Ex Parte Cataline et al

Patent Trial and Appeal Board

Sep 21, 2015

11717057 (P.T.A.B. Sep. 21, 2015)

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.
11/717,057 03/13/2007 Glen R. Cataline 47004.000464 9462
131244 7590 09/21/2015
JPMorgan Chase/Hunton & Williams LLP
Intellectual Property Department
2200 Pennsylvania Avenue, NW
Suite 800
Washington, DC 20037
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
09/21/2015 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 GLEN R. CATALINE, WILLIAM SMITH RIELLY,
MARK ROBERT SHEEHAN, and WILLIAM SCOTT WALLACE
__________

Appeal 2013-001489
Application 11/717,0571
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Glen R. Cataline, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 58, 60–69, 72–79, and 81–88. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

1 The Appellants identify JPMorgan Chase Bank, N.A. as the real party in
interest. App. Br. 2.
Appeal 2013-001489
Application 11/717,057

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THE INVENTION
Claim 58, reproduced below, is illustrative of the subject matter on
appeal.
58. A method for conducting financial transactions over a
computerized network, the method comprising the steps of:
receiving, by a data processing system, a request from a
user to conduct a financial transaction with a party;
obtaining, by the data processing system, real-time
financial information relating to the financial transaction;
identifying, by the data processing system, based on the
financial information, an optimal payment network from a
plurality of available payment networks to meet at least one
transaction rule; and
confirming, by the data processing system, that the
financial transaction can be executed by at least one of the party
and the user;
wherein the step of confirming that the financial
transaction can be executed comprises:
sending a notice of the financial transaction to each of the
party and the user; and
receiving a confirmation from each of the party and the
user that it can execute the financial transaction.

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 27, 2012) and Reply Brief (“Reply Br.,” filed Nov. 2, 2012),
and the Examiner’s Answer (“Ans.,” mailed Oct. 16, 2012).
Appeal 2013-001489
Application 11/717,057

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kolling
Johnson
Cole

US 5,920,847
US 6,999,943 B1
US 7,599,877 B1
July 6, 1999
Feb. 14, 2006
Oct. 6, 2009
The following rejections are before us for review:
1. Claims 58, 60–69, and 73–78 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Kolling.
2. Claims 72, 79, and 86–88 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Kolling and Johnson.3
3. Claims 81–85 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kolling, Johnson, and Cole.

ISSUES
Did the Examiner err in rejecting claims 58, 60–69, and 73–78 under
35 U.S.C. §103(a) as being unpatentable over Kolling; claims 72, 79, and
86–88 under 35 U.S.C. §103(a) as being unpatentable over Kolling and
Johnson; and, claims 81–85 under 35 U.S.C. §103(a) as being unpatentable
over Kolling, Johnson, and Cole?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

3 We treat the Examiner’s inclusion of canceled claim 80 among the claims
subject to rejection as inadvertent error.
Appeal 2013-001489
Application 11/717,057

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ANALYSIS
The rejection of claims 58, 60–69, and 73–78 under 35 U.S.C. §103(a) as
being unpatentable over Kolling.
The rejection of claims 81–85 under 35 U.S.C. §103(a) as being
unpatentable over Kolling, Johnson, and Cole.
The rejection of claims 72, 79, and 86–88 under 35 U.S.C. §103(a) as being
unpatentable over Kolling and Johnson.
Independent claims 58, 79, and 81, and thus all the claims, include the
limitation “identifying” an “optimal payment network from a plurality of
available payment networks” “based on financial information.” Independent
claim 58 further requires that said identifying “ meet at least one transaction
rule” while independent claims 79 and 81 further require said identifying
“achieve at least one of the following: minimize costs to at least one of the
party and the user, optimize a number of payments, and optimize a
distribution of risk.”
The Examiner’s position is that col. 28, lines 35–43, of Kolling,
reproduced below, discloses said limitation.
Referring first to FIG. 19A, consumer C initiates an
electronic payment transaction to electronic services operator
(ESO) 1901. ESO 1901 may be an agent of consumer bank C
or a non-agent of bank C who solicits consumer C directly for
service. ESO 1901 may have its own payment network 1902 or
it may interact with an independent payment network 1902.
ESO 1901 causes money to move from consumer bank C to
biller bank B in response to an electronic payment by consumer
C to Biller B.
This Kolling passage discloses a payment transaction to an ESO,
which ESO may interact with its own payment network or an independent
one. However, nothing in this passage would lead one of ordinary skill in
Appeal 2013-001489
Application 11/717,057

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the art to identify an optimal payment network from a plurality of available
payment networks based on financial information to meet or achieve the
objectives as claimed.
The Examiner argues that
Examiner notes that the claim does not specifically states
[sic] the basis for selecting the optimal network. So, in Kolling
simply selecting internal payment network over the independent
payment network may well be the optimal network.
Moreover, Examiner notes that selecting one network
over another may be due to lower transaction cost, minimizing
risk or loss of control. In Kolling the internal payment network
may provide all of these benefits over an independent network
for obvious reasons and thus may always be selected as an
optimal network.
Ans. 6.
However, there is inadequate evidence on the record to support said
argument.
Because a preponderance of the evidence does not support a prima
facie case of obviousness over the cited prior art, the rejections are not
sustained.

CONCLUSIONS
The rejection of claims 58, 60–69, and 73–78 under 35 U.S.C. §103(a)
as being unpatentable over Kolling; claims 72, 79, and 86–88 under 35
U.S.C. §103(a) as being unpatentable over Kolling and Johnson; and, claims
81–85 under 35 U.S.C. §103(a) as being unpatentable over Kolling, Johnson,
and Cole, are not sustained.

Appeal 2013-001489
Application 11/717,057

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DECISION
The decision of the Examiner to reject claims 58, 60–69, 72–79, and
81–86 is reversed.

REVERSED

Klh