Ex Parte Shipman

Patent Trial and Appeal Board

Oct 29, 2014

10902046 (P.T.A.B. Oct. 29, 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.
10/902,046 07/30/2004 Ty Shipman KAG003 1077
7590 10/30/2014
DIEDERIKS & WHITELAW, PLC
Suite 317
13885 Hedgewood Dr.
Woodbridge, VA 22193-7932
EXAMINER
EBERSMAN, BRUCE I
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
10/30/2014 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 TY SHIPMAN
____________________

Appeal 2012-000199
Application 10/902,046
Technology Center 3600
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–6, 12, 21, and 22.
We affirm.
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THE CLAIMED INVENTION
Appellant claims “a method of verifying ownership of credit cards,
debit numbers, bank accounts etc.” (Spec. 6, ll. 22–23). Claim 1 is
illustrative of the claimed subject matter on appeal:
1. A computer implemented method of verifying financial
account information of a customer in connection with a
business transaction comprising:
accepting via a computer information about a financial
account from the customer including the account’s billing
address and the account’s telephone number associated with the
billing address;
obtaining via the computer a verified billing address from
a financial institution holding the financial account by using an
address verification system;
obtaining, via the computer, a physical address by
performing a reverse telephone number query using the
account’s telephone number accepted from the customer against
a reverse telephone number database;
comparing with the computer the verified billing address
to the physical address; and
continuing with the business transaction if the verified
billing address matches the physical address.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
O’Leary
Cartmell
York
US 2002/0077978 A1
US 2005/0075985 A1
US 2005/0108102 A1
June 20, 2002
Apr. 7, 2005
May 19, 2005
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REJECTIONS
The following rejections are before us for review.1
The Examiner rejected claims 1–6, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Cartmell and York
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Cartmell, York, and O’Leary.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Cartmell discloses a “credit card purchase verification method and
apparatus.” (¶ 17).
2. York discloses order verification methods to prevent fraud. (¶ 1).
3. York discloses comparing address information provided by a customer
in an order with verified billing address from a financial institution.
(¶ 31).
4. York discloses checking the “card verification number” of the
customer’s credit card. (¶ 32).
5. York discloses checking whether a “negative file” is associated with the
customer. (¶ 38).
6. York discloses checking to determine if the customer has available
funds. (¶ 39).
7. York discloses checking whether a “positive rule” is associated with the
customer. (¶ 46).

1 Claim 7 was rejected under 35 USC § 112, 1st and 2nd paragraphs, which
rejections were withdrawn. (Answer 4).
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8. York discloses checking a customer’s Internet Protocol (IP) address and
employee directory to determine if it matches the information provided
by a customer. (¶ 51).
9. York discloses checking if there is a match between customer-supplied
billing information and information with a pay verification service.
(¶ 57).
10. York discloses checking the domain name of the customer-supplied
email address. (¶ 59).
11. York discloses checking if there is a match between customer-supplied
shipping information and information in an address verification service.
(¶ 60).
12. York discloses verifying identity by calling the issuing bank for the
customer’s payment card. (¶ 62).
13. York discloses checking the telephone number from which an order was
placed with an address verification service. (¶ 65).
14. York discloses checking, using a reverse lookup, whether the address
associated with the telephone number from which an order was placed
matches the customer-supplied billing or shipping addresses. (¶ 83).
15. York discloses a workflow module 145 that executes a comparing step,
in that “[f]raud shield rules are then applied (184) to the order 110 and
customer 105 information to determine if the order 110 and customer
105 information have information that matches a negative file.” (¶ 29).
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ANALYSIS
Claims 1–6
The rejection is affirmed as to claim 1. Appellant does not provide a
substantive argument as to the separate patentability of claims 2–6 that
depend from claim 1, which is the sole independent claim among those
claims. Therefore, we address only claim 1, and claims 2–6 fall with
claim 1. See, 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant argues the Examiner has “failed to provide an apparent
reason for one of ordinary skill in the art to modify the method of
Cartmell . . . .” (App. Br. 5, see also id. at 6–7; Reply Br. 2–3). We are not
persuaded by Appellant’s argument because the Examiner reasons it would
have been obvious to combine the additional verification techniques
disclosed in York with those disclosed in Cartmell “for the motivation of
improving on current fraud prevention methods” (see Ans. 6–7). The
Examiner has, therefore, properly articulated reasoning with rational
underpinning. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”))
Appellant also argues “York never teaches comparing the verified
billing address obtained through an address verification system with a
physical address obtained by performing a reverse telephone number query,
as is required by claim 1.” (App. Br. 7, see also id. at 8–10; Reply 3–6).
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We are not persuaded by Appellant’s argument. York discloses the
use of comparisons between several sources of information. (FF 3–14).
Among the information York discloses for use in verifying transactions are
the verified billing address (FF 3) and the physical address (FF 13, 14).
York discloses comparing each of those to either the billing address or
shipping address provided by the customer, but not to each other. (Id.).
However, it would have been a small leap from comparing each of the
verified billing address and physical address with an order, to comparing
them with each other; comparing each of two items to a common source is,
in effect, a comparison of the two items to each other. See KSR, 550 U.S. at
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.”)
Thus, we affirm the rejection of claims 1–6.
Claim 12
Claim 12 is argued only by reference to the arguments directed to
claim 1 (App. Br. 14). We affirm the rejection for the same reasons as for
claim 1.
Claims 21 and 22
Independent claim 21 recites a system and “means for comparing the
verified billing address to the physical address.” Because the claim recites
“means for” performing a function, the claim must be construed under
35 U.S.C. § 112, sixth paragraph. As support for the “comparing” step,
Appellant directs us to page 10, lines 22 to 25 of the Specification (App.
Br. 4), which states “the seller’s computer has the programming to compare
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inputted data 77 . . . .” (Spec. 10, ll. 23–24). Therefore, we construe the
“means for comparing” to be a computer programmed to compare data.
Appellant argues that “York never teaches means for comparing the
verified billing address obtained through an address verification system with
a physical address obtained by performing a reverse telephone number
query, as is required by claim 21.” (App. Br. 12; see also id. at 10–14,
Reply Br. 6–10). We are not persuaded by Appellant’s argument, because
York discloses a computer programmed to perform a comparing step by
determining if two addresses, from the negative file and customer order,
match. (FF 15). Therefore, as found supra that it would be obvious in York
to compare the verified billing address and physical address, we find no
error with the Examiner’s finding that York makes obvious a programmed
computer which compares “the verified billing address to the physical
address,” as set forth in claim 21.
As a result, we affirm the rejection of independent claim 21, as well as
dependent claim 22 that is not separately argued.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1–6, 21, and 22 under
35 U.S.C. § 103(a).
The Examiner did not err in rejecting claim 12 under 35 U.S.C.
§ 103(a).

DECISION
For the above reasons, the Examiner’s rejections of claims 1–6, 12,
21, and 22 are AFFIRMED.
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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

Llw/pgc