Ex Parte Carlson et al

Patent Trial and Appeal Board

Oct 31, 2012

10988469 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/988,469 11/12/2004 Michael P. Carlson AUS920040540US1 1157
48916 7590 11/01/2012
Greg Goshorn, P.C.
9600 Escarpment
Suite 745-9
AUSTIN, TX 78749
EXAMINER
HESS, DANIEL A
ART UNIT PAPER NUMBER
2876
MAIL DATE DELIVERY MODE
11/01/2012 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 MICHAEL P. CARLSON and HERMAN RODRIGUEZ
____________

Appeal 2009-014424
Application 10/988,469
Technology Center 2800
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and
ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014424
Application 10/988,469

2
STATEMENT OF THE CASE
Appellants are appealing claims 1-21. Appeal Brief 5. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm.
Introduction
The invention is directed to “a system and method for the
administering of a consolidate [sic] financial account that provides real-time
credit reporting.” Appeal Brief 7.

Illustrative Claim
1. A method for determining a credit rating, the method
comprising:

establishing, for an account holder, a consolidated
financial account having two or more assets and liability
components, wherein two or more of the two or more
components comprise separate financial accounts at a single
financial institution;

entering transactions corresponding to one or more of
the components;

creating an account history based upon the transactions;

updating the account history each time a transaction is
entered; and

updating, at the single financial institution, a credit
rating based upon the updated account history each time a
transaction is entered;

wherein the credit rating is maintained at the single
financial institution in conjunction with the consolidated
financial account.
Appeal 2010-014424
Application 10/988,469

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Rejections on Appeal

Claims 1, 5, 6, 8, 12, 13, 15, 19 and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Basch (U.S. Patent No. 6,119,103;
issued September 12, 2000). Answer 3-7.
Claims 2, 9 and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Basch and Angel (U.S. Patent Application
Publication Number 2003/0225703; issued December 4, 2003). Answer 7-8.
Claims 3, 4, 7, 10, 11, 14, 17 and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Basch and Lockwood (U.S. Patent
Number 7,010,508 B1; issued March 7, 2006, filed April 7, 1995). Answer
8.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Basch and Del Rey (U.S. Patent No, 7,103,556 B2; issued
September 5, 2006, filed September 26, 2001). Appeal Brief 20. 1

1 The Examiner’s Answer does not disclose a rejection of claim 21 as
indicated by Appellants’ Appeal Brief. Further, the Del Rey reference used
to reject claim 21 is not listed as “Evidence Relied Upon” by the Examiner.
Answer 3. However, both Appellants and Examiner address the merits of
the rejection in spite of the fact that the rejection is not evident in the
Answer. See Appeal Brief 20; see also Answer 12. Therefore for the sake
of this appeal we will address the rejection of claim 21. Further, Appellants
never argue the omission of the rejection of claim 21 from the Answer. See
Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010) (“Precedential”)
(“[T]he Board will generally not reach the merits of any issues not contested
by an appellant.”). Only those arguments actually made by the Appellants
have been considered in this decision. Arguments which the Appellants
could have made but chose not to make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii)
(2008).

Appeal 2010-014424
Application 10/988,469

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Issue on Appeal
Does Basch focus on multiple institutions fail to render obvious
Appellants’ claimed subject matter directed to “consolidated financial
account having two or more assets and liability components . . . at a single
financial institution” as recited in claim 1 and similarly cited in claims 8 and
15?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellants’ Appeal
Brief. However, we highlight and address specific findings and arguments
for emphasis as follows:
Appellants argue that:
Applicants' Specification and Claims are specifically
directed to a “single, integrated account,” at one financial
institution and the credit reporting feature is an integral
part of the consolidated account unlike a typical credit
rating as described in Basch. This particular concept is not
anticipated by any “accounting” of Basch that is based
upon data from more than one financial institution.
Appeal Brief 15.
Appellants recite several examples from their Specification that
describes the Appellants’ “consolidate account.” Id.
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The Examiner finds that Appellants’ examples from the
Specification are non-limiting:
As has been well established, Basch does have a
consolidated transaction history. This is indeed what
Basch is all about: a consolidated transaction history from
many sources in order to determine a credit rating.
Admittedly Basch does not explicitly teach a
“consolidated balance” or a “single interest rate based
upon balance.” But this is not what is claimed. The claim
language does not include “consolidated balance” or a
“single interest rate based upon balance.” Instead, the
appellant has written the claims much more broadly.

The examiner might note that these data “consolidated
balance” or a “single interest rate based upon balance”
could be derived from the very complete data that Basch
gathers from many accounts, but such an arguments would
be unnecessary and miss the point, because “consolidated
balance” or a “single interest rate based upon balance” are
nowhere recited in the claims.
Basch teaches a unified financial recording keeping;
this certainly meets a definition of a consolidated financial
account. Definitions of accounts include record-keepings,
histories, and reports of transactions and balances. Basch
meets all of these definitions.
Answer 9.
We agree with the Examiner’s findings that Basch creates a
“consolidated financial account” and therefore we do not find Appellants’
arguments to be persuasive. “Though understanding the claim language may
be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
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Application 10/988,469

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claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.” SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci.,
Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
Further, as the Examiner finds, “Basch is made to be capable of
receiving data from many financial institutions. But the examiner notes that
requirement that the two or more components comprise separate accounts at
a single institution will be met for some customers.” Answer 10. We agree
with the Examiner, although Basch “analyze[s] scoreable transactions across
accounts and/or account issuers,” Basch is not rendered ineffective if all of
the accounts originate from one financial institution. See Basch, column 5,
limes 47-61. Therefore we sustain the Examiner’s rejection of claim 1, as
well as, independent claims 8 and 15, not separately argued.
The Appellants argue claims 2-7, 9-14 and 16-21 in separate groups.
Appeal Brief 17-20. We group these claims together here for clarity and
brevity since “[a] statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”
37 C.F.R. § 41.37(c)(1)(vii) (2010). Appellants rely upon blanket statements
and fail to argue the merits of each individual claim. See Appeal Brief
17-20. Therefore we do not find Appellants’ arguments to be persuasive.
We adopt as our own, the Examiner’s findings as they pertain to claims 2-7,
9-14 and 16-21 (Answer 3-12) and sustain the Examiner’s rejections for the
reasons stated above.

Appeal 2010-014424
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DECISION
The rejection of claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED

Vsh