Ex Parte Zellner et al

Patent Trial and Appeal BoardJul 23, 2013

10750695 (P.T.A.B. Jul. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/750,695 01/02/2004 Samuel N. Zellner 030391 (BLL0125US) 4104 36192 7590 07/23/2013 AT&T Legal Department - CC Attn: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER NGUYEN, NGA B ART UNIT PAPER NUMBER 3684 MAIL DATE DELIVERY MODE 07/23/2013 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 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte SAMUEL N. ZELLER and JOHN A. PUMPELLY 7 ___________ 8 9 Appeal 2011-007592 10 Application 10/750,695 11 Technology Center 3600 12 ___________ 13 14 15 Before ANTON W. FETTING, MEREDITH C. PETRAVICK and 16 THOMAS F. SMEGAL, Administrative Patent Judges. 17 SMEGAL, Administrative Patent Judge. 18 DECISION ON APPEAL 19 20 Appeal 2011-007592 Application 10/750,695 2 STATEMENT OF THE CASE1 1 SAMUEL N. ZELLER and JOHN A. PUMPELLY (Appellants) seek review 2 under 35 U.S.C. § 134 of a final rejection of claims 1-12 and 15-25, the only 3 claims pending in the application on appeal. We have jurisdiction over the 4 appeal pursuant to 35 U.S.C. § 6(b). 5 We AFFIRM. 6 THE INVENTION 7 The Appellants invented a method, system and storage medium for 8 providing control over financial transactions. (Specification 2:2-4). 9 An understanding of the invention can be derived from a reading of 10 exemplary claim 1. 11 1. A method for providing control over transactions, 12 comprising: 13 prompting a primary user, via a transaction control 14 system implemented on a computer, to input financial 15 notification data, the financial notification data operable for 16 defining transaction controls associated with financial 17 transactions initiated by a secondary user, the financial 18 notification data including a spending type comprising a time 19 limit imposed on usage of an item that is subject to the 20 transaction controls; 21 receiving and storing, via the transaction control system, 22 the financial notification 23 data; 24 1 Our decision will make reference to the Appellants’ Appeal Brief (hereinafter “App. Br.,” filed August 17, 2010) and Reply Brief (hereinafter “Reply Br.,” filed January 7, 2011), and the Examiner’s Answer (hereinafter “Ans.,” mailed November 10, 2010). Appeal 2011-007592 Application 10/750,695 3 receiving, via the transaction contro1 system, data 1 relating to a financial transaction from a point of sale, the data 2 associated with the secondary user; 3 retrieving, via the transaction contro1 system, financial 4 notification data related to the financial transaction; 5 sending a notification to the point of sale, via the 6 transaction control system, based upon the data relating to the 7 financial transaction; and 8 upon determining, via the transaction contro1 system, 9 that a transaction is not acceptable: 10 approving a request to execute the financial transaction, 11 via the transaction control system, without interaction from the 12 primary user and issuing a notification to the primary user when 13 the request to execute the financial transaction is approved; and 14 returning to the secondary user a notice of suspension of 15 the account privileges. 16 17 The Examiner relies upon the following prior art: 18 Ginter US 002/0112171 A1 Aug. 15, 2002 19 Tannenbaum US 7,254,548 B1 Aug. 7, 2007 20 21 REJECTION ON APPEAL 22 Claims 1-12 and 15-25 stand rejected under 35 U.S.C. § 103(a) as 23 unpatentable over Tannenbaum and Ginter. 24 25 FINDINGS OF FACT 26 We find that the findings of fact, which appear in the Analysis below, 27 are supported by at least a preponderance of the evidence. Ethicon, Inc. v. 28 Appeal 2011-007592 Application 10/750,695 4 Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 1 evidentiary standard for proceedings before the Office). 2 3 ANALYSIS 4 The rejection of claims 1-12 and 15-25 rejected under 35 U.S.C. § 103(a) as 5 unpatentable over Tannenbaum and Ginter. 6 Claims 1-6, 21 and 24 7 Appellants argue claims 1-6, 21 and 24 as a group (App. Br. 9). We 8 select claim 1 as a representative claim and the remaining dependent claims 9 stand or fall with claim 1. 37 C.F.R. §41.37 (c) (1) (vii) (2011). 10 “Section 103(a) forbids issuance of a patent when ‘the differences 11 between the subject matter sought to be patented and the prior art are such 12 that the subject matter as a whole would have been obvious at the time the 13 invention was made to a person having ordinary skill in the art to which said 14 subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 15 1734 (2007). The mere existence of differences between the prior art and 16 the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 17 219, 230 (1976). The question before us is whether sufficient difference 18 exists between the prior art and Appellants’ claims to render the claims 19 nonobvious. 20 We are not persuaded by Appellants’ arguments that the Examiner 21 failed to establish a prima facie showing of obviousness in rejecting claim 1 22 over the combination of Tannenbaum and Ginter. In particular, Appellants 23 Appeal 2011-007592 Application 10/750,695 5 contend that “[t]here is clearly no teaching in Tannenbaum that the 1 transaction, once deemed unacceptable, is approved followed by suspending 2 account privileges” (Reply Br. 2-3). Appellants misread the reference. 