Ex Parte Blagg

Board of Patent Appeals and Interferences

Aug 21, 2009

10237572 (B.P.A.I. Aug. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte LYNN HOLM BLAGG 8
___________ 9
10
Appeal 2009-002010 11
Application 10/237,572 12
Technology Center 3600 13
___________ 14
15
Decided: August 21, 2009 16
___________ 17
18
Before HUBERT C. LORIN, ANTON W. FETTING, and 19
BIBHU R. MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
Appeal 2009-002010
Application 10/237,572
STATEMENT OF THE CASE 1
Lynn Holm Blagg (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a non-final rejection of claims 1-9, 12-24, 26-27, 29, and 31-39, 3
the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM-IN-PART. 8
THE INVENTION 9
The Appellant invented a system and method for using financial 10
products linked to a plurality of accounts to consummate financial 11
transactions (Spec. ¶ 02). 12
An understanding of the invention can be derived from a reading of 13
exemplary claims 1, 20 and 26, which are reproduced below [bracketed 14
matter and some paragraphing added]. 15
1. A method for processing transactions realized using 16
presentation instruments, the method comprising: 17

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 2, 2007) and Reply Brief (“Reply Br.,” filed August 10,
2007), and the Examiner’s Answer (“Ans.,” mailed August 10, 2007), and
Final Rejection (“Non-Final Rej.,” mailed August 15, 2006).
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[1] identifying a presentation instrument associated with a 1
transaction request, wherein the transaction request includes a 2
transaction amount, and wherein the presentation instrument is 3
associated with at least a first account and a second account; 4
[2] accessing a data base having a rule set associated with 5
the presentation instrument, the rule set being defined to 6
maximize one or more features associated with one or more of 7
the first account and the second account; 8
[3] determining, using a transaction processor, a first portion 9
of the transaction amount to apply to the first account based at 10
least in part on the rule set, the first portion comprising at least 11
one item over a threshold amount; and 12
[4] applying a second portion of the transaction amount to 13
the second account, the second portion comprising one or more 14
items below the threshold amount. 15
16
20. A system for processing transactions realized using 17
presentation instruments, the system comprising: 18
[1] a computer including a processor, a communication 19
device, and a computer readable medium, wherein the 20
communication device is operable to receive a transaction 21
request including a transaction amount, and wherein the 22
computer readable medium includes information about a 23
presentation instrument associated with at least a first account 24
and a second account, and instructions executable by the 25
processor to: 26
[a] identify the presentation instrument associated 27
with the transaction request; 28
[b] access a rule set associated with the presentation 29
instrument, the rule set at least partially defined by a 30
holder of the presentation instrument, the rule set adapted 31
to maximize a financial feature associated with the first 32
account; and 33
[c] determine a portion of the transaction amount to 34
apply to the first account, wherein the determining is 35
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based at least in part on the rule set and operates to 1
maximize the at least one financial feature; and 2
[2] wherein the at least one financial feature is selected from 3
a cash back feature and an immediate discount feature. 4
5
26. A system for linking a plurality of presentation instruments 6
to a plurality of accounts, the system comprising: 7
[1] a computer readable medium, wherein the computer 8
readable medium includes a first record associating a first 9
presentation instrument with a first and a second account, and a 10
second presentation instrument with a third and a fourth 11
account, wherein the second account and the fourth account are 12
the same account; 13
[2] the computer readable medium further comprising a rule 14
set at least partially defined by a holder of the first presentation 15
instrument, the rule set adapted to maximize at least one feature 16
associated with the second account; 17
[3] the computer readable medium further comprising 18
instructions executable by a processor to: 19
[a] review a transaction request having a transaction 20
