Ex Parte 8073744 et al

Patent Trial and Appeal Board

Sep 19, 2016

95002027 (P.T.A.B. Sep. 19, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/002,027 06/22/2012 8073744 P33964US00/25723.002 4718
43536 7590 09/19/2016
MUSKIN & FARMER LLC
100 West Main Street
SUITE 205
Lansdale, PA 19446
EXAMINER
PEIKARI, BEHZAD
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/19/2016 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 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, JEREMY J. CURCURI, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

2
Kabbage, Inc. (“Patent Owner” or “Owner”) appeals under 35 U.S.C.
§§ 134 and 315 the Examiner’s rejection of claims 1–20 and CAN Capital,
Inc. (“Requester”) appeals the Examiner’s non-adoption of a rejection of
claims 1, 2, 7, 8, 10–12, 17, 18, and 20 on other grounds.1, 2 PO App. Br. 6–
7; TPR App. Br. 4. We have jurisdiction under 35 U.S.C. §§ 134 and 315.

STATEMENT OF THE CASE
This proceeding arose from a June 22, 2012 Request for Inter Partes
Reexamination,3 by Requester, of claims 1–20 of U.S. Patent 8,073,744 B1,
titled “Method to Provide Liquid Funds in the Online Auction and
Marketplace” and issued to Robert J. Frohwein and Kathryn T. Petralia on
Dec. 6, 2011 (“the ’744 patent”).4
The ’744 patent relates to
a lending system for use with electronic commerce web sites
such as auction sites. A seller may receive a cash loan for items
placed for sale but not yet purchased by a buyer. The seller can
be required to pay back the loan after a predetermined amount of
time or as soon as the item for sale is sold and payment is
received from the buyer.
Abstract.
Claim 1 reads as follows:
1. A method of providing funds to a seller who lists
an item for sale on an ecommerce website, the e-commerce web

1 Patent Owner’s Appeal Brief, dated January 20, 2015 (“PO App. Br.”).
2 Third Party Requester’s Appeal Brief, dated January 16, 2015 (“TPR App.
Br.”).
3 “Request,” filed June 22, 2012.
4 Based on a provisional patent application having a filing date of March 2,
2009.
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

3
site being hosted by a web server, the e-commerce web site
configured to allow sellers to list goods for sale and to allow
buyers to bid on or purchase the goods for sale, the method
comprising:
visiting, by the seller using a computer connected to a
computer communications network, the e-commerce web site;
requesting, by the seller using the computer, cash from a
third party via a server, the server configured to be in
communication with a database that stores credit profiles of
parties comprising respective credit information, wherein the
server is configured to retrieve a credit profile associated with
the seller from the database and make a determination, based on
at least both the credit profile and on characteristics of the
seller’s sales history on the e-commerce web site, whether to
approve the requesting;
receiving, by the seller using the computer, in response to
the requesting, approval from the server;
receiving, by the seller using the computer, a cash
amount via a financial processing application, the cash amount
associated with the approval; and
using, by the seller, the cash amount to improve the
seller’s cash flow or other purpose.

The relevant references are:

Melchior et al. US 2002/0099655 A1 July 25, 2002
(“Melchior”)
May et al. US 2006/0116957 A1 June 1, 2006
(“May”)
Wilson et al. US 2009/0144152 A1 June 4, 20095
(“Wilson”)
Weksler et al. US 2006/0149665 A1 July 6, 2006
(“Weksler”)
Gauselmann US 2005/0282614 A1 Dec. 22, 2005

5 Wilson claims priority to a provisional application having a filing
date of November 30, 2007.
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

4
(“Gauselmann”)
Yu et al. US 2007/0073618 A1 Mar. 29, 2007
(“Yu”)

Requester Appeals the Examiner’s decision not to maintain a rejection
of claims 1, 2, 7, 8, 10–12, 17, 18, and 20 under 35 U.S.C. § 102(b) as
anticipated by May. RAN 7, 16.6

