Ex Parte Randolph-Wall et al

Patent Trial and Appeal Board

Apr 28, 2014

11508115 (P.T.A.B. Apr. 28, 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.
11/508,115 08/22/2006 Ronald Randolph-Wall QLOYAL.001A 1655
12640 7590 04/28/2014
NBCUniversal Media, LLC
c/o Fletcher Yoder, P.C.
PO Box 692289
Houston, TX 77269-2289
EXAMINER
BADII, BEHRANG
ART UNIT PAPER NUMBER
3667
MAIL DATE DELIVERY MODE
04/28/2014 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 RONALD RANDOLPH-WALL and ALFRED PARISER
____________________

Appeal 2011-012539
Application 11/508,115
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, HYUN J. JUNG, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 93, 95, 96, 108-110, 112 and 209-226. We have
jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

THE CLAIMED INVENTION
Appellants’ claimed invention “relates generally to systems and
methods for packaging cards [and] to methods and systems for processing
information accessed therefrom” (Spec., para. [0002]).
Claim 93, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
93. A method of distributing a financial instrument, the
method comprising:
[a] accessing from computer readable memory an
authorization code to be provided to a consumer;
[b] receiving over a network at a system including at
least one computer the authorization code from the consumer;
[c] determining, using the system, if the authorization
code is valid; and
[d] at least partly in response to determining, using the
system, that the authorization code is valid, providing a first
financial instrument corresponding to a funding account as a
physical embodiment and/or electronically providing over the
network the first financial instrument to the consumer.

1 Our decision will refer to the Appellants’ Appeal Brief (“App. Br.,” filed
December 22, 2010) and Reply Brief (“Reply Br.,” filed June 3, 2011) and
the Examiner’s Answer (“Ans.,” mailed April 4, 2011).
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THE REJECTIONS
The following rejections are before us for review:
Claims 209 and 217 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Claims 93, 95, 96, 108-110, 112, and 209-226 are rejected under
35 U.S.C. § 103(a) as being unpatentable over McKenney
(US 2006/0004670 A1, pub. Jan. 5, 2006) in view of Natanzon
(US 2002/0026365 A1, pub. Feb. 28, 2002).

