Ex Parte Moore et al

Board of Patent Appeals and Interferences

Feb 14, 2011

10295769 (B.P.A.I. Feb. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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20350 7590 02/16/2011
KILPATRICK TOWNSEND & STOCKTON LLP
APPLICATION NO.
TWO EMBARCADERO CENTER
EIGHTH FLOOR
SAN FRANCISCO, CA 941 11-3834
EXAMINER
101295,769 1111412002 Gary F. Moore 026595-00421ilUS 9904
FILING DATE
AUGUSTIN, EVENS J
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
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Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04107)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte GARY F. MOORE,
DAVID T. SHAPIRO, and
ROBERT W. NEWTON
Appeal 2010-002586
Application 101295,769
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, 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 2010-002586
Application 101295,769
Gary F. Moore, David T. Shapiro, and Robert W. Newton (Appellants)
seek review under 35 U.S.C. 5 134 (2002) of a final rejection of claims 1-34
and 36-44, 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 Appellants invented a system and method for tailoring account
characteristics to the needs of an individual customer. Specification 1: 19-
21.
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 system for facilitating individualized financial services, the
system comprising:
[I] a first self-service graphical interface operable to accept
information about a first account;
[2] a second self-service graphical interface operable to
accept information about a second account;
[3] a third self-service graphical interface operable to accept
directions to perform recurring transfers from the first account
to the second account, wherein the recurring transfers include at
least a first and a second transfer;
[4] a fourth self-service graphical interface operable to
accept information about an interim account; and
[5] a first processor in communication with at least one of
the first self-service graphical interface, the second self-service
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed July 30, 2008) and the Examiner's Answer ("Ans.," mailed
October 30, 2008), and Final Rejection ("Final Rej.," mailed September 10,
2007).
Appeal 2010-002586
Application 101295,769
graphical interface, the third self-service graphical interface,
and the fourth self-service graphical interface, and wherein the
first processor is coupled to a first computer readable medium
that includes instructions executable by the first processor to
initiate the recurring transfers, wherein at least one of the
recurring transfers comprises a first transfer from the first
account to the interim account and a second transfer from the
interim account to the second account.
The Examiner relies upon the following prior art:
Schutzer et al. US 5,920,848 Jul. 6, 1999
Fugitte et al. US 200210042773 A1 Apr. 11,2002
Kahr US 200310033245 A1 Feb. 13,2003
11
12 Claims 2-3, 9, and 16 stand rejected under 35 U.S.C. 5 112, first
13 paragraph, as containing new matter.
14 Claims 1-38 and 43-44 stand rejected under 35 U.S.C. 5 103(a) as
1s unpatentable over Schutzer and ~ u ~ i t t e ' .
16 Claims 39-42 stand rejected under 35 U.S.C. 5 103(a) as unpatentable
17 over Schutzer, Fugitte, and Kahr.
3 The Examiner's assertion that the listing of claims 1-38 and 43-44 as being
rejected under 35 U.S.C. 102(b) as being anticipated by Schutzer is a
typographical error is acknowledged. As such, all arguments provided by
the Appellants against this rejection are moot.
Appeal 2010-002586
Application 101295,769
ISSUES
The issue of whether the Examiner erred in rejecting claims 2-3, 9, and
16 under 35 U.S.C. 5 112, first paragraph, as containing new matter turns on
whether the a "fifth" graphical interface is considered to be new matter.
The issue of whether the Examiner erred in rejecting claims 1-38 and 43-
44 under 35 U.S.C. 5 103(a) as unpatentable over Schutzer and Fugitte turns
on whether the combination of Schutzer and Fugitte describe a graphical
interface for accepting information about an interim account.
The issue of whether the Examiner erred in rejecting claims 39-42 under
35 U.S.C. 5 103(a) as unpatentable over Schutzer, Fugitte, and Kahr turns on
whether the Appellants' arguments in support of claim 1 are found to be
persuasive.
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
Schutzer
01. Schutzer is directed to the integration of on-line performance of
financial transactions across multiple accounts with computerized
methods of financial functions. Schutzer 1 : 10- 17.
02. Schutzer describes a system that providers users with the
capability to perform a wide variety of financial transactions on-
Appeal 2010-002586
Application 101295,769
line, including bill payment and stock purchases. Schutzer 4:27-
29. The system includes the steps of initiating a local client
application on a terminal, establishing communication with a
server, selecting a financial transaction, inputting information
related to the selected financial transaction, the server
automatically performing the financial transaction, and
automatically downloading information related to the performance
of the financial transactions from the server to the local client
application. Schutzer 4:41-50.
Fugitte
03. Fugitte is directed to electronic systems and methods for bill
collection. Fugitte ¶ 0002. Fugitte describes the system includes
the steps of establishing a relationship between a Creditor,
Debitor, and a Payment Processing Center. Fugitte ¶ 0023. The
parties then determine and agree upon a data exchange format and
a data sending format that integrates with the Creditor's
accounting system. Fugitte ¶'s 0021 and 0023. The Creditor
provides the Payment Processing Center with information about
the Debtor's account, including the loan number, Debtor's name,
Debtor's social security information, and the payment amount.
Fugitte ¶ 0045. A graphical user interface may be employed to
facilitate the information gathering process. Fugitte ¶ 0047. Then