amount; 21
[b] apply a selected portion of the transaction amount 22
to the second account based on the rule set; and 23
[c] apply a remaining portion of the transaction 24
amount to the first account. 25
26
THE REJECTIONS 27
The Examiner relies upon the following prior art: 28
Lilly et al. US 2002/0156723 Oct. 24, 2002
Brake, Jr. et al. US 6,865,547 Mar. 8, 2005
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Claims 1-9, 12-18, 26-27, 29, 31-34, and 36-37 stand rejected under 35 1
U.S.C. § 102(e) as anticipated by Lilly. 2
Claims 19-24, 35, and 38-39 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Lilly and Brake, Jr. 4
ARGUMENTS 5
Claims 1-9, 12-18, 26-27, 29, 31-34, and 36-37 rejected under 35 U.S.C. § 6
102(e) as anticipated by Lilly 7
The Appellant argues these claims as a group. 8
Accordingly, we select claim 1 as representative of the group. 37 C.F.R. 9
§ 41.37(c)(1)(vii) (2008). 10
The Examiner found that Lilly anticipates claim 1. 11
The Appellant contends that: (1) Lilly fails to describe limitation [2] of 12
claim 1 (App. Br. 7), (2) Lilly fails to describe any rule set and the first 13
portion comprising at least one item over a threshold amount as specifically 14
required by limitation [3] of claim 1 (App. Br. 7), (3) the Examiner has 15
failed to address the limitations of claims 26-27, the Appellant asserts the 16
same arguments for claims 26-27 as presented for claim 1 (App. Br. 8-9), 17
and Lilly fails to describe that the rule set be at least partially defined by a 18
holder of the first presentation instrument (App. Br. 8-9), and (4) the 19
Appellant asserts the same arguments for claims 29 and 31-34 as presented 20
for claim 1 (App. Br. 9) and Lilly fails to describe limitation [6] of claim 29 21
(App. Br. 9-10). 22
23
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Claims 19-24, 35, and 38-39 rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Lilly and Brake, Jr. 2
The Appellant argues these claims as a group. 3
Accordingly, we select claim 20 as representative of the group. 37 4
C.F.R. § 41.37(c)(1)(vii) (2008). 5
The Examiner found that Lilly describes all of the limitations of claim 6
20, except for limitation [2] (Ans. 10). The Examiner found that Brake 7
describes limitation [2] (Ans. 10). The Examiner found that a person with 8
ordinary skill in the art would have recognized the benefit of providing an 9
incentive to use an account associated with a card which provided a cash 10
back feature and an immediate discount feature (Ans. 10-11). The Examiner 11
further found that a person of ordinary skill in the art would have found it 12
obvious to combine Lilly and Brake (Ans. 10-11). 13
The Appellant contends that, (1) claim 20 recites similar limitations to 14
claim 26 and the rejection of claim 20 is deficient for the same reasons 15
discussed supra (App. Br. 11), and (2) there is no motivation to combine 16
Lilly and Brake as per claims 19-24, 35, and 38-39 (App. Br. 11-12). 17
ISSUES 18
The issue pertinent to this appeal are whether the Appellant has 19
sustained their burden of showing that the Examiner erred in rejecting claims 20
(1) 1-9, 12-18, 26-27, 29, 31-34, and 36-37 under 35 U.S.C. § 102(e) as 21
anticipated by Lilly and (2) 19-24, 35, and 38-39 under 35 U.S.C. § 103(a) 22
as unpatentable over Lilly and Brake. 23
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The pertinent issues turn on, whether Lilly describes a rules set, a second 1
presentation instrument where a fourth account on the second presentation 2
instrument is the same as the second account on the first presentation 3
instrument, and whether there is a motivation to combine Lilly and Brake. 4
FACTS PERTINENT TO THE ISSUES 5
The following enumerated Findings of Fact (FF) are believed to be 6
supported by a preponderance of the evidence. 7
Facts Related to the Prior Art 8
Lilly 9
01. Lilly is directed to a system and method for modifying an 10
existing credit card product to provide one or more extra lines of 11
credit and associating vendors with the extra lines of credit (Lilly 12
¶ 0001). 13
02. A credit card issuer determines which customers, from a 14
database of customers, to offer additional lines of credit to (Lilly ¶ 15
0011). The customers are contacted using a variety of 16
communication channels and are solicited using conventional 17
solicitation techniques (Lilly ¶ 0011). Customers are offered 18
additional lines of credit that are associated with a specific group 19
