Ex Parte Alexander et al

Patent Trial and Appeal Board

Feb 24, 2016

11170937 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111170,937 0613012005 Robert Minter Alexander IV
21967 7590 02/24/2016
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67519.00ll40 5844
EXAMINER
PRASAD, NANCY N
ART UNIT PAPER NUMBER
3624
MAILDATE DELIVERY MODE
02/24/2016 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
Ex parte ROBERT MINTER ALEXANDER IV,
CHARLES AARON ROSENBLATT,
DANIEL R. O'MALLEY,
and SCOTT DAVID GRIMES
Appeal2014-002569
Application 11/170,937
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Robert Minter Alexander IV, Charles Aaron Rosenblatt, Daniel R.
O'Malley, and Scott David Grimes (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 41-70, the only claims pending
in the application on appeal. Oral arguments were presented February 4,
2016. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed May 6, 2013) and Reply Brief ("Reply Br.," filed December 16,
Appeal2014-002569
Application 11/170,937
The Appellants invented a way of providing transactional access to a
demand deposit account while imposing a credit card interchange rate on the
respective transaction. Specification 1 :5-9.
An understanding of the invention can be derived from a reading of
exemplary claim 41, which is reproduced below (bracketed matter and some
paragraphing added).
41. A method for processing a purchase transaction between an
account holder and a merchant, the method comprising:
[ 1] identifying a credit account and a demand deposit account,
the credit account and demand deposit account each
associated with the account holder,
the credit account associated with a first financial
institution and the demand deposit account associated
with a second financial institution;
[2] receiving at the first financial institution via an authorization
network transaction data
associated with a purchase transaction initiated by the
account hoider with the merchant using the credit
account,
the purchase transaction having a transaction amount;
[3] providing authorization data for the purchase transaction via
the authorization network;
[ 4] transferring from the first financial institution to the
merchant
and
at least a portion of the transaction amount to pay the
merchant;
2013), and the Examiner's Answer ("Ans.," mailed October 15, 2013), and
Final Action ("Final Act.," mailed August 29, 2012).
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Appeal2014-002569
Application 11/170,937
[5] using one or more computer processors, requesting from the
first financial institution payment of the at least a portion of the
transaction amount, wherein:
[ 6] the first financial institution requests from the second
financial institution an automated clearing house transfer of the
transaction amount from the second financial institution to the
first financial institution, the request made via an automated
clearing house network;
and
[7] the first financial institution receives the automated clearing
house transfer via the automated clearing house network.
The Examiner relies upon the following prior art:
O'Leary US 6,609,113 Bl Aug. 19, 2003
Claims 41-70 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention. 2
Claims 41-70 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over O'Leary.
ISSUES
The issues of indefiniteness tum primarily on whether the claims
particularly point out and distinctly claim the invention. The issues of
novelty tum primarily on whether 0 'Leary describes a "purchase transaction
initiated by the account holder with the merchant using the credit account"
2 The Examiner withdrew a rejection under 35 U.S.C. § 112, first paragraph.
Ans. 3.
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Appeal2014-002569
Application 11/170,937
or requesting from a financial institution associated with the demand deposit
account an automated clearing house transfer of the transaction amount.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
01. The disclosure contains no lexicographic definition of "credit
account."
02. The term "credit account" is a term of art in business meaning
an account which a customer has with a shop which allows him or
her to buy goods and pay for them later. 3
Facts Related to the Prior Art
O'Leary
03. O'Leary is directed to conducting electronic commerce, and
more particularly to ways in which a payor pushes electronic
credits to a payee using an Electronic Funds Transfer system.
O'Leary 1: 16-20.
04. O'Leary describes debit and credit card transactions being
currently processed using the Electronic Funds Transfer EFT
network. The debit message comprising the transaction is carried
over the EFT network from the point of origination to the
financial institution that issued the card. Only debit messages
3 Credit Account, BUSINESS DICTIONARY.COM,
http://www.businessdictionary.com/definition/credit-account.html.
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Appeal2014-002569
Application 11/170,937
were carried by the EFT network, including debit reversal
messages, prior to 0 'Leary. 0 'Leary 2 :22-29.
05. 0 'Leary describes a Payment Portal Processor; a digital Wallet;
an Internet Pay Anyone (IP A) Account; a Virtual Private Lockbox
(VPL); an Account Reporter; the existing EFT networks; and a
cash card. The Payment Portal Processor (PPP) is a software
application that augments any Internet browser with e-commerce
capability. The PPP software sits in front of and provides a secure
portal for accessing (linking to) the user's Demand Deposit
Accounts (DDA) and IP A accounts. The PPP enables the user to
push electronic credits from its DDA and IPA accounts to any
other accounts through the EFT network. O'Leary 4:54---65.
06. O'Leary describes the user supplying the PPP with its credit
card number. The user is then given the option to fund the
payment with his or her credit card. The PPP contacts the credit
card issuer authorization for the credit in the amount of the
