Ex Parte Tittel et al

Patent Trial and Appeal Board

Jan 27, 2015

12483476 (P.T.A.B. Jan. 27, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte ANDREA TITTEL, GEOFF THOMAS, ANDREW FAULKNER,
and WILLIAM L. KOLESZAR
___________

Appeal 2012-002835
Application 12/483,476
Technology Center 3600
___________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1

Andrea Tittel, Geoff Thomas, Andrew Faulkner, and William L.
Koleszar (Appellants) seek review under 35 U.S.C. § 134 of a final rejection
of claims 1–4, 6–10, and 12, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 11, 2011) and the Examiner’s Answer (“Ans.,” mailed
September 1, 2011).
Appeal 2012-002835
Application 12/483,476

2

The Appellants invented a way of establishing and administering a
savings plan that offers incentives bonuses to customers that participate in
the plan (Specification para. 2).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method establishing a bank account that is administered by
a bank service provider comprising:
[1] establishing a bank account
at a bank service provider
for the benefit of an account holder;
[2] setting a savings goal
within the bank account
when the bank account is established
for the account holder to meet;
[3] depositing an incentive amount
into the account
when the account is established,
access to said incentive amount being restricted;
[4] setting a time period
for the account holder
to meet said savings goal;
[5] the account holder making periodic deposits
into the bank account
until said savings goal is met;
and
[6] the bank service provider distributing
a value of the account
including said incentive amount
to the account holder
after the savings goal is met.

The Examiner relies upon the following prior art:
Ferrari US 2007/0198382 A1 Aug. 23, 2007
Tabaczynski US 2009/0063332 A1 Mar. 5, 2009
Appeal 2012-002835
Application 12/483,476

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Claims 1–4, 6–10, and 12 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1–4, 6–10, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tabaczynski and Ferrari.
ISSUES
The issues of obviousness turn primarily on whether the art applied
describes depositing an incentive amount into a bank account when opened
and withdrawing the incentive amount after a savings goal is reached.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Tabaczynski
01. Tabaczynski is directed to automatic savings programs or
processes implemented by financial institution(s) for
automatically transferring funds, on behalf of an enrolled
customer, from source financial account(s) to target financial
account(s). Tabaczynski para. 1.
02. Tabaczynski describes automatic savings programs in which a
consumer is presented with multiple options for automatic savings
to be applied to transactions, such that savings amounts are
transferred from a first account to a second account automatically
for qualified accounts and transactions. A financial institution can
assist the consumer select one of the options to apply to automatic
transfers. Transfer policy can thus be customized for a consumer
according to their savings needs and goals. Tabaczynski para. 10.
Appeal 2012-002835
Application 12/483,476

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03. Tabaczynski describes how customers can set their total savings
goal at the time of opting in to the program. Tabaczynski
para. 32. This may occur when creating an account. Tabaczynski
para. 59.
04. Tabaczynski describes safeguards for automatic savings programs
that operate to limit the ways in which savings can be added to
and/or withdrawn from a transferee account, such as restricting
certain kinds of transactions that result in savings for a transferee
account or placing restrictions on withdrawal. Conversely,
benefits can be provided for the transferee account, which are
better than a typical savings account. Such benefits operate to
incentivize a customer to keep savings in the account, or penalize
withdrawal from the transferee account. Tabaczynski para. 35.
05. Tabaczynski describes how the customer opens either a qualified
type of checking account and/or a qualified type of savings
account. The customer enrolls in the automatic savings program,
selecting or determining a savings amount. Tabaczynski para. 59.
06. Tabaczynski describes a bonus program. At a designated time,
e.g., before interest is posted for the day, the savings account
system is accessed and, it is determined whether the bonus applies
to the account by discovering the presence of a bonus indicator for
the account. If the savings account is a part of the bonus program,
then it is determined whether the bonus due date is equal to the
current date. In other words, it is determined if it is time to pay
the bonus. If the bonus is due to the savings account on the given
day, then it is determined whether the savings account meets any
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Application 12/483,476

