Ex Parte 7,983,951 B1 et al

Patent Trial and Appeal Board

May 30, 2018

95002003 (P.T.A.B. May. 30, 2018)

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)
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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
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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
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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
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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,
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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
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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.
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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
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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

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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