Owner appeals the Examiner’s decision to reject the claims as
follows:
Claims 1, 2, 4, 7, 10–12, 14, 17, and 20 as anticipated under 35 U.S.C.
§ 102(b) by Melchior. RAN 8, 17.
Claims 1–8, 10–18, and 20 as unpatentable under 35 U.S.C. § 103(a)
over May. Id. 8–9, 16.
Claims 1–8, 10–18, and 20 as unpatentable under 35 U.S.C § 103(a)
over Melchior. Id. 9–10, 17.
Claims 1, 2, 7, 8, 11, 12, 17, and 18 as unpatentable under 35 U.S.C.
§ 103(a) over Melchior and Yu. Id. 10, 18.
Claims 7, 8, 17, and 18 as unpatentable under 35 U.S.C. § 103(a)
over May and Yu. Id.
Claims 3 and 13 as unpatentable under 35 U.S.C § 103(a) over May
and Wilson. Id. 11, 19.
Claims 3 and 13 as unpatentable under 35 U.S.C § 103(a) over
Melchior and Wilson. Id. 11–12, 19–20.

6 Right of Appeal Notice, mailed August 19, 2014.
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

5
Claims 4 and 14 as unpatentable under 35 U.S.C. § 103(a) over May
and Melchior. Id. 12, 20.
Claims 5, 9, 10, 15, 19, and 20 as unpatentable under 35 U.S.C.
§ 103(a) over May and Weksler. Id. 12–13, 21–23.
Claims 5, 9, 10, 15, 19, and 20 as unpatentable under 35 U.S.C
§ 103(a) over Melchior and Weksler. Id. 13–14, 21–23.
Claims 6 and 16 as unpatentable under 35 U.S.C. § 103(a) over May
and Gauselmann. Id. 14, 23.
Claims 6 and 16 as unpatentable under 35 U.S.C. § 103(a) over
Melchior and Gauselmann. Id.

RELATED APPEALS
We are informed of the related appeals in Requester’s and Owner’s
Briefs. PO App. Br. 1–3; TPR App. Br. 1; PO Resp. Br. 1;7 TPR Resp. Br.
1.8

ANALYSIS
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citation omitted).

7 Patent Owner’s Respondent Brief, filed February 2, 2015.
8 Third Party Requester’s Respondent Brief, filed February 19, 2015.
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

6
In considering the disclosure of a reference, “it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
The Examiner’s obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
“When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same reason, if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 550 U.S. at 417.
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

7
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.

Owner’s Appeal: Anticipation based on Melchior
Claims 1, 2, 4, 7, 10–12, 14, 17, and 20
Owner argues that the Examiner erred in rejecting claims 1, 2, 4, 7,
10–12, 14, 17, and 20, as anticipated by Melchior. PO App. Br. 7–12; PO
Reb. Br. 1–5.9
Melchior discloses “a comprehensive, integrated, computerized
system for facilitating transactions in goods or services.” Melchior,
Abstract. See also ¶ 4 (“This invention relates in general to electronic
trading systems and methods, and in particular to computerized systems and
methods for facilitating transactions in one or more goods or services [].”).
In particular, Melchior facilitates “sellers obtaining financing or advance
payment relating to transactions.” Abstract.
The Examiner finds that Melchior describes all limitations of claims 1
and 11. (RAN 8 (incorporating by reference Request, Appendix 2)).
Owner argues specifically that Melchior does not disclose claim 1’s
“mak[ing] a determination … whether to approve the [seller’s] requesting
[cash from a third party via a server]” based on “characteristics of the seller's
sales history on the e-commerce website” or “a credit profile associated with
the seller,” as recited in claim 1 and commensurately recited in claim 11.
PO App. Br. 7–12; PO Reb. Br. 1–5. Owner’s argument is based on

