11415562 (B.P.A.I. Mar. 9, 2011)

Ex Parte Stone

Board of Patent Appeals and InterferencesMar 9, 2011

11415562 (B.P.A.I. Mar. 9, 2011)

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. 11/415,562 05/02/2006 Brian Stone BPCCR0011BS 5350 27939 7590 03/09/2011 PHILIP H. BURRUS, IV 460 Grant Street Atlanta, GA 30312 EXAMINER OJIAKU, CHIKAODINAKA ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 03/09/2011 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) The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRIAN STONE ____________ Appeal 2010-002660 Application 11/415,562 Technology Center 3600 ____________ Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH A. FISCHETTI, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002660 Application 11/415,562 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3-20. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims a system and method for verifying the configuration of a financial account. (Specification 1: 5-6). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. (Previously Presented) A method for determining whether a deposit account is configured to accept automatic transactions, the method comprising the steps of: a. receiving a request for a line of credit, wherein payments on the line of credit are to be paid by recurring automatic withdrawals; b. requesting a fee to establish the line of credit, wherein the fee is to be drawn from the deposit account; c. executing an automatic withdrawal from the deposit account for the fee, wherein the automatic withdrawal comprises one of an electronic funds transfer and a remote creation of a paper negotiable instrument; and d. withholding approval of the line of credit until the automatic withdrawal from the deposit account for the fee is completed, wherein the step of withholding approval comprises providing a Appeal 2010-002660 Application 11/415,562 3 line of credit card and prohibiting transaction processing until the automatic withdrawal from the deposit account for the fee is completed. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Vitagliano US 5,206,803 Apr. 27, 1993 Norris US 6,105,007 Aug. 15, 2000 Croft US 2005/0171798 A1 Aug. 4, 2005 The following rejections are before us for review. The Examiner rejected claims 1, 3-6, 8, 10-14, 16-18, and 20 under 35 USC §103(a) as being unpatentable over Croft in view of Norris. The Examiner rejected claims 7, 9, 15, and 19 under 35 USC §103(a) as being unpatentable over Croft in view of Norris, further in view of Vitigliano, further in view of an Official Notice. ISSUE The issue of obviousness turns on whether a person with ordinary skill in the art would know to modify Norris to use the processing fee of Croft in place of, or in addition to, a credit check because Croft discloses that causing a user to pay this upfront non-refundable processing fee reduces the likelihood and risk of default which ultimately is what the credit check in Norris seeks to accomplish? Appeal 2010-002660 Application 11/415,562 4 FINDINGS OF FACT We find the following facts by a preponderance of the evidence: 1. Norris discloses an automated transaction wherein a customer can establish with a bank a line of credit, a loan a credit card. (Col.10, ll. 16-18). 2. Norris discloses withholding approval of a line of credit/credit card (FF 1) until an applicant’s credit report is obtained and evaluated and found acceptable. (Col. 6, ll. 45-53; Col.7, ll. 37-39). 3. Norris discloses as a condition precedent to granting a line of credit e.g., as a term of the lending agreement, to set up automatic periodic withdrawals from the borrower’s deposit account (Col.8, ll. 9-14) 4. Croft discloses that a server 214 performs a wire transfer from bank account 218 of lessee to buyer's bank account for the processing fee. (¶[0034]). 5. Croft discloses “[i]t has also been determined that the ability to pay an initial, non-refundable processing fee reduces the likelihood and risk of defaulting on the lease.” (¶ [0024]). 6. Croft discloses “[i]f it is determined that the account has in fact not been debited as a result of insufficient funds, then in a step 308 the vehicle is located and recovered and the process is begun again at 302 for a new lessee to be provided by the seller.” (¶ [0034]). Appeal 2010-002660 Application 11/415,562 5 ANALYSIS We affirm the rejections of claims 1, 3-20. Initially, we note that the Appellant argues claims 1, 3-20 together as a group. Correspondingly, we select representative claim 1 to decide the appeal of these claims, remaining claims 3-20 standing or falling with claim 1. Appellant argues that “… there is no teaching in the combination of Norris, Croft, and Vitigliano, nor in this combination combined with the Official Notice, of verifying whether the deposit account is configured to accept the automatic transactions….” (Appeal Br. 20). We disagree with Appellant because Appellant’s arguments are not based on limitations appearing in the claims and are not commensurate with the broader scope of claim 1 which merely recites that the fee is to be drawn from the deposit account absent a verifying step. