Ex Parte Blair et al

Board of Patent Appeals and Interferences

Feb 14, 2011

11462223 (B.P.A.I. Feb. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313- 1450
www uspto go"
20350 7590 02/16/2011
KILPATRICK TOWNSEND & STOCKTON LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 941 11-3834
APPLICATION NO.
I EXAMINER I
MADAMBA, CLIFFORD B
1 11462,223 08/03/2006 Paul Blair 026595-0055OOUS 4942
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
0211 61201 1 ELECTRONIC
Docket @kilpatricktownsend.com
ipefiling @kilpatricktownsend.com
jlhice @kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte PAUL BLAIR,
REX LIEURANCE, and
DIANE ROBERTSON
Appeal 2009-014964
Application 111462,223
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
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 2009-014964
Application 111462,223
Paul Blair, Rex Lieurance, and Diane Robertson (Appellants) seek
review under 35 U.S.C. 5 134 (2002) of a final rejection of claims 1- 13 and
15-28, 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).
The Appellants invented a way of performing money transfer
transactions via a wireless communication device (Specification 2:¶ 0006).
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 performing a money transfer transaction via a
wireless communication device, said method comprising:
[I] receiving an initial access request
for a money transfer transaction
from a user
via a wireless communication device,
wherein the wireless communication device is associated
with at least one pre-paid payment source account;
[2] receiving personal identification information
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed February 27, 2009) and Reply Brief ("Reply Br.," filed July 13,
2009), and the Examiner's Answer ("Ans.," mailed May 12, 2009).
Appeal 2009-014964
Application 111462,223
from the user
via the wireless communication device,
wherein at least a portion of said personal identification
information is automatically provided
based on user profile information associated with
the wireless communication device account;
[3] verifying personal identification information
based at least in part on the user profile information
associated with the wireless communication device
account;
[4] receiving money transfer instructions
from the user
via the wireless communication device,
wherein the money transfer instructions include at least
the amount of the money transfer transaction,
the recipient of the money transfer transaction, and
the destination of the money transfer transaction;
[5] verifying the status
of the at least one pre-paid payment source account
associated with the wireless communication device and
determining if the amount of the money transfer transaction
requested may be charged
against the pre-paid payment source account associated
with the wireless communication device account;
[6] authorizing the money transfer transaction
if the at least one pre-paid payment source account
associated with the wireless communication device may
be charged the requested amount or
declining the money transfer transaction
if the at least one pre-paid payment source account
associated with the wireless communication device may
not be charged the requested amount;
Appeal 2009-014964
Application 111462,223
[7] charging the at least one pre-paid payment source account
associated with the wireless communication device
at least the amount of the money transfer transaction
if the money transfer transaction is authorized; and
[8] transmitting information concerning the money transfer
transaction
to a money transfer facilitator
for completion of the money transfer transaction; and
[9] making a cash payment available
to the recipient
at a retail location associated with the money transfer
facilitator
in proximity to a location of the recipient.
The Examiner relies upon the following prior art:
Bansal US 6,206,283 B1 Mar. 27, 2001
Rudisill US 6,816,721 B1 Nov. 9,2004
Claims 1- 13, 15, and 18-28 stand rejected under 35 U.S.C. 5 101 as
directed to non-statutory subject matter.
Claims 1-13, 15, and 18-28 stand rejected under 35 U.S.C. 5 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 1-13 and 15-28 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Bansal and Rudisill.
Appeal 2009-014964
Application 111462,223
ISSUES
The issues of statutory subject matter and definiteness turn primarily on
whether the claims are drawn toward devices that perform actual transfers
and whether the terminology employed is understandable to one of ordinary
skill. The issue of obviousness turns primarily on whether the last
limitations in each of the three independent claims 1, 16 and 18 are
sufficiently broad that the transfers and cash availability described by the art
falls within their scope.
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
Rudisill
01. Rudisill is directed to enabling products and services to be
purchased using a prepaid account assigned to a wireless
