10340784 (P.T.A.B. Dec. 19, 2014)

Ex Parte Friedman et al

Patent Trial and Appeal BoardDec 19, 2014

10340784 (P.T.A.B. Dec. 19, 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. 10/340,784 01/13/2003 Howard S. Friedman 05793.3097-00000 6714 22852 7590 12/19/2014 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER PRASAD, NANCY N ART UNIT PAPER NUMBER 3624 MAIL DATE DELIVERY MODE 12/19/2014 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 HOWARD S. FRIEDMAN, SETH B. BLACKLEY, ADAM BRAFF, WILLIAM A. CILLUFFO II, RICHARD C. EDMUNDS III, TILMAN D.T. EHRBECK, CHRIS NEWKIRK, and RONALD D. SHEKLIN ____________________ Appeal 2012-012311 Application 10/340,7841 Technology Center 3600 ____________________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and BRADLEY B. BAYAT, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1–10, 12–26, and 28–32. We have jurisdiction under 35 U.S.C. § 6(b). Appellants appeared for oral hearing on December 16, 2014. 1 According to Appellants, the real party in interest is Capital One Financial Corporation. App. Br. 4. Appeal 2012-012311 Application 10/340,784 2 Exemplary Claim Exemplary claim 1 reads as follows: 1. A method, implemented by a computer system, for managing a credit account associated with a customer, wherein the credit account has a first credit component associated with purchase transactions and a second credit component associated with healthcare expenses, the method comprising: receiving a payment request from an insurance provider for a customer payment portion associated with a particular healthcare expense; determining, by the computer system, whether the customer payment portion exceeds a limit; paying the insurance provider the customer payment portion using credit of the second credit component when the limit is not exceeded; requesting, by the computer system, a payment from a healthcare expense account to the credit account associated with the customer; and receiving, by the computer system, a credit from the healthcare expense account to the credit account associated with the customer to pay for the customer payment portion paid using credit of the second credit component. Rejections on Appeal Claims 1–9, 12–25, and 28–32 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boyer (US 6,208,973 B1, iss. Mar. 27, 2001) and Drunsic (US 2002/0147678 A1, pub. Oct. 10, 2002). Claims 10 and 26 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Boyer, Drunsic, and Official Notice. Appeal 2012-012311 Application 10/340,784 3 Appellants’ Contention Appellants contend that the Examiner erred in rejecting claim 1 because: Boyer and Drunsic, whether taken separately or in combination, do not disclose or suggest at least Appellants’ claimed “requesting, by the computer system, a payment from a healthcare expense account to the credit account associated with the customer,” and “receiving, by the computer system, a credit from the healthcare expense account to the credit account associated with the customer to pay for the customer payment portion paid using credit of the second credit component,” as recited in independent claim 1 (emphases added, independent claims 6, 17, and 22 containing similar recitations). App. Br. 13. Issues on Appeal Did the Examiner err in rejecting claims 1–10, 21–26, and 28–32 as being obvious because the cited references fail to disclose or suggest the argued limitations? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. As to Appellants’ above contention, we agree. All of the claims on appeal require the step of requesting a payment from a healthcare expense account and receiving a credit from the healthcare expense account to the credit account. In regard to claims 10 and 26, the Official Notice taken by the Examiner does not cure the deficiencies noted above for the teachings of Appeal 2012-012311 Application 10/340,784 4 Boyer and Drunsic. Therefore, we will not sustain the rejections of the Examiner as to any of the claims. CONCLUSION Appellants have established that the Examiner erred in rejecting claims 1–10, 21–26, and 28–32. DECISION The Examiner’s rejections of claims 1–10, 21–26, and 28–32 are reversed.2 REVERSED mls 2 In the event of further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims on appeal for compliance with 35 U.S.C. § 101 in light of the recently issued 2014 Interim Guidance on Patent Subject Matter Eligibility. (December 16, 2014, Federal Register, Vol. 79, No. 241, pages 74618–33).