payment. When the authorization is returned, the EFT credit to
the payee is funded from the funds from the credit card. The
user's bank then settles with the credit card issuer at the end of the
day. O'Leary 5:42-50.
07. 0 'Leary describes the IP A account as a special purpose account
with limited functionality for originating electronic payments.
Funds in an IP A account can only be accessed electronically by
the user of the account using standard authentication procedures
(e.g., a PIN). The PPP securely communicates with the IP A
account to initiate payments. One essential feature, completely
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Application 11/170,937
contrary to the prior art, is that payments made from the IP A
account are transmitted to the payee as a credit over the secure
EFT network. Only debit related transactions were initiated on the
EFT system prior to O'Leary. O'Leary 5:51---6:3.
08. O'Leary describes the PPP enhanced Wallet automatically
filling in electronic merchant purchase forms with the user's
shipping address, e-mail address, discount numbers, etc. The PPP
enhanced Wallet supports virtual cash (IP A/DDA) payments in
accordance with the present invention, traditional credit and debit
card "pull" payments and a combination of the two types of
payments. Upon receipt of an electronic purchase message from a
merchant web site, the PPP enhanced Wallet user is able to:
1) approve a purchase; 2) initiate the payment through a payment
authorization to the consumer's bank; 3) verify the accuracy of the
merchant's payee information (identification of the merchant's
account at the merchant's bank; 4) generate a purchase
confirmation that is transmitted to the merchant web site; and
5) generate a receipt that can be stored at the server hosting the
PPP enhanced Wallet. O'Leary 10:14--35.
09. O'Leary describes the PPP enhanced Wallet using functionality
from online banking services to link some or all of the accounts
maintained by the user at the bank. The user is thus able to
transfer funds, amounts, value, from one account to another.
O'Leary 10:59--11:3.
10. O'Leary describes the IPA account as a specialized account
used specifically for electronic commerce. Once the IP A account
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Application 11/170,937
has been established, the user is able to fund this account from its
normal DDA checking or savings accounts, consumer's Line of
Credit, or credit, or debit card account held by the bank or any
other account from which the consumer can transfer funds (e.g.,
another DDA account or credit card account at another financial
institution). The IPA account provides the user with a
confirmation capability in order to verify that the amount drawn is
correct. O'Leary 11 :62-12:7.
ANALYSIS
Claims 41-70 rejected under 35 USC§ 112, second paragraph, as failing
to particularly point out and distinctly claim the invention
We are persuaded by Appellants' argument that the claims are
sufficiently definite for the reasons Appellants set forth at Appeal Brief 15-
17.
Claims 41-70 rejected under 35 USC§ 103(a) as unpatentable over
O'Leary
We are persuaded by Appellants' argument that 0 'Leary does not
describe a "purchase transaction initiated by the account holder with the
merchant using the credit account" and the transferring of 0 'Leary does not
include the transfer from a second financial institution having the demand
deposit account to a first financial institution having a credit account, nor
does it include a request from the first financial institution payment of the at
least a portion of the transaction amount. App. Br. 18-20.
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The first argument is based on the meaning of a credit account. The
words of a claim are generally given their ordinary and customary meaning.
The ordinary and customary meaning is the meaning that the term would
have to a person of ordinary skill in the art in question. See In re Trans logic
Tech., Inc., 504 F.3d 1249, 1257 (Fed.Cir.2007). The context of the claim
presents a credit account in the context of financial monetary holdings rather
than accounting ledgers. The Specification provides no lexicographic
definition and does not even use the term "credit account." Accordingly we
look to external sources of definitions to understand the limitation. Here the
term "credit account" in this context is a term of art meaning an account
which a customer has with a shop which allows him or her to buy goods and
pay for them later. FF 02. Where a limitation is a term of art in the context
laid out by the claim, the meaning of the term of art is the definitional
customary meaning to such a person skilled in that context.
The Examiner finds that O'Leary can fund its IPA account with a credit
card. Final Act. 8. It is unclear whether a credit card account, not being
with a shop, is within the scope of the definitional meaning of a credit
account, but even if it is, the claims recite receiving transaction data
associated with a purchase transaction initiated by the account holder with
the merchant using the credit account. Because the account holder uses the
IP A account rather than the credit card account to initiate the purchase, the
credit card account is not within the scope of the claims.
Also, the Examiner only finds that some transfer is made from a demand
deposit account, not that the amount of that transfer is the transaction
amount. Final Act. 9. O'Leary generally describes end of day cumulative
transfers.
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The remaining independent claims have similar limitations.
CONCLUSIONS OF LAW
The rejection of claims 41-70 under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention is
improper.
The rejection of claims 41-70 under 35 U.S.C. § 103(a) as unpatentable
over O'Leary is improper.
DECISION
The rejection of claims 41-7 0 is reversed.
REVERSED
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