Ex Parte Wisecarver et al

Patent Trial and Appeal Board

May 2, 2013

09970600 (P.T.A.B. May. 2, 2013)

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
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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).

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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.
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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.
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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.

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“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.
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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
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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
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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.
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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

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