Ex Parte Chin

Board of Patent Appeals and Interferences

Feb 29, 2008

10045313 (B.P.A.I. Feb. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN CHIN
____________

Appeal 2007-4272
Application 10/045,313
Technology Center 3600
____________

Decided: February 29, 2008
____________

Before MURRIEL E. CRAWFORD, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the rejection
of claims 11-21. Claims 1-10 have been canceled. Claims 11-21 are
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pending in the application and have been twice rejected. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We AFFIRM.1

THE INVENTION
The Appellant’s claimed invention is directed to a method and system
for purchasing a money order from a system via the Internet in response to
goods being purchased from an Internet based auction transaction
(Specification 2). Claim 11, reproduced below is representative of the
subject matter of appeal.
11. A method for transferring funds using the Internet, the
method comprising:
providing a computational system interfaced with the
Internet, the computational system including a computer processor, a
database, and a server that connects the computational system with the
Internet;
establishing a stored value account of a user, the stored
value account identifying an electronic funds level previously
credited to the account by the user and information defining the stored
value account being stored within the database;
receiving a request from the user over the Internet at the
server to transfer at least some of the funds in the stored value account
to a recipient, the request being received in response to and
substantially contemporaneous with consummation of a transaction
between the sender and recipient;

1 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant 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) (2007).
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sending the requested funds to the recipient; and
debiting the stored value account.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Jennings US 5,825,003 Oct. 20, 1998
Schrader US 5,903,881 May 11, 1999
Nethery US 6,070,798 Jun. 6, 2000
Datek.com “Web pages.”

The following rejections are before us for review:
1. Claims 11 and 13-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jennings in view of Datek.com.
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Jennings in view of Datek.com and Nethery.
3. Claims 15 and 17-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jennings in view of Schrader.
4. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Jennings in view of Schrader and Nethery.

THE ISSUE
The first issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 11 and 13-14 under 35 U.S.C. § 103(a) as
unpatentable over Jennings in view of Datek.com. This issue turns on
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whether Jennings discloses or suggests “a request to transfer funds
substantially contemporaneous with the consummation of a transaction
between the sender and recipient.”
The second issue is whether the Appellant has shown that the
Examiner erred in rejecting claims 15 and 17-21 under 35 U.S.C. § 103(a) as
unpatentable over Jennings in view of Schrader. This issue turns on
whether Jennings discloses or suggests the limitations directed to a
“payment instrument.”

FINDINGS OF FACT

We find the following enumerated findings of fact are supported at
least by a preponderance of the evidence2:
1. Jennings has disclosed that the payment system may be used in
response to direct debits with point of sales transactions (Col. 8:30-38).
2. Jennings discloses a CAT network using structures found in
conventional ATM’s (Col. 6:8-25). Jennings also discloses that ATM’s
perform transactions substantially in real time (without any necessary time
lag for settlement) Col. 2:16-22).
3. Jennings discloses that the payment system transfers funds instantly
(Col. 2:37-49).
4. Jennings discloses that the payment system may be used to transfer
funds from approved credit cards (Col. 9:4-16).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S.
at 12 (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 1740. The
operative question in this “functional approach” is thus “whether the
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improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Appellant argues that the rejection of Claim 11 is improper
because the prior art does not teach or suggest the limitation requiring “the
request [to transfer … funds … to a recipient to be] received in response to
and substantially contemporaneous with consummation of a transaction
between the sender and recipient” (Br. 5). The Appellant further argues that
the “funds transfer” in Jennings cannot be the limitation for the “transaction”
recited in claim 11 (Reply Br. 1-2).
We disagree. Jennings has disclosed that the payment system may be
used in response to direct debits and point of sales transactions (FF 1). The
“point of sale transaction” disclosed by Jennings, which is separate from any
funds transfer, meets the claimed limitation requiring a separate
“transaction.” As Jennings discloses that direct debits to the customers
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account may take place with these point of sale transactions (FF 1), the
request for funds is received “substantially contemporaneously” with the
point of sale transaction. Moreover, Jennings uses a CAT network using
structures found in conventional ATM’s which conventionally operate
substantially in real time (FF 2 and 3).
For the above reasons, the Appellant’s arguments do not persuade us
that the Examiner erred in rejecting claim 11. The rejection of claims 13 and
14, which the Appellant has not argued separately, fall with claim 11. See
37 C.F.R. § 41.37(c)(1)(vii) (2007). See also In re Young, 927 F.2d 588,
590 (Fed. Cir. 1991).
Appellant relies solely on the arguments discussed above with respect
to claim 11 in contesting the rejection of claim 12 as unpatentable over
Jennings in view of Datek, and further in view of Nethery. These arguments
are unpersuasive for the reasons discussed above and the rejection of claim
12 is also sustained.
The Appellant further argues that the rejection of claim 15 is improper
because Jennings does not disclose those limitations directed to a “payment
instrument” (Br. 8). The Appellant also argues that Jennings does not
disclose “using funds in the … account to respond to a request to transfer
funds” (Br. 9).
We disagree. Jennings discloses that the system may be used to
request and transfer funds from a credit card (FF 4) which is a “payment
instrument.” As noted above, Jennings also discloses the transfer of funds to
another recipient in a point of sale transaction (FF 1). As Jennings has
disclosed requesting funds from a “payment instrument” and responding to a
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request to transfer funds in a direct debit point of sale transaction, the
arguments of the Appellant are not persuasive.
The rejection of claims 17-21, which the Appellant has not argued
separately, fall with claim 15. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). See
also In re Young, 927 F.2d 588, 590 (Fed. Cir. 1991).
Appellant relies solely on the arguments discussed above with respect
to claim 15 in contesting the rejection of claim 16 as unpatentable over
Jennings in view of Schrader, and further in view of Nethery. These
arguments are unpersuasive for the reasons discussed above and the
rejection of claim 16 is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 11 and 13-14 under 35 U.S.C. § 103(a) as unpatentable over
Jennings in view of Datek.com.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 12 under 35 U.S.C. § 103(a) as unpatentable over Jennings in
view of Datek.com and Nethery.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 15 and 17-21 under 35 U.S.C. § 103(a) as unpatentable over
Jennings in view of Schrader.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 16 under 35 U.S.C. § 103(a) as unpatentable over Jennings in
view of Schrader and Nethery.
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DECISION
The Examiner’s rejection of claims 11-21 under 35 U.S.C. § 103(a) 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). See 37 CFR
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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