Ex Parte Dickelman

Patent Trial and Appeal Board

Mar 14, 2017

12323158 (P.T.A.B. Mar. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/323,158 11/25/2008 Mark Dickelman USBC.004PA 7281
40581 7590 03/16/2017
CRAWFORD MAUNU PLLC
1150 NORTHLAND DRIVE, SUITE 100
ST. PAUL, MN 55120
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
03/16/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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U S PTO-patent @ ip-firm, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK DICKELMAN
Appeal 2014-0026431
Application 12/323,15 82
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
July 16, 2013) and Reply Brief (“Reply Br.,” filed December 13, 2013), and
the Examiner’s Answer (“Ans.,” mailed October 23, 2013) and Final Office
Action (“Final Act.,” mailed February 25, 2013).
2 Appellant states that “[t]he assignee of record in this application is U.S.
Bank National Association” (Appeal Br. 2).
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Application 12/323,158
CLAIMED INVENTION
Appellant’s claims relate generally “to data processing involving
accounting records, and as an example, to systems and methods for
automated computer systems and networks implemented as may be found in
a control center of a financial institution” (Spec. 1,11. 15—17).
Claims 1,16, and 18 are the independent claims on appeal. Claim 1,
reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
1. An electronic transaction data routing arrangement to
facilitate electronic payment between disparate, autonomous
payment networks for sellers providing goods or services and for
buyers paying for the goods or services, using seller profile data
that specifies a plurality of disparate, autonomous payment
networks for each seller, the routing arrangement comprising:
[a] an interface circuit to receive sets of electronic
transaction data from a credit card reader that is part of seller-
based point-of-sale system that is part of a first payment network,
each set including data to identify a buyer, a seller and a
transaction amount; and
[b] a software-programmed computer circuit configured
to, for each set of received transaction data pertaining to a
particular seller,
[c] identify electronic seller identification data for the
particular seller using information in the received transaction
data,
[d] process the received transaction data with profile data
electronically associated with the seller identification to select
one of a plurality of seller payment networks as a recipient of
electronic funds provided to cover payment for a transaction
amount in the transaction data, the selected one being different
than the first payment network,
[e] configure payment data from the received transaction
data using payment network profile configuration information
for the selected seller payment network, for electronic payment
processing by the selected seller payment network, and
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[f] transmit the configured payment data to the selected
seller payment network.
(Appeal Br. 13 (Claims App.)).
REJECTIONS
Claims 1—3 and 5—18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Coronna (US 2002/0111916 Al, pub. Aug. 15, 2002),
Kight (US 2003/0004867 Al, pub. Jan. 2, 2003) and Zacharias (US
6,494,367 Bl, iss. Dec. 17, 2002).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Coronna, Kight, Zacharias, and Stein (US 5,826,241, iss. Oct. 20, 1998).
ANALYSIS
Independent claims 1, 16, and 18, and dependent claims 2, 3, 5—15, and 17
Appellant argues claims 1—3 and 5—18 as a group (see Appeal Br. 4—
9). We select claim 1 as representative. The remaining claims stand or fall
with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Coronna, Kight, and Zacharias fails to disclose or suggest
the subject matter of independent claim 1 (see Appeal Br. 4—9; see also
Reply Br. 2—6).
Instead, we agree with the Examiner that the combination of Coronna,
Kight, and Zacharias discloses the argued features (see Final Act. 3-4;
Ans. 2—6 (citing Coronna 7, 8, 39, 41, 42, 45, 48, Figs. 2—A\ Kight || 23,
25, 26, 36, 37, Figs. 9A, 9B; Zacharias, col. 3,1. 64 —col. 4,1. 16, Fig. 4)).
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Coronna “relates to a payment processing and management system”
(Coronna 11). More particularly, Coronna’s invention
is directed to a system and method for effecting payment from a
payor to a payee, whereby the payment method for either the
payor or the payee, or for both the payor and the payee, may be
selected based on factors that indicate the payment preferences
for the payor or payee.
{Id. 17). Coronna further discloses that its system
may configure a payment transaction by selecting a payment
method for the payee from a first set of payment methods using
a payment rule, wherein the selected payment method is
independent of a payment method selected for the payor, and
may execute the payment request to cause a first payment to be
made from the payor and a second payment to be made to the
payee. The payment rule may be a predetermined business rule,
may be a function of pre-negotiated terms between the payor and
the payee, and may select a payment method according to the
amount of the payment, as a function of historical payment
information, or as a function of previous transactions between
the payor and the payee, or between the payor or payee and other
parties.
