Ex Parte Alexander et al

Patent Trial and Appeal Board

Feb 24, 2016

10822999 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/822,999 04/13/2004 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.
67519.001138 4661
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
and CHARLES AARON ROSENBLATT
Appeal2014-002567
Application 10/822,999
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 CASE1
Robert Minter Alexander IV and Charles Aaron Rosenblatt (Appellants)
seek review under 35 U.S.C. § 134 of a final rejection of claims 43---69, 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,
2013), and the Examiner's Answer ("Ans.," mailed October 16, 2013), and
Final Action ("Final Act.," mailed August 29, 2012).
Appeal2014-002567
Application 10/822,999
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 43, which is reproduced below (bracketed matter and some
paragraphing added).
43. 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;
[2] receiving transaction data associated with a purchase
transaction initiated by the account holder with the merchant
using the credit account, the purchase transaction having a
transaction amount;
[3] providing authorization data for the purchase transaction;
[ 4] transferring at least a portion of the transaction amount from
a financial institution associated with the credit account to pay
the merchant;
[5] using one or more computer processors, requesting from a
financial institution associated with the demand deposit account
an automated clearing house transfer of the transaction amount
from the financial institution associated with the demand
deposit account to the financial institution associated with the
credit account, the request made via an automated clearing
house network;
and
[6] receiving the automated clearing house transfer via the
automated clearing house network.
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Appeal2014-002567
Application 10/822,999
The Examiner relies upon the following prior art:
O'Leary US 6,609,113 Bl Aug. 19, 2003
Claims 43---69 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention.2
Claims 43---69 stand rejected under 35 U.S.C. § 102(a) as anticipated by
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"
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.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "credit
account."
2 The Examiner withdrew a rejection under 35 U.S.C. § 112, first paragraph.
Ans. 3.
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Appeal2014-002567
Application 10/822,999
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
03.0'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.
04.0'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
were carried by the EFT network, including debit reversal
messages, prior to O'Leary. O'Leary 2:22-29.
OS.O'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
3 http://www.businessdictionary.com/definition/credit-account.html
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Appeal2014-002567
Application 10/822,999
Accounts (uuA) 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.
06.0'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 IPA account as a special purpose account
with limited functionality for originating electronic payments.
Funds in an IPA 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 IPA
account to initiate payments. One essential feature, completely
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.
08.0'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 (IPA/DDA) payments in
accordance with the present invention, traditional credit and debit
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Appeal2014-002567
Application 10/822,999
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.
09.0'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 10:59-11:4.
IO.O'Leary describes the IPA account as a specialized account used
specifically for electronic commerce. Once the IPA account 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 10:59-11 :4.
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Appeal2014-002567
Application 10/822,999
ANALYSIS
Claims 43-69 rejected under 35 U.S. C. § 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
13-14.
Claims 43-69 rejected under 35 U.S.C. § 102(a) as anticipated by Leary
We are persuaded by Appellants' argument that O'Leary does not
describe a "purchase transaction initiated by the account holder with the
merchant using the credit account" or requesting from a financial institution
associated with the demand deposit account an automated clearing house
transfer of the transaction amount. App. Br. 16-17.
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
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Application 10/822,999
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 0 'Leary can fund its IP A account with a credit
card. Final Act. 7. It is unclear whether a credit card account 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. Id. O'Neil generally describes end of day cumulative transfers.
CONCLUSIONS OF LA vV
The rejection of claims 43-69 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 43-69 under 35 U.S.C. § 102(a) as anticipated by
O'Leary is improper.
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Appeal2014-002567
Application 10/822,999
uECISION
The rejection of claims 43-69 is reversed.
REVERSED
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