Ex Parte Nathans et al

Patent Trials and Appeals BoardAug 28, 2014

11847853 - (R) (P.T.A.B. Aug. 28, 2014)

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. 11/847,853 08/30/2007 Michael G. Nathans 9520-005 US 2808 7590 12/19/2014 Franklin B. Levin, Esq. Senior Vice President & General Counsel Pay Rent, Build Credit, Inc. 100 Canal Pointe Blvd.,Suite 208 Princeton, NJ 08540 EXAMINER LIU, CHIA-YI ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 12/19/2014 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, MARCIA A. GOLDSTEIN-NATHANS, KEVIN E. GOLDSTEIN, and MATTHEW B. VITKO ____________________ Appeal 2012-009447 Application 11/847,853 Technology Center 3600 ____________________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Appellants filed a Request for Rehearing (“Req. Reh’g”) contending that the Board erred in the Decision on Appeal of August 28, 2014 (“Decision”), asking that decision be reheard (Req. Reh’g 1). In the Decision the Board affirmed the Examiner’s rejection of claims 1, 3–7, 12 and 14–18 under 35 U.S.C. § 103(a). Appeal 2012-009447 Application 11/847,853 2 Appellants argue that we misapprehended the teachings of Nathans because Nathans does not teach verifying payments made by a user prior to the request for verification. In essence, Appellants once again argue that the payments verified in Nathans are future payments. As we explained on page 5 of the Decision we find that Nathans discloses this subject matter at paragraph 12. In paragraph 12, Nathans teaches that the consumers and/or creditors arrange with a payment processor, such as a bank, to report payment data to the data repository. The bank reports or verifies payment information which includes the actual date of the payments. As the bank in Nathans verifies payment data which includes an actual date, it is clear that the payment was made in the past. In addition, claim 30 of Nathans recites that the reporting or verification of payments is done based on a request made by the consumer, thereby disclosing that payments are made prior to the request for verification. In addition, as also explained on page 5 of the Decision, RentReporters clearly discloses a request from a consumer to verify past payments by disclosing that prospective landlords can quickly and effectively evaluate rent payment history. Appellants argue that the disclosure in RentReporters of “current landlords will now know that you are a responsible person who plans on paying rent and being a good tenant” indicates that the request for verification takes place before the payments RentReporters 1). RentReporters in fact teaches that the payment history is used to evaluate prospective tenants, thereby disclosing that request for verification of payment is made after rent payments are paid or not paid. Therefore, we decline to alter this portion of our original opinion. Appeal 2012-009447 Application 11/847,853 3 Appellants argue that the timing of the payments does functionally alter the method of the claimed application because if the request were made in Nathans for past payments the user would know the name of the verifier and thus Nathans would not disclose “wherein a name of the verifier is not disclosed to the user.” In the Decision, we stated that whether the payment data relates to past payments or future payments does not functionally alter the repository of claim 1 or the receiving step of claim 12. This is true whether the user knows the name of the verifier or not. This is true also for claim 22 because the receiving step therein recited is the same whether the payment data relates to future payments or past payments. Therefore, we decline to alter this portion of our original opinion. Appellants argue for the first time in this rehearing that Nathans does not discloses “wherein a name of the verifier is not disclosed to the user when the user makes the request for verification” as recited in claim 1 and as similarly recited in claim 12. We will not consider this argument because it is a new argument which was raised for the first time in Appellant’s request for rehearing. 37 C.F.R. § 41.52(a)(1); Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998); In re Kroekel, 803 F.2d 705, 708–09 (Fed. Cir. 1986); Ex parte Hindersinn, 177 USPQ 78, 80 (Bd. App. 1971). We note additionally that the Examiner did not rely on Nathans for teaching this subject matter but rather relied on Official Notice (Ans. 8). As such, this argument does not address the actual rejection made by the Examiner. Appellants direct our attention to the phrase “even if neither Nathans nor RentReporter disclosed verifying past payments” on page 5 of the Appeal 2012-009447 Application 11/847,853 4 Decision and argue that this is a new ground of rejection. In consideration of this argument, we modify our opinion to delete the phrase “even if neither Nathans nor RentReporters disclosed verifying past payments.” Although we modify the Decision in this respect, we make no other modifications to the Decision. We have considered the Decision in light of the Request for Rehearing, and have modified the same to delete the phrase “even if neither Nathans nor RentReporter disclosed verifying past payments.” However, we decline to substantively modify our affirmance of the Examiner’s rejections in our Decision. GRANTED-IN-PART mls