{Id. 19). Coronna discloses that its “[cjustomer database 44 may store
information concerning payor 4 and payee 6, including profiles that identify
payor 4 and payee 6 and their preferences, and business rules that express
the preferred payment methods of payor 4 or payee in particular situations”
{id. 148). Coronna further discloses that “payment selection system 32 may
access information in customer database 44 that controls the type of payment
from payor 4 or to payee 6, so that the selected payment method is a
function of the parameters of the transaction and the payment rules” {id.
| 51). In this regard, Coronna discloses that “[pjayment selection system 32
may also utilize active payment information to determine the most efficient
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option that maximizes the use of money by payor 4 and payee 6” (id. 1 52).
Coronna still further discloses that its
payment selection system 32 may select a payment method for
payor 4 that is independent of a payment method selected for
payee 6, in that the two payment methods may differ. As shown,
payor 4 may have a plurality of available payment options, and
payee 6 may have a plurality of available payment options,
including options that differ from those available to payor 4.
(Id. | 53; see also id. at Fig. 2).
Kight “relates generally to electronic financial services and more
particularly to interoperability among distinct and separate electronic
financial service networks” (Kight 11). Kight’s system includes an “inter­
network directory server 301 in communication with multiple electronic
financial service networks (EFSNs) 200A—200N” and “[e]ach of the
multiple EFSNs 200A—200N communicates with the internetwork directory
server 301 according to a common message set (CMS) 401” (id. 1 83).
Kight discloses that “for payments the CMS 401 includes specific criteria for
payment of bills . . . whether the purchase is made via a network for goods
or services or at a point-of-sale (e.g. at a brick-and-mortar store)” (id. 191).
Kight discloses that its “inter-network directory server 301 stores essential
information needed to complete inter-network transactions and services in a
directory,” i.e., database (id. 192). Kight further discloses that its directory
server 301 can include “information identifying each customer of each of the
EFSNs 200A—200N,” “merchant pick lists maintained on behalf of
individual EFSNs” and “information, identifying billers who are customers
of a given EFSN” (id. 194; see also id. 110, 116).
With respect to Figure 9A, Kight discloses that “customer A, using
participant network station 710A, transmits a payment directive via
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communication link 750E to central network station 705A, the originating
central network station. This payment directive includes, at a minimum, a
payment amount and information, identifying customer B” and “[t]he
payment directive can also include a customer number by which customer B
knows customer A” {id. 1102). Kight discloses “[a]t step 905, central
network station 705A determines if customer B is a customer of
EFSN 200A. If the results of the determination are positive, the payment is
handled in any conventional manner in which an EFSN may handle a
payment directive between two customers of the EFSN” {id.). However,
“[i]f the results of the determination are negative, central network
station 705A transmits a query to inter-network directory server 301 via
communication link 750A, step 910” {id. 1103). More particularly, Kight
discloses
[t]he query is a request for the inter-network directory server 301
to identify candidate EFSNs of which customer B 710B could be
a customer. The request includes identifying information
supplied by customer A to EFSN 200A. The inter-network
directory server 301, at step 911, identifies candidate EFSNs. At
step 915, the inter-network directory server 301 returns search
results to central network station 705A via communication link
750A, also according to the CMS 401. Positive results include
identifiers of candidate EFSNs and identifiers of paths to
electronically reach the candidate EFSNs.
{Id.).
Zacharias is directed to a “system for increasing the security of card-
based transactions using a multi-application card” (Zacharias, col. 3,11. 65—
66). Zacharias describes that its card may be used “[i]n a retail environment
at a merchant’s point of sale or service” {id. at col. 4,11. 31—32).
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Appellant argues
the Examiner has erroneously asserted that respective buyer and
seller payment networks correspond to two seller payment
networks as claimed. This is in direct contrast to aspects of the
claimed invention directed to receiving transaction data via a
seller payment network (e.g., receiving data from a credit card
network), and to making payment using a different seller
payment network (e.g., another credit card network for the
seller).
(Appeal Br. 4—5; see also Reply Br. 2—3). However, we agree with the
Examiner that the combination of Coronna, Right, and Zacharias discloses
the argued feature (Ans. 2—3). Here, as the Examiner points out, Right is
directed to “electronic financial services and more particularly to
interoperability among distinct and separate electronic financial service
networks (id. at 2 (citing Right 11). And, with respect to the exemplary
transaction depicted in Figure 9A of Right, Right makes clear that its system
can transmit payment to one of a “plurality of seller payment
networks . . . being different than the first payment network” (see id. 36,
37, 83, 91—94, 102, 103, 110, 116; see also Figs. 9A, 9B), as independent
claim 1 requires.
