Ex Parte Foster

Patent Trial and Appeal BoardFeb 12, 2016

11554894 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111554,894 10/31/2006 Chuck Foster 35690 7590 02/17/2016 MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P,C P.O. BOX 398 AUSTIN, TX 78767-0398 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 6057-54308 6123 EXAMINER OYEBISI, OJO 0 ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 02/17/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): patent_docketing@intprop.com ptomhkkg@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHUCK FOSTER Appeal2013-005252 Application 11/554,894 Technology Center 3600 Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Chuck Foster (Appellant) seeks review under 35 U.S.C. Â§ 134 of a final rejection of claims 1-3, 5-16, 18-29, 31-34, 36-39, 53-55, 57---61, and 66- 70, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). The Appellant invented a dynamic determination of transaction processing fees. Specification: Title. 1 Our decision will make reference to the Appellant's Appeal Brief ("App. Br.," filed September 20, 2012) and Reply Brief ("Reply Br.," filed March 6, 2013), and the Examiner's Answer ("Ans.," mailed January 10, 2013), and Final Action ("Final Act.," mailed April 16, 2012). Appeal2013-005252 Application 11/554,894 An understanding of the invention can be derived from a reading of exemplary claim 14, which is reproduced below (bracketed matter and some paragraphing added). 14. An apparatus comprising a processor and a computer- readable medium having computer instructions stored thereon that are executable to cause the apparatus to perform operations including: [1] receiving a request for payment to settle a non-cash transaction between a customer and a merchant; [2] dynamically determining a transaction processing fee associated with the noncash transaction, wherein said determining is based, at least in part, on a number of noncash transactions that have been conducted by the merchant during a given time period and for which fees have been assessed by a financial intermediary; [3] wherein said determining includes calculating the transaction processing fee to be a first fee based, at least in part, on a threshold number of two or more transactions not yet having been conducted by the merchant during the given time period; and [ 4] wherein said determining includes calculating the transaction processing to be a second fee based, at least in part, on the threshold number of two or more transactions already having been conducted by the merchant during the given time period, wherein the second fee is calculated differently than the first fee. 2 Appeal2013-005252 Application 11/554,894 The Examiner relies upon the following prior art: Foss US 2006/0289621 Al Dec. 28, 2006 Claims 1-3, 5-16, 18-29, 31-34, 36-39, 53-55, 57-61, and 66-70 stand rejected under 35 U.S.C. Â§ 102(e) as anticipated by Foss. ISSUES The issues of anticipation tum primarily on whether Foss describes the first fee in each of the independent claims. 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 - Foss 01. Foss is directed to dynamic fee structuring in a stored value card program. Foss, para. 8. 02. Foss describes receiving a user selection for an amount to be loaded to a stored value card and determining a transaction fee based on the user selection. Id. 03. Foss's account management component enables and disables certain functions and privileges of the account based on various factors. Some of the factors can include account risks and customer behaviors. The account management component can include a fee management model. The fee management model determines and assesses any applicable fees to be charged against 3 Appeal2013-005252 Application 11/554,894 the account. A one time fee may be assessed for the creation of the account or for the creation of certain accounts, such as accounts having an overdraft component. In addition, the account may include a fixed number of transactions or a fixed number of transactions per fixed period (e.g., per month). Once the fixed number of transactions is exceeded, additional transactions can be assessed a transaction fee. In another embodiment, a monthly fee may be assessed on the account. Foss, para. 40. 04. Foss's merchant may be paid a fee based on the number of devices and the number of transactions provided using the devices. In yet another embodiment, the merchant may be compensated based solely on the number of transactions. In yet another embodiment, the merchant may be compensated based on a percentage value of the transactions. Foss, para. 55. 05. Foss's merchant-based fee structure database defines a different fee structure for each merchant device associated with a particular merchant. Each merchant device includes a separate fee structure for charging consumers. The fee structures define three levels of fees based on the dollar amount associated with the transaction. In order to perhaps encourage larger deposits to stored value cards, the fee levels may be defined so that larger deposits are charged less fees. For example, in these deposit-based fee structures, a deposit between a threshold minimum and $500 may be charged a fee of $9.95, while a deposit between $501 and $1000 may be charged a lesser fee of $3.95. Foss, para. 83. 4 Appeal2013-005252 Application 11/554,894 ANALYSIS Both Examiner and Appellant agree that Foss describes an account that is assessed a monthly fee for a fixed number of transactions per month. Once the fixed number of transactions is exceeded, additional transactions are assessed an additional transaction fee. FF 03. The issue is whether this is within the scope of the claims. Appellant argues the claims as a group with claim 14 as representative. Claim 14 recites in relevant part dynamically determining a transaction processing fee associated with the noncash transaction, wherein said determining is based, at least in part, on a number of noncash transactions that have been conducted by the merchant during a given time period and for which fees have been assessed by a financial intermediary wherein said determining includes calculating the transaction processing fee to be a first fee based, at least in part, on a threshold number of two or more transactions not yet having been conducted by the merchant during the given time period. Claim 14. The problem for the Examiner is that Foss assesses its monthly fee without regard to the number of transactions, so Foss does not calculate the monthly transaction processing fee based, at least in part, on a threshold number of two or more transactions not yet having been conducted by the merchant during the given time period. Foss does not take any notice of whether a threshold has not been reached in assessing the monthly fee. Independent claim 27 has similar limitations. Thus, the rejection as to claims 14--16, 18-29, 31-34, 36-39, 54, 55 is improper. We find that Appellants' argument regarding this limitation is inapplicable to claims 1 and 66 because claim 1 instead recites dynamically determining a transaction processing fee associated with the noncash transaction in response to the request, 5 Appeal2013-005252 Application 11/554,894 wherein said determining is performed by the computer system and is based, at least in part, on fees specified by a volume purchase agreement to which at least one of the customer and the merchant is a party; wherein the volume purchase agreement specifies that a first fee is to be assessed for non- cash transactions conducted within a given time period and before a threshold number of two or more transactions have occurred in the given time period Claim 1. Claim 66 is similar. Here, the monthly fee in Foss is assessed for non-cash transactions conducted within a given time period and before a threshold number of two or more transactions have occurred in the given time period because the monthly fee is for up to a fixed threshold number of transactions and is assessed before any transactions occur, so necessarily occur prior to a threshold number of two or more transactions have occurred. Thus, we find the rejections of claim 1 and its dependent claims 2, 3, 5-13, 53, and 61, and of claim 66, and its dependent claim 67 are proper. We find Appellants' argument persuasive that the Examiner failed to make any findings as to claims 57---60 and 68----70. App. Br. 13-14. Thus, the Examiner has not presented a prima facie case as to these claims. CONCLUSIONS OF LAW The rejection of claims 14----16, 18-29, 31-34, 36----39, 54, 55, 57-----60, and 68-70 under 35 U.S.C. Â§ 102(e) as anticipated by Foss is improper. The rejection of claims 1-3, 5-13, 53, 61, 66, and 67 under 35 U.S.C. Â§ 102(e) as anticipated by Foss is proper. 6 Appeal2013-005252 Application 11/554,894 uECISION The rejection of claims 14--16, 18-29, 31-34, 36-39, 54, 55, 57---60, and 68-7 0 is reversed. The rejection of claims 1-3, 5-13, 53, 61, 66, and 67 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l)(iv) (2011). AFFIRMED-IN-PART 7