a payment processing file for the Debitor is completed and a
payment against the Debitor and for the Creditor is completed.
Fugitte ¶ 0023. The Payment Processing Center sets up an
intermediary account for the Creditor at the Payment Processing
Appeal 2010-002586
Application 101295,769
Center's bank. Fugitte ¶ 0054. The payment is first deposited in
an intermediary bank account and then transferred to a Creditor's
bank account. Fugitte ¶ 0023. Finally, a payment information file
is sent to the Creditor. Fugitte ¶ 0023.
Kahr
04. Kahr is directed to a method of collecting amounts overdue and
due through automated, recurring ACH debits to or payee-
generated checks drafted from a customer's asset account on a
payday-to-payday basis. Kahr ¶ 0001.
ANALYSIS
Claims 2-3, 9, and 16 rejected under 35 U.S. C. § 112, first paragraph,
as containing new matter
The Examiner found that claims 2-3, 9, and 16 recite a "fifth self-service
graphical interface" that is not supported by the Specification. The
Appellants contend that the Specification supports a graphical interface
operable to accept authentication information and the term "fifth" only
distinguishes that interface from the "first," "second," "third," and "fourth"
interfaces. App. Br. 8-9.
We agree with the Appellants. The Specification sets forth several
embodiments that use a plurality of graphical interfaces. Specifically, the
Specification sets forth a fourth self-service graphical interface that is
operable to accept authentication information. Specification 4: 15- 17. As
such, the Specification clearly supports the functionality required by the
Appeal 2010-002586
Application 101295,769
"fifth" graphical interface. The claimed invention does not require that
"first," "second," "third," "fourth," and "fifth" graphical interfaces are
displayed simultaneously. Therefore, the description in the Specification of
the functionality required by the "fifth" graphical interface is sufficient to
not be considered new matter and the labeling of the graphical interfaces as
the "first," "second," "third," "fourth," and "fifth" graphical interfaces is
nothing more than merely distinguishing between each of the graphical
interfaces.
Claims 1-38 and 43-44 rejected under 35 U.S. C. § 103(a) as
unpatentable over Schutzer and Fugitte
The Appellants contend that Schutzer and Fugitte fail to describe a
graphical interface operable to accept information about an interim account,
as required by limitation [4] of claim 1. App. Br. 10- 1 1. The Appellants
specifically argue that Fugitte merely describes an intermediate bank
account that is in some way involved in a transaction, but fails to describe a
graphical or user interface to accept information and fails to describe a
debtor provides any information about an account to process a transaction.
App. Br. 11.
We disagree with the Appellants. As acknowledged by the Appellants,
the Examiner relies on Fugitte to describe this limitation in rejection claim 1.
App. Br. 10-1 1 and Ans. 7-8. As also acknowledged by the Appellants,
Fugitte describes the use of an intermediary bank account in processing a
transaction between a creditor and debitor. App. Br. 11 & FF 03. Fugitte
also describes a graphical user interface that a creditor uses to input account
Appeal 2010-002586
Application 101295,769
information and debitor information to a payment processing center. FF 03.
The payment processing center uses this input information to transact a
payment from the debitor and send funds to a creditor. FF 03. The payment
processing center creates an intermediary account to deposit funds received
from the debitor based on the input information and subsequently transfers
funds from the intermediary account to the creditor's account. FF 03. As
such, the payment processing center uses the input information to create the
intermediary account and transact funds to and from the intermediary
account. For example, the input creditor's information is used to create the
intermediary account such that the creditor is associated with the
intermediary account and funds can be transferred from the creditor and the
intermediary account. Also, the input debitor information is used in creating
a transaction between the intermediary account and the debitor's account.
Therefore, Fugitte describes more than the mere existence of an intermediary
account and more than the just using the account in some possible way, as
argued by the Appellants. App. Br. 11. Independent claims 18, 27, and 43
and dependant claims 2- 17, 19-26, 28-38, and 44 recite the same subject
matter and this argument is not found to be persuasive for these claims for
the same reasons discussed supra.
Claims 39-42 rejected under 35 U.S. C. § 103(a) as unpatentable over
Schutzer, Fugitte, and Kahr
The Appellants contend that independent claims 39-40 and dependant
claims 41-42 are allowable for the same reasons asserted in support of claim
1 supra. App. Br. 11-12. We disagree with the Appellants. The Appellants'
Appeal 2010-002586
Application 101295,769
arguments were not found to be persuasive supra and are not found to be
persuasive here for the same reasons.
CONCLUSIONS OF LAW
The Examiner erred in rejecting claims 2-3, 9, and 16 under 35 U.S.C.
5 112, first paragraph, as containing new matter.
The Examiner did not err in rejecting claims 1-38 and 43-44 under 35
U.S.C. 5 103(a) as unpatentable over Schutzer and Fugitte.
The Examiner did not err in rejecting claims 39-42 under 35 U.S.C.
5 103(a) as unpatentable over Schutzer, Fugitte, and Kahr.
DECISION
To summarize, our decision is as follows.
The rejection of claims 2-3, 9, and 16 under 35 U.S.C. 5 112, first
paragraph, as containing new matter is not sustained.
The rejection of claims 1-38 and 43-44 under 35 U.S.C. 5 103(a) as
unpatentable over Schutzer and Fugitte is sustained.
The rejection of claims 39-42 under 35 U.S.C. 5 103(a) as
unpatentable over Schutzer, Fugitte, and Kahr is sustained.
Appeal 2010-002586
Application 101295,769
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).
AFFIRMED
mev
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