of vendors and the vendors are selected by the card issuer or by 20
the customers (Lilly ¶ 0012). 21
03. Customer profiles may be used to obtain the interests of a 22
customer (Lilly ¶ 0053). Customer profiles include past purchase 23
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information, visited websites, surveys, and demographic 1
information (Lilly ¶ 0053). Based on the customer profiles, a card 2
issuer can select (or allow a customer to select) a vendor to 3
provide an extra line of credit (Lilly ¶’s 0053-0054). 4
04. At the point of a purchase transaction, the customer may first be 5
offered an additional line of credit based on the analysis of the 6
customer’s account (Lilly ¶’s 0084-0088). The card issuer then 7
determines whether the purchase amount exceeds an available 8
balance for the customer’s extra credit line (Lilly ¶ 0089). If the 9
amount does exceed the available balance, the customer is queried 10
to apply the purchase to their general purpose credit line and 11
whether the customer has a credit line sharing option activated 12
(Lilly ¶ 0089). 13
05. The credit line sharing separate the general purpose credit line 14
(1st bucket) and the extra credit line (2nd bucket) (Lilly ¶ 0090). 15
Each bucket has a maximum available balance associated to it 16
(Lilly Table 1). The transaction can be processed against either 17
bucket or both (Lilly ¶ 0090). That is, the available balance of 18
either bucket or a combination of the buckets can be reduced by 19
the purchase amount (Lilly ¶ 0090). 20
Brake 21
06. Brake is directed to a transaction or payment card that can be 22
activated to have an alternative or secondary use as a credit card 23
by adding a credit feature (Brake 1:9-14). 24
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07. A transaction or payment cards are phone cards, gasoline 1
product cards, catalog purchasing cards, dining cards, or the like 2
(Brake 2:51-55). The transaction or payment cards can add a 3
secondary feature to add a credit line associated with the card 4
(Brake 2:47-51). Other further enhancements can include adding 5
a rewards feature (Brake 2:63-64). 6
Facts Related To The Level Of Skill In The Art 7
08. Neither the Examiner nor the Appellant has addressed the level 8
of ordinary skill in the pertinent art of credit card and lines of 9
credit management systems. We will therefore consider the cited 10
prior art as representative of the level of ordinary skill in the art. 11
See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 12
(“[T]he absence of specific findings on the level of skill in the art 13
does not give rise to reversible error ‘where the prior art itself 14
reflects an appropriate level and a need for testimony is not 15
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 16
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 17
Facts Related To Secondary Considerations 18
09. There is no evidence on record of secondary considerations of 19
non-obviousness for our consideration. 20
PRINCIPLES OF LAW 21
Anticipation 22
"A claim is anticipated only if each and every element as set forth in the 23
claim is found, either expressly or inherently described, in a single prior art 24
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reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 1
631 (Fed. Cir. 1987). "When a claim covers several structures or 2
compositions, either generically or as alternatives, the claim is deemed 3
anticipated if any of the structures or compositions within the scope of the 4
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 5
Cir. 2001). "The identical invention must be shown in as complete detail as 6
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 7
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 8
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 9
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 10
Obviousness 11
A claimed invention is unpatentable if the differences between it and 12
the prior art are “such that the subject matter as a whole would have been 13
obvious at the time the invention was made to a person having ordinary skill 14
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 15
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 16
In Graham, the Court held that that the obviousness analysis is 17
bottomed on several basic factual inquiries: “[(1)] the scope and content of 18
the prior art are to be determined; [(2)] differences between the prior art and 19
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 20
