Ex Parte Blain et alDownload PDFPatent Trial and Appeal BoardMay 4, 201612985884 (P.T.A.B. May. 4, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/985,884 01/06/2011 35811 7590 05/06/2016 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 4900 PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Joe Blain 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. ROS-11-1409 5240 EXAMINER PRESTON, JOHN 0 ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 05/06/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): pto. phil@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOE BLAIN, JEFFREY JACOCKS, ANDREA TITTEL, and GEOFF THOMAS Appeal2014-002102 1 Application 12/985,8842 Technology Center 3600 Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("Br.," filed August 8, 2013) and the Examiner's Answer ("Ans.," mailed September 3, 2013) and Final Office Action ("Final Act.," mailed May 15, 2013). 2 Appellants identify Citizens Financial Group, Inc. as the real party in interest. Br. 1. Appeal2014-002102 Application 12/985,884 CLAIMED fNVENTION Appellants' claimed invention "relates to a method and system that allows a banking customer to access their bank account via an online banking interface and manage the order in which transactions are posted against their account in a manner that allows them to minimize or eliminate the occurrence of an overdraft condition" (Spec. i-f 1 ). Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for managmg transactions within a banking account, comprising: providing at least one computer server comprising at least one processor executing instructions, the server performing the steps of: enrolling a banking account maintained at a bank service provider into an online system that is accessible via a user interface, said banking account having a balance; processing transactions conducted by a customer by posting the transactions against the banking account in the order received and deducting them from said balance; notifying the customer when said balance approaches zero; and processing instructions received through the online system to change the order in which the transactions are posted against the banking account. REJECTION Claims 1-14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Mitchell (US 2007/0106558 Al, pub. May 10, 2007) and Ghosh (US 2010/0274718 Al, pub. Oct. 28, 2010). 2 Appeal2014-002102 Application 12/985,884 ANALYSIS Independent claim 1 and dependent claims 2-8 We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because Ghosh, on which the Examiner relies, does not disclose or suggest "processing instructions received through the online system to change the order in which the transactions are posted against the banking account," as recited in claim 1 (Br. 4---6). Ghosh is directed to an account-management system that allows a customer to link multiple ones of his or her financial institution, e.g., bank, accounts together, and to authorize the financial institution to "automatically and intuitively manage" the linked accounts, including transferring funds between the accounts "to ensure minimum balances, maximize rate of return and minimize the number of transfers between accounts" (Ghosh, Abstract). Ghosh discloses in paragraph 14, cited by the Examiner, that "managing" the linked accounts may further include determining and implementing a payment hold period for an outstanding payment account debit that requires funds to be transferred into the account to satisfy the debit. In other words, if funds from a second account are needed to cover a debit transaction levied against a first account, the Ghosh system implements a hold, i.e., a delay, on payment of the debit until after funds sufficient to satisfy the debit have been transferred from the second account into the first account. The Examiner takes the position that by holding a debit transaction until after a transfer of funds, i.e., a deposit, has been posted to the account, the Ghosh method changes the order in which transactions, e.g., the debit transaction and the transfer of funds transaction, are posted (Ans. 3--4). The Examiner, thus, 3 Appeal2014-002102 Application 12/985,884 posits that without the change in order, the debit transaction would post before the deposit thereby causing the account to be overdrawn (id. at 4). We agree with Appellants that holding a payment until sufficient funds are available to satisfy a debit transaction, as disclosed in Ghosh, does not constitute "chang[ing] the order in which the transactions are posted against the banking account," as recited in claim 1. Indeed, as Appellants observe, implementing a payment hold delays payment of all debit transactions until after the hold is removed; transactions are then posted in the order received (Br. 6), i.e., the order in which debit transactions are posted against the bank account is not changed. As described above, the Examiner takes the position that, by holding a debit transaction until after a transfer of funds, i.e., a deposit, has been posted to the account, the Ghosh method changes the order in which transactions, e.g., the debit transaction and the transfer of funds transaction, are posted (Ans. 3--4). However, it is clear from the Specification, including the claim language, that the transactions that are reordered are debit transactions, i.e., transactions that are "deduct[ ed] ... from said balance." There is nothing in the cited portion of Ghosh that discloses or suggests changing the order in which debit transactions are posted. Nor for that matter does the Examiner suggest otherwise. In view of the foregoing, we do not sustain the Examiner's rejection of independent claim 1under35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner's rejection of dependent claims 2-8. Independent claim 9 and dependent claims 10-14 Independent claim 9 includes language substantially similar to the language of claim 1. Therefore, we do not sustain the Examiner's rejection 4 Appeal2014-002102 Application 12/985,884 under 35 U.S.C. § 103(a) of independent claim 9, and claims 10-14, which depend therefrom, for the same reasons set forth above with respect to claim 1. DECISION The Examiner's rejection of claims 1-14 under 35 U.S.C. § 103(a) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation