Ex Parte Morse

Patent Trial and Appeal Board

Dec 28, 2015

11866364 (P.T.A.B. Dec. 28, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/866,364 10/02/2007 Patricia Morse
66945 7590 12/30/2015
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
TWO EMBARCADERO CENTER, 8TH FLOOR
SAN FRANCISCO, CA 94111
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.
80083-727909(032300US) 6996
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/30/2015 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
EDurrell@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICIA MORSE
Appeal2013-006796
Application 11/866,364
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 23, 32, 33, 40, 43, and 50, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2013-006796
Application 11/866,364
THE INVENTION
The Appellant's claimed invention is directed to an apparatus and
method for transferring funds between parties to a transaction using a
deposit account associated with the intended recipient of a payment. (Spec.,
para. 1). Claim 23, reproduced below with the numbering in brackets added,
is representative of the subject matter on appeal.
23. An apparatus for enabling a transfer of money from a
first party to a second party, comprising:
[1] a processor programmed to execute a set of
instructions to enable the transfer of a specified amount of
money from the first party to the second party;
[2] a data storage medium coupled to the processor; and
[3] the set of instructions contained in the data storage
medium, wherein when the set of instructions are executed by
the processor, the processor enables the transfer of the specified
amount of money from the first party to the second party by
[ 4] providing a deposit only account for the second party,
the deposit only account configured to permit the first party to
deposit the specified amount of money into the deposit only
account, and configured to prevent the first party from making a
withdrawal from the deposit only account;
[5] linking the deposit only account for the second party
to a credit card account or a debit card account of the second
party, thereby enabling a transfer of money deposited into the
deposit only account to the credit card account or debit card
account of the second party;
[ 6] generating a deposit only account identifier for the
deposit only account of the second party;
[7] providing the deposit only account identifier to the
second party;
[8] receiving the deposit only account identifier and an
identification of the specified amount of money to be
transferred from the first party to the second party;
[9] determining if one or more specified conditions on
the operation of the deposit only account are satisfied, wherein
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Application 11/866,364
the specified conditions include one or more of certain times,
certain dates, a specified time period, or the occurrence or
nonoccurrence
of a specified event that must be satisfied to enable the first
party to transfer the specified amount of money to the second
party using the deposit only account, and further, wherein if the
one or more specified conditions are not satisfied, then the
deposit only account is not capable of being used for the
transfer;
[ 1 OJ making the specified amount of money accessible to
the second party through the deposit only account of the second
party if the one or more specified conditions are satisfied;
[ 11] receiving an instruction from the second party to
transfer an instructed amount of money in the deposit only
account of the second party to the credit card account or debit
card account of the second party that is linked to the deposit
only account of the second party; and
[12] in response, transferring the instructed amount of
money in the deposit only account of the second party to the
credit card account or debit card account of the
second party, wherein making the specified amount of money
accessible to the second party through the deposit only account
of the second party further comprises:
[ 13] transferring the specified amount of money into an
escrow account; and
[ 14] transferring the specified amount of money from the
escrow account to the deposit only account upon satisfaction of
an agreed upon condition or the occurrence of an agreed upon
event.
THE REJECTIONS
The following rejections are before us for review:
Claims 23, 32, 33, 40, 43, and 50 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lee (US 6,236,740 Bl, iss. May 22, 2001),
Cohen (US 2003/0097331 Al, pub. May 22, 2003), and Dively (US
2002/0169719 Al, pub. Nov. 13, 2002).
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Appeal2013-006796
Application 11/866,364
FINDil-.JGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence 1.
ANALYSIS
The Appellant argues that the rejection of claim 23 is improper
because the cited prior art fails to disclose claim limitation [ 11] cited above
(App. Br. 12-13, Reply Br. 2).
In contrast, the Examiner has determined that the cited claim
limitation is found in Cohen at paragraphs 108, 127, and 236 (Ans. 5, 10,
11 ).
We agree with the Appellant. Claim limitation [ 11] requires:
[ 11] receiving an instruction from the second party to transfer
an instructed amount of money in the deposit only account of
the second party to the credit card account or debit card account
of the second party that is linked to the deposit only account of
the second party.
Here, the citations to Cohen at paragraphs 108, 127, and 236 fail to disclose
this cited claim limitation. For example, Cohen at paragraph 108 discloses
that a programmable card can be set by the webbank owner, but it is not
specifically disclosed that there is an specific "instruction from the second
party to transfer an instructed amount of money in the deposit only account
of the second party to the credit card account or debit card account of the
second party that is linked to the deposit only account of the second party."
For these reasons, the rejection of claim 23 and its dependent claims is not
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2013-006796
Application 11/866,364
sustained. The remammg independent claims 33 and 43 contain a similar
limitation, and the rejection of these claims is not sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims as listed in the Rejections' section above.
DECISION
The Examiner's rejection of claims 23, 32, 33, 40, 43, and 50 is
reversed.
REVERSED
em
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