3 While the embodiment represented by Figure 4 of Tannenbaum illustrates a 4 transaction that is to be blocked (process steps 416 and 417), the reference 5 more broadly teaches at column 8, ll. 37-38 that “[p]rocess 412 controls as to 6 whether the transaction is to be inhibited in any manner” (emphasis added). 7 Thus, it would be obvious from the teaching of Tannenbaum to approve a 8 transaction that is not acceptable but inhibit the transaction by “returning to 9 the secondary user a notice of suspension of the account privileges”, as 10 recited by claim 1. 11 While Appellants also argue that “Tannenbaum fails to teach or 12 suggest the recited ‘suspension of the account privileges’” (App. Br. 8) and 13 that claim 1 distinguishes from Tannenbaum by reciting “then issues a 14 notice of suspension of account privileges” (Reply Br. 2), claim 1 is not so 15 limited. The last step of claim 1 reads as follows: 16 “returning to the secondary user a notice of suspension of the account 17 privileges.” 18 Thus, Appellants’ contention that Tannenbaum does not teach 19 “suspension of the account privileges” (App. Br. 8) and “then issues a notice 20 of suspension of account privileges” (Reply Br. 2), is not commensurate with 21 claim 1 which does not require suspension of the account privileges for the 22 user to issue a notice of suspension. 23 Appeal 2011-007592 Application 10/750,695 6 For the foregoing reasons, we sustain the Examiner’s rejection of 1 claims 1-6, 21 and 24 as being unpatentable over Tannenbaum and Ginter. 2 Claims 7-12 and 22 3 Appellants argue claims 7-12 and 22 as a group (App. Br. 11). We 4 select claim 7 as the representative claim for this group and the remaining 5 claims stand or fall with claim 7. 37 C.F.R. §41.37 (c) (1) (vii) (2011). We 6 are not persuaded by Appellants’ arguments (App. Br. 9-11) that the 7 Examiner failed to establish a prima facie showing of obviousness in 8 rejecting claims 7-12 and 22 over the combination of Tannenbaum and 9 Ginter. While Appellants acknowledge that “Ginter generally discloses a 10 cable television service provider” they argue that there is no motivation to 11 combine Ginter with Tannenbaum because the teachings of Ginter relate to 12 electronic content that travels “‘across the information highway’” while 13 “claim 7 is directed to transaction controls” (App. Br. 10). Thus, 14 Appellants’ appear to be contending that the control of transactions when 15 provided by ‘a cable television service provider’ as recited by claim 7, do 16 not travel ‘across the information highway’ described in Ginter. Appellants’ 17 contention is not commensurate with claim 7 which does not require for 18 there to be an exclusion of electronic content that travels across the 19 information highway. 20 We find from the combined teachings of Tannenbaum and Ginter that 21 the feature of claim 7 at issue, would have been obvious to one of ordinary 22 skill in the art. For the foregoing reasons, we sustain the Examiner’s 23 Appeal 2011-007592 Application 10/750,695 7 rejection of claims 7-12 and 22 as being unpatentable over Tannenbaum and 1 Ginter. 2 Claims 15-20, 23 and 25 3 Appellants argue claims 15-20, 23 and 25 as a group (App. Br. 12). We 4 select claim 15 as the representative claim for this group and the remaining 5 claims stand or fall with claim 15. 37 C.F.R. §41.37 (c) (1) (vii) (2011). 6 We are not persuaded by Appellants’ arguments that the Examiner failed 7 to establish a prima facie showing of obviousness in rejecting claims 15-20, 8 23 and 25 over the combination of Tannenbaum and Ginter. While 9 Appellants “submit that neither reference teaches, suggests or renders 10 obvious” the claim recitation “‘wherein control over transactions is provided 11 by a merchant’” (App. Br. 12), the Examiner finds that Ginter discloses at 12 [0060] control over transactions being provided by merchants such as 13 “content providers, electronic hardware manufacturers, financial service 14 providers, etc.” (Ans. 13). 15 The Examiner is not relying upon either Tannenbaum or Ginter alone to 16 teach all aspects of claim 15, but rather the Examiner finds that it would 17 have been obvious to modify Tannenbaum to incorporate the feature taught 18 by Ginter (Ans. 13). We agree with the Examiner that given the teachings of 19 Tannenbaum and Ginter combined, the feature of claim 15 at issue would 20 have been obvious to one of ordinary skill in the art at the time the invention 21 was made. (Ans. 13). 22 For the foregoing reasons, we sustain the Examiner’s rejection of 23 claims 15-20, 23 and 25 as being unpatentable over Tannenbaum and Ginter. 24 Appeal 2011-007592 Application 10/750,695 8 1 The rejection of claims 1-12 and 15-25 under 35 U.S.C. § 103(a) as 2 unpatentable over Tannenbaum and Ginter is proper. 3 4 DECISION 5 The decision of the Examiner to reject claims 1-6, 21 and 24 over 6 Tannenbaum and Ginter is affirmed. 7 The decision of the Examiner to reject claims 7-12 and 22 over 8 Tannenbaum and Ginter is affirmed. 9 The decision of the Examiner to reject claims 15-20, 23 and 25 over 10 Tannenbaum and Ginter is affirmed. 11 No time period for taking any subsequent action in connection with this 12 appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 13 § 1.136(a)(1)(iv) (2011). 14 15 AFFIRMED 16 17 18 rvb 19