ANALYSIS
Indefiniteness
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claims 209 and 217 as indefinite under 35 U.S.C. § 112, second
paragraph (App. Br. 16-17 and Reply Br. 8). In this regard, we agree with
Appellants that the concerns expressed by the Examiner, i.e., that “claims
209 and 217 are unclear, as to how an entity can issue a financial instrument
to the customer without the issuer knowing the identity of the consumer and
without requiring a credit check of the consumer” (see Ans. 10-11; see also
Ans. 3-4), relate to matters of business policy rather than any lack of clarity
in the claims.
The Examiner does not contend that a person of ordinary skill in the
art would not understand what is claimed when claims 209 and 217 are read
in light of the Specification, which is the test for indefiniteness under § 112,
second paragraph. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C.
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§ 112, second paragraph is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.”). Therefore, we will not sustain the Examiner’s rejection of
claims 209 and 217 under 35 U.S.C. § 112, second paragraph.
Obviousness
Independent claim 93 and dependent claim 112
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 93 under 35 U.S.C. § 103(a) because “McKenney
and Natanzon do not collectively teach or suggest at least [limitations [b],
[c], and [d]] of the claim in the context of the claim’s other recitations”
(App. Br. 6 and Reply Br. 2-5).
Claim 93 is directed to a method for distributing a financial
instrument, and recites that the method comprises the steps of receiving an
authorization code from a consumer (i.e., limitation [b]); determining
whether the authorization code is valid (i.e., limitation [c]); and distributing
the financial instrument to the consumer if the authorization code is
determined to be valid (i.e., limitation [d]). We agree with the Examiner that
the claim is thus directed to an authorization code validation technique
performed in order to carry out a task, e.g., distributing a financial
instrument (Ans. 7).
Appellants do not dispute that McKenney discloses validating
transactions (Reply Br. 2). Appellants also do not dispute that McKenney
discloses a system which relies on digital certificates and private keys of
buyers and sellers to conduct a financial transaction (Reply Br. 2).
However, Appellants maintain that “even if the combination of McKenney
and Natanzon provides an authorization process entailing a code which can
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consist of a key, pin or password, as set forth in the Examiner’s Answer,”
the combination still would not meet the limitations of claim 93 because the
combination would still lack the features of “providing an authorization code
to a consumer, receiving the authorization code from the consumer at a
system, determining if the authorization code is valid, and at least partly in
response to determining that the authorization code is valid, providing a
financial instrument corresponding to a funding account . . . to the
consumer” (Reply Br. 3-5).
The Supreme Court has stated that when considering obviousness “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Here, we agree
with the Examiner that “McKenney clearly discloses certifying a customer
through a key (code) to carry out a financial transaction” (Ans. 8, citing
Figure 1, the Abstract, and paras. [0187], [0198], [0228], [0277], and [0309]
of McKenney). Appellants have provided no persuasive evidence or
argument to explain why it would have been non-obvious to apply the
certification technique, as taught in McKenney, to the distribution of a
financial instrument, as recited in claim 93.
Therefore, we will sustain the Examiner’s rejection of claim 93 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejection of
dependent claim 112, which was not separately argued.
Independent claims 212 and 220
Appellants’ arguments with respect to claims 212 and 220 are
substantially identical to Appellants’ arguments with respect to claim 93.
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Therefore, we will sustain the Examiner’s rejection of claims 212 and
220 for the same reasons as set forth above with respect to claim 93.
Dependent claims 95, 213, and 221
Claims 95, 213, and 221 depend from independent claims 93, 212,
and 220, respectively. Claim 95 recites that the financial instrument is
“printable by the user on paper or is wirelessly transmitted to a user phone,”
and claims 213 and 221 include substantially similar language.
Appellants do not dispute the Examiner’s finding that transmitting
information by phone is disclosed in McKenney (Ans. 9); nor do Appellants
dispute that Natanzon explicitly discloses printing in Figure 3 and paragraph
[0022] (see Ans. 9). Instead, Appellants argue that the Examiner erred in
rejecting claims 95, 213, and 221 under 35 U.S.C. § 103(a) because “even
assuming McKenney and Natanzon disclose printing and a telephone,
neither reference, separately or in combination disclose[s] a user-printable
financial instrument or a financial instrument transmitted to a user phone,
much less that ‘the first financial instrument is electronically provided over
the network to the user via a user terminal and is printable by the user on
paper or is wirelessly transmitted to a user phone,’ as recited by Claim 95, or
as similarly recited by Claims 213 and 221” (Reply Br. 5).
As described above, when considering obviousness “the analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. Appellants argue that neither McKenney nor Natanzon discloses a
user-printable financial instrument or a financial instrument transmitted to a
user phone. But Appellants do not explain why it would have been non-
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obvious, in view of McKenney and Natanzon, to provide a printable
financial instrument or to transmit the information to a user phone. The
relevant question in considering obviousness is not whether the claimed
invention is different from the prior art but rather “whether the difference
between the prior art and the subject matter in question is a differen[ce]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art.” See Dann v. Johnston, 425 U.S. 219, 228 (1976)
(internal quotations and citations omitted).
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 95, 213, and 221 under 35 U.S.C. § 103(a).
Dependent claims 96, 214, and 222
Claims 96, 214, and 222 depend from independent claims 93, 212,
and 220, respectively. Claim 96 recites that the claimed method further
comprises “determining if the consumer meets at least a first eligibility
criteria that relates to rewards program, a purchase amount and/or a purchase
quantity prior to enabling the user to make a purchase with the first financial
instrument.” Claims 214 and 222 include substantially similar language.
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claims 96, 214, and 222 as obvious over the combination of
McKenney and Natanzon (App. Br. 12-13).
The Examiner directs our attention to the Abstract, Figure 1,
paragraph [0055], and tables 24, 54, and 84 of McKenney as disclosing the
claimed features (Ans. 5 and 10). However, we can find nothing in the cited
portions of McKenney that discloses or suggests the argued features nor, for
that matter, can we find any mention of a rewards program, purchase amount
or purchase quantity with respect to eligibility criteria.
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Therefore, we will not sustain the Examiner’s rejection of claims 96,
214, and 222 under 35 U.S.C. § 103(a).
Dependent claims 108, 215, and 223
