The Toronto-Dominion Bank

Patent Trials and Appeals BoardApr 16, 2021

2020000197 (P.T.A.B. Apr. 16, 2021)

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. 14/246,932 04/07/2014 Mary Hockridge G4144-00227 7155 39290 7590 04/16/2021 Duane Morris LLP - Washington, D.C. 505 9th Street N.W. Suite 1000 Washington, DC 20004 EXAMINER WARDEN, MICHAEL J ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 04/16/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DC_IPDocketing@duanemorris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARY HOCKRIDGE, DINO D'AGOSTINO, and LAUREN VAN HEERDEN Appeal 2020-000197 Application 14/246,932 Technology Center 3600 Before THU A. DANG, LARRY J. HUME, and JOHN D. HAMANN, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1, 5–7, and 11–13, which are all claims pending in the application. Appellant has canceled claims 2–4, 8–10, 14, and 15. See Appeal Br. 38 et seq. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as The Toronto- Dominion Bank. Appeal Br. 3. Appeal 2020-000197 Application 14/246,932 2 STATEMENT OF THE CASE2 The claims are directed to inter-currency cheque payment clearing. See Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed invention “relate[] to a computer-based method and network for clearing cheque payments.” Spec. ¶ 1. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on Appeal (emphases, labeling, and formatting added to contested prior-art limitations): 1. A method of cheque payment clearing, the method comprising: a payment terminal generating an electronic representation of a paper cheque, and providing a payee financial institution server with the electronic cheque representation, the electronic cheque representation identifying at least a payment amount, a payor financial institution and a payor account with the payor financial institution, the payment amount being payable from the payor account in a first financial currency, the payee financial institution server being associated with a payee financial institution; the payment terminal displaying thereon an indication of an applicable service charge and an equivalent amount comprising the payment amount converted to a second financial currency, receiving confirmation of acceptance of the service charge and the equivalent amount, and providing the payee financial institution server with the confirmation of acceptance, 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed June 26, 2019); Reply Brief (“Reply Br.,” filed Oct. 7, 2019); Examiner’s Answer (“Ans.,” mailed Aug. 7, 2019); Final Office Action (“Final Act.,” mailed Mar. 26, 2019); and the original Specification (“Spec.,” filed Apr. 7, 2014) (claiming benefit of US 61/808,900, filed Apr. 5, 2013). Appeal 2020-000197 Application 14/246,932 3 the second financial currency being different from the first financial currency; the payee financial institution server receiving the electronic cheque representation and the confirmation of acceptance and, in response to receiving the electronic cheque representation and the confirmation of acceptance, [L1] the payee financial institution server electronically transmitting to a payor financial institution server via a cheque clearing network a transaction origination message including the payor account with the payor financial institution, the payment amount, and the equivalent amount, the transaction origination message requesting payment in the equivalent amount, the payor financial institution server being associated with the payor financial institution; [L2] the payee financial institution server electronically receiving from the payor financial institution server via the cheque clearing network, in response to the transaction origination message, a transaction response message confirming the payor financial institution server posting to the payor account a debit entry in the payment amount, [L3] in response to receiving the transaction response message, the payee financial institution server posting to a payee account of the payee financial institution a credit entry in the equivalent amount, the equivalent amount being payable from the payee account in the second financial currency; and the payment terminal receiving from the payee financial institution server a confirmation of the posting of the credit entry to the payee account. Appeal Br. 38 (Claims App.). Appeal 2020-000197 Application 14/246,932 4 REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Fredrickson et al. (“Fredrickson”) US 2004/0143621 A1 July 22, 2004 Travis et al. (“Travis”) US 2009/0063316 A1 Mar. 5, 2009 Lin et al. (“Lin”) US 2010/0078471 A1 Apr. 1, 2010 Gilder et al. (“Gilder”) US 7,702,588 B2 Apr. 20, 2010 REJECTIONS R1. Claims 1, 7, and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Fredrickson, Travis, and Lin. Final Act. 4. R2. Claims 5, 6, 11, and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Fredrickson, Travis, Lin, and Gilder. Final Act. 9. CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 8–37) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection R1 of claims 1, 7, and 13 on the basis of representative claim 1. Remaining claims 5, 6, 11, and 12 in Rejection R2, not argued separately or with specificity, stand or fall with the respective independent claim from which they depend.3 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together Appeal 2020-000197 Application 14/246,932 5 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We disagree with Appellant’s arguments with respect to claims 1, 5–7, and 11–13 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. 