Ex Parte Manchester et al

Patent Trial and Appeal Board

Apr 25, 2016

10423527 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/423,527 0412512003
67338 7590 04/27/2016
BUCKLEY, MASCHOFF & TALWALKAR, LLC
GENERAL ELECTRIC COMPANY
50 LOCUST A VENUE
NEW CANAAN, CT 06840
Jeff Manchester
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
G07.019/CON 7598
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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
following e-mail address( es):
martin@BMTPATENT.COM
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF MANCHESTER and MICHELLE DUPREE-CAMMER
Appeal2014-002177
Application 10/423,527 1
Technology Center 3600
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jeff Manchester and Michelle Dupree-Cammer (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner's final decision rejecting under 35
U.S.C. § 103(a) claims 1, 4-7, and 9 as being unpatentable over Block,2
According to Appellants, the real party in interest is General Electric
Corporation. Appeal Br. 2 (filed August 23, 2013).
2 Valeri Block, Norwest Unit Adds New Twists to Cobranding
Combination Card Plan Seen As Alternative to Private Labels Series: 14,
American Banker, Vol. 159, Issue 114, p. 12, June 15, 1994.
Appeal2014-002177
Application 10/423,527
Store Card,3 and the Examiner's Official Notice. 4 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants' invention relates to "the implementation of a dual credit
card system." Spec. 1: 1-3.
Claims 1, 7, and 9 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A computer implemented method, comprising:
receiving, by a computer, information regarding an
applicant;
assigning, by the computer, a single credit line and a
single interest rate to a single dual credit card account for said
applicant; and
issuing, using a computer, a dual credit card to said
applicant, the dual credit card having an associated identifier
that identifies said single dual credit card account and an
issuing financial institution that is issuing the dual credit card
account as a private label card account for transactions
involving a first merchant and as a bankcard account for
transactions involving merchants other than said first merchant;
wherein transactions involving said dual credit card are
processed over a private label processing network when the
transactions are associated with said first merchant and are
processed over a bankcard network when the transactions are
associated with merchants other than said first merchant.
3 "Store Card Software Gets Dressed Up", Credit Card Management,
Vol. 8, Nr. 6, p. 90, Sept. 1995.
4 Claims 2, 3, 8, and 10-25 are canceled. See Appeal Br. 2; see also
Claims App.
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Application 10/423,527
ANALYSIS
Appellants have not presented arguments for the patentability of
claims 4--7 and 9 apart from those made for the patentability of claim 1. See
Appeal Br. 8, 12. Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv),
we select claim 1 as the representative claim to decide the appeal of the
rejection of these claims, with claims 4--7 and 9 standing or falling with
claim 1.
The Examiner finds that Block discloses receiving applicant
information for a dual credit card (co branded card) and assigning a single
account with a single credit line to the dual credit card, wherein the single
credit line includes a first portion with a first interest rate for use with a first
merchant (store merchant with a private-label line of credit) and a second
portion with a second interest rate for use with a second merchant that is
different from the first merchant (MasterCard line of credit). See Final Act.
4--11 (citing Block i-fi-1 7, 9, 14--17, 26-28); see also Ans. 11. With respect to
the issuing step, the Examiner takes Official Notice "that it was old and
well-known in the art at the time of Applicant's invention to use a BIN
(Bank Identification Number) to identify accounts." See Final Act. 6. 5 The
Examiner further takes Official Notice that because "it was old and well-
known in the art of credit transactions ... for the credit network owner to
charge a service fee to the merchant for use of their network to process a
transaction" "a retailer would likely forego paying a service fee to a third
party when processing transactions over their own retailer transaction
5 "Applicants do not contest that BINs have been used to identify
accounts." Appeal Br. 11.
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Application 10/423,527
network." Id. at 8. Thus, the Examiner concludes that it would have been
obvious for a person of ordinary skill in the art:
[T]o modify Block such that the first and second
transactions are processed over a first and second processing
network (e.g., a private label network and a bankcard network)
... in order to create a more attractive product across the credit
