Ex Parte Manchester et al

Patent Trial and Appeal BoardApr 25, 2016

10423527 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 10/423,527 0412512003 67338 7590 04/27/2016 BUCKLEY, MASCHOFF & TALWALKAR, LLC GENERAL ELECTRIC COMPANY 50 LOCUST A VENUE NEW CANAAN, CT 06840 Jeff Manchester 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. G07.019/CON 7598 EXAMINER MEINECKE DIAZ, SUSANNA M ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 04/27/2016 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): martin@BMTPATENT.COM szpara@bmtpatent.com colabella@bmtpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFF MANCHESTER and MICHELLE DUPREE-CAMMER Appeal2014-002177 Application 10/423,527 1 Technology Center 3600 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jeff Manchester and Michelle Dupree-Cammer (Appellants) appeal under 35 U.S.C. Â§ 134 from the Examiner's final decision rejecting under 35 U.S.C. Â§ 103(a) claims 1, 4-7, and 9 as being unpatentable over Block,2 According to Appellants, the real party in interest is General Electric Corporation. Appeal Br. 2 (filed August 23, 2013). 2 Valeri Block, Norwest Unit Adds New Twists to Cobranding Combination Card Plan Seen As Alternative to Private Labels Series: 14, American Banker, Vol. 159, Issue 114, p. 12, June 15, 1994. Appeal2014-002177 Application 10/423,527 Store Card,3 and the Examiner's Official Notice. 4 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). SUMMARY OF DECISION We AFFIRM. INVENTION Appellants' invention relates to "the implementation of a dual credit card system." Spec. 1: 1-3. Claims 1, 7, and 9 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A computer implemented method, comprising: receiving, by a computer, information regarding an applicant; assigning, by the computer, a single credit line and a single interest rate to a single dual credit card account for said applicant; and issuing, using a computer, a dual credit card to said applicant, the dual credit card having an associated identifier that identifies said single dual credit card account and an issuing financial institution that is issuing the dual credit card account as a private label card account for transactions involving a first merchant and as a bankcard account for transactions involving merchants other than said first merchant; wherein transactions involving said dual credit card are processed over a private label processing network when the transactions are associated with said first merchant and are processed over a bankcard network when the transactions are associated with merchants other than said first merchant. 3 "Store Card Software Gets Dressed Up", Credit Card Management, Vol. 8, Nr. 6, p. 90, Sept. 1995. 4 Claims 2, 3, 8, and 10-25 are canceled. See Appeal Br. 2; see also Claims App. 2 Appeal2014-002177 Application 10/423,527 ANALYSIS Appellants have not presented arguments for the patentability of claims 4--7 and 9 apart from those made for the patentability of claim 1. See Appeal Br. 8, 12. Therefore, in accordance with 37 C.F.R. Â§ 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal of the rejection of these claims, with claims 4--7 and 9 standing or falling with claim 1. The Examiner finds that Block discloses receiving applicant information for a dual credit card (co branded card) and assigning a single account with a single credit line to the dual credit card, wherein the single credit line includes a first portion with a first interest rate for use with a first merchant (store merchant with a private-label line of credit) and a second portion with a second interest rate for use with a second merchant that is different from the first merchant (MasterCard line of credit). See Final Act. 4--11 (citing Block i-fi-1 7, 9, 14--17, 26-28); see also Ans. 11. With respect to the issuing step, the Examiner takes Official Notice "that it was old and well-known in the art at the time of Applicant's invention to use a BIN (Bank Identification Number) to identify accounts." See Final Act. 6. 5 The Examiner further takes Official Notice that because "it was old and well- known in the art of credit transactions ... for the credit network owner to charge a service fee to the merchant for use of their network to process a transaction" "a retailer would likely forego paying a service fee to a third party when processing transactions over their own retailer transaction 5 "Applicants do not contest that BINs have been used to identify accounts." Appeal Br. 11. 3 Appeal2014-002177 Application 10/423,527 network." Id. at 8. Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art: [T]o modify Block such that the first and second transactions are processed over a first and second processing network (e.g., a private label network and a bankcard network) ... in order to create a more attractive product across the credit industry by meeting the needs of not only major credit card sponsors, but also smaller retailers who find special benefits of establishing their own merchant-specific credit card network, such as lower service fees. Id. at 8-9. The Examiner then turns to Stone Card to show that the claimed steps of receiving, assigning, and issuing can be performed by a computer. Id. at 9. The Examiner thus concludes that it would have been obvious for a person of ordinary skill in the art to use a computer as taught by Stone Card in the method of Block "in order to promote more rapid and accurate processing of the received and assigned information." Id. (citing Store Card iTiT 5, 8, 19-21 ). In response, Appellants argue that the neither Block, Store Card, nor the Examiner's Official Notice discloses "routing of a transaction over a different network depending on where the dual credit card is used." See Appeal Br. 9; see also Reply Br. 2-3. More specifically, Appellants argue that Block does not disclose "routing of transactions over different networks depending on where ... the card is used." Appeal Br. 10. As to Store Card, Appellants argue that, "[l]ike Block, there is simply no teaching or suggestion in Store Card to provide transaction processing as recited in claim 1." Id. at 11. Thus, according to Appellants, "neither Block nor Store Card, alone or in any permissible combination, teach or suggest embodiments of the present invention as recited in claim 1." Id. 4 Appeal2014-002177 Application 10/423,527 We are not persuaded by Appellants' arguments because they are not commensurate with the Examiner's rejection. It is well-settled that nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner concedes "that Block does not explicitly disclose that the first and second transactions are processed over a first (private label) and second (bankcard) processing network, respectively." Ans. 12. "However, Official Notice was taken that it was old and well-known in the art of credit transactions at the time of Applicant's[] invention for the credit network owner to charge a service fee to the merchant for use of their network to process a transaction." Id. As Appellants did not seasonably traverse the Examiner's taking of official notice during examination, then the object of the official notice is taken to be admitted prior art. In re Chevenard, 139 F.2d 711, 713 (CCPA 1943). Thus, the Examiner correctly finds that because it is known that a network owner charges a service fee to the merchant for use of its network to process a transaction, "a retailer would likely forego paying a service fee to a third party when processing transactions over their own retailer transaction network." Id. An artisan must be presumed to know something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). In view of the Examiner's Official Notice, we agree with the Examiner's conclusion that it would have been obvious for a person of ordinary skill in the art to modify Block such that the first and second transactions are processed over a first and second processing network (e.g., a private label network and a bankcard network). Appellants have not 5 Appeal2014-002177 Application 10/423,527 persuasively shown error in the Examiner's reasoning. As such, although we appreciate that neither Block, Store Card, nor the Examiner's Official Notice individually discloses "routing of a transaction over a different network depending on where the dual credit card is used," nonetheless, the Examiner's combination of the teachings of Block, Store Card, and the Examiner's Official Notice includes this feature. Moreover, the Examiner is correct in that "[r]educing credit card transaction fees charged to a vendor is often a goal of vendors, which is why many offer incentives for their customers to use their store-based credit accounts for purchases." Id. at 13. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. Â§ 103(a) of claim 1, and claims 4--7 and 9 fall with claim 1, as being unpatentable over Block, Store Card, and Examiner's Official Notice. SUMMARY The Examiner's decision to reject claims 1, 4--7, and 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Block, Store Card, and the Examiner's Official Notice is affirmed. 6 6 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. Â§ 101 in light of the preliminary examination instructions on patent eligible subject matter issued after this Appeal was filed. See "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to the Examining Corps, June 25, 2014; see also July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30, 2015). 6 Appeal2014-002177 Application 10/423,527 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)(l)(iv). AFFIRMED 7