Ex Parte Pendleton

Patent Trial and Appeal Board

Feb 9, 2017

11781755 (P.T.A.B. Feb. 9, 2017)

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.
BPCCR0023MPMG 6393
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
11/781,755 07/23/2007
02/09/201727939 7590
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
Mark R. Pendleton
02/09/2017 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 MARK R. PENDLETON
Appeal 2015-0020121
Application 11/781,7552
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
May 5, 2014) and Reply Brief (“Reply Br.,” filed December 3, 2014), and
the Examiner’s Answer (“Ans.,” mailed October 7, 2014) and Final Office
Action (“Final Act.,” mailed August 14, 2013).
2 Appellant identifies CCIP Corp. as the real party in interest. App. Br. 2.
Appeal 2015-002012
Application 11/781,755
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to a financial
business method, and particularly to a method for providing a credit offering
in combination with credit management information services” (Spec. 1,
11. 11-13).
Claims 1, 2, and 14, reproduced below, are the independent claims on
appeal, and representative of the claimed subject matter:
1. A method for offering credit and providing
information on managing credit, the method comprising the steps
of:
obtaining, prior to the offering credit, credit information
comprising a credit report about a customer from a computing
device;
obtaining a credit score for the customer from the
computing device;
providing initial credit management information to the
customer from the computing device, the initial credit
management information being based on the credit report, and
the initial credit management information being directed at
improving the credit score of the customer;
providing a credit account to the customer, the credit
account being based on the computing device processing the
credit score;
reviewing, by the computing device, a record of the use of
the credit account by the customer;
the computing device obtaining further credit reports on
the customer, the further credit reports being obtained during the
duration of the credit account; and
providing subsequent credit management information to
the customer from the computing device, the credit management
information being based on the computing device processing
data representative of the use of the credit account, data
representative of the further credit reports, and data
representative of additional credit offers for which the customer
qualifies.
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Application 11/781,755
2. A method for providing a credit account and
providing information on managing the credit account
comprising:
providing initial credit management information service to
a customer from a first computing device;
providing a credit account generated by a second
computing device to the customer, wherein the terms and
conditions of the credit account are initially based on a credit
score; and
providing additional credit management information
generate by the first computing device to the customer based on
information including data representative of the customer’s use
of the credit account received from the computing device,
wherein the additional credit management information is
provided by the first computing device which may be operated
by a first entity with an affiliation with a second entity that
provides the credit account, and wherein the additional credit
management information include offers for additional credit
accounts for which the customer qualifies.
14. A method for providing a credit account and
providing information on managing a credit account, the method
comprising:
obtaining from a computing device a credit score for the
customer;
providing a credit account to the customer from the
computing device; and
providing on-going credit management information
services to the customer from the computing device for the credit
account, wherein the on-going credit management information
services are provided by an entity with a relationship with an
entity providing the credit account and wherein the on-going
credit management information services includes data
representative of reward points awarded to the customer for
achieving predefined objectives relating to the credit account
provided.
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Appeal 2015-002012
Application 11/781,755
REJECTIONS
Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Atkins (US 5,852,811, iss. Dec. 22, 1998) and Zoffel (US 5,274,547,
iss. Dec. 28, 1993).
ANALYSIS
Non-Statutory Subject Matter
Appellant cites the Manual of Patent Examining Procedure (“MPEP”)
§ 2106 as setting forth the two-step analysis to be employed by USPTO
personnel in determining subject matter patent-eligibility (Reply Br. at 8—9),
and charges that the Examiner has not complied with this duty (id. at 9).
Appellant, thus, maintains that the Examiner has failed to establish a prima
facie case of unpatentability under § 101 (id.). We disagree.
The Federal Circuit has repeatedly noted that “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has held
that the USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection, and any reference or references
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Application 11/781,755
on which the rejection relies, in a sufficiently articulate and informative
manner as to meet the notice requirement of § 132. Id.', see also Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when
the rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.”).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Alice/Mayo two-step framework, in
accordance with the guidance set forth in the USPTO’s June 25, 2014
“Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et alC —
guidance that supersedes MPEP §§ 2106(II)(A) and 2106(II)(B). The
Examiner also fully complied with the requirement set forth in
MPEP § 2106(111) to “identity and explain in the record the reasons why a
claim is for an abstract idea.” Specifically, the Examiner notified Appellant
that the claims are directed to “offering credit and providing information on
managing credit,” i.e., to “a fundamental economic practice” and, therefore,
to an abstract idea; that the additional claim elements, or combination of