Claims 108, 215, and 223 depend from independent claims 93, 212,
and 220, respectively. Claim 108 recites that “the financial instrument, is
not funded until a financial transaction authorization request is received over
an electronic network.” Claims 215 and 223 include substantially similar
language.
The Examiner cites the Abstract, Figure 1, and paragraphs [0055],
[0187], [0198], [0228], [0277], and [0309] of McKenney as disclosing the
claimed features (Ans. 5 and 10). However, we agree with Appellants that
there is nothing in the cited portions of McKenney that discloses or suggests
the argued features or, indeed, makes any mention of determining when to
fund a financial instrument (App. Br. 13 and Reply Br. 6).
Therefore, we will not sustain the Examiner’s rejection of claims 108,
215, and 223 under 35 U.S.C. § 103(a).
Dependent claims 109 and 216 and dependent claims 110 and 224
Claims 109 and 110, claim 216, and claim 224 depend from
independent claims 93, 212, and 220, respectively. Claim 109 recites that
“the financial instrument is electronically provided over the network to the
user and is printable by the user using a printer coupled to a terminal, and
when printed, includes a name associated with the consumer.” Claim 110 is
similar to claim 109 except that claim 110 recites that the financial
instrument, when printed, “includes a funding account code.” Claim 216
includes language substantially similar to claim 109, and claim 224 includes
language substantially similar to claim 110.
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We are not persuaded that the Examiner erred in rejecting claims 109,
110, 216, and 224 under 35 U.S.C. § 103(a). App. Br. 13-14 and Reply
Br. 6-7. There is no dispute that printing was known at the time Appellants’
invention was made. Appellants also do not dispute the Examiner’s finding
that Natanzon discloses printing at least in Figure 3 and paragraphs [0016]
and [0022] (Ans. 6 and 10).
Appellants argue that the citations relied on by the Examiner make no
mention of printing names or printing account codes (App. Br. 13-14).
However, the specific contents of the financial document, i.e., that it
“includes a name associated with the consumer” or “includes a funding
account code” does not affect how the claimed method is performed. As
such, the contents constitute non-functional descriptive material that may not
be relied on for patentability. See, e.g., In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (mere informational content of non-functional descriptive
material is not entitled to patentable weight); see also Ex parte Mathias,
84 USPQ2d 1276, 1279 (BPAI 2005) (informative).
Therefore, we will sustain the Examiner’s rejection of claims 109,
110, 216, and 224 under 35 U.S.C. § 103(a).
Dependent claims 209 and 217
Claims 209 and 217 depend from independent claims 93 and 212,
respectively. Claim 209 recites that “the funding account is a prepaid
account, a credit account, or a debit account, and wherein the first financial
instrument is issued to the consumer without the issuer knowing the identity
of the consumer and without requiring a credit check of the consumer.”
Claim 217 includes substantially similar language.
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The Examiner asserts that McKenney discloses a debit account, credit
account, or prepaid account at paragraphs [0067], [0077], and [0309], and
that McKenney discloses in its Abstract that the first financial institution
issues the seller a hardware token including a private key and a digital
certificate signed by the first financial institution and that the buyer uses its
private key to sign payment instructions that are forwarded to the first or
second financial institution for execution. Therefore, the Examiner
concludes that McKenney discloses that the identities of the buyer and seller
do not have to be revealed (Ans. 10).
We agree with Appellants that there is nothing in the cited portions of
McKenney, on which the Examiner relies, that discloses issuing a financial
instrument to a consumer without knowing the identity of the consumer
(App. Br. 14-15 and Reply Br. 7-8). To the contrary, McKenney expressly
describes that the buyer is a customer of the first financial institution, i.e.,
the issuing participant, and that the issuing participant acts as a certificate
authority for the buyer and issues the buyer a hardware token including a
private key and a digital certificate signed by the issuing participant
(see, e.g., McKenney, Abstract and para. [0009]). McKenney also describes
in paragraph [0232] that a “Contact DTD” structure contains the names and
contact details of one or more individuals dealing with any given
transaction.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claims 209 and 217 under 35 U.S.C. § 103(a).
Dependent claims 210, 218, and 225
Claims 210, 218, and 225 depend from independent claims 93, 212,
and 220, respectively. Claim 210 recites that “determining if the
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authorization code is valid further comprises determining if a dollar amount
associated with the authorization code has previously been used.”
Claims 218 and 225 include substantially similar language.
We are persuaded that the Examiner erred in rejecting claims 210,
218, and 225 under 35 U.S.C. § 103(a). App. Br. 15-16 and Reply Br. 9-10.
The Examiner cites Tables 24, 54, and 84, Figure 1, the Abstract, and
paragraphs [0055], [0187], [0198], [0228], [0277], and [0309] of McKenney
as disclosing the claimed feature (Ans. 6 and 11). But we can find nothing
in the cited portions of McKenney that makes any mention of determining if
a dollar amount associated with an authorization code has previously been
used.
Therefore, we will not sustain the Examiner’s rejection of claims 210,
218, and 225 under 35 U.S.C. § 103(a).
Dependent claims 211, 219, and 226
Claims 211, 219, and 226 depend from independent claims 93, 212,
and 220, respectively. Claim 211 recites that the method further comprises
“verifying a plurality of authorization codes from the consumer, wherein the
consumer is to enter a first predetermined number of authorization codes in
order for the first financial instrument to be provided, wherein the first
predetermined number is greater than one.” Claims 219 and 226 include
substantially similar language.
We are persuaded that the Examiner erred in rejecting claims 211,
219, and 226 under 35 U.S.C. § 103(a). App. Br. 16 and Reply Br. 10-11.
The Examiner cites Figure 1, the Abstract, and paragraphs [0055], [0187],
[0198], [0228], [0277], and [0309] of McKenney as disclosing the claimed
feature (Ans. 7 and 11). However, we can find nothing in the cited portions
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of McKenney that discloses or suggests “verifying a plurality of
authorization codes from the consumer, wherein the consumer is to enter a
first predetermined number of authorization codes in order for the first
financial instrument to be provided, wherein the first predetermined number
is greater than one,” as recited in claim 211 and similarly recited in
claims 219 and 226 (see, e.g., Reply Br. 10-11).
Therefore, we will not sustain the Examiner’s rejection of claims 211,
219, and 226 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 209 and 217 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The Examiner’s rejection of claims 93, 95, 109, 110, 112, 212, 213,
216, 220, 221, and 224 under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 96, 108, 209, 210, 211, 214, 215,
217, 218, 219, 222, 223, 225, and 226 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)(1)(iv).

AFFIRMED-IN-PART

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