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 21
U.S. at 406. “The combination of familiar elements according to known 22
methods is likely to be obvious when it does no more than yield predictable 23
results.” Id. at 416. 24
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ANALYSIS 1
Claims 1-9, 12-18, 26-27, 29, 31-34, and 36-37 rejected under 35 U.S.C. § 2
102(e) as anticipated by Lilly 3
The Appellant first contends that (1) Lilly fails to describe limitation [2] 4
of claim 1. App. Br. 7. We disagree with the Appellant. Limitation [2] 5
requires accessing a database containing a rule set that maximizes a plurality 6
of accounts. Lilly describes a method where customers have a general 7
purpose credit line and additional extra credit lines. FF 02, FF 04, and FF 8
05. Lilly further describes that each credit line is associated with a bucket 9
that has a maximum available credit. FF 05. The system does an analysis to 10
determine whether the purchase amount exceeds a first bucket and enables a 11
customer to distribute the purchase amount to a plurality of buckets as 12
necessary or desired. FF 05. That is, the system contains a rule that 13
compares a purchase amount to a maximum available credit amount 14
(threshold amount) and if the purchase amount exceeds the maximum 15
available threshold amount then a subsequent rule is triggered to determine 16
whether the customer has a line sharing option activated and to query the 17
customer on how to distribute the purchase amount amongst the available 18
buckets. As such, Lilly describes limitation [2] of claim 1. 19
The Appellant further contends that (2) Lilly fails to describe any rule 20
set and the first portion comprising at least one item over a threshold amount 21
as specifically required by limitation [3] of claim 1. App. Br. 7. We 22
disagree with the Appellant. As discussed supra, Lilly describes a 23
maximum available credit and a process to determine whether a purchase 24
amount exceeds the maximum available credit for a specific credit line. As 25
such, Lilly describes a rule to make a determination of whether an item 26
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exceeds a threshold amount (maximum available credit) as required by 1
limitation [3]. 2
The Appellant further contends that (3) the Examiner has failed to 3
address and Lilly fails to describe the additional limitations of claims 26-27. 4
App. Br. 8. The Appellant specifically contends that the Examiner has failed 5
to address and Lilly fails to describe the limitation of a first presentation 6
instrument with a first and second account and a second presentation 7
instrument with a third and fourth account, where the second and fourth 8
account are the same as required by limitation [1] of claim 26. We agree 9
with the Appellant. Lilly describes multiple accounts associated to a credit 10
card (presentation instrument) but fails to explicitly describe a first 11
presentation instrument with a second account and a second presentation 12
instrument with a fourth account, where the second and fourth accounts are 13
the same. The Examiner did not further provide a citation for where in Lilly 14
this feature is describe and did not provide a rationale for the rejection in the 15
response to the Appellant’s arguments. As such, we find no evidence on the 16
record that Lilly describes limitation [1] of claim 26. Claim 27 depends 17
from claim 26 and as such the rejection of claim 27 is deficient for the same 18
reasons. 19
The Appellant further argues that Lilly fails to describe that the rule set 20
be at least partially defined by a holder of the first presentation instrument as 21
required by claims 26-27. App. Br. 8-9. We disagree with the Appellant. 22
Lilly describes that the holder of the presentation instrument (customer) can 23
select the vendors associated with the extra credit lines and the customer can 24
further determine the distribution of the purchase amount over available 25
buckets. FF 02, FF 04, and FF 05. As such, Lilly explicitly describes that 26
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the user has the control to define the rules for which vendors are associated 1
with the credit card and the rules to disperse the purchase amount over extra 2
credit lines. 3
The Appellant also contends that (4) the Appellant asserts the same 4
arguments for claims 29 and 31-34 as presented for claim 1 (App. Br. 9) and 5
Lilly fails to describe limitation [6] of claim 29. App. Br. 9-10. We 6