9 Patent Owner’s Rebuttal Brief, filed November 16, 2015.
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

8
Melchior not disclosing “characteristics of the seller’s sales history on the e-
commerce website” because: 1) Melchior’s “seller qualification
information” is not expressly or inherently “characteristics of the seller’s
sales history on the ecommerce website;” 2) Melchior’s purchase order or
involved transaction information stored in the trade database is not expressly
or inherently “seller’s sales history on the e-commerce website;” and 3)
other data stored in Melchior’s trade database does not expressly or
inherently include “characteristics of the seller’s sales history on the e-
commerce website.” Id.
The Examiner and Requester rely on Melchior’s disclosure of a “seller
financing program” that includes “programming necessary for seller
financing functions” and a “trade database” that includes “all of the data
necessary for carrying out seller financing functions.” Melchior ¶ 112
(emphasis added); see RAN 8 (incorporating by reference Request,
Appendix 2). Among other things, the trade database includes seller
qualification information stored therein, to thereby allow the finance
provider to make an informed decision about whether to provide seller
financing. Melchior ¶ 124. Melchior also discloses that “the finance
provider is allowed continuous access to information stored in the trade
database 906 relating to the involved transaction.” Melchior ¶ 126.
Owner does not dispute that Melchior discloses a server configured to
make a determination whether to approve financing. Rather, Owner argues
error because one of ordinary skill in the art would not understand
Melchior’s server to be configured to base the determination on
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

9
“characteristics of the seller’s sales history on the e-commerce website.” PO
App. Br. 7–8; PO Reb Br. 2–5. We disagree.
Owner’s arguments are unpersuasive in view of Melchior’s disclosure
of a “seller financing program” that includes “programming necessary for
seller financing functions” and a “trade database” that includes “all of the
data necessary for carrying out seller financing functions.” Melchior ¶ 112.
An ordinarily skilled artisan could reasonably infer (Preda, 401 F.2d at 826)
Melchior’s seller financing application, that includes “programming
necessary for seller financing functions,” takes into consideration
“characteristics of the seller’s sales history on the e-commerce website,”
particularly in light of the application having access to “all of the data
necessary for carrying out seller financing functions.”
We also find unpersuasive of error Owner’s argument that claim 1 is
not anticipated by Melchior because Melchior does not disclose “a server
configured to retrieve a credit profile associated with the seller from the
database.” PO App. Br. 10–12; PO Reb Br. 5. We find that one of ordinary
skill in the art would understand Melchior’s server being in contact with a
“trade database” that includes “all of the data necessary for carrying out
seller financing functions” to include the server being “configured to retrieve
a credit profile associated with the seller from the database,” without regard
to whether Melchior expressly recites that the trade database includes “a
credit profile associated with the seller.” Melchior ¶ 112. There is no
ipsissimis verbis test for determining whether a reference discloses a claim
element, i.e., identity of terminology is not required. In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990). One of ordinary skill in the art could reasonably
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

10
infer that “a credit profile associated with the seller” is included within “all
of the data necessary for carrying out seller financing functions.” Preda,
401 F.2d at 826.
In view of the foregoing, we are unpersuaded of error in the
Examiner’s decision to reject claim 1 and also claim 11, argued on the same
basis.
Claim 4 depends from claim 1 and recites that “the server is
configured such that when the seller sells the item via the e-commerce web
site, payment for the item is paid directly to an account associated with the
server.” Claim 14 depends from claim 11 and recites, “configuring accounts
such that upon sale of the item via the e-commerce web site, payment for the
item is paid directly to an account associated with a party that provided the
cash amount to the seller.”
Owner argues error in the Examiner’s rejection of claims 4 and 14
over Melchior because transactions in Melchior take place offline, with users
either receiving an instruction to make payment offline, or uploading
evidence of other actions taken offline. PO App. Br. 12–13 (citing Melchior
¶¶ 125, 130). Owner reasons that “Melchior is merely capable of receiving
evidence and sending instructions for a payment that a user might complete
offline.” Id. 13. Owner concludes that:
While Melchior discloses, “facilitating transactions from
early or initial stages, such as an electronically proposed
purchase order, through to later or final stages, such as payment
on an invoice or invoices relating to the transaction,”
facilitating a transaction through later or final stages of a
transaction, such as an offline payment on an invoice, does not
support a disclosure of “wherein the server is configured such
that when the seller sells the item via the e-commerce web site,
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