communications services subscriber and associated with a wireless
communications device. Rudisill 1 53-56.
02. Rudisill has a banking portion with a device located at a
merchant's or service provider's place of business (the point-of-
sale) and connected to a financial institution. The financial
institution is connected to a financial clearing house ("FCH")
network that handles debit and credit card transactions. A
telecommunications portion maintained by a provider of prepaid
wireless communications services includes a service control point
Appeal 2009-014964
Application 111462,223
that maintains subscriber records, each of which includes the
telephone number of a wireless communications device and the
amount remaining in the prepaid account associated with the
device. Rudisill2: 35-60.
Bansal
03. Bansal is directed to transferring money electronically with a
telephone card having stored money, calling a predetermined
telephone number using the telephone card, dialing a
predetermined suffix to the predetermined telephone number
followed by a desired dollar amount, debiting the telephone card
by the desired dollar amount and crediting an account associated
with the telephone number by the desired dollar amount. Bansal
1:41-51.
04. Bansal links an identity of a caller to a cash account, and places
a resulting transaction on a statement to the cash account. Bansal
also links an identity of a caller to a user's account, and places a
resulting transaction on the user's telephone bill. Bansal2:39-46.
05. Bansal's billing system bills an account of the first user and
credits an account of the second user. Bansal3: 18-22.
06. Bansal transferred information from the user's wireless
telephone. Bansal3:37-39.
Appeal 2009-014964
Application 111462,223
ANALYSIS
Claims 1-13, 15, and 18-28 rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
We agree with the Appellants that the claims recite patentable subject
matter for the reasons set forth in the Reply Brief at 3-6.
Claims 1-13, 15, and 18-28 rejected under 35 U.S. C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
We agree with the Appellants that the claims are not indefinite for the
reasons set forth in the Reply Brief at 7.
Claims 1-13 and 15-28 rejected under 35 U.S. C. § 103(a) as unpatentable
over Bansal and Rudisill.
Claims 1, 16 and 18 are the only independent claims. The Appellants
argue that the art fails to describe the final limitation in each of these claims.
We are not persuaded that the art fails to describe making a cash
payment available at a retail location associated with the money transfer
facilitator as recited in claim 1 limitation [9]. The claim does not further
narrow the nature of the cash payment, so making a debit to a cash card as in
Bansal (FF 03) is within the scope of this limitation.
We are not persuaded that the art fails to describe the host computer
system being configured to transmit information concerning a money
transfer transaction to a money transfer facilitator for completion of the
Appeal 2009-014964
Application 111462,223
money transfer transaction as recited in the final limitation of claim 16 and
18. The claim does not further narrow the nature of the information
transmitted or the manner in which such transfer is for the completion of the
transaction. Thus, both Bansal's transmitted information (FF 03 & 06) and
Rudisill's transmitted information (FF 01 & 02) are within the scope of the
limitation.
In the Reply Brief at 7, the Appellants, seeing this, further argue that
Bansal disclaims Rudisill's merchant account. We are unpersuaded that
Rudisill is incompatible with Bansal as Rudisill employs such a merchant
account to effect a purchase from the merchant. FF 01. Far from disclaiming
Rudisill, Bansal simply describes a more generic solution, to which Rudisill
adapts in those instances where the cash transfer is used for a purchase with
a merchant account.
CONCLUSIONS OF LAW
Rejecting claims 1-13, 15, and 18-28 under 35 U.S.C. 5 101 as directed
to non-statutory subject matter is improper.
Rejecting claims 1-13, 15, and 18-28 under 35 U.S.C. 5 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is improper.
Rejecting claims 1-13 and 15-28 under 35 U.S.C. 5 103(a) as
unpatentable over Bansal and Rudisill is proper.
Appeal 2009-014964
Application 111462,223
DECISION
To summarize, our decision is as follows.
The rejection of claims 1- 13, 15, and 18-28 under 35 U.S.C. 5 101 as
directed to non-statutory subject matter is not sustained.
The rejection of claims 1- 13, 15, and 18-28 under 35 U.S.C. 5 1 12,
second paragraph, as failing to particularly point out and distinctly
claim the invention is not sustained.
The rejection of claims 1-13 and 15-28 under 35 U.S.C. 5 103(a) as
unpatentable over Bansal and Rudisill 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). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
AFFIRMED
mev
Address
KILPATRICK TOWNSEND & STOCKTON LLP
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO CA 941 11-3834