Ex Parte RE40220 et al

Patent Trial and Appeal Board

Jul 26, 2013

95000545 (P.T.A.B. Jul. 26, 2013)

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.
95/000,545 05/11/2010 RE40220 2986.001REX0 7676
26111 7590 07/29/2013
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
TON, MY TRANG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/29/2013 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)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

DEUTSCHE BANK TRUST CO. AMERICAS
Requester, Respondent

v.

LML PATENT CORP.
Patent Owner, Appellant
____________________

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Technology Center 3900
____________________

Before BIBHU R. MOHANTY, DANIEL S. SONG and
JOSIAH C. COCKS, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1
Reissue of U.S. Patent No. 6,547,129 to Nichols et al., reissued April 8,
2008 (hereinafter "'220 patent").
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134 and 315 (2002)
from a Final Rejection of claims 67-70, 72, 74-80, 82-84 and 93 which are
subject of the reexamination. We have jurisdiction under 35 U.S.C. §§ 134
and 315 (2002).
The '220 patent is presently involved in the following legal
proceedings:
1. LML patent Corp. v. National Bank of Daingerfield TX., 2:09-
cv-00180; and
2. LML patent Corp. v. JP Morgan Chase & Co., 2:08-CV-4448-
DF.
The '220 patent was also involved in the following reexamination
proceedings:
1. Reexamination Control No. 90/011,388 (Terminated); and
2. Reexamination Control No. 90/011,749 (Reexamination
Certificate issued May 8, 2012).
(Appeal Brief (hereinafter "App. Br.") 6).

The invention is directed to methods and system for processing
payment. Independent claims read as follows:
67. A method of processing consumer payment from a
checking account comprising:
receiving account information via a communication
network, the account information relating to a checking
account;
storing the account information;
verifying the account information;
receiving transaction event information;
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storing the transaction event information; and
transmitting the account information and the transaction
event information to a financial institution to initiate an
electronic funds transfer.

75. A method for eliminating the physical presentment of a
bank check for payment of goods or services, comprising:
receiving account information from a signed bank check
that was received via mail or at a lock box location;
verifying the accuracy of the account information;
receiving a transaction amount as entered on the bank
check;
storing the account information and the transaction
amount;
transmitting the account information and the transaction
amount to a financial institution to initiate an electronic funds
transfer.

83. A method for eliminating the physical presentment of a
bank check for payment of goods or services, comprising:
receiving a signed bank check including authorization to
convert the bank check process to an electronic funds transfer
process via mail or at a lock box location;
reading, with an optical or magnetic reader, preprinted
account information from the signed bank check;
verifying the accuracy of the account information;
receiving a transaction amount as entered on the bank
check;
transmitting the account information and the transaction
amount to a central computer;
storing the account information and the transaction
amount;
transmitting the account information and the transaction
amount to a financial institution to initiate an electronic funds
transfer.

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93. A system for electronic processing and settlement of
consumer payment for goods or services comprising:
at least one terminal adapted to receive consumer bank
account information from a consumer communicating with the
terminal over the Internet;
a central computer system;
at least one central computer system communication
interface for electronic communication between at least one
terminal and the central computer system; and
at least one database for performing a consumer bank
account status search, and further enabling electronic funds
transfer communication for transferring funds without
presentment of a bank check to an issuing financial institution.

The prior art relied upon by the Examiner in rejecting the claims is:
Thompson U.S. 5,121,945 June 16, 1992
Ferguson U.S. 5,256,863 October 26, 1993
Kight U.S. 5,383,113 January 17, 1995
Bravman U.S. 5,393,965 February 28, 1995
Doggett U.S. 5,677,955 October 14, 1997
Ogram U.S. 5,822,737 October 14, 1998
Geer U.S. 5,930,778 July 27, 1999
Higashiyama WO 92/10901 June 25, 1992
Gifford WO 95/16971 June 22, 1995