11
payment for the item is paid directly to an account associated
with the lending server.”
Id. 12–13 (citing Melchior Abstract, ¶ 1).
We are unpersuaded of error. Melchior facilitates electronic
commerce transactions. Melchior, Abstract and ¶ 4. Melchior (¶ 125)
permits the provider of seller financing to become directly entitled to
payment by becoming a party to the transaction such that any credit
assurance proceeds “can be assigned to go directly to the finance provider.”
We are persuaded that this meets claim 4’s “the server is configured such
that when the seller sells the item via the e-commerce web site, payment for
the item is paid directly to an account associated with the server,” and
similarly meets claim 14’s “configuring accounts such that upon sale of the
item via the e-commerce web site, payment for the item is paid directly to an
account associated with a party that provided the cash amount to the seller.”
Claim 7 depends from claim 1 and recites that “the server is
configured such that the determination of whether to approve is based in part
on the seller’s sales volume on the ecommerce web site.” Claim 17 depends
from claim 11 and recites “the determination of whether to approve is based
in part on the seller’s sales volume on the e-commerce web site.”
Owner argues that the rejection of claims 7 and 17 over Melchior is
erroneous because Melchior’s trade database, which relates to Melchior’s
credit monitoring program, is not associated with Melchior’s seller financing
function. PO App. Br. 13–14 (referring to Melchior ¶ 110 and Figs. 5 and
9–11). Owner asserts that the rejection impermissibly picks and chooses
from Melchior’s unrelated teachings. Owner also argues that Melchior’s
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

12
seller qualifications or purchase order information would not include “the
seller’s sales volume on the e-commerce web site.” Id. 14.
We are not persuaded of error. Owner’s arguments overlook
Melchior’s disclosure that the “trade database” includes “all of the data
necessary for carrying out seller financing functions” and that Melchior’s
“seller financing program” includes “programming necessary for seller
financing functions.” Melchior ¶ 112. “The trade database 506 may contain
data relating to transactions and transaction activity between buyers and
sellers, including, among other data, purchase order agreements, invoices,
and settlement data.” (¶ 100). We find that, in view of this express
teaching, Melchior discloses “the server is configured such that the
determination of whether to approve is based in part on the seller’s sales
volume on the ecommerce web site,” as recited in claim 7, and that “the
determination of whether to approve is based in part on the seller’s sales
volume on the e-commerce web site,” as recited in claim 17.
Claim 10 depends from claim 1 and recites, “after the receiving
approval from the server and before the receiving the cash amount:
transmitting acceptance, by the seller using the computer, of the approval.”
Claim 20 depends from claim 11 and recites, “after the transmitting and
before the initiating: receiving, on the computer communications network,
an acceptance from the seller.”
Owner argues error in the rejection of claims 10 and 20 as anticipated
by Melchior because Melchior discloses that the seller creates and approves
a financing request before the request is approved. PO App. Br. 14
(referring to Melchior, Appendix A.). Owner also argues that the rejection
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

13
does not establish that, in Melchior, the seller’s acceptance is not necessarily
(i.e., not inherently) before receiving the loan amount (id. 14–15) because
“[i]n reality, a seller need not transmit an acceptance before receiving a cash
amount, and Requester provides no evidence that this is the case.” Id. 15.
We are unpersuaded of error. Requester points out that:
Melchior’s process flow diagrams show that the system notifies
the seller whether the financing request is approved (see “Yes”
and “No” options on the flowchart). (Melchior, at p.17, “Pre-
shipment Finance Process Flow”; p.20 “Postshipment Financing
Request Process Flow.”) Melchior also discloses that
“negotiation between the financing bank and the seller for the
amount of financing can be on-line.” (Melchior at p.30
“Summary Phase 2 - Financing Procedures.”) This negotiation
is only possible if the seller can use the system to accept or reject
the financing offer before receiving the cash amount.
TPR Resp. Br. 7. Owner does not persuasively rebut this reasoning based on
the seller and seller financing bank “negotiating.” See PO Reb. Br. 6–7. We
find that, in view of Melchior’s disclosure of the seller and the financing
provider negotiating a post-shipment payment “on-line” (Appendix 2, p. 30),
that Melchior discloses claim 10’s “after the receiving approval from the
server and before the receiving the cash amount: transmitting acceptance, by
the seller using the computer, of the approval,” and claim 20’s “after the
transmitting and before the initiating: receiving, on the computer
communications network, an acceptance from the seller.”
Owner does not separately argue the rejection of claims 2 and 12 as
anticipated by Melchior. Accordingly, in view of the foregoing, we are
unpersuaded of error in the Examiner’s determination that claims 1, 2, 4, 7,
10–12, 14, 17, and 20 are anticipated by Melchior.

Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

14
Obviousness Based on Melchior
Owner argues that the Examiner erred in rejecting the claims as
obvious over Melchior, either alone (claims 1–8, 10–18, and 20), or in
combination with Yu (claims 1, 2, 7, 8, 11, 12, 17, and 18), Wilson (claims 3
and 13), May (claims 4 and 14), Weksler (claims 5, 9, 10, 15, 19, and 20),
and Gauselmann (claims 6 and 16). See, generally, PO App. Br. 15–35; PO
Reb. Br. 1–16. Owner asserts that the evidence of commercial success
overcomes the Examiner’s case of obviousness. PO App. Br. 16–22; PO
Reb. Br. 14–16. Owner also argues that “the Board should reverse the
Examiner and find that the obviousness rejections are insufficient” because
“the Shamos Declaration does not provide any support or explanation
necessary in an obviousness rejection and neither Requester nor the Office
has provided proper support for the obviousness rejections as is required.”
PO App. Br. 24. See also PO App. Br. 22–24.
Our decision does not rely on the Shamos declaration, so we do not
reach Owner’s general assertion regarding it. To the extent Owner argues
specific shortcomings with respect to the Examiner’s obvious rejections, we
address those arguments infra.
We have reviewed Owner’s evidence of nonobviousness based on
secondary indicia. PO App. Br. 16–22; PO Reb. Br. 14–16. We are
unpersuaded that the evidence overcomes the prima facie case that the
claims are obvious.
“Evidence of commercial success . . . is only significant if there is a
nexus between the claimed invention and the commercial success.” Ormco
Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). “When
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

15
the thing that is commercially successful is not coextensive with the patented
invention . . . [,] the patentee must show prima facie a legally sufficient
relationship between that which is patented and that which is sold.” Demaco
Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir.
1988).
Owner’s evidence of nonobviousness is embodied almost exclusively
in the Frohwein Declaration10 and the exhibits referenced therein. See,
generally, Frohwein Declaration. The Frohwein Declaration is signed by an
inventor of the ’744 patent. Id. ¶ 3. Notably, the Frohwein Declaration
refers specifically to the limitations of claims 1 and 11 only. Id. ¶ 15. The
dependent claims are referenced generally as “patent rights.” Id. ¶ 18 (“the
type of commercial success enjoyed by Kabbage can only be a result of the
patent rights secured by Kabbage, including the claimed embodiments in
[the ’744 patent]”).
The Frohwein Declaration states “Kabbage looks at a variety of
factors to determine funding approval including, for example, the credit
profile and characteristics of the seller’s sales history on an e-commerce web
site.” Frohwein Declaration ¶ 8. The Frohwein Declaration also states that
“Kabbage has created a new market that provides cash to small business
owners in minutes using a shortened application process that is fully
automated.” Id. ¶ 10. Yet, as Requester correctly points out, “the claims of
the ’744 patent have no limitations directed to the size of the seller
requesting the cash, the amount of cash to be provided to the seller, the

10 Declaration of Robert Frohwein Regarding Commercial Success (signed
Sept. 11, 2013).
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

16
length of the application or the amount of time in which the cash is provided
to the seller.” Third Party Requester Comments p. 47 (filed Oct. 11, 2013).
Inventor Frohwein’s conclusory statement notwithstanding (Frohwein
Declaration ¶ 18 (“the type of commercial success enjoyed by Kabbage can
only be a result of the patent rights secured by Kabbage, including the
claimed embodiments in [the ’744 patent]”)), we are not convinced that
Owner has demonstrated “a legally sufficient relationship between that
which is patented and that which is sold.” Demaco, 851 F.2d as 1392.
In order to be commensurate in scope with the claims, the commercial
success must be due to claimed features, and not due to unclaimed features.
Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990),
aff’d, 959 F.2d 226, 228 (Fed. Cir. 1992) (Features responsible for
commercial success were recited only in allowed dependent claims, and
therefore the evidence of commercial success was not commensurate in
scope with the broad claims at issue.). An inventor’s opinion as to the
purchaser’s reason for buying the product is insufficient to demonstrate a
nexus between the sales and the claimed invention. In re Huang, 100 F.3d
135, 140 (Fed. Cir. 1996).
Owner’s evidence that “Kabbage looks at a variety of factors” to
determine funding approval weighs against Kabbage’s commercial success
resulting from the claimed factors of “the credit profile and characteristics of
the seller’s sales history on an e-commerce web site.” Frohwein Declaration
¶ 8. Further, Owner’s evidence that “Kabbage has created a new market that
provides cash to small business owners in minutes using a shortened
application process that is fully automated” (id. ¶ 10) suggests that
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

