Ex Parte Cutler

Board of Patent Appeals and Interferences

Feb 18, 2011

10397041 (B.P.A.I. Feb. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
TJnited States Patent and Trademark Office
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KILPATRICK TOWNSEND & STOCKTON LLP
EXAMINER
CONFIRMATION NO.
TWO EMBARCADERO CENTER SWARTZ, JAMIE H
10/397,041 03/24/2003 Justine Cutler 026595-00721OUS 1610
ATTORNEY DOCKET NO.
EIGHTH FLOOR
SAN FRANCISCO, CA 941 11-3834
FIRST NAMED INVENTOR APPLICATION NO. FILING DATE
ART UNIT
Please find below andlor attached an Office communication concerning this application or proceeding.
PAPER NUMBER
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
02/23/2011 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 JUSTINE CUTLER
Appeal 2009-015391
Application 10/397,04 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, 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 2009-015391
Application 10/397,04 1
Justine Cutler (Appellant) seeks review under 35 U.S.C. 5 134 (2002) of
a final rejection of claims 1-24, 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 Appellant invented a way of accelerating loan payments
(Specification 1 :¶ 02).
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 of facilitating the repayment of a loan to a creditor,
comprising :
[I] receiving a request from a customer
to initiate loan acceleration:
[2] on about the last day of a grace period relating to a loan
payment of the customer,
sending an electronic funds transfer to pay the loan
payment;
[3] prior to the end of the grace period,
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed March 11, 2009) and Reply Brief ("Reply Br.," filed August 5,
2009), and the Examiner's Answer ("Ans.," mailed June 5, 2009).
Appeal 2009-015391
Application 101397,04 1
sending information to the creditor
that credits the customer for having paid the loan;
[4] debiting a first amount from an account of the customer,
wherein the first amount comprises funds to be applied to
the loan payment and
wherein sending the electronic funds transfer to pay the
loan payment takes place
before debiting the first amount from an account of
the customer;
[5] contemporaneously with a payday of the customer,
debiting a second amount from an account of the
customer,
wherein the second amount is debited
prior to the end of a subsequent grace period
relating to a subsequent loan payment of the
loan.
17 The Examiner relies upon the following prior art:
Posson US 2,427,976 Sep. 23, 1947
Downing US 5,963,647 Oct. 5, 1999
Brown US 6,532,450 B1 Mar. 1 1, 2003
Compiano WO 0 1150304 A2 Jul. 12, 2001
18 Claims 1-4, 6-9, 12-16, 18-21, and 24 stand rejected under 35 U.S.C.
19 5 103(a) as unpatentable over Compiano, Downing, and Official Notice.
20 Claims 5 and 17 stand rejected under 35 U.S.C. 5 103(a) as unpatentable
21 over Compiano, Downing, Brown, and Official Notice.
22 Claims 10, 11, 22, and 23 stand rejected under 35 U.S.C. 5 103(a) as
23 unpatentable over Compiano, Downing, Posson, and Official Notice.
Appeal 2009-015391
Application 10/397,04 1
ISSUES
The issues of obviousness turn on whether it was known to send an
electronic funds transfer to pay a loan payment before debiting the amount
from a customer.
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
Cornpiano
01. Compiano is directed to a way of repaying mortgage loans and
other installment debts on accelerated schedules. Compiano 1 :
Technical Field.
Downing
02. Downing is directed to funds transfers from a source account to
a cash access file for cardless withdrawal. Downing 3: 44-46.
03. Although cash is made available in Downing to a recipient
virtually as soon as the requested transfer is approved and
confirmed by the sender, the sender's account is not debited until
the cash is actually received by the recipient. Downing 3: 66 -
4:3.
04. In Downing, settlement does not take place until the funds are
actually withdrawn by the recipient. As a result, the source
account is debited only once funds have been received by the
Appeal 2009-015391
Application 10/397,04 1
recipient. Thus, the sender remains the "owner" of the funds until
they are picked up by the recipient. Any funds not accessed by the
recipient remain in the sender's account until the requested
transfer expires. Downing 7: 53-63.