George C. White et al., Check Standardization for More Automated
Handling and Truncation at the First Processing Event, Bank Administation
Institute’s Second Annual Check Processing Conference (Mach 14-16,
1979) ("White '79")

George C. White, Action Ideas Truncation Opportunities, 2(1) J. of Cash
Management 45 (March 1982) ("White '82")

Half Check, Half ETF: Something for Everyone, 15(21) Corporate ETF
Report (November 1, 1995) ("Half Check")

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1995 ACH Rules, A Complete Guide to Rules & Regulations Governing the
ACH Network (1995) ("1995 ACH Rules")

Baker et al., The Law of Electronic Funds Transfer Systems (2d ed. 1998)
("Baker")

The Examiner rejected the various claims as follows:
1. Claims 67-70, 72, 75-80 and 82-84 under 35 U.S.C. § 102(b) as
being anticipated by Higashiyama.
2. Claim 74 under 35 U.S.C. § 103(a) as obvious over
Higashiyama in view of Gifford.
3. Claims 76, 83 and 84 under 35 U.S.C. § 103(a) as obvious over
Higashiyama in view of Baker.
4. Claims 79 and 80 under 35 U.S.C. § 103(a) as obvious over
Higashiyama in view of Kight.
2

5. Claim 93 under 35 U.S.C. § 102(b) as being anticipated by
Gifford.
6. Claims 67, 68, 72 and 74 under 35 U.S.C. § 102(b) as being
anticipated by Ferguson.
7. Claims 69 and 70 under 35 U.S.C. § 103(a) as obvious over
Ferguson in view of Baker.
8. Claims 67, 68 and 72 under 35 U.S.C. § 102(b) as being
anticipated by Bravman.
9. Claims 69 and 70 under 35 U.S.C. § 103(a) as obvious over
Bravman in view of Baker.

2
We note that the Examiner misspelled Kight as "Knight" throughout the
RAN.
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10. Claims 67-70, 72, 74, 75, 77, 78 and 82 under 35 U.S.C.
§ 102(b) as anticipated by Doggett.
11. Claims 75-79 and 82-84 under 35 U.S.C. § 102(b) as being
anticipated by Baker.
12. Claim 80 under 35 U.S.C. § 103(a) as obvious over Baker in
view of Kight.
13. Claims 75, 77, 78 and 82 under 35 U.S.C. § 102(e) as being
anticipated by Geer.
14. Claim 76 under 35 U.S.C. § 103(a) as obvious over Geer in
view of 1995 Rules.
15. Claim 76 under 35 U.S.C. § 103(a) as obvious over Geer in
view of Half Check.
16. Claims 77, 78, 83 and 84 under 35 U.S.C. § 103(a) as obvious
over Geer in view of Thomson.
17. Claims 79 and 80 under 35 U.S.C. § 103(a) as obvious over
Geer in view of Kight.
18. Claims 75-80 and 82-84 under 35 U.S.C. § 102(b) as being
anticipated by Thomson.
19. Claims 75-79 and 82 under 35 U.S.C. § 103(a) as obvious over
White '82 in view of White '79.
20. Claim 93 under 35 U.S.C. § 102(e) as being anticipated by
Ogram.

We AFFIRM as to Rejections 5-7 and 13-20. We do not reach the
remaining rejections.
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ISSUES
The following issues raised in the present appeal are addressed herein.
1. Whether the Examiner erred in interpreting the claims applying
the broadest reasonable interpretation standard.
2. Whether the Examiner erred in finding that Ferguson discloses
"transmitting the account information and the transaction event
information to a financial institution to initiate an electronic funds
transfer."
3. Whether the Examiner erred in finding that Geer is prior art.
4. Whether the Examiner erred in finding that Geer discloses
electronic fund transfer.
5. Whether the Examiner erred in finding that Thomson discloses
"verifying the accuracy of the account information."
6. Whether the Examiner erred in finding that Thomson discloses
electronic funds transfer.
7. Whether the Examiner erred in finding that White '82 discloses
"verifying the accuracy of the account information."
8. Whether the Examiner erred in finding that Gifford discloses
"at least one terminal adapted to receive consumer bank account
information."
9. Whether the Examiner erred in finding that Gifford discloses a
database for "performing a consumer bank account status search."
10. Whether the Examiner erred in finding that Ogram is prior art.
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11. Whether the Examiner erred in weighing of the declaration
evidence of Gaines and Tinkel to find that the evidence does not
outweigh the evidence of obviousness.