17
Kabbage’s commercial success likely flows from these unclaimed features,
rather than the broader claims recited in the ’744 patent.
Hence, we are not persuaded that the appropriate nexus exists between
the claims of the ’744 patent and Kabbage’s commercial success to thereby
overcome the prima facie case that claims 1–20 are obvious over the cited
prior art.
Regarding the Examiner’s obvious rejections based on Melchior,
either alone or in combination with Yu, Wilson, May, Weksler, or
Gauselmann (RAN 9–10, 17–23), we are unpersuaded of error. For the
reasons discussed supra, we are not persuaded that Melchior is deficient as
to the limitations of claims 1, 2, 4, 7, 10–12, 14, 17, and 20. Anticipation
being the epitome of obviousness (see In re Pearson, 494 F.2d 1399, 1402
(CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982)), we
see no error in the Examiner’s determination that these claims also are
obvious over Melchior.
The Examiner also rejects claims 3, 5, 6, 8, 13, 15, 16, and 18 as
obvious over Melchior. RAN 9–10. Owner does not argue that the subject
matter recited in the limitations of these additional claims is lacking in
Melchior. PO App. Br. 27–28; PO Reb. Br. 5–7. Instead, Owner again
argues that Melchior is deficient with respect to the limitations of the
independent claims and that the rejection is based on improper hindsight. Id.
Owner’s arguments amount to a general allegation and include insufficient
persuasive argument or evidence to convince us that the Examiner’s
rejection is erroneous. Arguments of counsel cannot take the place of
factually supported objective evidence. See, e.g., In re Huang, 100 F.3d
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

18
135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984).
Owner does not dispute that Yu, Wilson, May, Weksler, and/or
Gauselmann teach or suggest the dependent claim limitations for which they
are cited in combination with Melchior. See, generally, PO App. Br. 15–35;
PO Reb. Br. 1–16. Instead, Owner argues that these references do not cure
the alleged deficiencies of Melchior with respect to independent claims 1
and 11. Id. We find Owner’s arguments premised on these alleged
deficiencies unpersuasive of error because, as discussed supra, we do not
find Melchior deficient with respect to claims 1 and 11.
As to Owner’s specific arguments against the Examiner’s rejections
based on various combinations of references that include Melchior (PO App.
Br. 28–35; PO Reb. Br. 11–14), we are unpersuaded of error for the reasons
stated by Requester (TPR Resp. Br. 11–15), which Owner does not
persuasively rebut (see, generally, PO Reb. Br. 11–14). Accordingly, we
find no error in the Examiner’s decision to reject claims 1–20 as obvious
over Melchior, either alone or in combination with Yu, Wilson, May,
Weksler, or Gauselmann.

CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4, 7, 10–12, 14, 17,
and 20 as anticipated under 35 U.S.C. § 102(b) by Melchior. The Examiner
did not err in rejecting claims 1–20 as obvious over Melchior, either alone or
in combination with Yu, Wilson, May, Weksler, or Gauselmann.
Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

19
In view of the foregoing, we need not consider the propriety of the
Examiner’s adoption or non-adoption of the rejection of claims 1–20 on
other grounds. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).
DECISION
We affirm the Examiner’s rejection of claims 1–20.
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
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

dw

Appeal 2016-002874
Reexamination Control 95/002,027
Patent 8,073,744 B1

20
Patent Owner:
MUSKIN & FARMER LLC
100 West Main Street
SUITE 205
Lansdale, PA 19446

Third-Party Requester:
ARNOLD & PORTER LLP
601 Massachusetts Avenue, NW
Washington, DC 20001-3743