Ex Parte Nathans et al

Patent Trial and Appeal Board

Dec 19, 2014

11847853 (P.T.A.B. Dec. 19, 2014)

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.
11/847,853 08/30/2007 Michael G. Nathans 9520-005 US 2808
7590 12/19/2014
Franklin B. Levin, Esq.
Senior Vice President & General Counsel
Pay Rent, Build Credit, Inc.
100 Canal Pointe Blvd.,Suite 208
Princeton, NJ 08540
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
12/19/2014 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 MICHAEL G. NATHANS,
MARCIA A. GOLDSTEIN-NATHANS,
KEVIN E. GOLDSTEIN, and MATTHEW B. VITKO
____________________

Appeal 2012-009447
Application 11/847,853
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

INTRODUCTION
Appellants filed a Request for Rehearing (“Req. Reh’g”) contending
that the Board erred in the Decision on Appeal of August 28, 2014
(“Decision”), asking that decision be reheard (Req. Reh’g 1).
In the Decision the Board affirmed the Examiner’s rejection of claims
1, 3–7, 12 and 14–18 under 35 U.S.C. § 103(a).

Appeal 2012-009447
Application 11/847,853

2
Appellants argue that we misapprehended the teachings of Nathans
because Nathans does not teach verifying payments made by a user prior to
the request for verification. In essence, Appellants once again argue that the
payments verified in Nathans are future payments. As we explained on page
5 of the Decision we find that Nathans discloses this subject matter at
paragraph 12. In paragraph 12, Nathans teaches that the consumers and/or
creditors arrange with a payment processor, such as a bank, to report
payment data to the data repository. The bank reports or verifies payment
information which includes the actual date of the payments. As the bank in
Nathans verifies payment data which includes an actual date, it is clear that
the payment was made in the past. In addition, claim 30 of Nathans recites
that the reporting or verification of payments is done based on a request
made by the consumer, thereby disclosing that payments are made prior to
the request for verification.
In addition, as also explained on page 5 of the Decision,
RentReporters clearly discloses a request from a consumer to verify past
payments by disclosing that prospective landlords can quickly and
effectively evaluate rent payment history. Appellants argue that the
disclosure in RentReporters of “current landlords will now know that you
are a responsible person who plans on paying rent and being a good tenant”
indicates that the request for verification takes place before the payments
RentReporters 1). RentReporters in fact teaches that the payment history is
used to evaluate prospective tenants, thereby disclosing that request for
verification of payment is made after rent payments are paid or not paid.
Therefore, we decline to alter this portion of our original opinion.
Appeal 2012-009447
Application 11/847,853

3
Appellants argue that the timing of the payments does functionally
alter the method of the claimed application because if the request were made
in Nathans for past payments the user would know the name of the verifier
and thus Nathans would not disclose “wherein a name of the verifier is not
disclosed to the user.” In the Decision, we stated that whether the payment
data relates to past payments or future payments does not functionally alter
the repository of claim 1 or the receiving step of claim 12. This is true
whether the user knows the name of the verifier or not. This is true also for
claim 22 because the receiving step therein recited is the same whether the
payment data relates to future payments or past payments. Therefore, we
decline to alter this portion of our original opinion.
Appellants argue for the first time in this rehearing that Nathans does
not discloses “wherein a name of the verifier is not disclosed to the user
when the user makes the request for verification” as recited in claim 1 and as
similarly recited in claim 12. We will not consider this argument because it
is a new argument which was raised for the first time in Appellant’s request
for rehearing. 37 C.F.R. § 41.52(a)(1); Cooper v. Goldfarb, 154 F.3d 1321,
1331 (Fed. Cir. 1998); In re Kroekel, 803 F.2d 705, 708–09 (Fed. Cir. 1986);
Ex parte Hindersinn, 177 USPQ 78, 80 (Bd. App. 1971).
We note additionally that the Examiner did not rely on Nathans for
teaching this subject matter but rather relied on Official Notice (Ans. 8). As
such, this argument does not address the actual rejection made by the
Examiner.
Appellants direct our attention to the phrase “even if neither Nathans
nor RentReporter disclosed verifying past payments” on page 5 of the
Appeal 2012-009447
Application 11/847,853

4
Decision and argue that this is a new ground of rejection. In consideration
of this argument, we modify our opinion to delete the phrase “even if neither
Nathans nor RentReporters disclosed verifying past payments.” Although
we modify the Decision in this respect, we make no other modifications to
the Decision.
We have considered the Decision in light of the Request for
Rehearing, and have modified the same to delete the phrase “even if neither
Nathans nor RentReporter disclosed verifying past payments.” However, we
decline to substantively modify our affirmance of the Examiner’s rejections
in our Decision.

GRANTED-IN-PART

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