Ex Parte Carlson et al

Patent Trial and Appeal BoardOct 31, 2012

10988469 (P.T.A.B. Oct. 31, 2012)

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. 10/988,469 11/12/2004 Michael P. Carlson AUS920040540US1 1157 48916 7590 11/01/2012 Greg Goshorn, P.C. 9600 Escarpment Suite 745-9 AUSTIN, TX 78749 EXAMINER HESS, DANIEL A ART UNIT PAPER NUMBER 2876 MAIL DATE DELIVERY MODE 11/01/2012 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 MICHAEL P. CARLSON and HERMAN RODRIGUEZ ____________ Appeal 2009-014424 Application 10/988,469 Technology Center 2800 ____________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM and ANDREW J. DILLON, Administrative Patent Judges. WHITEHEAD, JR., Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-014424 Application 10/988,469 2 STATEMENT OF THE CASE Appellants are appealing claims 1-21. Appeal Brief 5. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm. Introduction The invention is directed to “a system and method for the administering of a consolidate [sic] financial account that provides real-time credit reporting.” Appeal Brief 7. Illustrative Claim 1. A method for determining a credit rating, the method comprising: establishing, for an account holder, a consolidated financial account having two or more assets and liability components, wherein two or more of the two or more components comprise separate financial accounts at a single financial institution; entering transactions corresponding to one or more of the components; creating an account history based upon the transactions; updating the account history each time a transaction is entered; and updating, at the single financial institution, a credit rating based upon the updated account history each time a transaction is entered; wherein the credit rating is maintained at the single financial institution in conjunction with the consolidated financial account. Appeal 2010-014424 Application 10/988,469 3 Rejections on Appeal Claims 1, 5, 6, 8, 12, 13, 15, 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Basch (U.S. Patent No. 6,119,103; issued September 12, 2000). Answer 3-7. Claims 2, 9 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Basch and Angel (U.S. Patent Application Publication Number 2003/0225703; issued December 4, 2003). Answer 7-8. Claims 3, 4, 7, 10, 11, 14, 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Basch and Lockwood (U.S. Patent Number 7,010,508 B1; issued March 7, 2006, filed April 7, 1995). Answer 8. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Basch and Del Rey (U.S. Patent No, 7,103,556 B2; issued September 5, 2006, filed September 26, 2001). Appeal Brief 20. 1 1 The Examiner’s Answer does not disclose a rejection of claim 21 as indicated by Appellants’ Appeal Brief. Further, the Del Rey reference used to reject claim 21 is not listed as “Evidence Relied Upon” by the Examiner. Answer 3. However, both Appellants and Examiner address the merits of the rejection in spite of the fact that the rejection is not evident in the Answer. See Appeal Brief 20; see also Answer 12. Therefore for the sake of this appeal we will address the rejection of claim 21. Further, Appellants never argue the omission of the rejection of claim 21 from the Answer. See Ex parte Frye, 94 USPQ2d 1072, 1076 (BPAI 2010) (“Precedential”) (“[T]he Board will generally not reach the merits of any issues not contested by an appellant.”). Only those arguments actually made by the Appellants have been considered in this decision. Arguments which the Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008). Appeal 2010-014424 Application 10/988,469 4 Issue on Appeal Does Basch focus on multiple institutions fail to render obvious Appellants’ claimed subject matter directed to “consolidated financial account having two or more assets and liability components . . . at a single financial institution” as recited in claim 1 and similarly cited in claims 8 and 15? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. We concur with the findings and reasons set forth by the Examiner in the action from which this appeal is taken and the reasons set forth by the Examiner in the Answer in response to Appellants’ Appeal Brief. However, we highlight and address specific findings and arguments for emphasis as follows: Appellants argue that: Applicants' Specification and Claims are specifically directed to a “single, integrated account,” at one financial institution and the credit reporting feature is an integral part of the consolidated account unlike a typical credit rating as described in Basch. This particular concept is not anticipated by any “accounting” of Basch that is based upon data from more than one financial institution. Appeal Brief 15. Appellants recite several examples from their Specification that describes the Appellants’ “consolidate account.” Id. Appeal 2010-014424 Application 10/988,469 5 The Examiner finds that Appellants’ examples from the Specification are non-limiting: As has been well established, Basch does have a consolidated transaction history. This is indeed what Basch is all about: a consolidated transaction history from many sources in order to determine a credit rating. Admittedly Basch does not explicitly teach a “consolidated balance” or a “single interest rate based upon balance.” But this is not what is claimed. The claim language does not include “consolidated balance” or a “single interest rate based upon balance.” Instead, the appellant has written the claims much more broadly. The examiner might note that these data “consolidated balance” or a “single interest rate based upon balance” could be derived from the very complete data that Basch gathers from many accounts, but such an arguments would be unnecessary and miss the point, because “consolidated balance” or a “single interest rate based upon balance” are nowhere recited in the claims. Basch teaches a unified financial recording keeping; this certainly meets a definition of a consolidated financial account. Definitions of accounts include record-keepings, histories, and reports of transactions and balances. Basch meets all of these definitions. Answer 9. We agree with the Examiner’s findings that Basch creates a “consolidated financial account” and therefore we do not find Appellants’ arguments to be persuasive. “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the Appeal 2010-014424 Application 10/988,469 6 claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994). Further, as the Examiner finds, “Basch is made to be capable of receiving data from many financial institutions. But the examiner notes that requirement that the two or more components comprise separate accounts at a single institution will be met for some customers.” Answer 10. We agree with the Examiner, although Basch “analyze[s] scoreable transactions across accounts and/or account issuers,” Basch is not rendered ineffective if all of the accounts originate from one financial institution. See Basch, column 5, limes 47-61. Therefore we sustain the Examiner’s rejection of claim 1, as well as, independent claims 8 and 15, not separately argued. The Appellants argue claims 2-7, 9-14 and 16-21 in separate groups. Appeal Brief 17-20. We group these claims together here for clarity and brevity since “[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(vii) (2010). Appellants rely upon blanket statements and fail to argue the merits of each individual claim. See Appeal Brief 17-20. Therefore we do not find Appellants’ arguments to be persuasive. We adopt as our own, the Examiner’s findings as they pertain to claims 2-7, 9-14 and 16-21 (Answer 3-12) and sustain the Examiner’s rejections for the reasons stated above. Appeal 2010-014424 Application 10/988,469 7 DECISION The rejection of claims 1-21 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Vsh