Ex Parte Dentler et al

Board of Patent Appeals and Interferences

Jun 4, 2010

10618072 (B.P.A.I. Jun. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte BRIAN DENTLER and 8
JOHN TIMOTHY PLACE 9
___________ 10
11
Appeal 2009-012496 12
Application 10/618,072 13
Technology Center 3600 14
___________ 15
16
Decided: June 4, 2010 17
___________ 18
19
Before HUBERT C. LORIN, ANTON W. FETTING, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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STATEMENT OF THE CASE 1
Brian Dentler and John Timothy Place (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 1-26, the only claims 3
pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellants invented a way of identifying and controlling payment 10
fraud in credit accounts (Specification ¶ 02). 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 24, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
24. A computer system comprising: 15
[1] a storage device; 16
[2] a processor in communication with the storage device; and 17
[3] a memory coupled with the processor, 18

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 17, 2008) and the Examiner’s Answer (“Answer,”
mailed March 24, 2009).
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[4] the memory comprising a computer readable storage 1
medium having a computer-readable program embodied therein 2
for operating the computer system to process a payment 3
towards a credit account, the computer-readable program 4
including: 5
[5] instructions for retrieving a history of profile records from 6
the storage device for the credit account over a period of time 7
preceding receipt of the payment, 8
each such profile record 9
corresponding to a date within the period of time 10
and 11
including 12
an account balance for the credit account on 13
the date and 14
a value of credited payments made towards 15
the credit account on the date; 16
[6] based on an analysis of the retrieved history of profile 17
records, 18
instructions for generating a behavior score associated 19
with the credit account, 20
wherein the behavior score assigns a level of risk 21
to the credit account; and 22
[7] based on the behavior score, 23
instructions for determining with the processor whether 24
to perform one of the following: 25
float the payment, 26
float part of the payment and apply the rest of the 27
payment, and 28
apply the payment in full. 29
THE REJECTIONS 30
The Examiner relies upon the following prior art: 31
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Crawford US 2003/0046223 A1 Mar. 6, 2003
Winking US 2003/0167231 A1 Sep. 4, 2003
Claims 1-5, 9-16, 18-21, 24, and 26 stand rejected under 35 U.S.C. 1
§ 103(a) as unpatentable over Winking, FICO Score, and Crawford. 2
Claims 6-8, 17, 22, 23, and 25 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Winking, FICO Score, Crawford, and Admitted Prior Art. 4
Claims 1-17 stand rejected under 35 U.S.C. § 101 as directed to non-5
statutory subject matter. 6
DISPOSITION OF THE APPEAL 7
The Examiner entered a new ground of rejection in the Examiner’s 8
Answer against claims 1-17 under 35 U.S.C. §101 as being directed to 9
nonstatutory subject matter. Answer 9. The Examiner properly gave notice 10
of the new ground of rejection (Answer 3) and the Technology Center 11
Director approved it. Answer 14. As the Answer indicated (Answer 13-14), 12
the Appellants were required to respond to the new grounds within two 13
months in either of two ways: 1) reopen prosecution (see 37 CFR 14
41.39(a)(2)(b)(1)); or 2) maintain the Appeal by filing a Reply Brief as set 15
forth in 37 CFR 41.41 (see 37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua sponte 16
dismissal of the appeal as to the claims subject to the new ground of 17
rejection.” Answer 13-14. According to the record before us, neither option 18
appears to have been exercised. 19
Accordingly, the Appeal as to claims 1-17, subject to the new ground 20
of rejection under 35 U.S.C. §101 as being directed to nonstatutory subject 21
matter stands dismissed. 22
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Given that the Appeal as to claims 1-17 stands dismissed, the 1
rejections before us for review are as follows: 2
1. Claims 18-21, 24, and 26 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Winking, FICO Score, and Crawford. 4
2. Claims 2, 23, and 25 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Winking, FICO Score, Crawford, and Admitted Prior Art. 6
ARGUMENTS 7
The Appellants argue these claims as a group. Accordingly, we select 8
claim 24 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 9
The Appellants argue that Winking fails to describe, generating a 10
behavior score associated with the credit account as in limitation [6] or 11
determining whether to perform any of the steps in limitation [7]. Appeal 12
Br. 9. 13
ISSUES 14
The issue of whether the Examiner erred in rejecting claims 18-26 under 15
35 U.S.C. § 103(a) turns on whether it was predictable to generate a 16
behavior score associated with the credit account as in limitation [6] and 17
determine whether to perform any of the steps in limitation [7] with the 18
procedures in Winking . 19
FACTS PERTINENT TO THE ISSUES 20
The following enumerated Findings of Fact (FF) are believed to be 21
supported by a preponderance of the evidence. 22
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Facts Related to the Prior Art 1
Winking 2
01. Winking is directed to processing credit card payments. 3
Winking ¶ 0002. 4
02. Winking describes determining the right-time to apply a 5
payment to an identified balance or toward an open for purchase 6
floating amount. Winking ¶ 0024. 7
03. Winking also states that, 8
[T]he payment amount of the right-time payment 9
transaction to be applied to the available credit varies 10
depending on a number of factors, such as, the attributes 11
or conditions of the credit account. For example, if the 12
credit account has a history of bounced check payments 13
and the payment amount is made in check, then the 14
available credit may not be adjusted until the check is 15
cleared. On the other hand, if the payment amount was 16
made in cash, then the full payment amount may be 17
applied to the available credit. Similarly, based on 18