PRINCIPLES OF LAW
"During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification . . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation." In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
This is the standard for claim interpretation in both original examination and
re-examination. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
"[T]he Board is required to use a different standard for construing claims
than that used by district courts." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
at 1369. "[I]t is error for the Board to 'appl[y] the mode of claim
interpretation that is used by courts in litigation, when interpreting the
claims of issued patents in connection with determination of infringement
and validity'" Id.
It is well established that features not appearing in the claims cannot
be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA
1982). The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. See In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989). "Though understanding the claim language may
be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
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claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment." See Superguide Corp. v. DirecTV Enter., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004).

ANALYSIS
Preliminarily, we note that the various rejections of the Examiner and
arguments of the Patent Owner are considered below in an order that differs
from that presented in the briefs. We also consider only those arguments
pertinent to the disposition of the present appeal, and those arguments
actually made by the Patent Owner. Other arguments not made are deemed
to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).

Broadest Reasonable Interpretation
The Patent Owner does not dispute the applicability of the broadest
reasonable interpretation (hereinafter "BRI") standard in the proceedings
before the Patent Office, but argues that "in cases like the present one, where
there is a well-advanced concurrent enforcement action pending in a district
court, the patent owner never had the ability to freely amend claims" and
thus, "the Office should apply the BRI standard to accommodate the
reasonable positions of a patent owner, while giving some deference to the
claim construction order of the district court." (Rebuttal Brief (hereinafter
"Reb. Br.") 1-2, 4-6). The Patent Owner also notes that the '220 patent
expired on January 16, 2013 (Reb. Br. 4).
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However, we are not directed to controlling legal authority for
applying different "BRI" standards based on the existence (or absence) of a
concurrent district court action, or giving deference to claim construction
order of district court. Indeed, the law is clear that "the Board is required to
use a different standard for construing claims than that used by district
courts." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1369; see also In re
Morris, 127 F.3d 1048, 1054 (Fed.Cir. 1997). While the different standards
applied by the Board and a district court may nonetheless result in
substantively the same claim interpretation, we see no basis to apply
different "BRI" standards based on concurrent district court action, or giving
deference to claim construction order issued in litigation.
In addition, while the Patent Owner asserts that it "never had the
ability to freely amend claims," this assertion is not supported by the facts.
The present reexamination was ordered on July 26, 2010 based on the
Request for Inter Partes Reexamination of the Requester filed May 11, 2010
(hereinafter "Reexam. Request"), and the Non-final Office Action was
issued July 26, 2010 which was well before the expiration of the '220 patent.
Thus, the Patent Owner had adequate opportunity to amend the claims at
issue, but chose to forego that opportunity.

Rejections Based on Ferguson
Rejection 6 rejects claims 67, 68, 72 and 74 as being anticipated by
Ferguson. The Examiner adopted the rejection proposed by the Requester as
set forth in Exhibit CC-C of the Reexam. Request (RAN 8).
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The Patent Owner argues with respect to independent claim 67 that
Ferguson does not disclose "transmitting the account information and the
transaction event information to a financial institution to initiate an
electronic funds transfer" because this limitation "is properly limited in
scope to a check conversion process where a check is not used as a
negotiable instrument." (App. Br. 24-25, citing Ex. 7; Claim Construction
Order of August 4, 2010, pg. 14). The Patent Owner relies on the
Declaration of Mr. Tinkel to assert patentability of the claim because
Ferguson "discloses [Electronic Fund Transfers] associated with credit/debit
cards and ATM cards," and because there is no check in such transactions,
"there is no checking account number or bank routing number transmitted in
these cases." (App. Br. 24; see also Decl. of Tinkel ¶¶ 66-69). According to
the Patent Owner, if "account information" is construed as "the information
relating to a checking account that includes an account number" as
interpreted by the district court,
3
then claim 67 is patentable over Ferguson."
(Reb. Br. 8). The Patent Owner also refers to the argument based on
"fundamental differences between credit/debit card and check processing" as
argued with respect to Rejection 5 based on Gifford (discussed infra) in
support of patentability (App. Br. 25).

