Ex Parte Agee et al

Board of Patent Appeals and Interferences

Feb 27, 2012

10136902 (B.P.A.I. Feb. 27, 2012)

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.
10/136,902 04/30/2002 Richard Agee 15214-A 2330
23676 7590 02/27/2012
SHELDON MAK & ANDERSON PC
100 Corson Street
Third Floor
PASADENA, CA 91103-3842
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
02/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD AGEE, CAROLYN M. PONDER,
ARTHUR D. STARBUCK, and CLARK L. BALLANTYNE
____________

Appeal 2011-001427
Application 10/136,902
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001427
Application 10/136,902

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 46 to 48 and 75 to 77 and 87. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 46 is illustrative:
46. A tax collection and distribution method for a service
provider comprising:
receiving a first set of signals at the service provider, said
first set including a signal from each of one or more merchant
computers, each signal of said first set of signals including
transaction information including a transaction amount;
transmitting a second set of signals from the service
provider responsive to the first set of signals, said second set
including a signal sent to each of one or more credit entity
computers, each signal of said second set of signals including a
first fund transfer request, said first fund transfer request being
representative of the transaction amount; and
transmitting a third set of signals from the service
provider responsive to the first set of signals, said third set
including a signal sent to a computer of an acquirer bank, said
third set of signals including a second fund transfer request,
said second fund transfer request being representative of a tax
amount for at least one taxing authority.

Appellants appeal the following rejections:
1. Claims 46 to 75, 76, and 87 under 35 U.S.C. § 102(e) as anticipated by
Gryglewicz (US 6,993,502 B1, iss. Jan. 31, 2006).
2. Claim 77 under 35 U.S.C. § 103(a) as unpatentable over Gryglewicz in
view of Bernard (US 5,918,213, iss. Jun. 29, 1999).

Appeal 2011-001427
Application 10/136,902

3
ISSUE
Did the Examiner err in rejecting the claims because Gryglewicz does
not disclose transmitting a third set of signals from the service provider
responsive to the first set of signals to a computer of an acquirer bank?

ANALYSIS
Anticipation
The Appellants’ Specification discloses an acquirer bank 21 through
which the merchant acquires credit transaction capability (para. [0038]; Fig.
1A).
The Examiner finds that Gryglewicz’s system includes a main tax
gateway 40 that is involved with communication or signals to the tax
authority’s designated nodes and that a credit in the amount of the collected
tax is communicated to the tax authority. The Examiner reasons that each
tax authority is associated with a particular bank that is authorized to receive
an ACH credit for taxes collected and that therefore, Gryglewicz discloses
sending the recited signals to the acquirer bank (Ans. 6). We understand this
argument of the Examiner to be a finding that the bank associated with the
tax authority is the acquirer bank.
We agree with the Appellants, and find that the bank associated with
the tax authority is not an acquirer bank performing credit settlement in
accordance with the Appellants’ disclosure. (Spec. 9). The bank of the tax
authority is not a bank through which the merchant acquires credit
transaction capability and so performs credit settlement.

Appeal 2011-001427
Application 10/136,902

4
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 46 and claims 47, 48, and 75 to 76 dependent thereon. We will also
not sustain this rejection as it is directed to claim 87 because this claim
recites sending a second fund transfer request, representative of a tax amount
to an acquirer bank.

Obviousness
We will not sustain this rejection because claim 77 depends on claim
46 and thus includes the recitation of transmitting a second set of signals to
an acquirer bank. The Examiner relies on Gryglewicz for disclosing this
subject matter. As we found above, Gryglewicz does not disclose this
subject matter.

DECISION
We reverse the Examiner’s § 102(e) and § 103(a) rejections.

REVERSED

hh