Ex Parte Wisecarver et alDownload PDFPatent Trial and Appeal BoardMay 2, 201309970600 (P.T.A.B. May. 2, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM H. WISECARVER III and MARY F. NUGENT ___________ Appeal 2011-000941 Application 09/970,600 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MEREDITH C. PETRAVICK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000941 Application 09/970,600 2 STATEMENT OF THE CASE William H. Wisecarver III et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1 and 3-15. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM-IN-PART.1 THE INVENTION This invention relates “a payment alternative for on-line e-commerce transactions.” Spec. 2, ll. 1-3. Claim 1, reproduced below with bracketing matter added, is illustrative of the subject matter on appeal. 1. A computer implemented method for payment transactions between a consumer and a merchant account comprising the steps of: [A] verifying electronically and over a computer network, that the consumer has an established credit card account; [B] creating, over a computer network, an electronic lock box account, wherein the lock box account is associated with the consumer and comprises an electronic account into which data is stored relating to the consumer and no funds are stored, wherein the consumer credit card account is 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed August 18, 2009), Appellants’ Reply Brief (“Reply Br.,” filed November 30, 2009), and Appellants’ Second Reply Brief (“2nd Reply Br.,” filed July 19, 2010) and the Examiner’s Supplemental Answer (“Ans.,” mailed June 21, 2010). Appeal 2011-000941 Application 09/970,600 3 stored in the lock box account; [C] establishing, over a computer network, a purchasing limit and an account number, and storing, over a computer network, the purchasing limit and the account number within the lock box account; [D] executing, over a computer network, a purchase transaction between the consumer and a merchant account comprising: [E] entering the lock box account number; [F] routing the dollar amount of the purchase transaction and the entered lock box account number to the lockbox; [G] verifying that the dollar amount of the purchase transaction is within the established purchasing limit and that the entered account number matches the entered lock box account number; and [H] completing the purchase transaction if the amount of the purchase transaction is within the established purchasing limit stored in the lock box account; and [I] settling, over a computer network, the transaction with the consumer’s credit card account, wherein the settling step comprises: [J] requesting funds from the consumer’s established credit card account corresponding to the amount of the purchase transaction; and [K] routing funds corresponding to the amount of the purchase transaction directly from the consumer’s credit card account to the merchant account. Appeal 2011-000941 Application 09/970,600 4 THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Mullins US 6,352,205 B1 Mar. 5, 2002 Cohen US 2003/0097331 A1 May 22, 2003 Gustin US 2005/0035193 A1 Feb. 17, 2005 Hutchison US 2005/0192896 A1 Sep. 1, 2005 Cheong US 7,006,993 B1 Feb. 28, 2006 The Examiner made the following rejections:2 3 1. Claims 1 and 3-14 rejected under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 2. Claims 5-7 rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.4 3. Claims 1, 4-6, and 8-14 rejected under 35 U.S.C. § 103(a) as unpatentable over Cheong, Hutchinson, Cohen, and Mullins. 2 In the Supplemental Examiner’s Answer, the Examiner withdrew a rejection of claims 1, 3, and 8-12 under 35 U.S.C. § 101 as being directed to non-statutory subject matter (Ans. 3) and a rejection of claims 1, 3, and 6-12 under 35 U.S.C. § 112, second paragraph. Ans. 4. 3 The Examiner fails to set forth any rejection for pending dependent claim 15. We note that claim 15 was filed December 4, 2008, however, the Examiner failed to address claim 15 in a Final Rejection, mailed March 5, 2009. Appellants notified the Examiner of this omission in remarks filed July 2, 2009. 4 We note this is a new ground of rejection made in the Supplemental Examiner’s Answer in response to an Administrative Remand, mailed May 25, 2010, ordering the Examiner to determine if claims 5-7 meet the requirements of 35 U.S.C. § 112, second paragraph. Appeal 2011-000941 Application 09/970,600 5 4. Claims 3 and 7 rejected under 35 U.S.C. § 103(a) as unpatentable over Cheong, Hutchinson, Cohen, Mullins, and Gustin. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). ANALYSIS The rejection of claims 1 and 3-14 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement “merchant account” We are persuaded the Examiner erred in asserting that “merchant account” as recited in claims 1, 4, and 5, fails to comply with the written description requirement. App. Br. 9-10 and Reply Br. 2. Appellants identify page 3, lines 3-15 and page 4, line 8 of the Specification as providing written description support for the aforementioned aspect of claims 1, 4, and 5. We agree with the Appellants that these portions of the Specification provide support for a “merchant account.” That is, one of ordinary skill in the art would recognize the Appellants had possession of an invention including a merchant having a “merchant account” given the discussion of electronically transferring funds to a merchant in the Specification. Therefore, we reverse the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, with respect to the “merchant account” recited in independent claims 1, 4, and 5, and their respective dependent claims. Appeal 2011-000941 Application 09/970,600 6 “no funds are stored” and “lock box account does not store funds” We are persuaded the Examiner erred in asserting that the limitations “no funds are stored,” recited by independent claim 1, and “lock box account does not store funds,” recited by independent claims 4 and 5, fail to comply with the written description requirement. App. Br. 10-11 and Reply Br. 2-3. Appellants identify page 3, lines 3-11 and page 10, line 8-10 of the Specification as providing written description support for the aforementioned aspect of claims 1, 4, and 5. We agree with the Appellants that these portions of the Specification provide support for a lock box account that does not store funds. While we acknowledge the Examiner’s contention that the lock box account stores funds because Appellants’ Specification discloses that “[c]onsumers can credit or ‘fill’ their SVLB [Stored Value Lock Box]” (Ans. 15; citing Spec. 2, ll. 18-19), we find the Specification goes on to describe this “filling” as an electronic authorization, which one of ordinary skill in the art at the time of the invention would understand is not a transfer of funds. See Spec. 4, ll. 1- 6. Therefore, we reverse the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, with respect to the “no funds are stored” and “lock box account does not store funds” limitations of claims 1, 4, and 5. Accordingly, the rejections of claims 1 and 3-14 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement are reversed. The rejection of claims 5-7 under 35 U.S.C. § 112, second paragraph, as being indefinite We are not persuaded the Examiner erred in rejecting claims 5-7 under 35 U.S.C. § 112, second paragraph, for indefiniteness. 2nd Reply Br. Appeal 2011-000941 Application 09/970,600 7 2. Appellants assert that because “all of Appellants’ ‘means’ limitations are in the proper forma[t] as required by MPEP 706.03(d), the Appellants submit that this grounds of rejection is improper.” 2nd Reply Br. 2. However, Appellants’ response fails to address the Examiner’s concern that “the specification fails to clearly link or associate the disclosed structure, material, or acts to the function recited in a claim limitation invoking 35 U.S.C. 112, sixth paragraph.” See Ans. 5-8. Given that the Appellants and Examiner appear to be in agreement that the various “means for” recitations in claims 5-7 invoke 35 U.S.C. § 112, sixth paragraph, we find the issue of indefiniteness turns on whether Appellants’ Specification discloses adequate structure corresponding to those various means. See In Re Donaldson Co. Inc., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc). While Appellants’ arguments fail to identify any corresponding structure for the “means for” limitations of claims 5-7, Appellants’ Appeal Brief broadly identifies “a system computer 12 comprising software” as the corresponding structure in their Specification. App. Br. 7. However, when 35 U.S.C. § 112, sixth paragraph, is invoked, the corresponding structure cannot be “the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) (citing In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994) (en banc)). “Simply disclosing software, however, ‘without providing some detail about the means to accomplish the function[,] is not enough.’” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) (citation omitted). Where a means-plus-function limitation of a claim lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, that claim is Appeal 2011-000941 Application 09/970,600 8 unpatentable as indefinite under 35 U.S.C. § 112, second paragraph. In re Aoyama, 656 F.3d 1293, 1296-97 (Fed Cir. 2011) (citing Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337-38 (Fed. Cir. 2008). We have reviewed Appellants’ Specification and do not find any additional disclosure of the software or algorithms (i.e., structures) that perform the functions of the recited means-plus-function limitations. Accordingly, we affirm the Examiner’s rejection of claims 5-7 under 35 U.S.C. § 112, second paragraph. The rejection of claims 1, 4-6, and 8-14 under 35 U.S.C. § 103(a) as unpatentable over Cheong, Hutchinson, Cohen, and Mullins We are persuaded by Appellants’ argument (App. Br. 14-19 and Reply Br. 3-4) that the Examiner erred in rejecting claims 1, 4-6, and 8-14 under 35 U.S.C. § 103(a) as being obvious over Cheong, Hutchinson, Cohen, and Mullins. We agree with Appellants (App. Br. 17-18 and Reply Br. 3-4) that Cohen, relied on by the Examiner to teach “an electronic lock box account” fails to teach “an electronic lock box account,” as presently recited by limitation [B]. To teach this limitation, the Examiner cites to paragraphs [0041], [0104], [0118], and [0415]. Ans. 11. Specifically, the Examiner relies on the “electronic safety deposit boxes” disclosed in Cohen at paragraph [0118]. Ans. 11. However, Cohen discloses at paragraphs [0068] and [0118] that these “electronic safety deposit boxes” are for “record keeping and presentation purposes,” which we find relate to data storage, rather than an “an electronic lock box account,” as presently claimed. We find that the Examiner has Appeal 2011-000941 Application 09/970,600 9 failed to explain or provide any evidence that Cohen’s “electronic safety deposit boxes” are used to route data and/or funds to a merchant, as required by limitations [F], [G], and [H]. In fact, the Examiner’s Answer fails to respond to Appellants’ arguments related to the Cohen reference. Therefore, we find that the Examiner has failed to establish that Cohen teaches or suggests “an electronic lock box account,” as presently claimed. We note that the Examiner does not rely upon Cheong, Hutchinson, or Mullins to teach this limitation. Independent claims 4 and 5 recite similar limitations, and are rejected using the same rationale. See Ans. 13. Accordingly, the rejection of claims 1, 4, and 5, and claims 6 and 8-14, dependent thereon, under 35 U.S.C. § 103(a) over Cheong, Hutchinson, Cohen, and Mullins is reversed. The rejection of claims 3 and 7 under 35 U.S.C. § 103(a) as unpatentable over Cheong, Hutchinson, Cohen, Mullins, and Gustin This rejection is directed to claims dependent on claims 1 and 5, whose rejection we have reversed above. For the same reasons, we will not sustain the rejections of claims 3 and 7 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). DECISION The decision of the Examiner to reject claims 5-7 under 35 U.S.C. § 112, second paragraph, is affirmed. The decision of the Examiner to reject claims 1 and 3-14 under 35 U.S.C. §112, first paragraph, is reversed. Appeal 2011-000941 Application 09/970,600 10 The decision of the Examiner to reject claims 1 and 3-14 under 35 U.S.C. § 103(a) is reversed. 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). AFFIRMED-IN-PART mls Copy with citationCopy as parenthetical citation