Ex Parte Marchesi

Board of Patent Appeals and Interferences

Feb 18, 2011

11241765 (B.P.A.I. Feb. 18, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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KILPATRICK TOWNSEND & STOCKTON LLP
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APPLICATION NO.
I EXAMINER I
BAIRD, EDWARD J
1 11241,765 09/29/2005 Giancarlo Marchesi 020375-067OOOUS 2165
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
02/23/2011 ELECTRONIC
Docket @kilpatricktownsend.com
ipefiling @kilpatricktownsend.com
jlhice @kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte GIANCARLO MARCHES1
Appeal 2010-00265 1
Application 1 11241,765
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-00265 1
Application 1 11241,765
Giancarlo Marchesi (Appellant) seeks review under 35 U.S.C. 5 134
(2002) of a final rejection of claims 1-20, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. 5 6(b) (2002).
The Appellant invented a way of pricing presentation instrument (e.g.
credit card) transaction processing (Specification ¶ 0002-3).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method of processing a presentation instrument transaction
for a merchant, comprising:
[I] at a host computer system, receiving transaction information
from the merchant for a presentation instrument transaction to
process, wherein the transaction information includes a ticket
amount;
[2] at the host computer system, determining a settlement
amount to pay the merchant for the transaction, wherein the
settlement amount is less than the ticket amount and wherein
the difference between the ticket amount and the settlement
amount is based, at least in part, on a fee;
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed June 23, 2009) and the Examiner's Answer ("Ans.," mailed
September 14,2009).
Appeal 2010-00265 1
Application 1 11241,765
[3] remitting a payment to the merchant, wherein the payment
includes the settlement amount; and
[4] further processing the transaction to thereby obtain
reimbursement;
[5] wherein the fee is determined, at least in part, by:
calculating an expected loss specific to the merchant, wherein
the expected loss is based, at least in part, on a probability of
default specific to the merchant and a gross exposure specific to
the merchant.
The Examiner relies upon the following prior art:
Basch US 6,658,393 Dec. 2,2003
Belyi US 200310233325 A1 Dec. 18,2003
Claims 1, 3,4, 8, 10, 11, 15, and 17 stand rejected under 35 U.S.C.
5 103(a) as unpatentable over Belyi.
Claims 2, 9, and 16 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Belyi and ~ a s c h . '
Claims 5-7, 12-14, and 18-20 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Belyi and Official Notice.
ISSUES
The issue of obviousness turns on whether Belyi described a fee
determined, at least in part, by calculating an expected loss specific to the
merchant, wherein the expected loss is based, at least in part, on a
3 The Appellant relies on the rejection of the independent claims and does
not separately argue the rejections over Belyi with either Basch or Official
Notice. Accordingly, the Examiner only repeated the first rejection in the
Answer, although all rejections remain.
Appeal 2010-00265 1
Application 1 11241,765
probability of default specific to the merchant and a gross exposure specific
to the merchant.
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
Belyi
01. Belyi is directed to processing financial transactions by
determining a risk score corresponding to the probability of the
transaction being returned. Belyi uses variables related to the
potential profit or loss generated by the transaction and
determined with a second scoring process, a profitability
assessment score based on the variables and the first risk score,
indicative of the profit or loss generated by the transaction. The
financial transaction is authorized based on the profitability
assessment score. Belyi ¶ 0009.
02. Different check acceptance subscriptions have different fee
schedules that are generally determined by risks associated with
the subscriptions. Belyi ¶ 0023.
03. Profitability of check acceptance is based on factors including
the check amount and probability of return. Belyi ¶ 0035.
04. Belyi describes charging a merchant fee for transaction as a
percent multiplier applied to the check amount that the merchant
pays the check approval service as transaction fee based on a
Appeal 2010-00265 1
Application 1 11241,765
profitability scoring model. The effective rate may vary
depending on the merchant and the business sector. For example,
the effective rate for pawn shops may be higher than grocery
stores because transactions taking place in pawn shops generally
have a higher risk of failure than transactions in grocery stores.
The effective rate can also be set based on the average number of
transactions processed per year by the merchant. Belyi ¶ 0036.
ANALYSIS
We are unpersuaded by the Appellant's argument that Belyi fails to
describe limitation [5] of a fee determined, at least in part, by calculating an
expected loss specific to the merchant, wherein the expected loss is based, at
least in part, on a probability of default specific to the merchant and a gross
exposure specific to the merchant. Appeal Br. 5-6.
Belyi charges a percent multiplier of the instrument amount. The
effective rate is based on a profitability model and may vary depending on
the merchant and the business sector. Thus, the profitability model includes
the expected loss if there is a loss and the probability of it occurring. The
expected loss is based on the gross exposure specific to that merchant for
that transaction since it is based on the check amount. The fee percentage is
similarly specific to the merchant based on the merchant and business sector.
FF 03 and 04.
We are also unpersuaded that receiving transaction information and
determining a settlement are not inherent or at least implied by Belyi.
Appeal Br. 6-7. Belyi's Figure 1 shows that transaction information is
necessarily sent and received throughout its system. Indeed, Belyi would be
Appeal 2010-00265 1
Application 1 11241,765
inoperable absent such transaction information. Similarly, the fact that the
merchant is paid for the check amount less a fee implicitly determines the
net of the two, which is a settlement amount.
CONCLUSIONS OF LAW
Rejecting claims 1, 3,4, 8, 10, 11, 15, and 17 under 35 U.S.C. 5 103(a)
as unpatentable over Belyi is not in error.
Rejecting claims 2, 9, and 16 under 35 U.S.C. 5 103(a) as unpatentable
over Belyi and Basch is not in error.
Rejecting claims 5-7, 12-14, and 18-20 under 35 U.S.C. 5 103(a) as
unpatentable over Belyi and Official Notice is not in error.
DECISION
To summarize, our decision is as follows.
The rejection of claims 1, 3,4, 8, 10, 11, 15, and 17 under 35 U.S.C.
5 103(a) as unpatentable over Belyi is sustained.
The rejection of claims 2, 9, and 16 under 35 U.S.C. 5 103(a) as
unpatentable over Belyi and Basch is sustained.
The rejection of claims 5-7, 12-14, and 18-20 under 35 U.S.C.
5 103(a) as unpatentable over Belyi and Official Notice is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
Appeal 2010-00265 1
Application 1 11241,765
AFFIRMED
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