Ex Parte Neel

Patent Trial and Appeal Board

Aug 9, 2013

11636296 (P.T.A.B. Aug. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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6
Ex parte GERALD A. NEEL 7
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9
Appeal 2011-006353 10
Application 11/636,296 11
Technology Center 3600 12
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16
MICHAEL W. KIM, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
20
Appeal 2011-006353
Application 11/636,296
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STATEMENT OF THE CASE1 1
Gerald A. Neel (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 15-34, the only claims pending in the application on 3
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 4
The Appellant invented a form of specialty financial instruments such as 5
credit cards and gift cards having specific purposes, methods of use, 6
applications or restrictions, and a way of creation, approval and use for 7
hastening the availability of at least a portion of funds to a recipient of a 8
qualified proceeds. Spec. para. [6]. 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 15, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
15. A method of disbursing cash-out proceeds, comprising in 13
sequence: 14
[1] facilitating a loan 15
that includes at least some cash-out proceeds; 16
[2] providing 17
a new debit card 18
and 19
new debit card account 20
for receiving the proceeds; 21
and 22
[3] transferring 23
at least a portion of the proceeds 24

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 19, 2010) and Reply Brief (“Reply Br.,” filed January 12,
2011), and the Examiner’s Answer (“Ans.,” mailed November 12, 2010).
Appeal 2011-006353
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to the debit card account. 1
The Examiner relies upon the following prior art: 2
Norris US 6,105,007 Aug. 15, 2000
Martin US 6,304,860 B1 Oct. 16, 2001
Claims 15-34 stand rejected under 35 U.S.C. § 112, first paragraph, as 3
lacking a supporting written description within the original disclosure. 4
Claims 15-34 stand rejected under 35 U.S.C. § 103(a) as unpatentable 5
over Martin and Norris. 6
ISSUES 7
The issues of written description turn primarily on whether the 8
Specification describes a cash-out. The issues of obviousness turn primarily 9
on whether it was predictable to issue a new debit card for newly issued 10
funds. 11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Facts Related to Appellant’s Disclosure 15
01. When the loan closes, the cash-out proceeds due to the borrower 1 16
are electronically transferred from the escrow company 3 to the 17
issuing company 4. Spec. para [35]. 18
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Facts Related to the Prior Art 1
Martin 2
02. Martin is directed to an automated debt payment system and 3
method for providing access to a plurality of non-bank loan 4
payment processors (loan servicers) through established ATM 5
networks, thereby creating a payment system designed to allow a 6
consumer to initiate an electronic transfer of funds from a primary 7
bank transaction account (e.g., checking account, savings account) 8
to a loan servicer to satisfy an outstanding consumer debt or 9
payment obligation. Martin 5:36-45. 10
Norris 11
03. Norris is directed to closed loop processing of financial 12
transactions such as, especially, a loan or credit card application, 13
including completion of the application, underwriting, and 14
transferring of funds. The term “closed loop” means that all the 15
steps involved are performed by a computer that is programmed to 16
make the decision to approve or disapprove the request and to 17
complete all aspects of it, including complying with regulatory 18
requirements, on behalf of the financial institution within minutes 19
of the time the consumer initiates the request for the particular 20
service. In loan application processing, for example, the closed 21
loop includes the steps of transferring the funds to the borrower 22
and arranging for repayment, as well as completing the loan 23
application and underwriting it, including execution of regulatory 24
requirements related to consumer financing, all done without 25
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human intervention. In the primary examples presented in the 1
present invention, for loans and credit cards, the apparatus uses a 2
computer controller and a telecommunications link, plus other 3
electronic communications equipment, to enable the complete, 4
automated processing of the application; namely: (1) the exchange 5
of information with the applicant, preferably using “touch-screen” 6
or voice recognition technology; (2) the underwriting, which 7
means the evaluation and, importantly, approval of the 8
application, plus, most importantly; (3) immediately transferring 9
electronically the funds from a source of funds to the deposit 10
account designated by the applicant; (4) completing of consumer 11
financing regulatory requirements; and, optionally, (5) automatic 12
withdrawals from the applicant's account to repay the loan. Norris 13
2:37-67. 14
04. The user-interface is a kiosk housing a computer controller, at 15
least one telecommunications link, a monitor or “touch-screen” 16
monitor, a camera to make a digital photograph of the applicant, a 17
bank card reader to identify an applicant and activate the computer 18
controller, and means for electronically transferring the signature 19
and a photograph of the borrower onto the loan or credit card 20
agreement. The kiosk may be established at a convenient 21
location, such as an airport terminal, a bank, a shopping area or a 22
store selling goods that might carry a price higher than a typical 23
credit card limit, such as a jewelry store or computer sales store, 24
for example. The kiosk can enable the consumer to establish 25
checking and savings accounts, apply for and be immediately 26
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issued or sent credit and debit cards, establish and fund 1
individual retirement accounts, obtain savings bonds and 2
certificates of deposit, arrange for automatic deposits to and 3
withdrawals from accounts, obtain cashier's checks, and order 4
checks for checking accounts. Norris 3:44-62. 5
ANALYSIS 6
Claims 15-34 rejected under 35 U.S.C. § 112, first paragraph, as lacking a 7
supporting written description within the original disclosure. 8
We are persuaded by the Appellant’s argument that the Specification 9
provides support for the cash-out limitation. App. Br. 3-4; FF 01. 10
Claims 15-34 rejected under 35 U.S.C. § 103(a) as unpatentable over 11
Martin and Norris. 12
We are not persuaded by the Appellant’s argument that 13
Norris fails to teach providing a new debit card with a new 14
debit card account. Instead, Norris explicitly teaches that the 15
new debit card is associated with an existing checking or 16
savings account that already has money in the account. 17
App. Br. 4. Whether a financial account is new or existing is not a 18
patentable distinction, absent any meaningful distinction in how the account 19
is used. Certainly it is equally predictable to create a new account or use an 20
existing account for a debit card. The only meaningful attribute is the 21
balance, not the length of existence prior to that balance. 22
We are not persuaded by the Appellant’s argument that 23
a person of ordinary skill in the art would be unable to use the 24
systems and methods of Norris to first start the loan application 25
process to deposit money into a debit card account, then create 26
the debit card account, and then transfer the loan proceeds into 27
the debit card account. Norris’ systems and methods 28
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necessitate that the applicant already have an account with 1
money in it before the applicant applies for a new debit card 2
App. Br. 5. This is the same argument as supra – viz that Norris has an 3
existing account. 4
The claim simply recites providing a new debit card and new debit card 5
account for receiving the proceeds; and transferring at least a portion of the 6
proceeds to the debit card account. There is nothing anomalous about 7
creating a card and account prior to putting funds into the account accessible 8
by the card. In fact, that is exactly the predictable sequence for a new 9
account. 10
CONCLUSIONS OF LAW 11
The rejection of claims 15-34 under 35 U.S.C. § 112, first paragraph, as 12
lacking a supporting written description within the original disclosure is 13
improper. 14
The rejection of claims 15-34 under 35 U.S.C. § 103(a) as unpatentable 15
over Martin and Norris is proper. 16
DECISION 17
The rejection of claims 15-34 is affirmed. 18
No time period for taking any subsequent action in connection with this 19
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 20
§ 1.136(a)(1)(iv) (2011). 21
AFFIRMED 22
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mls 27