We are not persuaded by Appellant’s argument that the Examiner’s
mere “assertion that different payment networks exist for use by different
transaction entities, and that different data-communication approaches are
used for effecting payment. . . fails to teach or suggest implementing
disparate seller payment networks as claimed” (Reply Br. 2). Although we
agree with Appellant that Coronna’s “payment selection system 32” is
concerned with controlling a type of payment or settlement options (see
Coronna, Fig. 2; see also id. H48, 51), as opposed to payment networks, we
cannot agree with Appellant that Right does not disclose “disparate seller
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payment networks as claimed,” as discussed above. And, although
Appellant is correct that Kight “expressly teaches that if the payee is also a
member of the customer’s EFSN, then the transaction is completed using
that very same EFSN” (Appeal Br. 6), Appellant’s argument ignores the
remaining disclosure of Kight regarding situations where the payee and the
customer are not members of the same EFSN (see Kight || 102—103), and as
such, is not persuasive to show error in the Examiner’s rejection.
Appellant also argues that the Examiner’s proposed combination of
Coronna, Kight, and Zacharias is improper because Coronna “explicitly
teaches that ‘Point of Sale (‘POS’) systems, such as common credit card
systems ... are limited’ (see para. 4—5), and provides an alternate solution to
these limitations as part of its stated purpose” (Appeal Br. 7—8; see also
Reply Br. 3—5). However, Appellant’s teaching away argument is not
persuasive at least because Appellant does not point to any passage in
Coronna that “criticize[s], discredits] or otherwise discourage[s]” either of
Kight or Zacharias’s disclosures (see Kight |91; Zacharias, col. 4,11. 31—32)
regarding the use of point of sale systems from addressing the argued
feature. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art
does not teach away from claimed subject matter merely by disclosing a
different solution to a similar problem unless the prior art also criticizes,
discredits, or otherwise discourages the solution claimed).
Appellant argues that “there is no motivation for combining
references as asserted” because Coronna “already teaches a plurality of
network interface modules, each module is configured to electronically
communicate with a module-specific payment network” (see Appeal Br. 8;
see also Reply Br. 4—5). At the outset, we note that the Examiner does not
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rely on Coronna to disclose “a plurality of network interface^];” but rather,
relies on Coronna to “disclose[] effecting payment between payor/payee,
utilizing the [pjayment [selection [sjystem” and Kight as disclosing
‘“processing elements’ that make decisions regarding payer/payee and
different networks” (id. (citing Kight 137)).
In addition, we find that the Examiner has provided “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” (see KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). On pages 8—9 of the
Final Action, the Examiner provides the required rationale to support the
combination. The Examiner reasons that it would have been obvious to
combine Coronna and Kight because “[o]ne of ordinary skill in the art would
have been motivated to combine the teachings in order to provide electronic
financial services and more particularly to interoperability among distinct
and separate electronic financial service networks” (Final Act. 9 (citing
Kight 11)). The Examiner further reasons that it would be obvious to
combine Coronna and Kight with Zacharias because “[o]ne of ordinary skill
in the art would have been motivated to combine the teachings in order to
provide multi-application card . . . transaction processing ... for providing
secure access to multiple card accounts” (Final Act. 9 (citing Zacharias,
col. 1,11. 10-15).
Appellant further argues that the Examiner fails to establish that the
proposed combination is predictable given that Kight’s “approach involves
receiving transaction data over a customer’s EFSN, and that its purpose is
directed to exclusively using a single EFSN when the payee is also a
member thereof’ (Appeal Br. 9; see also Reply Br. 5—6). However, as
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discussed above, Appellant’s argument is not persuasive to show error in the
Examiner’s rejection because it mischaracterizes the scope and content of
Kight’s disclosure. That is, Appellant’s argument ignores Kight’s disclosure
regarding situations where the payee and the customer are not members of
the same EFSN (see Kight || 102—103).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the
Examiner’s rejection of claims 2, 3, and 5—18, which fall with independent
claim 1.
Dependent claim 4
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting dependent claim 4 under 35 U.S.C. § 103(a) because Stein, upon
which the Examiner relies, fails to disclose or suggest the subject matter of
claim 4 (see Appeal Br. 10-11; see also Reply Br. 6—7).
The Examiner maintains the rejection is proper, and cites to column 3,
lines 36—68 and column 7, lines 34—37 of Stein, as disclosing the argued
limitation (see Final Act. 10; see also Ans. 7—8). However, we agree with
Appellant that Stein discloses “using an email or interactive protocol
communication from an individual seller to a payment system 10, which
does not disclose a transfer request sent from a seller payment network (e.g.,
a credit card network)” (Reply Br. 7; see also Appeal Br. 10-11).
Therefore, we do not sustain the Examiner’s rejection of dependent
claim 4 under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 1—3 and 5—18 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a) is
reversed.
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).
AFFIRMED-IN-PART
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