1. § 103 Rejection R1 of Claims 1, 7, and 13 Issue 1 Appellant argues (Appeal Br. 8–36; Reply Br. 2–15) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Fredrickson, Travis, and Lin is in error. These contentions present us with the following issues: (a) Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] method of cheque payment clearing” that includes, shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2020-000197 Application 14/246,932 6 inter alia, the limitations of [L1] “the payee financial institution server electronically transmitting to a payor financial institution server via a cheque clearing network a transaction origination message including the payor account with the payor financial institution, the payment amount, and the equivalent amount, the transaction origination message requesting payment in the equivalent amount;” [L2] “the payee financial institution server electronically receiving from the payor financial institution server . . . a transaction response message confirming the payor financial institution server posting to the payor account a debit entry in the payment amount;” and [L3] “in response to receiving the transaction response message, the payee financial institution server posting to a payee account of the payee financial institution a credit entry in the equivalent amount, the equivalent amount being payable from the payee account in the second financial currency,” as recited in claim 1? (b) Did the Examiner err by providing improper motivation to combine the references in the manner suggested? Principles of Law “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Id. at 425. Appeal 2020-000197 Application 14/246,932 7 In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill . . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Analysis (a) All Limitations are Taught or Suggested [L1] “the payee financial institution server . . . transmitting to a payor financial institution server . . . a transaction origination message . . . requesting payment in the equivalent amount” Limitation [L1] recites: the payee financial institution server electronically transmitting to a payor financial institution server via a cheque clearing network a transaction origination message including Appeal 2020-000197 Application 14/246,932 8 the payor account with the payor financial institution, the payment amount, and the equivalent amount, the transaction origination message requesting payment in the equivalent amount, the payor financial institution server being associated with the payor financial institution. . . . Claims App. Appellant generally contends “the Final Office Action does not identify the features discussed in the identified paragraphs or explain how those features correspond to the aforementioned claim element. . . . [and because] the limited ‘analysis’ provided in the Final Office Action is not explicit, Appellant submits that the Final Office Action does not provide the required articulated reasoning sufficient to sustain the obviousness rejection of the pending claims.” Appeal Br. 12. Appellant then proffers their analysis of various embodiments in the Fredrickson reference. See Appeal Br. 12–21. In particular, Appellant alleges that the sample international cash letter illustrated in Figure 27A of Fredrickson, requesting payment of the total payment amount for checks drawn on accounts of a foreign financial institution, does not identify the equivalent amount in U.S. dollars, and does not request that payment be made in the equivalent U.S. dollar amount. Appeal Br. 13. “Further, the evidence of record unequivocally demonstrates that a cash letter does NOT identify the payment amount of each check, or an equivalent amount of the payment amount converted to the financial currency of the depositing financial institution.” Appeal Br. 17. “This evidence remains uncontroverted. Since Frederickson does not provide a definition of a cash letter, persons of ordinary skill in the art would understand that the cash letter of Frederickson was a conventional cash letter, as described above and depicted in Fig. 27A.” Appeal Br. 18. Appeal 2020-000197 Application 14/246,932 9 In response, the Examiner concludes, “[u]nder the broadest reasonable interpretation of this limitation any electronic communication (containing the specified information) to a payor financial institution that requests payment would read on [disclose] the transaction origination message.” Ans. 6.4 The Examiner finds that Fredrickson teaches or suggests an interface in Figures 14 and 15 in which the determination of an equivalent amount is allowed. Id. (citing Frederickson Fig. 15, item 2020). Paragraph 152 of Fredrickson, cited by the Examiner as teaching or suggesting contested limitation L1 (Final Act. 6), discloses: FIG. 15 shows the item processing screen shown in FIG.14, but with the Item tab 1655 selected to reveal the data entry fields available there. The amount of the check being processed appears in the check amount field 2005. The country of the check, in this case Great Britain (GB) is displayed in country field 2008, while the currency appears in currency field 2010, in this case British Pounds (GBP). The conversion rate appears in the rate field 2015 and the equivalent amount in U.S. dollars appears in the equivalent field 2020. 