Ex Parte Zellner

Patent Trial and Appeal Board

Oct 7, 2013

11969938 (P.T.A.B. Oct. 7, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/969,938 01/07/2008 Samuel N. Zellner 99224 CON 2052
38516 7590 10/07/2013
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
10/07/2013 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 SAMUEL N. ZELLNER
____________________

Appeal 2011-010708
Application 11/969,938
Technology Center 3600
____________________

Before MEREDITH C. PETRAVICK, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010708
Application 11/969,938

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-6, 8-10, and 21-28. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellant’s invention relates to monitoring commercial transactions at
or near the time of their occurrence by providing a notification message of
the commercial transaction to the person or entity responsible for paying for
the commercial transaction (Spec. 1, ll. 7-10).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. A transaction processing center comprising:
[a] an electronic banking system that is configured to
process electronic banking transactions including balance
inquiry transactions for bank accounts; and
[b] a monitoring system that is configured to send a
balance inquiry notification message to a bank account holder
of a given bank account to notify the bank account holder that a
balance inquiry was made for the given bank account, wherein
the balance inquiry notification message further includes
contact information for the electronic banking system;
[c] wherein the electronic banking system is further
configured to receive and process a message from the bank

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed September 27, 2010) and the Examiner’s Answer (“Ans.,” mailed
March 18, 2011).
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Application 11/969,938

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account holder that the balance inquiry for the given bank
account was unauthorized.

THE REJECTION
The following rejection is before us for review:
Claims 1, 3-6, 8-10, and 21-28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goldsmith (US 6,064,990, iss. May 16,
2000) in view of Mikurak (US 6,606,744 B1, iss. Aug. 12, 2003) and further
in view of Official Notice.

ANALYSIS
Independent claim 1 and dependent claims 3-6 and 8-10
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellant’s argument that none of the cited
portions of Goldsmith, on which the Examiner relies, discloses or suggests
monitoring balance inquiries, notifying a bank account holder that a balance
inquiry was made for a given bank account, or processing messages from a
bank account holder that a balance inquiry was unauthorized, i.e., limitations
[b] and [c], as recited in claim 1 (Br. 4-7).
Goldsmith discloses a system for providing electronic notification of
account activity concerning a financial account (Goldsmith, col. 1, ll. 6-8),
and describes that when a user receives notification of a transaction that the
user did not authorize, the user may immediately contact the financial
institution to report the fraud (Goldsmith, col. 5, ll. 2-8).
Appellant argues that Goldsmith does not include any disclosure or
suggestion related in any way to balance inquiry transactions for bank
accounts, as recited in claim 1 (Br. 5-7), and that Goldsmith does not
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disclose or suggest that the balance inquiry notification includes contact
information for the electronic banking system. Yet the law is well
established that the mere existence of differences between the prior art and
the claim does not establish non-obviousness. See Dann v. Johnston, 425
U.S. 219, 230 (1976).
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.” Dann, 425 U.S. at 228 (internal quotations and
citations omitted). Indeed, the Supreme Court made clear in KSR 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).
Appellant argues that Goldsmith is different because “Goldsmith
focuses only on transactions that may impact the amount of money in a
user’s bank account” (Br. 6, emphasis in original), and does not disclose or
suggest that a notification message, including contact information for the
electronic banking system, should be sent “in the event of a mere balance
inquiry, which does not impact the amount of money or assets in the user’s
account” (id.). But Appellant does not explain, for example, why it would
have been non-obvious to modify Goldsmith to also send notification of a
balance inquiry – a device that Appellant admits may be used by an identity
thief or fraudulent user, in the first instance, to gain assurances that the
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account can be fraudulently accessed before actually attempting a fraudulent
withdrawal or transfer of funds (Br. 5-6). Indeed, one of ordinary skill in the
art would reasonably infer, given Appellant’s own admission, that providing
notification of a balance inquiry could be used as an effective alternative for
guarding against fraudulent transactions.
Appellant also does not explain why it would have been non-obvious
to include contact information for the electronic banking system as part of
the notification message, which information plainly would be useful, as a
matter of convenience, to the user in notifying the banking center of
unauthorized activity.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of dependent claims 3-6 and 8-10, which were not separately
argued.
Independent claim 21 and dependent claims 22-28
Appellant argues that independent claim 21 is allowable for the same
reasons as set forth with respect to claim 1 (Br. 5). We are not persuaded for
the reasons set forth above that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a). Therefore, we will sustain the Examiner’s rejection of
claim 21 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of dependent claims 22-28, which were not separately argued.

DECISION
The Examiner’s rejection of claims 1, 3-6, 8-10, and 21-28 under
35 U.S.C. § 103(a) is affirmed.
Appeal 2011-010708
Application 11/969,938

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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

Hh/rvb