Ex Parte Nathans et al

Patent Trial and Appeal BoardDec 6, 2012

10392849 (P.T.A.B. Dec. 6, 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. 10/392,849 03/21/2003 Michael G. Nathans 9520-004-64 9001 7590 12/07/2012 Franklin B. Levin, Esq. Senior Vice President & General Counsel Pay Rent, Build Credit, Inc. 100 Canal Pointe Blvd., Suite 208 Princeton, NJ 08540 EXAMINER MONFELDT, SARAH M ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 12/07/2012 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 G. NATHANS and MARCIA A. GOLDSTEIN-NATHANS1 ____________________ Appeal 2011-005313 Application 10/392,849 Technology Center 3600 ____________________ Before, MURRIEL E. CRAWFORD, KEVIN F. TURNER, and MICHAEL W. KIM, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE2 Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 11, 15-23, 25, 32-34, and 36. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Pay Rent, Build Credit, Inc., is the real party in interest. 2 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed September 20, 2010) and the Examiner’s Answer (“Ans.,” mailed October 1, 2010). Appeal 2011-005313 Application No. 10/392,849 2 THE INVENTION Appellants’ disclosure relates to a method and system for consumer credit reporting based on collected credit payment data which are verified by a verifiable source arranged by the consumer. (Spec. p. 1, ll. 5-7 and p. 5, ll. 3-8.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computerized method for processing credit information by a credit reporting agency, the method comprising the steps of: accepting at a credit reporting agency computer operated by a credit reporting agency credit term information corresponding to credit extended to a consumer by a creditor pursuant to a credit agreement; accepting at the credit reporting agency computer credit payment information from a payment processor, the payment processor being directed to report the payment information by the consumer and having a contractual relationship with the credit reporting agency, the credit payment information being indicative of payments made by the consumer pursuant to the credit agreement; and reporting by the credit reporting agency computer information indicative of compliance with the credit term information by the consumer; wherein the credit reporting agency is different from the consumer, the payment processor and the creditor, and wherein the payment processor is different from the creditor. (Br., Claims Appendix 16.) Appeal 2011-005313 Application No. 10/392,849 3 PRIOR ART REJECTIONS The prior art references relied upon by the Examiner in rejecting the claims are: Weatherly 6,023,687 Feb. 8, 2000 Chaganti 6,845,448 B1 Jan. 18, 2005 Carone 6,968,348 B1 Nov. 22, 2005 Steele 7,016,877 B1 Mar. 21, 2006 Nelson 7,076,462 B1 Jul. 11, 2006 Nathans 2002/0026411 Al Feb. 28, 2002 Brady 2002/0147677 A1 Oct. 10, 2002 Thornley 2003/0093289 A1 May 15, 2003 Crispyn 2004/0088253 A1 May 6, 2004 The Examiner made the following rejections: Claims 1-3, 5-9,11, 15-19, 22, 32-34, and 36 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, and Thornley. Claim 4 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Crispyn. Claims 10 and 20 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Weatherly. Claim 21 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Carone. Claim 23 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Brady. Claim 25 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Nelson. Appeal 2011-005313 Application No. 10/392,849 4 ISSUES3 Does the combination of Nathans, Steele or Chaganti, and Thornley teach or suggest a payment processor, which is different from a creditor, and has a contractual relationship with a credit reporting agency which is not the same as the consumer, as generally recited by independent claim 1, such that it renders obvious the subject matter of claims 1-3, 5-9, 11, 15-19, 22, 32-34, and 36 under 35 U.S.C. § 103(a)? Does the combination of Nathans, Steele or Chaganti, Thornley, and Brady teach or suggest “wherein the payment processor is a bank, credit union, or other financial services provider used by the consumer,” as recited by dependent claim 23 under 35 U.S.C. § 103(a)? FINDINGS OF FACT 1. Appellants’ Specification describes that a “payment processor” may be a financial institution or a credit provider itself. (P. 9, ll. 4-10.) 2. Nathans is directed to a system for collecting and distributing credit information based on residential housing credit (i.e., rent) payment history information in order to allow a consumer to build a positive credit history. (¶¶ [0012]; [0013].) 3. Nathans’ system allows a consumer (leasee) to make regularly scheduled payments to a financial institution and designate the payment to 3 We have considered in this decision only those arguments that Appellants actually raised in the Brief. Arguments which Appellants could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-005313 Application No. 10/392,849 5 either a creditor’s account, or for an escrow account in the event the creditor (i.e., lessor, landlord) is in breach of contract. (Abs.; ¶ [0013].) 4. Nathans describes that a landlord or residential housing creditor creates an account at a financial institution such as a bank. (¶ [0013].) 