industry by meeting the needs of not only major credit card
sponsors, but also smaller retailers who find special benefits of
establishing their own merchant-specific credit card network,
such as lower service fees.
Id. at 8-9. The Examiner then turns to Stone Card to show that the claimed
steps of receiving, assigning, and issuing can be performed by a computer.
Id. at 9. The Examiner thus concludes that it would have been obvious for a
person of ordinary skill in the art to use a computer as taught by Stone Card
in the method of Block "in order to promote more rapid and accurate
processing of the received and assigned information." Id. (citing Store Card
iTiT 5, 8, 19-21 ).
In response, Appellants argue that the neither Block, Store Card, nor
the Examiner's Official Notice discloses "routing of a transaction over a
different network depending on where the dual credit card is used." See
Appeal Br. 9; see also Reply Br. 2-3. More specifically, Appellants argue
that Block does not disclose "routing of transactions over different networks
depending on where ... the card is used." Appeal Br. 10. As to Store Card,
Appellants argue that, "[l]ike Block, there is simply no teaching or
suggestion in Store Card to provide transaction processing as recited in
claim 1." Id. at 11. Thus, according to Appellants, "neither Block nor Store
Card, alone or in any permissible combination, teach or suggest
embodiments of the present invention as recited in claim 1." Id.
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Application 10/423,527
We are not persuaded by Appellants' arguments because they are not
commensurate with the Examiner's rejection. It is well-settled that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Here, the Examiner concedes "that Block does not explicitly disclose
that the first and second transactions are processed over a first (private label)
and second (bankcard) processing network, respectively." Ans. 12.
"However, Official Notice was taken that it was old and well-known in the
art of credit transactions at the time of Applicant's[] invention for the credit
network owner to charge a service fee to the merchant for use of their
network to process a transaction." Id. As Appellants did not seasonably
traverse the Examiner's taking of official notice during examination, then
the object of the official notice is taken to be admitted prior art. In re
Chevenard, 139 F.2d 711, 713 (CCPA 1943).
Thus, the Examiner correctly finds that because it is known that a
network owner charges a service fee to the merchant for use of its network
to process a transaction, "a retailer would likely forego paying a service fee
to a third party when processing transactions over their own retailer
transaction network." Id. An artisan must be presumed to know something
about the art apart from what the references disclose. See In re Jacoby, 309
F.2d 513, 516 (CCPA 1962). In view of the Examiner's Official Notice, we
agree with the Examiner's conclusion that it would have been obvious for a
person of ordinary skill in the art to modify Block such that the first and
second transactions are processed over a first and second processing network
(e.g., a private label network and a bankcard network). Appellants have not
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Application 10/423,527
persuasively shown error in the Examiner's reasoning. As such, although
we appreciate that neither Block, Store Card, nor the Examiner's Official
Notice individually discloses "routing of a transaction over a different
network depending on where the dual credit card is used," nonetheless, the
Examiner's combination of the teachings of Block, Store Card, and the
Examiner's Official Notice includes this feature. Moreover, the Examiner is
correct in that "[r]educing credit card transaction fees charged to a vendor is
often a goal of vendors, which is why many offer incentives for their
customers to use their store-based credit accounts for purchases." Id. at 13.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, and claims 4--7 and 9 fall with claim 1,
as being unpatentable over Block, Store Card, and Examiner's Official
Notice.
SUMMARY
The Examiner's decision to reject claims 1, 4--7, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Block, Store Card, and the Examiner's Official
Notice is affirmed. 6
6 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the preliminary examination
instructions on patent eligible subject matter issued after this Appeal was
filed. See "Preliminary Examination Instructions in view of the Supreme
Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et
al.," Memorandum to the Examining Corps, June 25, 2014; see also July
2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30,
2015).
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Application 10/423,527
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7