Brown
05. Brown is directed to a financial system that tracks offset
payments. Brown 1: 8-10.
06. Brown discusses how processing takes place when the amount
paid is equal to, greater than, or less than the payment required.
Brown 3: 35-4: 22.
ANALYSIS
Claims 1-4, 6-9, 12-16, 18-21, and 24 rejected under 35 U.S.C. § 103(a) as
unpatentable over Compiano, Downing, and Oficial Notice.
Claims 10, 11, 22, and 23 rejected under 35 U.S.C. § 103(a) as unpatentable
over Compiano, Downing, Posson, and Oficial Notice.
We are not persuaded by the Appellant's argument that it was not known
to send an electronic funds transfer to pay a loan payment before debiting
the amount from a customer. Appeal Br. 5-6. The Examiner took official
notice that it was known to charge (debit) a customer for a transaction after
the transaction was assured to have taken place. The Examiner provided
Downing as evidence of this when the official notice was traversed.
The Appellant contends that Downing is insufficient to support official
notice. Downing states that settlement does not occur until the funds are
transferred. FF 03 & 04. This is because in Downing, the transaction timing
Appeal 2009-015391
Application 10/397,04 1
is discretionary. This is simply common sense. Where a payment is
discretionary, debiting for that payment is unwarranted until it is known and
established that the underlying transaction took place.
[Ulse of common sense does not require a "specific hint or
suggestion in a particular reference," only a reasoned
explanation that avoids conclusory generalizations. DyStar
Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1366
(Fed.Cir.2006); see also In re Kahn, 441 F.3d 977,987
(Fed.Cir.2006) (requiring "some rationale, articulation, or
reasoned basis to explain why the conclusion of obviousness is
correct"). And since KSR, this court has recognized that
obviousness is not subject to a "rigid formula," and that
"common sense of those skilled in the art demonstrates why
some combinations would have been obvious where others
would not." Leapfrog Enters. v. Fisher-Price, Znc., 485 F.3d
1157, 1 161 (Fed.Cir.2007).
Pefect Web Technologies, Znc. v. ZNFOUSA, Znc., 587 F.3d 1324, 1329 (Fed
Cir 2009). Thus, the Examiner did no more than provide evidence to
support what common sense tells one of ordinary skill about timing in a
discretionary payment such as Compiano's accelerated payment.
Claims 5 and 1 7 rejected under 35 U.S. C. § 103(a) as unpatentable over
Compiano, Downing, Brown, and Oficial Notice.
We are not persuaded by the Appellant's argument that the art fails to
describe the claim 5 and 17 limitation of the first amount being less than a
loan payment of the customer. Again, common sense alone would dictate
that with Compiano's accelerated payment, the first amount would be at
least devoid of an interest portion. Further, as the Examiner found, Brown
simply acknowledges that the universal fact that actual payments can be
equal to, greater than, or less than the usual payment. FF 06. We further
Appeal 2009-015391
Application 10/397,04 3
find that these claims are simply broader versions of claims 6 and 18, which
the Examiner found described by Compiano and are unchallenged.
CONCLUSIONS OF LAW
Rejecting claims 1-4, 6-9, 12-16, 18-21, and 24 under 35 U.S.C. 3 103(a)
as unpatentable over Compiano, Downing, and Official Notice is not in
error.
Rejecting claims 5 and 17 under 35 U.S.C. 5 103(a) as unpatentable over
Compiano, Downing, Brown, and Official Notice is not in error.
Rejecting claims 10, 11, 22, and 23 under 35 U.S.C. 5 103(a) as
unpatentable over Compiano, Downing, Posson, and Official Notice is not in
error.
DECISION
To summarize, our decision is as follows.
The rejection of claims 1-4, 6-9, 12- 16, 18-2 1, and 24 under 35 U.S.C.
5 103(a) as unpatentable over Compiano, Downing, and Official
Notice is sustained.
The rejection of claims 5 and 17 under 35 U.S.C. 5 103(a) as
unpatentable over Compiano, Downing, Brown, and Official Notice is
sustained.
The rejection of claims 10, 11, 22, and 23 under 35 U.S.C. 5 103(a) as
unpatentable over Compiano, Downing, Posson, and Official Notice is
sustained.
Appeal 2009-015391
Application 10/397,04 1
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
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