Ex Parte Mann et al

Patent Trial and Appeal Board

Sep 21, 2015

11882708 (P.T.A.B. Sep. 21, 2015)

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.
11/882,708 08/03/2007 William Frederick Mann III 47004.000517 6082
131244 7590 09/22/2015
JPMorgan Chase/Hunton & Williams LLP
Intellectual Property Department
2200 Pennsylvania Avenue, NW
Suite 800
Washington, DC 20037
EXAMINER
WU, RUTAO
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
09/22/2015 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 WILLIAM FREDERICK III MANN and JEFFREY L. HIRKA
___________

Appeal 2013-002346
Application 11/882,708
Technology Center 3600
___________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
William Frederick Mann III and Jeffrey L. Hirka (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 58–73 and 78–
81, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 24, 2012) and Reply Brief (“Reply Br.,” filed December 3,
2012), and the Examiner’s Answer (“Ans.,” mailed November 14, 2012),
and Final Rejection (“Final Act.,” mailed January 19, 2012).
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The Appellants invented a system for performing transactions related to
an account so as to eliminate the need for the physical presence of a
transaction card. (Spec. 1, ll. 7–9).
An understanding of the invention can be derived from a reading of
exemplary claim 58, which is reproduced below [bracketed matter and some
paragraphing added].
58. A transaction card system, comprising:
[A] an alias for an account-holder, the account holder
having a plurality of transaction accounts;
[B] a plurality of personal identification entries
associated with the alias,
[C] each personal identification entry specifying a
hierarchical ranking among at least two of the plurality of
transaction accounts; and
[D] a card controller operating portion configured to
receive the alias and one or more of the plurality of personal
identification entries to identify a specified transaction account.

The Examiner relies upon the following prior art:
Campisano

US 6,227,447 B1

May 8, 2001

Paltenghe

US 2001/0011250 A1 Aug. 2, 2001
Iannacci US 7,318,049 B2 Jan. 8, 2008

Claims 58–60, 63, 67–71, 73, and 78–81 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Campisano and Iannacci.
Claims 61, 62, and 64–66 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Campisano, Iannacci, and Paltenghe.

Appeal 2013-002346
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ISSUE
The issue of obviousness of claim 58 turns primarily on whether the
combination discloses a personal identification entry specifying a
hierarchical ranking among a plurality of transaction accounts.

FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Campisano
01. Campisano is directed to a system and method for assigning an
alias, such as a phone number and a Personal Identification
Number, to a credit card so as to eliminate the need for the
physical presence of the card during a transaction. (Campisano,
col. 1, ll. 5–9).
Iannacci
02. Iannacci is directed to monitoring, evaluating, and managing
economic and personal benefits and executing functions to
produce and acquire the maximum or preferred benefit items by
automating appropriate payment and settlement actions.
(Iannacci, col. 1, ll. 35–41).
03. Iannacci discloses a method of using stored user preferences
about benefits acquired for the use of particular transaction cards,
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along with a ranking of the relative importance of those benefits to
the user, as a basis for selecting a transaction card to use for
settling a transaction. (Iannacci, col. 61, l. 44 to col. 62, l. 43).
Paltenghe
04. Paltenghe is directed to an electronic system for storage and
authorized distribution of personal information. (Paltenghe,
para. 2).
05. Paltenghe discloses:
Prior to implementation of smart cards, it could be software
that asks for an account number and personal identification
number, but with current technology, it can be implemented
using the card and a server, using authentication technology
implemented today. For future purposes, alternative
security and authentication technologies might use
biometrics, etc.
(Paltenghe, para. 77).
ANALYSIS
Claims 58–60, 63, 67–71, 73, and 78–81 rejected under 35 U.S.C. § 103(a)
as unpatentable over Campisano and Iannacci
Appellants argue independent claims 58, 70, 78, and 80 together as a
group (App. Br. 17), so we select claim 58 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
We are not persuaded by Appellants’ argument that the combination of
Campisano and Iannacci is based on impermissible hindsight, because
Appellants argue that Iannacci’s disclosed universal account number is
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“similar to (but is not) an alias” as disclosed in Campisano or claimed.
(App. Br. 9–11; see also Reply Br. 2–4).
The Examiner has substituted Campisano’s single credit card, in
association of an alias and personal identification entry (Final Act. 2–3),
with a hierarchical ranking of transaction accounts, in association with a
single identifier and as disclosed in Iannacci (Final Act. 4–5). The universal
account number of Iannacci need not be identical to the alias or personal
identification entry in Campisano, because Campisano already discloses the
claimed alias and personal identification entry.
In addition, the Examiner has set forth a motivation for the combination,
“since this offers personalized benefit-driven settlement solutions to
consumer transactions by producing value determinations according to a
user's configured benefit profile and integrates with conventional payment,
settlement, and incentive systems.” (Final Act. 5). The Examiner has thus
established a rational underpinning for the combination, which establishes
that the combination is not based on impermissible hindsight.
We are also not persuaded by Appellants’ argument that the combination
of Campisano and Iannacci would render the references unsuitable for their
intended purposes, because Iannacci relies on a universal account number
for its hierarchy of accounts, and not the alias and personal identification
entry discloses in Campisano. (App. Br. 11–12). Merely substituting a
hierarchy of accounts, in Iannacci, for the single credit card in Campisano,
would not render either reference unsuitable for their intended purposes.
Campisano discloses a purpose of eliminating the need for the physical
presence of a transaction card at a transaction (FF 01), which is still met by
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the substitution, and Iannacci discloses a purpose of automating the selection
of transaction accounts to use (FF 02), which is still met by the reference to
the accounts via an alias and personal identification entry.
Appellants also argue the combination fails to disclose a personal
identification entry that specifies a hierarchical ranking among accounts,
because from Iannacci’s benefit preferences “one cannot determine which
account is desired.” (App. Br. 12–17, see also Reply Br. 4–6). Appellants
further argue in Iannacci that “the accounts are not ranked, but rather the
benefits are ranked.” (Reply Br. 6).
We are not persuaded by Appellants’ arguments. The claim recites a
“hierarchical ranking among at least two of the plurality of transaction
accounts,” which Iannacci discloses with its automatic settlement and
account selection method, using an algorithm to determine which card to
select. (FF 03). Iannacci meets the broad claim language of a hierarchical
ranking, because it discloses a hierarchical ranking among the transaction
card accounts, using an algorithmic determination of the hierarchy based on
user preferences.
For these reasons, we sustain the rejection of independent claims 58, 70,
78, and 80, as well as dependent claims 59, 60, 63, 67–69, 71, 73, 79, and 81
that were not separately argued.

Claim 64 rejected under 35 U.S.C. § 103(a) as unpatentable over
Campisano, Iannacci, and Paltenghe
Dependent claim 64 recites “wherein the alias and the personal
identification entry [are] entered based on human characteristic recognition.”
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We are not persuaded by Appellants’ argument that Paltenghe’s
disclosure of the potential use of biometrics for security and authentication is
“pure speculation of a security technology that might be used.” Paltenghe
discloses the potential use of biometrics for security and authentication.
(FF 05). The ordinary artisan would recognize the disclosure of biometric
security technology as an available and well-known tool, even though
Paltenghe also discloses its invention does not current utilize it. The
disclosure is therefore not speculative.

Claims 61, 62, 65 and 66 rejected under 35 U.S.C. § 103(a) as unpatentable
over Campisano, Iannacci, and Paltenghe
We affirm the rejection of dependent claims 61, 62, 65, and 66 pro
forma because Appellants do not set forth separate arguments of
patentability for these claims.

CONCLUSIONS OF LAW
The rejection of claims 58-60, 63, 67-71, 73, and 78-81 under 35 U.S.C.
§ 103(a) as unpatentable over Campisano and Iannacci is proper.
The rejection of claims 61, 62, and 64-66 under 35 U.S.C. § 103(a) as
unpatentable over Campisano, Iannacci, and Paltenghe is proper.

DECISION
The rejections of claims 58-73 and 78-81 are affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

JRG