Ex Parte Hill et al

Patent Trial and Appeal Board

Jun 10, 2013

11836917 (P.T.A.B. Jun. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/836,917 08/10/2007 Dennis J. Hill P00305-US-UTIL(M01.056/U) 4047
28062 7590 06/10/2013
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
06/10/2013 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 DENNIS J. HILL, SANDEEP MALHOTRA,
SARA E. FIEBIGER, DANA LORBERG, AND
PATRICK KILLIAN
____________________

Appeal 2011-007812
Application 11/836,917
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007812
Application 11/836,917

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-9, 13-23, and 28-30. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to methods, apparatus, systems, means,
and computer program products for implementing a remittance system on
the basis of an international payment card system (Spec. 1, ll. 6-9).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of registering a customer for a funds transfer
system, the method comprising:
receiving an application to register the customer for the
funds transfer system, the application including (a) the
customer’s name, (b) the customer’s residential address, (c) the
customer’s mobile telephone number, and (d) an identification
document that confirms the customer’s name and residential
address;
associating the customer’s mobile telephone number with
a payment card account number, said payment card account
number identifying a payment card account which belongs to
the customer, said payment card account to be used for funding

1 Our decision will make reference to Appellants’ Appeal Brief (hereinafter
“App. Br.,” filed August 10, 2010) and Reply Brief (hereinafter “Reply Br.,”
filed April 1, 2011) and the Examiner’s Answer (hereinafter “Ans.,” mailed
February 1, 2011).
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funds transfers initiated in the funds transfer system by the
customer; and
storing, in association with the payment card account
number, (a) the customer’s name, (b) the customer’s residential
address, and (c) a record of the identification document.

THE REJECTION
The following rejection is before us for review:
Claims 1-9, 13-23, and 28-30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kitchen (US 6,289,322 B1, iss. Sep. 11, 2001) in
view of Matsumoto (US 5,710,637, iss. Jan. 20, 1998).

ANALYSIS
Independent claim 1
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellants’ argument that Kitchen’s
registration process is fundamentally different from the credit card account
application in Matusmoto such that the references cannot be properly
combined (App. Br. 8-10 and Reply Br. 2-4).
Kitchen discloses a system and method for electronically presenting
billing information associated with a plurality of billers, e.g., merchants,
utility companies, service providers, and credit card companies, to a user
(Kitchen, Abstract and col. 5, l. 66 – col. 6, l. 7), who may respond by
directing payment of the bills by electronic funds transfer from his or her
checking account (Kitchen, col. 8, l. 46 – col. 9, l. 8). Kitchen discloses the
process by which a user enrolls in the system at column 10, line 49 through
column 11, line 56, with reference to the data entry screens shown in Figures
4-6, and describes that the user selects the billing entities to whom he or she
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wishes to make payments using the system, and also enters personal
information, e.g., name, address, social security number, mother’s maiden
name, and telephone numbers, and the checking account that is to be used to
fund the bill payments.
In rejecting claim 1, the Examiner relied on Kitchen as teaching a
method of registering a customer for a funds transfer system (Ans. 4-6).
However, the Examiner acknowledged that Kitchen fails to explicitly teach
the use of identification documents as part of the registration process, and
cited Matsumoto as teaching this feature (Ans. 6).
Matsumoto discloses an ATM-like machine for issuing cards,
e.g., credit cards, and describes that the machine includes a scanner on
which a user places an identification document, such as a driver’s license
(Matsumoto, Abstract). An image of the document is sent, along with
personal identification information entered by the user via a touch screen
display of the machine, to a clerk at a remotely located center, who reviews
the information submitted by the user and the user’s credit rating, and
determines whether the requested card should be issued (Matsumoto, col. 6,
ll. 13-53).
Appellants argue that because the Kitchen registration process does
not involve the opening of a new financial account, a person skilled in the art
would have had no reason to require submission or scanning of an
identification document as part of the registration process and, therefore, no
reason to modify the Kitchen system and method to include the use of an
identification document, as proposed by the Examiner (App. Br. 8-9). We
cannot agree.
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In our view, the Examiner’s articulated rationale for modifying the
Kitchen registration process to include the presentation of an identification
document, as taught by Matsumoto, i.e., to increase the security of the
Kitchen registration process, is adequately supported by rational
underpinning (Ans. 11-12). Moreover, modifying the Kitchen registration
process to include the submission of an identification document, as taught by
Matsumoto, is nothing more than a combination of prior art elements
according to their established functions, and yields a predictable result.
Therefore, it would have been obvious at the time of Appellants’ invention.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results”).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a).
Dependent claims 2 and 14

