Ex Parte Barbara et al

Board of Patent Appeals and Interferences

Nov 17, 2010

09903284 (B.P.A.I. Nov. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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75127 7590 11/19/2010
KING & SPALDING LLP (CITI CUSTOMER NUMBER)
ATTN: Eric Sophir
APPLICATION NO.
1700 PENNSYLVANIA AVENUE, NW
SUITE 200
EXAMINER
091903,284 0711 112001 Ellen Barbara CITI0230 9290
FILING DATE
OYEBISI, OJO 0
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
WASHINGTON, DC 20006 3695
ATTORNEY DOCKET NO.
Please find below andlor attached an Office communication concerning this application or proceeding.
CONFIRMATION NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Citi-Docket @kslaw.com
11/19/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte ELLEN BARBARA and
ANTONY JENKINS
Appeal 2009-006566
Application 091903,284
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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.
Appeal 2009-006566
Application 091903,284
STATEMENT OF THE CASE
Ellen Barbara and Antony Jenkins (Appellants) seek review under 35
U.S.C. 5 134 (2002) of a final rejection of claims 1- 11, 17-44, and 50-72, the
only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b)
(2002).
We AFFIRM.
THE INVENTION
The Appellants invented a way of making on-line payments using a
transaction account as a hub for such payments. (Specification 1: 19-21).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method for making on-line payments, comprising:
[I] receiving enrollment information from a user for an on-line
payments service;
[2] receiving the user's designation of a source account for
withdrawing funds for the on- line payments;
[3] providing a transaction account for the user as a money
deposit account accessible via a single account number that the
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed March 6, 2008) and the Examiner's Answer ("Ans.," mailed May
28, 2008).
Appeal 2009-006566
Application 091903,284
user can use both as a source from which to send funds and a
destination into which to receive funds and with at least one of
a plurality of service levels;
[4] wherein providing the transaction account for the user with
at least one of the plurality of service levels further comprises
[4.1] providing the transaction account for the user with a
first level service that includes an on-line person-to-
person payment service enabling the user to receive and
send funds from the user's transaction account, with a
save for later feature enabling the user to accumulate a
balance of funds in the user's transaction account for later
use, and with a held money feature for retaining funds in
the user's transaction account which the user has
designated to be sent to a recipient but which has not yet
been picked up by the recipient;
[4.2] providing the transaction account for the user with a
second level of service that includes all features of the
first level of service plus an access card enabling the user
to access funds in the user's transaction account for off-
line transactions; and
[4.3] providing the transaction account for the user with a
third level of service that includes all features of the first
and second levels of service plus a credit line enabling
the user to access both line of credit funds and
accumulated balance funds in the user's transaction
account;
[5] allowing the user to have funds reside in the transaction
account; and
[6] allowing the user to use the funds residing in the transaction
account for at least one of
making an on-line payment with funds in the transaction
account,
making an online purchase with funds in the transaction
account,
making an off-line purchase with funds in the transaction
account,
Appeal 2009-006566
Application 091903,284
making a cash withdrawal with funds in the transaction
account,
making a credit card account payment with funds in the
transaction account,
making a bill payment with funds in the transaction
account, and
making an international payment with funds in the
transaction account.
THE REJECTION
The Examiner relies upon the following prior art:
0' Leary US 6,609,113 B1 Aug. 19,2003
Claims 1-11, 17-44, and 50-72 stand rejected under 35 U.S.C. 5 103(a)
as unpatentable over O'Leary.
ISSUES
The Appellants' arguments are that (1) O'Leary does not enable the user
to receive and send funds from the user's transaction account (Appeal Br. 7 -
see limitation [4.1]); (2) it was not inherent for O'Leary to retain funds in the
user's transaction account which the user has designated to be sent to a
recipient but which has not yet been picked up by the recipient (Appeal Br.
7-8; see limitation 4.11; and that the Examiner improperly took notice of the
use of lines of credit (Appeal Br. 8-9 - see limitation 4.31.
The issues are then whether O'Leary has a transaction account that
enables sending and receiving of funds, and whether it was predictable for
O'Leary's transaction account to retain funds and be associated with a line
of credit account.
Appeal 2009-006566
Application 091903,284
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 the Prior Art - O'Leary
01. O'Leary is directed to electronic commerce in which a payor
pushes electronic credits to a payee with Electronics Funds
Transfer (EFT). O'Leary 1 : 16-20.
02. O'Leary uses an Internet Pay Anyone (IPA) account that is
used to send (push) funds to any other accounts through the EFT
network. O'Leary 455-65.
03. O'Leary's user is able to fund the IPA account from its normal
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).
O'Leary 11:62-12:3.
ANALYSIS
The Appellants argue that O'Leary's Internet Pay Anyone (IPA) account
can only dispense funds, not receive them. The Examiner correctly responds
that O'Leary's IPA account receives funds to fund the account. Answer 20.
FF 03. The question of O'Leary's IPA account sending funds is not at issue
and is supported by the facts. Answer 19 and FF 02. The Appellants are
apparently contending that O'Leary's IPA account cannot receive funds
from parties other than the user, but this is not commensurate with the scope
Appeal 2009-006566
Application 091903,284
of the claim, as limitation [4.1] recites "enabling the user to receive and send
funds from the user's transaction account" without specifying the party on
the other side of the send or receive operation.
The second argument regards whether funds, once posted to an account,
necessarily accumulate in the account. The Examiner essentially found this
is an inherent feature of accounting. Answer 20. That is, when funds are
posted in an accounting transaction, the necessity of keeping the books in
balance necessitates that those funds be left there until there is a clearing
transaction. We must agree, as this is a feature of basic bookkeeping and
accounting, for centuries. The Appellants appear to take issue with the
necessity of this feature (Appeal Br. 7-8), but do not explain why this basic
feature of bookkeeping would be violated. Even if there were an example of
its violation, such as a feature of funds accumulation, it would at least be
predictable to one of ordinary skill in the financial arts.
The third argument is that the Examiner did not provide evidence that
the use of credit lines tied to accounts was notoriously well known. (Appeal
Br. 8-10). As O'Leary provides evidence of this notoriety (FF 03), we find
this argument unpersuasive. Certainly the Appellants provide no reason to
doubt the notoriety of this finding of fact by the Examiner. Consequently,
we adopt this finding as well, as it is properly evidenced by O'Leary.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-1 1, 17-44, and 50-72
under 35 U.S.C. 5 103(a) as unpatentable over O'Leary.
Appeal 2009-006566
Application 091903,284
DECISION
The rejection of claims 1-11, 17-44, and 50-72 under 35 U.S.C. 5 103(a) as
unpatentable over O'Leary is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a)(l)(iv).
AFFIRMED
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