5. Nathans describes that a consumer makes payments to the financial institution and designates the proper account for the payment to be applied. The financial institution applies non-escrowed payments to the creditor’s account and reports all payments (whether escrowed or not) to a centralized housing credit data repository. (¶¶ [0013]; [0022]; [0101]; [0112].) 6. Figure 1 of Nathans is depicted below: (Figure 1 separately depicts credit history repository 120, consumer 150, financial institution 140, and creditor 130.) (¶ [0022].) Appeal 2011-005313 Application No. 10/392,849 6 7. Nathans describes that all credit data in the residential housing credit data repository are maintained securely and will not be released without the consent of the consumer, in order to prevent the credit information from being sold without their express consent. (¶ [0014].) 8. Thornley is directed to a rent payment history system which collects data associated with rent payments for a plurality of renters, leases, and lease events and stores these data in a central repository. (Abs.) 9. Thornley describes that property managers receive payments from tenants and input this payment information into a central repository. (¶ [0031].) 10. Thornley describes that its central repository is secured using password protection in order to prevent unauthorized additions being made to the central repository after the conclusion of a lease (i.e., landlord-tenant relationship). (¶ [0038].) ANALYSIS Claims 1-3, 5-9,11, 15-19, 22, 32-34, and 36 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, and Thornley. Independent claims 1, 18, and 32 Appellants argue that the combination of Nathans, Steele or Chaganti, and Thornley fails to teach or suggest “the payment processor being directed to report the payment information by the consumer and having a contractual relationship with the credit reporting agency,” as generally recited by independent claim 1. (Br. 12.) Specifically, Appellants assert that the Appeal 2011-005313 Application No. 10/392,849 7 contractual relationship disclosed in Thornley is between the landlord and the consumer, and as such, fails to satisfy the contractual relationship required by claim 1. (Br. 12-13.) Independent claims 18 and 32 include similar limitations. (Br. 13.) We are not persuaded by Appellants’ argument and agree with the Examiner that the combination of Nathans, Steele or Chaganti, and Thornley teaches or suggests the method of processing credit information recited by independent claim 1 and similar independent claims 18 and 32. (Ans. 4-6.) Specifically, we find that Nathans’ system allows a consumer to make regularly scheduled payments to a financial institution which deposits these payments into a creditor’s account. (FF 3, 4.) Nathans describes that the financial institution applies the consumer’s payment to the creditor’s account and reports the payment to a centralized housing credit data repository. (FF 5.) Thus, Nathans teaches a payment processor which reports consumer payment information to a credit reporting agency. (FF 5; See also FF 6, items 120 and 122, 130, 140, and 150.) While Nathans does not explicitly disclose a contractual relationship between its payment processor and credit reporting agency, one of ordinary skill in the art would have understood a contractual relationship to exist between the payment processor (i.e., financial institution) and credit reporting agency since Nathans discusses a need to safeguard the data collected from the payment processor. (FF 7.) In particular, Nathans describes that credit data in the residential housing credit data repository are maintained securely and not be released without the consent of the consumer in order to prevent the credit information from being sold without their Appeal 2011-005313 Application No. 10/392,849 8 express consent. (FF 7.) Consequently, one of ordinary skill in the art would appreciate that a contractual relationship would exist between the payment processor and credit reporting agency in order for the payment processor to release its sensitive credit information to a reporting agency. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Even so, to address this contractual relationship, the Examiner relies on the rent payment history system of Thornley. (Ans. 4-6.) Thornley is directed to a rent payment history system which collects data associated with rent payments for a plurality of renters, leases, and lease events and stores these data in a central repository. (FF 8.) In Thornley, property managers receive payments and input these payments into a central repository. (FF 9.) Additionally, Thornley describes that its central repository is secured by password protection in order to prevent unauthorized additions to the central repository after the conclusion of a lease. (FF 10.) While we acknowledge that Thornley fails to teach the feature of claim 1 wherein the payment processor is different from the creditor, since it is the property managers in Thornley acting as the payment processor, the Examiner only relies on Thornley to the extent it teaches a contractual relationship with a credit reporting agency. (Ans. 5.) As discussed supra, the Examiner relies on the financial institution of Nathans as corresponding to the recited payment processor different from a creditor, and as such, we find that the combination of Nathans, Steele or Chaganti, and Thornley teaches or suggests “the payment processor being directed to report the payment information by the consumer and having a contractual relationship Appeal 2011-005313 Application No. 10/392,849 9 with the credit reporting agency,” as generally recited by independent claim 1. 