3
See Claim Construction Order of August 4, 2010, pgs. 16-18. The Patent
Owner itself has apparently advocated a broader interpretation than that
which is now advocated in the present reexamination (see Claim
Construction Order 14-15 where Patent Owner argued to the Court that the
limitation "account information" merely means "information relating to an
account.").

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However, we agree with the Examiner and find no error in the
adoption of the proposed rejection with respect to claim 67. Claim 67 does
not recite or require a check conversion process, an actual check,
presentment of a check, or processing thereof. Instead, the claim relates to a
checking account and some unspecified "account information" that relates to
a checking account. As noted by the Examiner (RAN 17), claim 67 does not
require the transmission of a checking account number but instead, merely
requires the transmission of "account information relating to a checking
account." Hence, the arguments of the Patent Owner based on a physical
check, check processing and checking account number are unpersuasive as
they are directed to features not appearing in claim 67. See In re Self, 671
F.2d at 1348. We agree with the Examiner (RAN 17) that the Patent Owner
is improperly importing limitations from the specification of the '220 patent
into the claim.
Claim construction in litigation has no preclusive effect on the Patent
Office which uses the broadest reasonable interpretation standard on non-
expired patents. In re Yamamoto, 740 F.2d at 1571; In re ICON Health and
Fitness, Inc., 496 F.3d at 1379. As discussed, the claim recites account
information relating to a checking account, and under the broadest
reasonable interpretation that is applied in proceedings before the Patent
Office, this limitation cannot be said to require a checking account number
as now advocated by the Patent Owner. In addition, it has been conceded
that "[l]ike checks, debit cards withdraw funds from the consumer's deposit
account" (Decl. of Gaines, ¶ 48) and "[a]t best, Ferguson discloses
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[Electronic Fund Transfers] associated with credit/debit cards and ATM
cards." (Decl. of Tinkel, ¶ 66).
The statements of the declarant Mr. Tinkel that seek to distinguish
Ferguson are unavailing and cannot be given much weight because they
distinguish Ferguson from the embodiment described in the specification of
the '220 rather than with respect to what is claimed in claim 67. For
example, Mr. Tinkel states that "[w]hen initiating a credit/debit card
transaction or ATM transaction, a customer's checking account information
is not transmitted" and that "there is no checking account number or bank
routing number transmitted." (Decl. of Tinkel, ¶ 66). However, as
discussed, claim 67 recites transmitting "account information relating to a
checking account" and does not recite checking account number or bank
routing number. Other statements of the declarant mirrors the arguments
presented in the brief, and similarly, are unpersuasive because they
distinguish Ferguson based on features or limitations which are not recited in
claim 67. Hence, we agree with the Examiner that the declaration evidence
"does not outweigh the overwhelming evidence of obviousness set forth in
the proceeding." (RAN 24; see also Action Closing Prosecution dated March
14, 2011 (hereinafter "ACP") 25-28).
Thus, we discern no error in the Examiner's findings that "Ferguson
discloses a method wherein credit, debit or ATM account information is
transmitted to a financial institution" "along with transaction event
information such as the payment amount and the merchant to be paid," and
that "all of this information is transmitted to initiate an electronic funds
transfer." (RAN 17-18). Correspondingly, we affirm the Examiner's
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adoption of the proposed anticipation rejection with respect to independent
claim 67. The Patent Owner does not proffer arguments specifically
directed to claims 68, 72 and 74 that depend from claim 67 which also stand
rejected as anticipated by Ferguson. Thus, these claims fall with claim 67.
In Rejection 7, the Examiner rejects claims 69 and 70 that ultimately
depend from claim 67 as being obvious over Ferguson in view of Baker
(RAN 8). The Patent Owner relies on the dependency of these claims for
patentability and asserts that Baker does not cure the asserted deficiency of
Ferguson set forth respect to Rejection 6 (App. Br. 25). However, as no
deficiency in Ferguson has been established, Rejection 7 is also affirmed.

