11531189 (P.T.A.B. Feb. 10, 2014)

Ex Parte Epting et al

Patent Trial and Appeal BoardFeb 10, 2014

11531189 (P.T.A.B. Feb. 10, 2014)

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. 11/531,189 09/12/2006 Thomas W. Epting BPCCR0014RG 1831 27939 7590 02/10/2014 PHILIP H. BURRUS, IV 460 Grant Street SE Atlanta, GA 30312 EXAMINER PUTTAIAH, ASHA ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 02/10/2014 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 THOMAS W. EPTING and RICHARD E. GREER ____________ Appeal 2011-012174 Application 11/531,189 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and BART A. GERSTENBLITH, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012174 Application 11/531,189 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-10 and 25-34 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. THE INVENTION The Appellants’ claimed invention is directed to a method of providing financial cards at a point of sale (Spec. 1:9-12). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for providing point of sale credit, the method comprising: a. providing a financial card at a point of sale; b. receiving a request for use of the financial card at the point of sale from a customer; c. receiving a check having disposed thereon account indicia from the customer; d. receiving at least one piece of identification information from the customer; e. transmitting a financial card identifier and the at least one piece of identification information to a provider of credit; f. establishing a line of credit associated with the financial card, wherein the line of credit is one of a revolving line of credit or a single installment loan; and g. processing a sale transaction using the financial card for payment. THE REJECTIONS The following rejections are before us for review: Appeal 2011-012174 Application 11/531,189 3 1. Claims 4 and 281 are rejected under 35 U.S.C. § 112, second paragraph as being indefinite. 2. Claims 1-10 and 25-34 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 3. Claims 1-7, 25-32, and 34 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Risafi (US 6,473,500 B1, iss. Oct. 29, 2002) and Tomoyuki (US 5,991,747, iss. Nov. 23, 1999). 4. Claims 8-10 and 33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Risafi, Tomoyuki, and Official Notice. FINDINGS OF FACT We find the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS Rejection under 35 U.S.C. § 112, second paragraph The Examiner has determined that the rejection of claims 4 and 28 is proper because it is unclear what is being “pre-loaded” (Ans. 3-4, 17-18). In contrast, the Appellants have argued that this rejection is improper (Br. 11-12). 1 In the Answer, at page 17, it is acknowledged that the listing of claim 27 is a typographical error and that instead claim 28 is under this ground of rejection. Appellants’ Appeal Brief indicates they understood that this rejection applies to claim 27 and not claim 28. See Br. 10 (Ground 1). 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). Appeal 2011-012174 Application 11/531,189 4 We agree with the Appellants. Here, the Specification provides support for the term “preloaded” at page 4, lines 18-20, and page 19, lines 4- 5. Both these citations in the Specification relate to spending limits and the term “preloaded” as used in the claims would be understood by one of ordinary skill in the art and this rejection is not sustained. Rejection under 35 U.S.C. § 101 The Appellants argue that the rejection of claim 1 under 35 U.S.C. § 101 is improper (Br. 12-16). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 4-5, 18-21). We agree with the Appellants. Claim 1 is not directed to an abstract idea but rather to a method of providing credit with several positively recited method steps. For example, the steps of “providing a financial card,” “receiving a check having . . . indicia,” “receiving . . . identification information from the customer,” and “transmitting a financial card identifier” are all method limitations which are not an abstract idea or insignificant extra-solution activity in the scope of the claim. For these reasons this rejection of claim 1 and its dependent claims is not sustained. Rejection under 35 U.S.C. § 103(a) The Appellants argue that the rejection of claim 1 is improper because there is no motivation to combine the references (Br. 16-21). The Appellants have not argued that any recited claim limitations are missing from the cited references of Risafi and Tomoyuki (Br. 16-21). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 5-7, 24-26). Appeal 2011-012174 Application 11/531,189 5 We agree with the Examiner. Here, Risafi at col. 6:37-41 has disclosed a method of using a prepaid card. Risafi does not disclose establishing a line of credit with the card however as only a prepaid card is used. Tomoyuki has disclosed an electronic purse system in which when an IC card is used a loan may be given (see Title and col. 4:20-27). While the Appellants argue that Risafi has been directed to only a pre-loaded card we note that claim 1 is not limited to a “pre-loaded card” but rather to a “financial card.” In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Court stated that when considering obviousness that “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.” KSR at 418. Here, the modification of Risafi to offer a loan extension as taught by Tomoyuki if the financial card had a lack of available funds would have been an obvious, predictable combination of familiar elements for the advantage of having a system that provided readily accessible loans to customers (see Ans. 7 (noting the advantage of convenience)) and increased sales (see id. (noting the advantage of a transaction not being prevented due to shortage in the balance of the account linked to the card). For these above reasons the rejection of claim 1 is sustained. The Appellants have not provided separate arguments for the dependent claims and the rejection of these claims is sustained as well. Appeal 2011-012174 Application 11/531,189 6 CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 112, second paragraph and 35 U.S.C. § 101 as listed in the Rejections section above. We conclude that Appellants have not shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 103 (a) as listed in the Rejections section above. DECISION The Examiner’s rejection of claims 1-10 and 25-34 under 35 U.S.C. § 103(a) is sustained. AFFIRMED Vsh