evaluation of the factors, portions of the payment amount 19
may be applied to the available credit accordingly. 20
Winking ¶ 0024. 21
Crawford 22
04. Crawford is directed to a way of explaining credit scores. 23
Crawford ¶ 0001. 24
05. Crawford states that it is, “desirable for developers of credit 25
scoring algorithms, such as Fair, Isaac and Company, Inc. of San 26
Rafael, California (FICO) to move toward offering a service to 27
deliver credit bureau risk scores and explanations directly to 28
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consumers and lenders.” Crawford ¶ 0005. Most organizations 1
are comfortable that each credit scoring developer, such as Fair, 2
Isaac, is the only entity in the market that can actively take on the 3
role of credit score delivery and explanation. Crawford ¶ 0005. 4
Facts Related To The Level Of Skill In The Art 5
06. The Examiner found that one of ordinary skill in the financial 6
system arts was aware of the prevalence of FICO scores and that 7
those scores evaluated consumer credit behavior based on 8
historical data. Answer 5. 9
ANALYSIS 10
Claims 24 is a system consisting of conventional computer parts plus 11
instructions. The instructions perform several steps in limitation [5]. These 12
steps retrieve an account balance and a value of credited payments while 13
generating a credit behavior score that assigns a level of risk, and then 14
performs one of floating the payment, applying the payment in full, or 15
partially floating and partially applying the payment. The claim does not 16
specify, when to apply the payment, what the payment is to be applied 17
against, nor does the claim specify what is meant by floating the payment. 18
Thus, any application of a payment would meet the terms of the claim, as 19
any application of a payment would float or apply that payment relative to 20
something. 21
As to the behavior score in limitation [6], the Examiner took Official 22
Notice of the notoriety of the FICO score in credit evaluation and presented 23
Crawford as evidence of such notoriety. FF 06. The Examiner found that 24
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the Appellants’ argument simply argued the references separately when the 1
rejection was based on their combination. Answer 10-11. We agree with the 2
Examiner that non-obviousness cannot be established by attacking the 3
references individually when the rejection is predicated upon a combination 4
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097, 5
231 USPQ 375, 380 (Fed. Cir. 1986). The Appellants argued that Crawford 6
failed to show making a risk assessment and determining how to apply a 7
payment. Appeal Br. 10. The Examiner responded that Winking was 8
applied for these features. Answer 10. The Appellants have not argued that 9
Winking fails to describe these limitations. 10
As to limitation [7] determining to take an action, the Examiner found 11
that the limitation does not require selecting among all 3 recited alternative 12
actions, but merely requires performing one of those actions. Answer 4. 13
The Appellants argue that Winking fails to show dynamically determining 14
which action to take based on a behavior score, and that Winking either does 15
the first or third alone. Appeal Br. 10-11. 16
We agree that limitation [7] requires only determining to perform one of 17
the enumerated actions and does not require selecting among all recited 18
alternatives. Limitation [7] is prefixed with the phrase “based on the 19
behavior score,” but does not further limit what the nature of the basis is. 20
The Examiner found that Winking determines whether to float the payment 21
of apply the payment in full. Answer 4. We agree. FF 02. 22
The Examiner also found, that one of ordinary skill would have found 23
the use of credit history behavior to be a predictable basis for Winking to 24
use, in determining which of the alternatives to choose. The Appellants 25
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have not contested the notoriety of scores such as the FICO score as bases 1
for evaluating credit behavior history. As Winking describes, selecting 2
among at least two of the three actions recited in limitation [7] of claim 24, 3
and performing the selected action, the only issue is that of the predictability 4
of using a score such as FICO as the basis for making the selection. 5
We agree that Crawford is evidence of the notoriety of FICO scores to 6
assess credit behavior history. FF 05. Winking explicitly recites using 7
credit behavior history as a basis for making the determination of when to 8
apply the payment. FF 05. Thus we agree with the Examiner that it was 9
predictable to apply a credit behavior history measure such as FICO or 10
similar measure as the basis for determining how to apply the payment in 11
Winking. 12
CONCLUSIONS OF LAW 13
The Examiner did not err in rejecting claims 18-21, 24, and 26 under 35 14
U.S.C. § 103(a) as unpatentable over Winking, FICO Score, and Crawford. 15
The Examiner did not err in rejecting claims 22, 23, and 25 under 35 16
U.S.C. § 103(a) as unpatentable over Winking, FICO Score, Crawford, and 17
Admitted Prior Art. 18
DECISION 19
To summarize, our decision is as follows. 20
• The rejection of claims 18-21, 24, and 26 under 35 U.S.C. § 103(a) as 21
unpatentable over Winking, FICO Score, and Crawford is sustained. 22
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• The rejection of claims 22, 23, and 25 under 35 U.S.C. § 103(a) as 1
unpatentable over Winking, FICO Score, Crawford, and Admitted 2
Prior Art is sustained. 3
Upon return of the application to the Examiner, the Examiner should (1) 4
cancel claims 1-17 subject of the new ground of rejection and (2) notify the 5
Appellants that the Appeal as to claims 1-17, subject to the new ground of 6
rejection under 35 U.S.C. §101, as being directed to nonstatutory subject 7
matter, is dismissed and claims 1-17 are cancelled. See Manual of Patent 8
Examining Procedure (MPEP) § 1207.03, 8th ed., Rev. 7, Jul. 2008. 9
10
No time period for taking any subsequent action in connection with this 11
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 12
13
AFFIRMED 14
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