elements in the claims, amount to no more than “recitation of generic
computer structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities previously known
to the pertinent industry,” and that, viewed as a whole, these additional claim
elements do not provide meaningful limitations that transform the abstract
idea into a patent-eligible application of the abstract idea (Ans. 3—4).
The Examiner, thus, notified Appellant of the reasons for the rejection
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.”
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Application 11/781,755
35 U.S.C. § 132. And, in doing so, the Examiner set forth a prima facie case
of unpatentability. Indeed, it is significant here that Appellant does not
contend in the Reply Brief that he does not understand the Examiner’s new
ground of rejection or that he was, otherwise, not put on notice of the
statutory basis for the rejection.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1—20 under 35 U.S.C. § 101.
Obviousness
Independent Claim 1 and Dependent Claims 19 and 20
In the Final Office Action, the Examiner initially takes the position, in
rejecting independent claim 1 under 35 U.S.C. § 103(a), that Atkins
discloses a computing device “obtaining further credit reports on the
customer . . . during the duration of the credit account; and providing
subsequent credit management information to the customer . . . based on . . .
the further credit reports,” as recited in claim 1 (Final Act. 5 (citing Atkins,
col. 25,11. 31—45). However, the Examiner asserts later, in the same Final
Office Action, that “Atkins does not expressly disclose computing device
obtaining further credit reports on the customer, the further credit reports
being obtained during the duration of the credit account” {id. at 6 (citing
Zoffel (Abstract) to cure the deficiency of Atkins)).
Still later, responding in the Answer to Appellant’s argument that
neither Atkins nor Zoffel discloses or suggests “obtaining further credit
reports during the duration of the credit account; and providing subsequent
credit management information based on . . . further credit reports,” the
Examiner asserts that “Atkins teaches obtaining further credit reports
during the duration of the credit account; and providing subsequent
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Application 11/781,755
credit management based upon the use of the account and further credit
reports that were obtained while the credit account was open” (Ans. 17
(citing Atkins, col. 3,11. 6—31)). Yet, aside from reproducing the cited
portion of Atkins, the Examiner offers no explanation regarding where or
how, and we fail to see where or how, the cited portion of Atkins discloses
or suggests obtaining credit reports during the duration of a credit account,
as called for in claim 1.
Zoffel is directed to a system and method for generating credit reports,
and discloses that the system includes a central data processing facility,
which is connectable to the three national credit repositories via dedicated
data links (Zoffel, Abstract). Zoffel discloses that the central data processor
requests credit information on an applicant from one or more of the
repositories, generates a credit report, and transmits the report to the
requesting user (i.e., customer) (id. ). Zoffel, thus, clearly discloses that
credit reports are obtained during the credit application process, i.e., prior to
offering credit. But we agree with Appellant that there is nothing in the
Zoffel Abstract that discloses or suggests “further credit reports being
obtained during the duration of the credit account,” as recited in claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 19 and 20.
Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonob vious”).
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Independent Claim 2 and Dependent Claims 3—13
Appellant argues that the Examiner erred in rejecting independent
claim 2 under 35 U.S.C. § 103(a) because Atkins, on which the Examiner
relies, fails to disclose or suggest “the claimed entity distinction set forth in
claim 2,” i.e., providing additional credit management information ... to the
customer ... by a first entity with an affiliation with a second entity that
provides the credit account,” as recited in claim 2 (App. Br. 14).
In the Final Office Action, the Examiner cites the Atkins Abstract as
disclosing the argued limitation (Final Act. 6—7). The Examiner takes a
different position in the Answer, citing column 3, lines 6—31 of Atkins as
disclosing the argued feature (Ans. 18—20). But again, the Examiner merely
reproduces the cited portion of Atkins without offering any explanation
regarding where or how, and we fail to see where or how, the cited portion
of Atkins discloses or suggests the entity distinction recited in claim 2.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claim 2, and claims 3—13, which depend therefrom.
Independent Claim 14 and Dependent Claims 15—18
Appellant argues that the Examiner erred in rejecting independent
claim 14 under 35 U.S.C. § 103(a) because neither Atkins nor Zoeffel
discloses or suggests “providing on-going credit management information
services to the customer . . . [that] includes data representative of reward
points awarded to the customer for achieving predefined objectives relating
to the credit account provided,” as recited in claim 14 (App. Br. 14—15).
In the Final Office Action, the Examiner cites the Atkins Abstract as
disclosing the argued limitation (Final Act. 10). However, in the Answer,
the Examiner cites column 3, lines 6—31 of Atkins as disclosing the argued
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Application 11/781,755
feature (Ans. 18—20). As with the rejection of independent claims 1 and 2,
the Examiner reproduces the cited portion of Atkins. But again, the
Examiner does not explain where or how, and we fail to see where or how,
the cited portion of Atkins discloses or suggests rewards or reward points, as
called for in claim 14.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claim 14, and claims 15—18, which depend
therefrom.
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 103(a) is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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