rejection fails as a matter of law (PO Cmts. 4–7); 2) May is non-analogous art (id. at 7–9); 3) the claimed invention is not a predictable variation of May (id. at 9–12); 4) May does not teach lending to a seller (id. at 12–14); and Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 4 5) May’s teachings of a “payment” cannot correspond to the claimed “loan” (id. 14–16). We address each of these arguments below. The rejection fails as a matter of law The basis of Patent Owner’s argument that the rejection fails as a matter of law is that the Examiner did not consider the Kitchen Declaration. PO Cmts. 4–7. This argument is not persuasive. The Examiner considered the Kitchen Declaration but found it did not overcome the new grounds of rejection in the ’895 Decision. See Ex. Det. 5 (stating the Examiner’s consideration of the Kitchen Declaration) and id. at 10 (referring to the Board’s reasoning in the ’895 Decision). In particular, in response to Patent Owner’s contention that the ’895 Decision fails to further “explain how a payment instrument that includes loan financing renders the claimed invention obvious” (PO Cmts. 7), the Examiner referenced our findings, citing paragraphs 23, 45, 47–48, 53, and 57 of May (Ex. Det. 10 (citing ’895 Decision 24)). We have reviewed the Kitchen Declaration and Patent Owner’s arguments and do not find a persuasive rebuttal to numerous findings in the ’895 Decision, which, in our view, are sufficient to maintain the conclusion that claim 1 is obvious over May. See, e.g., ’895 Decision 24 (finding May’s disclosure that “payment instruments may also include loan financing ... [wherein] the online payment service 120 may cooperate with a third party processor (e.g., a financial institution) to process loan financing and to create or extend a line of credit for a participant” (May ¶ 45) at least suggests seller financing because a seller is “a participant”); see also May ¶ 34 (“[a] user may operate as a Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 5 seller, buyer, or both” and “[a]vailable payment instruments may include . . . loan financing”). In other words, in view of the express disclosure of May, the Kitchen Declaration does not convince us that May precludes seller financing and payments based thereon. Rather, we are persuaded by Requester’s arguments (Req. Cmts. 2–3) in response to Patent Owner’s argument that the rejection of claim 1 “fails as a matter of law” (PO Cmts. 4–7). In particular, we agree with Requester that the Kitchen Declaration, in addition to attacking numerous strawman arguments, amounts to an assertion that the claims of the ’951 Patent are not obvious over May because the ’951 Patent and May are “fundamentally different.” We also agree that “the salient question is whether the claims of the ’951 Patent are obvious in view of the disclosure of May,” and not whether the respective specifications are fundamentally different. Req. Cmts. 3. Accordingly, we are not persuaded that the rejection of claim 1 as obvious over May “fails as a matter of law” because the new evidence has not been considered. May is non-analogous art Patent Owner argues that May is non-analogous art with respect to the ’951 Patent. We are not persuaded. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d. 1343, Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 6 1348 (Fed. Cir. 2011) (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The Examiner finds that May is from the same filed of endeavor because they are similarly classified and that the ’951 Patent “is directed to loan processing for an online marketplace and May is directed to an online payment processing system, including loan payments.” Ex. Det. 11. The Examiner thus concludes that the two are analogous art. Id. at 11–12. Patent Owner’s argument that the Examiner did not properly consider the Kitchen Declaration is not persuasive. PO Cmts. 9. Rather the Kitchen Declaration does not convince us that May is non-analogous art, contrary to the Examiner’s determination. The claimed invention is not a predictable variation of May Patent Owner argues that “the evidence presented by the Kitchen Declaration establishing that the claimed invention is not a predictable variation of May has not been properly considered by the Examiner.” PO Cmts. 12. Patent Owner’s line of reasoning (id. 9–12) is unconvincing. For instance, Patent Owner’s argument that “[a]t best, May suggests providing lines of credit to buyers as a source of funds that are then used to make payments for goods purchased on the e-commerce site, just as a buyer using a credit card uses that source of funds to make payments” (PO Cmts. 10) is unpersuasive in view of our discussion above that May discloses Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 7 providing loans to participants and the seller is a participant (see May ¶ 45). Patent Owner’s argument that “May provides no substantial detailed explanation as to how the consumer lending to buyers suggested in May would be designed or implemented” (PO Cmts. 10) is not an argument against obviousness. Patent Owner argues converting May’s online payment system to the claimed system of the ’951 Patent that grants loans to sellers, even if it is achievable, would require major modifications to a multitude of hardware and software components and functionalities, such as website interface, support systems, operational infrastructure, specialized user interface, customized databases, system logic, systems connectivity implementations, interfaces with third parties, and so on. Id. This argument is unpersuasive because it is not commensurate with the scope of claim 1. Accordingly, this line of reasoning also does not convince us that the Examiner failed to consider the Kitchen Declaration with respect to the claimed invention not being a predictable variation of May. May does not teach lending to a seller Patent Owner argues “the Examiner ignored the evidence presented by the Kitchen Declaration showing that May does not teach lending to a seller.” PO Cmts. 13. We disagree for the reasons stated above, namely, May discloses “payment instruments may also include loan financing . . . [wherein] the online payment service 120 may cooperate with a third party processor (e.g., a financial institution) to process loan financing and to create or extend a line of credit for a participant.” May ¶ 45. Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 8 May’s teachings of a “payment” cannot correspond to the claimed “loan” Patent Owner argues “[t]he Examiner failed to consider the evidence presented by the Kitchen Declaration establishing that a loan is not a payment.” PO Cmts. 15. We are not persuaded the Examiner failed to consider the evidence. Ex. Det. 15–16. Rather, the Kitchen Declaration is directly contradicted by May’s disclosure that “payment instruments may also include loan financing.” May ¶ 45. CONCLUSION The Examiner did not err in findings that the new evidence in the form of the Kitchen Declaration and Patent Owner’s arguments based thereon fail to overcome the rejection of claim 1 as obvious over May. DECISION We maintain the rejection of claims 1–8 under 35 U.S.C. § 103(a) as unpatentable over May, the rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over May and Wilson, and the rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over May and Weksler. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 9 timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2018-001184 Reexamination Control 95/002,003 Patent 7,983,951 B2 10 Patent Owner: MUSKIN & FARMER LLC 100 WEST MAIN STREET SUITE 205 LANSDALE PA 19446 cc: Third Party Requester ARNOLD & PORTER LLP ATTN: IP DOCKETING 601 MASSACHUSETTS AVE., NW WASHINGTON, DC 20001-3743 Copy with citationCopy as parenthetical citation