Ex Parte Paintin

Patent Trial and Appeal Board

Jan 29, 2015

11863906 (P.T.A.B. Jan. 29, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SCOTT PAINTIN
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Appeal 2012-007515
Application 11/863,906
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 5, 8–10, and 12–33. We AFFIRM.

1 The Appellant identifies the real party in interest as the Western Union
Company. (App. Br. 3).
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Application 11/863,906

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THE CLAIMED INVENTION
The Appellant claims, generally, tools for providing bill aggregation
and/or payment services. (Spec. para. 2). Claim 5 is illustrative of the
claimed subject matter:
5. In a relationship between a bill aggregator
and a user, a method of providing bill payment aggregation
services for the user, the method comprising:
receiving, at a host computer operated by or for the bill
aggregator, an identification of a plurality of
billing entities for which bills should be
consolidated, the plurality of billing entities
comprising a first billing entity and a second
billing entity;
receiving, at the host computer, a first set of billing
information for the first billing entity, the first set
of billing information comprising a first billing
identifier for the user;
receiving, at the host computer, a second set of billing
information for the second billing entity, the
second set of billing information comprising a
second billing identifier for the user;
determining a first amount due to the first billing entity,
wherein the first amount due corresponds to the
first billing identifier, and determining the first
amount due to the first billing entity comprises:
receiving an authorization from the user to
receive notification from the first
billing entity;
notifying the first billing entity of the
authorization; and
receiving from the first billing entity
notification of the first amount due to
the first billing entity;
determining a second amount due to the second billing
entity, wherein the second amount due corresponds
to the second billing identifier;
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receiving funds from the user;
paying, from the host computer, funds sufficient to
satisfy at least a portion of at least one amount due,
the at least one amount due being selected from the
first amount due and the second amount due;
wherein the user does not maintain a deposit account
with the bill aggregator.

The following rejections are before us for review.
Claims 5, 8–10, 12–17, and 19–25 are rejected under 35 U.S.C. §
103(a) as unpatentable over Crooks (US 5,943,656, iss. Aug. 24, 1999) and
Ganesan (US 2005/0137978 A1, pub. June 23, 2005).
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Crooks, Ganesan, and Guinan (US 7,536,336 B1, iss. May 19, 2009).
Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Crooks, Ganesan, and Mersky (US 6,119,106, iss. Sept. 12, 2000).
Claims 27–33 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Crooks, Ganesan, and Neely (US 2004/0167823 A1, pub. Aug. 26,
2004).

ANALYSIS
Claims 5, 8–10, 12–17, and 19–25
The Appellant argues independent claims 5, 8, 19, and 25 together.
We select claim 5 as representative. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by the Appellant’s arguments that the
combination of Crooks and Ganesan does not make obvious the claimed
method, because Crooks and Ganesan aggregate bills based on biller
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instructions, not based on authorizations from the billed parties which are
passed through the aggregator. (App. Br. 8–12, Reply Br. 2).
Crooks discloses a billing aggregator 20, and customer 58 that
received bills aggregated by aggregator 20 (col. 9, ll. 1–17), and a link
between the aggregator and the customer, initiated by the customer, after
which aggregated billing information flows to the customer (col. 9, ll. 59–
66). Crooks does not clearly disclose upon whose authorization the billing
information is sent to the aggregator, rather than to the customer. However,
the aggregator is operating either as an agent of the billing entities, or of the
customer. Crooks discloses “billing information is consolidated and made
available electronically through access which is initiated by the customer.”
(Abstract). Therefore, we find Crooks discloses a customer-initiated bill
aggregation on behalf of the customer. A person of ordinary skill in the art
would have known that there are only two possibilities for the billing entity
to receive notice, or authorization, to bill the aggregator rather than the
customer: either the customer informs the billing entity, or the aggregator
does. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (In
making the obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”). “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421. The choice of
aggregator informing the billing entity would have been no more than
choosing between known options to achieve a predictable result. See KSR,
550 U.S. at 421
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
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the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
For these reasons, we affirm the rejection under 35 U.S.C. § 103(a) of
independent claims 5, 8, 19, and 25, which are all the independent claims
pending. We also affirm the rejection of dependent claims 9, 10, 12–17, and
20–24 that were not argued separately. (App. Br. 12).
Claims 18 and 26–33
Separately rejected claims 18 and 26–33 are argued only by reference
to their dependence from independent claims 5, 8, 19, and 25. (App. Br. 12–
13). We affirm the rejections under 35 U.S.C. § 103(a) of these claims for
the same reasons as for claim 5.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 5, 8–10, and 12–33.

DECISION
For the above reasons, the Examiner’s rejections of claims 5, 8–10,
and 12–33 are AFFIRMED.

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).

AFFIRMED

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