Appellants argue claims 2 and 14 together (App. Br. 10-11). We
select claim 2 as representative. Claim 14 stands or falls with claim 2.
37 C.F.R. § 41.37(c)(1)(vii).
Claim 2 depends from claim 1 and recites that the application is
received from a payment services provider. Appellants argue that the
Examiner erred in rejecting claim 2 under 35 U.S.C. § 103(a) because none
of the cited portions of Kitchen, on which the Examiner relies, discloses that
the enrollment application is received from a payment services provider
(App. Br. 10-11).
Appellants’ argument is not persuasive because it is predicated on
non-functional descriptive material, i.e., the source of the enrollment
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application, which may not be relied on for patentability. The source of the
enrollment application does not affect the performance of the claimed
method in any way. As such, this feature may not be relied on to distinguish
over the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf.
In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability).
See also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008)
(precedential) (discussing cases pertaining to non-functional descriptive
material).
Moreover, even if the source of the enrollment application is entitled
to patentable weight, we agree with, and adopt the Examiner’s response to
Appellants’ argument as set forth at page 12 of the Answer.
Therefore, we will sustain the Examiner’s rejection of claim 2 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of
claim 14, which stands or falls with claim 2.
Dependent claims 3 and 15
Appellants argue claims 3 and 15 together (App. Br. 11-12). We
select claim 3 as representative. Claim 15 stands or falls with claim 3.
37 C.F.R. § 41.37(c)(1)(vii).
Claim 3 depends from claim 1 and recites that the application is
received from a mobile telephone operating company. Appellants’ argument
that the Examiner erred in rejecting claim 3 under 35 U.S.C. § 103(a) is not
persuasive because, like Appellants’ argument with respect to claim 2,
Appellants’ argument with respect to claim 3 is predicated on non-functional
descriptive material, i.e., the source of the enrollment application, which
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may not be relied on for patentability. See In re Ngai, 367 F.3d at 1339;
cf. In re Gulack, 703 F.2d at 1385.
Even assuming arguendo that the source of the enrollment application
is entitled to patentable weight, Kitchen teaches at column 6, lines 4-6 that
billers “may represent individual merchants, utility companies, service
providers, bank credit card companies, or other individuals or entities to
whom a payment is owed,” which reasonably includes a mobile telephone
operating company. We agree with the Examiner that it is reasonable to
infer that a mobile phone company might use the funds transfer service as
part of its billing system; therefore, the enrollment application would be
deemed to be received from the mobile phone company (Ans. 13).
Therefore, we will sustain the Examiner’s rejection of claim 3 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of
claim 15, which stands or falls with claim 3.
Dependent claims 6 and 17
Appellants argue claims 6 and 17 together (App. Br. 12-13). We
select claim 6 as representative. Claim 17 stands or falls with claim 6.
37 C.F.R. § 41.37(c)(1)(vii).
Claim 6 depends from claim 1 and recites that the method further
comprises “transmitting the customer’s mobile telephone number and the
payment card account number to a payment card system.”
We are not persuaded by Appellants’ arguments that the Examiner
erred in rejecting claim 6 under 35 U.S.C. § 103(a) (App. Br. 12-13).
Instead, we agree with the Examiner that this limitation is met by the user’s
submission of his home or office telephone number, which may be a mobile
telephone and submission of the checking account number from which bills
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are to be paid as part of the enrollment process disclosed in Kitchen
(Ans. 15).
Appellants argue that the Examiner has “failed to recognize that the
claims call for the credit card account and phone number information to be
transmitted to a payment card system” (App. Br. 12, emphasis in original).
However, Appellants do not explain, nor do we see any reason why the
Kitchen system cannot be considered a “payment card system.”
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 6 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of claim 17, which stands or falls with claim 6.
Dependent claim 9
Claim 9 depends from claim 1 and recites that the method further
comprises “responding to the application by opening a payment card account
for the customer, said payment card account being identified by said
payment card account number.”
We are not persuaded that the Examiner erred in rejecting claim 9
under 35 U.S.C. § 103(a) (App. Br. 13-14). Matsumoto explicitly teaches
opening a payment card account (Matsumoto, Abstract). In our view,
modifying the Kitchen registration process to include the opening of a
payment card account, as taught by Matsumoto, where the card account
would be the account from which bills are paid, is nothing more than a
combination of prior art elements according to their established functions,
and yields a predictable result (Ans. 16). Therefore, it would have been
obvious at the time of Appellants’ invention. See KSR, 550 U.S at 416.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 9 under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 1-9, 13-23, and 28-30 under
35 U.S.C. § 103(a) is affirmed.
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

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