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pre-defined criteria set for achieving the bonus. Tabaczynski
para. 69.
07. Tabaczynski describes how, if the savings account qualifies for
bonus treatment on that day and meets the pre-defined criteria,
then the balance is computed based on the total of eligible
amounts saved in the automatic savings program for a given
period. Then the bonus amount is further computed by
multiplying the eligible savings balances by an applicable formula
for determining the actual amount to be transferred to the
consumer as a bonus. Then the savings account is credited with
the bonus amount calculated. Tabaczynski para. 70.
08. Tabaczynski describes how check card transactions are rounded
up using one of a set of rounding options and the round up amount
is transferred to a savings or investment account with common
ownership according to a customer's transfer relationships. As
another example benefit and incentive to the customer enrolling in
one of the financial institution’s savings programs, a percentage of
the transfer amount can be paid by the financial institution, e.g.,
deposits are made into a designated savings or investment account
for the customer. The deposits by the financial institution can be
made according to a set frequency: daily, weekly, monthly,
annually or on an account anniversary date. Tabaczynski para. 71.
09. Tabaczynski describes how for a customer enrolling in the
banking program, or switching to the banking program from
another bank, a bank can offer a bonus of X%, where X% can be
up to 100%, of the dollars transfers for an initial time period, and
Appeal 2012-002835
Application 12/483,476

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Y% thereafter, where Y% is less than X%. Alternatively, the offer
can be an annual bonus X%, where X% can be up to 100% of the
dollars transfers and retained in the account. Tabaczynski para.
74.
Ferrari
10. Ferrari is directed to savings for a time delayed purchase, and
more specifically a method of saving utilizing an electronic
network. Ferrari para. 2.
11. Ferrari describes saving for a time delayed purchase that includes
establishing a savings account through a website provided by a
third party service provider. The savings account establishes the
savings goal, the time frame, the recommended contribution, and
the savings category and/or category of retailer(s). Ferrari para. 8.
12. Ferrari describes how a customer names the savings account, sets
a desired savings goal, and determines a time frame for reaching
the savings goal. Through the controller that is in electronic
communication with the website, the processor automatically
calculates the weekly and/or monthly contribution needed and
transmits this information to the customer. The customer may
either accept the calculated amount which will automatically be
withdrawn from their checking account, or the customer may edit
the savings goal or savings time period until an acceptable
withdrawal amount is calculated. Ferrari para. 15.
13. Ferrari describes how, once the savings goal has been met, the
service provider sends a payment document to the customer for
the saved amount along with any interest earned. Ferrari para. 23.
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Application 12/483,476

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ANALYSIS
Claims 1–4, 6–10, and 12 rejected under 35 U.S.C. § 103(a) as unpatentable
over Tabaczynski and Ferrari
The Examiner found that Tabaczynski described the limitations of
claim 1 except for setting a time period for the goal. Tabaczynski describes
establishing a bank account (FF 05); setting a savings goal when the account
is established (FF 03); depositing an incentive amount into the account when
the account is established (FF 09); access to said incentive amount, and
indeed all amounts, being restricted (FF 04); and the account holder making
periodic deposits into the bank account until said savings goal is met
(FF 08). Ferrari describes setting a time period for the account holder to
meet the savings goal (FF 12) and distributing amounts after the savings
goal is met (FF 13). Ferrari’s payment, as applied to Tabaczynski’s bonus,
would necessarily include such bonus.
We are not persuaded by the Appellants’ argument that “none of the
programs deposit[s] an incentive amount into the account at the
establishment of the account that operates in connection with a reestablished
initial condition on the account.” Br. 9. Tabaczynski provides a bonus at
the time of account creation for amounts transferred in. FF 09. Claim 1
recites no initial condition.
We are not persuaded by the Appellants’ argument that “[t]here is no
interaction between the provision of the bonus and the periodic deposits until
a goal is achieved.” Br. 9. Claim 1 recites no such interaction. To the
extent Appellants are referring to the timing of the transfer in limitation [6],
this limitation is just that, one of timing and not of condition. Ferrari
describes waiting until such time.
Appeal 2012-002835
Application 12/483,476

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We are not persuaded by the Appellants’ argument that “the base
reference is fully devoid of any teaching that suggests the provision of an
incentive that actively works in conjunction with a period deposit that
releases the incentive amount once a predetermined goal is reached.” Br. 10.
Claim 1 recites no such releases once a goal is reached, only after a goal is
reached. Again, claim 1 recites timing rather than condition. As Ferrari
shows, it was notoriously known, not to say self-defining, to wait for a
savings goal to be reached before withdrawing the goal amount.
Claims 1–4, 6–10, and 12 rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter
The issues raised in the rejection for nonstatutory subject matter are not
those that remain pertinent after the Supreme Court’s recent case of Alice
Corp. Pty. Ltd. v CLS Bank Intl.,134 S.Ct. 2347 (2014). As the art rejection
is dispositive as to the case, we need not reach this rejection.
CONCLUSIONS OF LAW
The rejection of claims 1–4, 6–10, and 12 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is not reached.
The rejection of claims 1–4, 6–10, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Tabaczynski and Ferrari is proper.
Appeal 2012-002835
Application 12/483,476

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DECISION
The rejection of claims 1–4, 6–10, and 12 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

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