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In claim 1, the step of verifying whether the deposit account is configured to accept the automatic transactions is found only in the preamble and not in the body of the claim. As such, we do not read the verifying language into the claim as a limitation. Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989) (An element initially recited in the preamble, is only thereafter fully incorporated into the body of the claim so as to breathe life and breath into it by setting forth the complete combination). Appeal 2010-002660 Application 11/415,562 6 Appellant next argues that “… the combination of Norris, Croft, and Vitigliano, as well as this combination combined with the Official Notice, teaches obtaining cash prior to executing a lease, specifically $3,000 to $10,000 - not verifying whether a deposit account is configured to accept automatic withdrawals as claimed by Applicant.” (Appeal Br. 20). We are not persuaded by Appellant’s argument here because, like Norris, Croft likewise requires the lessee to use automatic withdrawals to pay the upfront processing fee and the money obligations owed to the lessor (FF 3, 4, 6). Again, contrary to Appellant’s arguments, claim 1 does not require a verifying step, but rather requires withholding approval of the line of credit until the automatic withdrawal from the deposit account for the fee is completed, wherein the step of withholding approval comprises providing a line of credit card and prohibiting transaction processing until the automatic withdrawal from the deposit account for the fee is completed. Concerning this required claim language, we find that Norris discloses such a withholding step in the context of a line of credit, but only with respect to a credit check, and not as to whether a processing fee has been debited automatically. (FF 1, 2). But, Croft discloses conditioning a transaction based on payment of a processing fee via an automatic withdrawal (FF 6). Croft checks if the account is debited to determine if debiting of the lessee’s account has occurred (FF 6). If no debit has occurred, the vehicle is recovered back from the lessee thereby prohibiting use of the involved vehicle (FF 6), in a manner similar to Appellant’s claim Appeal 2010-002660 Application 11/415,562 7 requirement of prohibiting transaction processing until the automatic withdrawal from the deposit account for the fee is completed. We thus find that a person with ordinary skill in the art would know to modify Norris to use the processing fee of Croft in place of, or in addition to, the credit check (FF 3) because Croft discloses that causing a user to pay this upfront non-refundable processing fee reduces the likelihood and risk of default (FF 5), which ultimately is what the credit check in Norris seeks to accomplish.1 Since we find that Norris discloses withholding approval of a line of credit until an applicant’s credit report is obtained and evaluated and found acceptable (FF 2), and Norris discloses requiring a barrower to set up automatic periodic withdrawals from the borrower’s deposit account as a condition precedent to granting a line of credit (FF 3), we find Vitagliano to be cumulative. CONCLUSIONS OF LAW We conclude the Appellant has not shown that the Examiner erred in rejecting claims 1, 3-6, 8, 10-14, 16-18, and 20 under 35 USC §103(a) as being unpatentable over Croft in view of Norris. We conclude the Appellant has not shown that the Examiner erred in rejecting claims 7, 9, 15, and 19 under 35 USC §103(a) as being 1 Our framing of this combination as Norris in view of Croft, rather than Croft in view of Norris, relies upon the teachings from the same prior art references relied on by the Examiner and, as such, does not constitute a new ground of rejection. See In re Bush, 296 F.2d 491, 496 (CCPA 1961). Appeal 2010-002660 Application 11/415,562 8 unpatentable over Croft in view of Norris, further in view of Vitigliano, further in view of an Official Notice. DECISION The decision of the Examiner to reject claims 1, 3-20 is AFFIRMED. AFFIRMED MP PHILIP H. BURRUS, IV 460 Grant Street Atlanta GA 30312