Ex Parte Albornoz

Board of Patent Appeals and Interferences

Aug 30, 2010

10759966 (B.P.A.I. Aug. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JORDI ALBORNOZ
____________

Appeal 2009-012862
Application 10/759,966
Technology Center 3600
____________

Before, JAMES D. THOMAS, ANTON W. FETTING and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a system and method of online banking, and more
specifically to automatic online payments. (Specification 1:7-8).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for providing automatic recurring online
payments, the method comprising the steps of:
receiving, from a user, an automatic recurring online
payment configuration that includes an amount and an interval for
executing a plurality of automatic recurring payments;
determining that one of the automatic recurring payments is to
be executed based on the automatic recurring online payment
configuration;
in response to determining that the one automatic recurring
payment is to be executed, sending a notification to the user to notify
the user that the one automatic recurring payment is to be executed,
the notification being sent to the user before the one automatic
recurring payment is executed; and
determining .whether or not to execute the one automatic
recurring payment based on at least one of a response to the
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notification received from the user and a lack of a response to the
notification from the user within a specified period of time.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ensel US 6,493,685 B1 Dec. 10, 2002

The following rejection is before us for review.
The Examiner rejected claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Ensel.
The Examiner rejected claims 1-9 under 35 U.S.C. 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The Examiner rejected claims 1-9 under 35 U.S.C. 101 because the
claimed invention is directed to non- statutory subject matter.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claims 1-20
on appeal as being unpatentable under 35 U.S.C. § 102(b) over Ensel on the
grounds that when the user uses the “pay the bill” button included in an
email to a customer with an associated bill, this constitutes an execution of
an automatic recurring online payment?
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Has Appellant shown that the Examiner erred in rejecting claims 1-20
on appeal as being unpatentable under 35 U.S.C. 112, second paragraph?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Ensel discloses recurring or monthly presented bills for payment
by a company, such as telephone or utility companies to which a user who
owes money for service. (Col. 2, ll. 51-52).
2. Ensel discloses payment preference options which can be selected
by a client including preauthorized, on due date, at end of month, full or
fixed amount, automatic within limit. (col.10, ll. 41-45)
3. Ensel discloses:

[T]he IIP 20 formats the electronic bill, encrypts it
and send the Email to the Email address previously
provided by the customer 80. Once the Email
message has arrived at the server containing the
customer's Email account, the customer 80 is able
to open the message, decrypt and review the bill.
In one embodiment of the present invention, the
mechanism for effecting the customer's payment is
included in the Email message, for example code
which creates a "pay the bill" type button. In one
example, this button may link the customer to a
biller direct site 35 or another CSP site (e.g., one
maintained by the IIP 20) where the customer can
pay the electronic bill.
(Col. 8, ll. 52-63).
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4. The Examiner found that the claim limitation of in response to
determining that the one automatic recurring payment is to be executed,
sending a notification to the user to notify the user that the one automatic
recurring payment is to be executed, the notification being sent to the user
before the one automatic recurring payment is executed is disclosed by
Ensel when an email containing the bill with a “pay the bill” button is
included in the email, and is used or not used to pay the bill at that time.
(Answer 13).

ANALYSIS
We affirm the rejection of claims 1-20.
Initially, we note that the Appellant argues independent claims 1, 10
and 17 together as a group. Correspondingly, we select representative claim
1 to decide the appeal of these claims, remaining claims 10 and 17 standing
or falling with claim 1. Appellant does not provide a substantive argument
as to the separate patentability of claims 2- 9, 11-16 and 18-20 that depend
from claims 1, 10 and 17, respectively. Claims 2- 9, 11-16 and 18-20 thus
fall with claims 1, 10 and 17. See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Preliminarily, we address the scope of the claims. Claim 1 recites, in
pertinent part, “automatic recurring online payments”. We interpret this
phrase to require only that payments be made automatically e.g., on line, and
that such payments are recurring, e.g., payments to be made each month.
The Examiner found that the claim limitation, in response to
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determining that the one automatic recurring payment is to be executed,
sending a notification to the user to notify the user that the one automatic
recurring payment is to be executed, the notification being sent to the user
before the one automatic recurring payment is executed, is disclosed by
Ensel when an email containing the bill with a “pay the bill” type button is
included in the email and is or is not used to pay the bill at that time. (FF 4)
Appellant however argues that:
Ensel does not teach determining that an automatic
recurring payment is about to be executed,
notifying a user that the payment is about to be
executed, and executing or not executing the
automatic recurring payment based on the user's
response or lack of response to the notification.
Ensel merely teaches that a system transmits
billing information to a user who then gives
instructions on how to pay the bill. The system of
Ensel then pays the bill based on .the user's
payment instructions. If the user sets up an
automatic payment, the system of Ensel simply
pays the bill automatically like any conventional
bill payment system.
(Appeal Br. 8).
We disagree with Appellant because Appellant has adopted an overly
narrow interpretation of the claim language in responding to the Examiner’s
rejection. We find rather that Ensel discloses recurring or monthly presented
bills for recurring payment to a company, such as to telephone or utility
companies (FF 1). That is, Ensel discloses recurring billing, which
correspondingly means recurring payments are to be made by user in
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response to such recurring billing. We find that in Ensel, emailed bills are
sent to a user before the user uses the “pay the bill button” to make payment
because the button is part of the same communication which initially
presents the bill to the customer. (FF 3). We thus find that when the user
executes payment using the “pay the bill” button, this constitutes an
automatic payment of a recurring required payment. Accordingly, Ensel
meets the required claim limitation.
Appellant argues next that:
…Ensel does not teach sending a notification to
the user to notify the user that an automatic
recurring payment is to be executed before that
automatic recurring payment is executed.
Therefore, Ensel cannot possibly teach
determining whether or not to execute a payment
based on a response to such a notification received
from the user and/or a lack of a response to such a
notification from the user within a specified period
of time.
(Appeal Br. 12)
Claim 1 recites, in pertinent part, determining whether or not to
execute the one automatic recurring payment based on at least one of a
response to the notification received from the user and a lack of a response
to the notification from the user within a specified period of time.
Based on our reading of this claim language, we are again not
persuaded by Appellant’s arguments because we do not interpret the claims
to require that the recurring payment be automatic, but that execution of
payment be automatic to a recurring obligation to pay. As found supra, the
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user in Ensel by activating the “pay the bill” button, causes an automatic
execution of a recurring payment. The IIP or the CSP being the recipient of
the signal from an activated “pay the bill” button (FF 3), determines if the
“pay bill” signal is present or not in order to effect payment or not effect
payment. The default condition is a “no pay” mode where no pay bill signal
is received from the button. We thus find that Ensel meets the determining
step of claim 1.
We will not sustain the rejection of claims 1, 8 and 9 under 35 U.S.C.
112, second paragraph. The Examiner found that these method claims
lacked definiteness because “Applicant's claimed limitations do not
adequately describe the structure of the device. As such, it is necessary to
clarify where the computer implementation takes place.” (Answer 3). We
decline to accept this reasoning because it goes to patent eligibility rather
than definiteness, which is covered under 35 U.S.C. § 101, and not
35 U.S.C. 112, second paragraph.
Since our decision finds that all the claims on appeal were rejected
under 35 U.S.C. § 102(b) without error, we need not reach the rejection of
claims 1-9 under 35 U.S.C. § 35 U.S.C. § 101.

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 102(b) as being anticipated by
Ensel.
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We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1-9 under 35 U.S.C. 112, second paragraph.

DECISION
The decision of the Examiner to reject claims 1-20 is AFFIRMED.

AFFIRMED

MP

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