10392849 (P.T.A.B. Feb. 20, 2013)

Ex Parte Nathans et al

Patent Trial and Appeal BoardFeb 20, 2013

10392849 (P.T.A.B. Feb. 20, 2013)

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. 10/392,849 03/21/2003 Michael G. Nathans 9520-004-64 9001 7590 02/20/2013 Franklin B. Levin, Esq. Senior Vice President & General Counsel Pay Rent, Build Credit, Inc. 100 Canal Pointe Blvd., Suite 208 Princeton, NJ 08540 EXAMINER MONFELDT, SARAH M ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 02/20/2013 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 APPEALS BOARD ____________________ Ex parte MICHAEL G. NATHANS and MARCIA A. GOLDSTEIN-NATHANS 1 ____________________ Appeal 2011-005313 Application 10/392,849 Technology Center 3600 ____________________ Before, MURRIEL E. CRAWFORD, KEVIN F. TURNER, and MICHAEL W. KIM, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 Pay Rent, Build Credit, Inc., is the real party in interest. Appeal 2011-005313 Application 10/392,849 2 STATEMENT OF THE CASE In a Request for Rehearing, filed February 7, 2013 (“Req. Reh’g.”), Appellants request that we reconsider the Board’s Decision of December 7, 2012 (hereinafter “Decision”). 2 Specifically, Appellants request that we reconsider our decision wherein we affirmed the Examiner’s decision to reject claims 1-3, 5-9, 11, 15-19, 22, 32-34, and 36 under 35 U.S.C. § 103(a) as unpatentable over the combination of Nathans, Steele or Chaganti, and Thornley and claim 23 under 35 U.S.C. §103(a) as unpatentable over the combination of Nathans, Steele or Chaganti, Thornley, and Brady. (See Decision 12.) Based on the discussion which follows, the request for rehearing is denied, other than providing additional discussion below, which does not alter the disposition of this Appeal. DISCUSSION Appellants argue that the Decision improperly concluded that the combination of Nathans, Steele or Chaganti, and Thornley teaches or suggests “the payment processor being directed to report the payment information by the consumer and having a contractual relationship with the credit reporting agency,” as recited by exemplary independent claim 1. (Req. Reh’g. 2.) Specifically, Appellants assert that there would be no reason for the payment processor to have a contractual agreement with the credit reporting agency because it is the consumer’s credit information at 2 Our decision on rehearing will make reference to the Appellants’ Appeal Brief (“Br.,” filed September 20, 2010). Appeal 2011-005313 Application 10/392,849 3 issue and not the payment processor’s credit information. (Req. Reh’g. 3-4.) We cannot agree. While Appellants assert that a payment processor would have no interest in any type of contractual relationship with a reporting agency, Nathans discloses that “[t]he inducement for mortgage servicers to report mortgage payment information is provided by protecting the confidentiality of the creditor/debtor relationship, and by allowing mortgage services who do report payment information to access the information in a single centralized housing credit repository with the consent of the consumer.” (¶ [0015].) Therefore, given that Appellants’ Specification describes a “payment processor” as a financial institution or credit provider itself (Decision 4; see FF 1), we find Nathans provides good reason for the payment processor to have a contractual relationship with the credit reporting agency to protect both the consumer’s credit information as well the payment processor’s credit information. That is, in consideration for protecting the confidentiality of the creditor/debtor relationship, the payment processor in Nathans receives access to the credit repository. (See Nathans at [0015].) Accordingly, we maintain our initial position that “one of ordinary skill in the art would appreciate that a contractual relationship would exist between the payment processor and credit reporting agency in order for the payment processor to release its sensitive credit information to a reporting agency.” (Decision 8.) See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Appeal 2011-005313 Application 10/392,849 4 Additionally, Appellants argue that the Board misapprehends the teachings of Thornley, as “Thornley does not disclose any contractual relationship between the creditor and the credit repository.” (Req. Reh’g. 5.) Specifically, Appellants assert that Thornley discloses a lease between the landlord/creditor and the consumer, which fails to teach or suggest the contractual relationship required by the claims between the credit repository and a payment processor different from the creditor. (Req. Reh’g. 5.) We are not persuaded by Appellants’ argument as the argument attacks the references separately, even though the rejection is based on the combined teachings of the references. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As stated in the Decision, we find: Thornley is directed to a rent payment history system which collects data associated with rent payments for a plurality of renters, leases, and lease events and stores these data in a central repository. In Thornley, property managers receive payments and input these payments into a central repository. Additionally, Thornley describes that its central repository is secured by password protection in order to prevent unauthorized additions to the central repository after the conclusion of a lease. (Decision 8) (internal citations omitted). Based upon these teachings, we construed the “payment processor” of exemplary independent claim 1 to read on the property manager in Thornley, since Thornley discloses that its property manager accepts payments and additionally inputs these payments into a rent history repository. (¶ [0031].) This interpretation is commensurate with Appellants’ Specification which broadly describes that “a landlord’s computer may take on the roles of the verified source 320, the creditor payment processor 340c, and the authorized Appeal 2011-005313 Application 10/392,849 5 subscriber 360.” (See Spec. 13, ll. 1-3.) Consequently, the Decision concluded: [w]hile we acknowledge that Thornley fails to teach the feature of claim 1 wherein the payment processor is different from the creditor, since it is the property managers in Thornley acting as the payment processor, the Examiner only relies on Thornley to the extent it teaches a contractual relationship with a credit reporting agency. (Decision 8) (internal citations omitted). Moreover, while Appellants assert that the only contractual relationship in Thornley is between the landlord/creditor and the consumer, we find Thornley clearly teaches a contractual relationship established between the landlord and the rent payment history system (i.e., credit reporting agency) of Thornley via a service contract or execution of a hard copy agreement. (¶ [0065]; See also Fig. 6, customer application and service agreement.) Therefore, since the Examiner relies on the financial institution of Nathans to address a payment processor different from a creditor and Thornley teaches a contractual relationship with a credit reporting agency, we maintain our initial determination that the combination of Nathans, Steele or Chaganti, and Thornley teaches or suggests “the payment processor being directed to report the payment information by the consumer and having a contractual relationship with the credit reporting agency,” as recited by exemplary independent claim 1. Lastly, to the extent that Appellants argue that there is no teaching in either Nathans or Thornley related to contractual provisions for assuring credit information security, we do not find such an aspect to be set forth in exemplary independent claim 1. See CollegeNet, Inc. v. ApplyYourself, Inc., Appeal 2011-005313 Application 10/392,849 6 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for proper context of a claim term, limitations from the specification will not be imported into the claims). Moreover, we note that the sole reference, to a “contractual relationship,” in Appellants’ Specification states that “[i]n some embodiments, the verifiable source 120 has a contractual relationship with the operator of the credit database 130.” (Spec. 8, ll. 4-5.) We therefore decline to modify our original Decision. DECISION Accordingly, while we have granted Appellants’ request for rehearing to the extent that we have reconsidered our previous decision, the request is denied with respect to making any pertinent modification to the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED alw