4 In numerous instances, the Examiner has it backwards, regarding the statement that this limitation, i.e., “any electronic communication (containing the specified information) to a payor financial institution that requests payment would read on the transaction origination message.” Ans. 6 (emphasis added). We direct the Examiner’s attention to the proper approach to mapping a claim limitation to the corresponding feature(s) found in the cited reference: Cited prior art references do not “read on” claim limitations, rather, a particular claim limitation “reads on” the corresponding feature(s) found in the cited prior art references after the claim language is properly construed in accordance with the broadest reasonable interpretation consistent with the Specification. See, e.g., Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999). Appeal 2020-000197 Application 14/246,932 10 Fredrickson ¶ 152 (emphasis added). Figure 15b of Fredrickson is replicated below: “FIGS. 14, 15 and 16 are diagrams depicting item processing screens for Cash Letters.” Fredrickson ¶ 21. The Examiner explains: Appellant reproduces a sample foreign cash letter from an outside source as evidence that Fredrickson does not teach the claim limitation. Appellant’s arguments are acknowledged but are not deemed persuasive. As noted above, the interface, collecting all of the claimed information (the payor account with the payor financial institution, the payment amount, and Appeal 2020-000197 Application 14/246,932 11 the equivalent amount) saves the information as a “collection item” which can be attached to the collection letter and sent out. This combination of the collection letter and attached collection item reads on the transaction message. This means that Appellant’s sample collection letter itself merely does not contain the necessary information; whereas Fredrickson’s collection letter and attached collection item does teach an origination message with the required information. Ans. 7 (emphasis added). Therefore, we are not persuaded by Appellant’s arguments, and we agree with the Examiner’s finding that Fredrickson teaches or suggests limitation L1, as recited in claim 1. [L2] “the payee financial institution server . . . receiving from the payor financial institution server . . . a transaction response message confirming . . . posting to the payor account a debit entry in the payment amount” Limitation L2 recites: the payee financial institution server electronically receiving from the payor financial institution server via the cheque clearing network, in response to the transaction origination message, a transaction response message confirming the payor financial institution server posting to the payor account a debit entry in the payment amount. . . . Claims App. Appellant contends the Examiner’s reliance upon Lin for teaching or suggesting a transaction confirmation message indicating that a check has been processed is in error because “the transaction response message recited in claim 1 does not confirm that a check has been ‘processed,’ but instead confirms that the payer financial institution has withdrawn funds from the payer account.” Appeal Br. 21. “[T]he text of Appellant’s claim 1 shows that the check would not be considered ‘processed’ simply when the payee Appeal 2020-000197 Application 14/246,932 12 financial institution server receives the transaction response message, but instead would only be considered ‘processed’ AFTER the payee financial institution server receives the transaction response message AND, in response to that message, deposits the equivalent amount into the payee’s account.” Appeal Br. 22. In response, the Examiner emphasizes: While Lin teaches the confirmation of a different underlying transaction, it is the ability to confirm that a transaction occurred which is being incorporated into Frederickson. Whatever the underlying transaction is (e.g., deposit, withdrawal, balance transfer, debiting an account in one currency, crediting an equivalent amount, in a second currency, into a second account) Lin teaches the ability to send a confirmation message that transaction was completed. The content of the underlying transaction does not affect the ability to confirm that the transaction occurred. Ans. 8–9 (emphasis added). We are reminded that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Keller, 642 F.2d 413 at 425. Thus, we agree with the Examiner’s finding that Lin, in combination with Fredrickson, teaches or at least suggests limitation L2, as recited in claim 1. Appeal 2020-000197 Application 14/246,932 13 [L3] “in response to receiving the transaction response message . . . posting . . . a credit entry in the equivalent amount . . . payable from the payee account in the second financial currency” Limitation L3 recites: in response to receiving the transaction response message, the payee financial institution server posting to a payee account of the payee financial institution a credit entry in the equivalent amount, the equivalent amount being payable from the payee account in the second financial currency. . . . Claims App. Appellant contends “the Final Office Action does not identify the features discussed in the identified paragraphs or explain how those features correspond to the aforementioned claim element.” Appeal Br. 25. “In view of the limited and contradictory ‘analysis’ provided in the Final Office Action, Appellant submits that the Final Office Action does not provide the required articulated reasoning sufficient to sustain the obviousness rejection of the pending claims.” Appeal Br. 26. In response, the Examiner explains that the combination of Fredrickson and Travis teaches this limitation. Ans. 10. Appellant has ignored the EQUIVALENT AMOUNT analysis section (see Final Office Action filed 3/26/2019, pg. 7) which discloses what Fredrickson does and does not teach. The cited portions of Fredrickson teaches posting to a payee account of the payee financial institution a credit entry in an amount, the amount being payable from the payee account in the second financial currency. The amount of Fredrickson is the equivalent amount minus a processing fee. While Fredrickson's amount is close to the claimed equivalent amount; the charging of a fee