disagree with the Appellant. First, the Appellant relies on its arguments in 7
support of claim 1 above, which we did not find persuasive supra and so do 8
not find persuasive here. Second, limitation [6] requires that the transaction 9
request as authorized is different from the transaction request as posted. 10
Lilly describes that a customer can post a transaction request for a specific 11
amount and the system determines whether that purchase amount exceeds an 12
available credit amount. FF 02, FF 04, and FF 05. If the amount exceeds 13
the available credit amount, then the customer is queried as to whether to 14
apply any portion or the entirety of the purchase amount to another account. 15
FF 04 and FF 05. Thus, the resulting transaction request may be to apply the 16
purchase amount to multiple accounts. As such, the final transaction request 17
as authorized is different from the originally posted transaction request and 18
Lilly describes limitation [6] of claim 29. 19
The Appellant has not sustained the burden of showing that the 20
Examiner erred in rejecting claims 1-9, 12-18, 29, 31-34, and 36-37 under 21
35 U.S.C. § 102(e) as anticipated by Lilly. 22
The Appellant has sustained the burden of showing that the Examiner 23
erred in rejecting claims 26-27 under 35 U.S.C. § 102(e) as anticipated by 24
Lilly. 25
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1
Claims 19-24, 35, and 38-39 rejected under 35 U.S.C. § 103(a) as 2
unpatentable over Lilly and Brake, Jr. 3
The Appellant first contends that (1) claim 20 recites similar limitations 4
to claim 26 and the rejection of claim 20 is deficient for the same reasons 5
discussed supra. App. Br. 11. We disagree with the Appellant. The 6
Appellant relies on arguments presented for claim 26 which we did not find 7
persuasive supra and so do not find these arguments persuasive here. 8
The Appellant further contends that (2) there is no motivation to 9
combine Lilly and Brake as per claims 19-24, 35, and 38-39. App. Br. 11-10
12. We disagree with the Appellant. Lilly is concerned with providing 11
customers with multiple uses of a credit card and to give customers control 12
over how to use the credit card. FF 01-02. Lilly accomplishes this by 13
providing extra credit lines associated with a single card and allowing 14
customers to control the selection and use of the extra credit accounts. FF 15
02, FF 04, and FF 05. Brake is also concerned with providing customers a 16
card with multiple uses. FF 06-07. Brake accomplishes this by having a 17
card with a primary use as a transaction or payment card, by adding a 18
secondary credit use to the same card, and by adding a further rewards 19
incentive to use the card. FF 07. A person with ordinary skill in the art 20
would have recognized the benefit of providing users with additional uses to 21
a card and providing an incentive for customers to use the card and would 22
have found it obvious at the time of the invention to combine these features 23
described by Brake to Lilly. As such, Lilly and Brake are concerned with 24
the same problem and a person with ordinary skill in the art would have 25
been lead to combine their teachings. 26
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CONCLUSIONS OF LAW 1
The Appellant has not sustained the burden of showing that the 2
Examiner erred in rejecting claims 1-9, 12-18, 29, 31-34, and 36-37 under 3
35 U.S.C. § 102(e) as anticipated by Lilly. 4
The Appellant has sustained the burden of showing that the Examiner 5
erred in rejecting claims 26-27 under 35 U.S.C. § 102(e) as anticipated by 6
Lilly. 7
The Appellant has not sustained the burden of showing that the 8
Examiner erred in rejecting claims 19-24, 35, and 38-39 under 35 U.S.C. § 9
103(a) as being unpatentable over Lilly and Brake. 10
DECISION 11
To summarize, our decision is as follows. 12
• The rejection of claims 1-9, 12-18, 29, 31-34, and 36-37 under 35 13
U.S.C. § 102(e) as anticipated by Lilly is sustained. 14
• The rejection of claims 26-27 under 35 U.S.C. § 102(e) as anticipated 15
by Lilly is not sustained. 16
• The rejection of claims 19-24, 35, and 38-39 under 35 U.S.C. § 103(a) 17
as being unpatentable over Lilly and Brake is sustained. 18
19
No time period for taking any subsequent action in connection with this 20
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 21
22
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AFFIRMED-IN-PART 1
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