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). Accordingly, we sustain the Examiner’s rejection of claim 1 as unpatentable over Nathans, Steele or Chaganti, and Thornley under 35 U.S.C. § 103(a). For these same reasons, we sustain the Examiner’s rejection of independent claims 18 and 32. Dependent claims 2, 3, 5-9, 15-17, 19, 22, 33, 34, and 36 Appellants do not substantively argue claims 2, 3, 5-9, 15-17, 19, 22, 33, 34, and 36, which depend from independent claims 1, 18, and 32, respectively, and so we sustain the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over Nathans, Steele or Chaganti, and Thornley for the same reasons we found as to independent claims 1, 18, and 32 supra. Claims 10 and 20 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Weatherly. Appellants do not substantively argue claims 10 and 20, which depend from independent claims 1 and 18, respectively, and so we sustain the rejection of claims 10 and 20 under 35 U.S.C. § 103(a) as unpatentable over Nathans, Steele or Chaganti, Thornley, and Weatherly for the same reasons we found as to independent claims 1, 18, and 32 supra. Appeal 2011-005313 Application No. 10/392,849 10 Claim 21 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Carone. Appellants do not substantively argue claim 21 which depends from independent claim 18, and so we sustain the rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over Nathans, Steele or Chaganti, Thornley, and Carone for the same reasons we found as to independent claims 1, 18, and 32 supra. Claim 23 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Brady. Appellants argue that the combination of Nathans, Steele or Chaganti, Thornley, and Brady fails to teach or suggest “wherein the payment processor is a bank, credit union, or other financial services provider used by the consumer.” (Br. 13.) Specifically, Appellants assert that the combination fails to teach or suggest that the payment processor of claim 23 “is different from the creditor and that is used by the consumer to pay the creditor” [sic]. (Br. 13.) We are not persuaded by Appellants arguments as they attack the references separately, even though the rejection is based on the combined teachings of the references. 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 at 1097. Contrary to Appellants’ assertion, the Examiner does not rely on Thornley to address the payment processor of independent claims 1, 18, and Appeal 2011-005313 Application No. 10/392,849 11 32, but instead relies on the asserted combination. (See Ans. 6.) To address the payment processor of independent claims 1, 18, and 32, the Examiner relies on the financial institution of Nathans (Ans. 4), which Nathans describes as a bank used by the consumer to pay the creditor. (FF 4; See also FF 1.) Thus, the combination of Nathans, Steele or Chaganti, Thornley, and Brady teaches or suggests “wherein the payment processor is a bank, credit union, or other financial services provider used by the consumer.” Accordingly, we sustain the Examiner’s rejection of claim 23 as unpatentable over Nathans, Steele or Chaganti, Thornley, and Brady under 35 U.S.C. § 103(a). In sustaining a multiple reference rejection under 35 U.S.C. § 103(a), the Board may rely on one reference alone without designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2, (CCPA 1966). Claim 25 rejected under 35 U.S.C. § 103(a) as being unpatentable over Nathans, Steele or Chaganti, Thornley, and Nelson. Appellants do not substantively argue claim 25 which depends from independent claim 18, and so we sustain the rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable over Nathans, Steele or Chaganti, Thornley, and Nelson for the same reasons we found as to independent claims 1, 18, and 32 supra. Appeal 2011-005313 Application No. 10/392,849 12 CONCLUSIONS We conclude that the combination of Nathans, Steele or Chaganti, and Thornley teaches or suggests a payment processor, which is different from a creditor, and has a contractual relationship with a credit reporting agency which is not the same as the consumer, as generally recited by independent claim 1, and as such, renders obvious the subject matter of claims 1-3, 5-9, 11, 15-19, 22, 32-34, and 36 under 35 U.S.C. § 103(a). We conclude that the combination of Nathans, Steele or Chaganti, Thornley, and Brady teaches or suggests “wherein the payment processor is a bank, credit union, or other financial services provider used by the consumer,” as recited by dependent claim 23 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejection of claims 1-11, 15-23, 25, 32-34, and 36. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1). AFFIRMED ack