means that Fredrickson differs from the claimed limitation. The secondary reference Travis is used to show that in foreign currency transactions, the transaction can occur without charging a transaction fee to convert from one currency to a Appeal 2020-000197 Application 14/246,932 14 second currency. The combination of Fredrickson (equivalent amount minus a transaction fee) with Travis (not charging a transaction fee) would result in the posting of the equivalent amount (with no fee charged). Ans. 10 (italics added for emphases). We agree that Travis teaches or suggests that the transaction can occur without charging a transaction fee, and thus we agree with the Examiner’s finding that Travis, in combination with Fredrickson, teaches or at least suggests limitation L3, as recited in claim 1. (b) The Examiner’s Motivation to Combine was Proper Appellant argues the Examiner’s “statements of motivation are divorced from what the combination of teachings would have suggested to the person of ordinary skill in the art, and are irrelevant to the subject matter actually claimed.” Appeal Br. 29. “Since the statements of motivation provided in the Final Office Action are irrelevant to the subject matter of claim 1 and are divorced from what the combined teachings of the references would have suggested to the person of ordinary skill in the art, the Final Office Action fails to articulate a rational basis sufficient to substantiate the obviousness rejection of claim 1.” Appeal Br. 31. We disagree with Appellant’s arguments because, as articulated by the Examiner with respect to the combination of Fredrickson and Travis: It would have been obvious to one of ordinary skill in the art at the time of filing to modify the payment processing of the Fredrickson to include not charging processing fees as taught by Travis (which would result in the posted amount being the equivalent amount), since the claimed invention is merely a combination of old elements and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have Appeal 2020-000197 Application 14/246,932 15 recognized that the results of the combination were predictable. Additional financial motivation includes not charging processing fees allows a user to save money/not spend money on processing payments. Final Act. 7 (emphasis added). Further, with respect to the combination of Fredrickson and Travis with Lin, the Examiner finds, and we agree: It would have been obvious to one of ordinary skill in the art at the time of filing to modify the payment processing of the combined references to include confirmation message that a check has been processed as taught by Lin, since the claimed invention is merely a combination of old elements and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Additional financial motivation includes providing a confirmation message will alert a payee when funds have been deposited in their account. . . . [and] It would have been obvious to one of ordinary skill in the art at the time of filing to modify the payment processing of the combined references to include a user device displaying a confirmation message that a payment has been processed and posted as taught by Lin, since the claimed invention is merely a combination of old elements and in the combination each element would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Additional financial motivation includes providing a confirmation message will alert a payee when funds have been deposited in their account. Final Act. 8 (emphasis added). We agree with the Examiner’s response (Ans. 11–14) and determine the Examiner’s findings and legal conclusions comport with the holding in KSR, i.e., “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable Appeal 2020-000197 Application 14/246,932 16 results.” KSR, 550 U.S. at 416. We note Appellant fails to address the Examiner’s determination of “familiar elements” combined to produce “predictable results” by the Examiner, but instead focuses on particular teachings of the reference that are different than the claimed invention, instead of broader teachings relied upon by the Examiner in setting forth the combination. See, e.g., Appeal Br. 29–36. Based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1, and grouped claims 7 and 13 which fall therewith. See Claim Grouping, supra. 2. § 103 Rejection R2 of Claims 5, 6, 11, and 12 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claims 5, 6, 11, and 12 under § 103 (see Appeal Br. 37), we sustain the Examiner’s rejection of these claims. Arguments not made are waived.5 REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 1–15) not in response to a shift in the Examiner’s position 5 Appellant merely argues, “[f]urther, as claims 5, 6, 11, and 12 depend from one of independent claims 1 and 7, these dependent claims distinguish over the cited references, whether taken alone or in combination, for at least those reasons set forth above for independent claims 1 and 7. Accordingly, Appellant respectfully requests the Board reverse the outstanding rejection of these pending dependent claims.” Appeal Br. 37. Appeal 2020-000197 Application 14/246,932 17 in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellant has not shown. CONCLUSION Appellant has not persuasively argued that the Examiner erred with respect to obviousness Rejections R1 and R2 of claims 1, 5–7, and 11–13 under 35 U.S.C. § 103 over the cited prior art combinations of record, and we sustain the rejections. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 13 103 Fredrickson, Travis, Lin 1, 7, 13 5, 6, 11, 12 103 Fredrickson, Travis, Lin, Gilder 5, 6, 11, 12 Overall Outcome 1, 5–7, 11–13 FINALITY AND RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED