Ex Parte Weichert et al

Board of Patent Appeals and Interferences

Jul 9, 2008

10262053 (B.P.A.I. Jul. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARGARET MORGAN WEICHERT, JOHN JOSEPH
MASCAVAGE III, DAVID L. HANSEN, MARK D. BAUMGART,
PETER M. KARAS, and RICHARD G. WILBER
____________________

Appeal 2008-1591
Application 10/262,053
Technology Center 3600
____________________

Decided: July 9, 2008
____________________

Before MURRIEL E. CRAWFORD, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants’ appeal under 35 U.S.C. § 134 (2002) from a final
rejection of claims 1 to 19. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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Application 10/262,053

Appellants’ invention relates to providing cash payments to merchants
in exchange for goods or services offered by the merchant regardless of the
type of payment instrument used to tender payment by their customers.
(Spec. ¶ 06.)
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Vallee US 6,014,646 Jan. 11, 2000
Kravitz US 6,029,150 Feb. 22, 2000
Slater US 6,098,053 Aug. 1, 2000
Moreau US 2002/0069166 A1 Jun. 6, 2002
Pinell EP 1 077 436 A2 Feb. 21, 2001
O’Mahony et al., Electronic Payment Systems, 61-122 (1997).
The Examiner rejected under 35 U.S.C. § 103(a):
1) claims 1, 2, and 14 as being unpatentable over Kravitz in view of
Moreau.
2) claims 3 to 6 and 19 as being unpatentable over Kravitz and
Moreau in view of Pinell.
3) claims 7 to 11 as being unpatentable over Kravitz, Moreau, and
Pinell in view of Slater.
4) claim 12 as being unpatentable over Moreau in view of Slater.
5) claim 13 as being unpatentable over Moreau and Slater in view of
Vallee.
6) claim 15 as being unpatentable over Kravitz and Moreau in view of
O’Mahony et al.
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7) claims 16 to 18 as being unpatentable over Kravitz and Moreau in
view of O’Mahony et al., and further in view of Slater.

DECISION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellants and the Examiner. Because of this review, we
have reached the conclusion that the applied prior art does not establish the
prima facie obviousness of the claimed subject matter. Therefore, the
rejections on appeal are not sustained. Our reasons follow.
For claim 1 (and 14), the disagreement between the Appellants and
the Examiner is whether:
1) Kravitz discloses a process including the steps of receiving, at an
ordering system, payment information relating to a payment instrument
being used to provide payment for an Internet purchase of a good or a
service; transmitting from the ordering system a message to a merchant that
includes information on the good or service being purchased to permit the
merchant to provide the good or service; and collecting funds from an
account associated with the payment instrument; and
2) Moreau teaches the step of transmitting a money transfer request
from the ordering system to a money transfer computer system operable to
process requests to transfer monetary values to designated recipients
independently of a banking account of the recipients, the money transfer
request including information usable by the money transfer computer system
to provide a cash payment to the merchant for the Internet purchase, so that a
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cash payment is made rather than a deposit to a bank account of the
merchant.
Regarding the process step involving receiving payment information
at an ordering system related to the payment instrument used, the Examiner
finds that Kravitz discloses this step at column 12, lines 45-56 (Ans. 4). For
the step of transmitting a message to the merchant that includes information
on the item purchased, the Examiner finds Kravitz discloses this step at
column 12, lines 56-59. For the step of collecting funds from the account
associated with the payment instrument, the Examiner finds Kravitz
discloses this step at column 12, line 60 to column 13, line 12. For the step
of transmitting a money transfer request whereby the request process is
independent of banking accounts associated with either the customer or
merchant and the request process includes information in order to provide a
cash payment to the merchant, the Examiner finds Moreau teaches this
process at various locations within Moreau, paragraphs 0028, 0032, 0036-
37, and 0052-57.
The Appellants contend Kravitz discloses a system for purchasing
goods where the merchant ships the goods after receiving an authenticated
digital payment advice. Additionally, the Appellants contend the customer
in Kravitz is not using a payment instrument. Further, the Appellants
contend Kravitz discloses that the payments are not made in cash, but
deposited into a bank account. (App. Br. 6.) The Appellants also contend
the Examiner has mischaracterized Moreau. The Appellants’
characterization of Moreau is after a customer orders a good, the customer
visits a collection agent. The customer makes a payment to this agent. The
payment is withdrawn from the agent’s bank account and is deposited to the
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merchant’s bank account. In addition, the Appellants contend Moreau
discloses a process where the customer visits an agent to make a payment, as
compared to the Appellants’ invention where the merchant visits an agent to
collect cash. (App. Br. 6-7.)
We do not agree with the Examiner’s findings. In our view, the
Appellants’ characterization reflects the proper scope and content of Kravitz
and Moreau. From our reading of these references, we find that Kravitz and
Moreau do not disclose or teach the claimed limitations at the particular
portions where the Examiner has directed our attention to support the
Examiner’s rejections. Moreover, the Examiner has not provided an
explanation or analysis as to how these portions satisfy or meet the claimed
limitations. Instead, the Examiner has cited to these portions and baldly
concluded these portions meet the claim limitations.
Our understanding of Kravitz, at the portions of the reference to which
the Examiner has directed our attention, is in accord with the Appellants’
characterization of Kravitz. Kravitz at column 12, line 45 to column 13, line
12 discloses the following process: initiating a payment sequence by sending
a digital signal that identifies the purchased good and the price; a
confirmation by the customer triggers sending a digital payment request to a
customer’s transfer application (CTA); receipt of the request and its
acceptability causes execution of an intent to transfer funds from the
customer’s account to the merchant’s clearing corporation (MCC); and at
some point in time after the CTA performs checks to verify a merchant’s
standing, an actual transfer of funds occurs from the customer’s bank to the
MCC or an account held by the MCC at a bank. From our review of Kravitz
and the lack of explanation by the Examiner, we fail to find where within
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Kravitz, again, at the particular portions to which the Examiner has directed
our attention: 1) the claimed steps the Examiner finds Kravitz discloses and
2) the structure within said portions of Kravitz that would meet the claimed
limitations of an ordering system and a payment instrument recited in claim
1. While we do find that Kravitz describes the intent to transfer as having
the characteristics of an exchange of cash, that being, such intent is
instantaneous, final, and non-appealable, see column 12, lines 64-66, in
which Kravitz does not disclose a cash payment made to a merchant
regardless of the payment instrument used by the customer.
Similarly, our understanding of the portions of Moreau to which the
Examiner has directed our attention for finding the step of transmitting a
money transfer request whereby the request process is independent of
banking accounts associated with either the customer or merchant is in
accord with the Appellants’ characterization of Moreau. From our review of
these portions of the reference, Moreau discloses an explanation of an
illustration of computers, paragraph 0028, a means of communication by a
communication interface, paragraph 0028, consumers selecting a collection
agent to tender payment, paragraphs 0036-37, and a sample transaction of
the customer: ordering a good from a merchant, selecting and visiting a
collection agent, tendering payment to the agent, the collection agent
forwarding payment to the merchant, and the merchant shipping the good,
paragraphs, 0052-0057. Again, based on our review of Moreau and the lack
of an explanation by the Examiner, Moreau does not disclose the claimed
limitation of transmitting the money transfer request from the ordering
system to a money transfer computer system within the portions of Moreau
to which the Examiner has directed our attention. In addition, Moreau does
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not disclose the claimed limitations of an ordering system and a money
transfer computer system operable to process the money transfer requests
within the portions of Moreau to which the Examiner has directed our
attention.
For claim 12, the disagreement between the Appellants and the
Examiner is whether:
1) Moreau teaches the steps of receiving at a money transfer
computer system a request to make a cash payment to a merchant
independent from the bank account, and
2) Slater teaches transmitting from the transfer computer to the
merchant a cash pick-up identifier; receiving at a money transfer location the
identifier from the merchant; and making the cash payment to the merchant.
The Examiner finds that Moreau discloses the claimed steps of
receiving a request to make a cash payment to a merchant, paragraph 0053,
and transmitting to the merchant a cash pick-up identifier, paragraphs 0068
to 0073. In addition, the Examiner finds that Slater teaches the claimed
steps of receiving the cash pick-up identifier and making the cash payment.
(Ans. 12.)
The Appellants incorporate by reference their previous contentions
with respect to Moreau and further contend neither Moreau nor Slater
disclose or teach a money transfer system for making a cash payment to a
merchant independently of a merchant’s bank account. Moreover, the
Appellants contend Slater, like Moreau, discloses making payments to a
merchant’s bank account. (App. Br. 7.)
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We do not agree with the Examiner’s findings. In our view, the
Appellants’ characterization reflects the proper scope and content of Moreau
and Slater. From our review, we find that Moreau and Slater do not disclose
or teach the steps at the particular portions where the Examiner has directed
our attention. Moreover, the Examiner has not provided an explanation or
analysis has to how these portions satisfy or meet the claimed limitations.
Instead, the Examiner has cited to these portions and baldly concluded these
portions meet the claim limitations.
Our understanding of Moreau, at the particular portions the Examiner
has relied upon to meet the claimed steps, discloses a customer ordering or
selecting a good, paragraph 0053, the merchant providing a transaction code
to the consumer, the consumer presenting the transaction code and payment
to a collection agent, the collection agent forwarding payment to the
merchant, and the merchant, after receiving payment, shipping the good to
the customer, paragraphs 0068-69. In addition, Moreau discloses if the
consumer is going to pay with cash, another entity called a facilitator is
involved in the transaction, paragraphs 0070-73. Our understanding of
Slater, at the particular portions the Examiner has relied upon to meet the
claimed steps, discloses the quick settlement of purchaser’s and merchant’s
accounts, column 10, lines 59-67, and the time it takes to receive a credit
from a debit because of gaining a float revenue, column 2, lines 64-67, leads
to wait and uncertainty for the merchant because of float or insufficient
funds, column 3, lines 1-11. Additionally, Slater discloses the system does
not require an account relationship between the parties involved in the
financial transaction, thus making the system have universally acceptable
on-line transactions, column 4, lines 20-31.
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Accordingly, based on our understanding of Moreau and Slater and
the Examiner’s lack of explanation in applying Moreau and Slater to the
claimed limitations of claim 12, we fail to find Moreau and Slater disclose or
teach the claimed limitations within claim 12.
On the record before us, Appellants have met the burden of
establishing that the Examiner erred in rejecting under 35 U.S.C. § 103(a):
1) claims 1, 2, and 14 as being unpatentable over Kravitz in view of
Moreau;
2) claims 3 through 6 and 19 as being unpatentable over Kravitz and
Moreau in view of Pinell;
3) claims 7 through 11 as being unpatentable over Kravitz, Moreau,
and Pinell in view of Slater;
4) claim 12 as being unpatentable over Moreau in view of Slater;
5) claim 13 as being unpatentable over Moreau and Slater in view of
Vallee;
6) claim 15 as being unpatentable over Kravitz and Moreau in view of
O’Mahony et al; and
7) claims 16 though 18 as being unpatentable over Kravitz and
Moreau in view of O’Mahony et al., and further in view of Slater.
The decision of the Examiner is reversed.

REVERSED

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LV:

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