Rejections Based on Geer (Rejections 13-17)
The Examiner rejects claims 75, 77, 78 and 82 as being anticipated by
Geer, and claims 76-80, 83 and 84 as obvious based on the combination of
Geer together with other prior art references. The Examiner adopted the
rejections proposed by the Requester as set forth in Exhibit CC-J of the
Reexam. Request (RAN 10-11).
The Patent Owner asserts that Geer is not prior art because it has
established prior invention through Declarations and other evidence (App.
Br. 31-32). However, the Examiner finds that no conception prior to the
pertinent date of July 11, 1996 has been established because the evidence
"fails to disclose 'receiving account information from a signed bank check
that was received via mail or at a lock box location' as claimed." (RAN 4-5,
citing Requester's Comments filed May 16, 2011). We find no error in the
Examiner's determination because the facsimile evidence dated May 7 and
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May 21, 1996 submitted to address deficiencies noted by the Examiner, do
not evince that the attached draft of a patent application relied upon by the
Patent Owner is part of the facsimile (RAN 4-5; see also ACP 3-5;
Respondent Brief (hereinafter "Resp. Br.") 13-14; Requester's Comments
filed May 16, 2011, pgs. 6-9).
The Patent Owner further argues that Geer "does not teach 'electronic
funds transfer' as that term is properly understood in view of the
specification." (App. Br. 32-33). The Patent Owner asserts that the
Electronic Funds Transfer Act defines "electronic fund transfer" as "any
transfer of funds, other than a transaction originated by check, draft, or
similar instrument, which is initiated through an electronic terminal,
telephone instrument, or computer or magnetic tape so as to order, instruct
or authorize a financial institution to debit or credit an account. Such term
includes, but is not limited to, point-of-sale transfers, automated teller
machine transactions, direct deposits or withdrawals of funds, and transfers
initiated by telephone." (App. Br. 32, citing Electronic Funds Transfer Act
Sect. 903(6)).
However, we agree with the Examiner that Geer discloses electronic
fund transfers based on the broadest reasonable interpretation thereof (RAN
21). We first note that the specification of the '220 patent does not limit the
meaning of "electronic fund transfer" to the definition set forth in the
Electronic Funds Transfer Act Sect. 903(6). The Patent Owner fails to
demonstrate that the "electronic funds transfer" as used in the '220 patent
does not have a broader meaning of transferring funds electronically which
is consistent with the plain meaning and its use in the specification. In this
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regard, while not relied upon for the present rejection, this restrictive
interpretation appears to be contrary to the evidence of record tending to
indicate a broader meaning.
4

Geer teaches digitizing financial instruments such as checks and
sending the information to payee's bank for processing and "crediting of
funds represented by the checks to the payee's account at the bank," the
processing being conducted electronically using data encryption "as a
security measure in electronic funds transfer so that the paper instrument can
be disposed of (col. 4, l. 46-col. 5, l. 9; col. 9, ll. 11-36; col. 14, ll. 32-39).
We also agree with the Examiner that "just because the information is
initially captured from a check, does not disqualify the later transaction
using that information from being an electronic funds transfer." (RAN 21).
In the above regard, the Patent Owner's own invention would not satisfy the
Patent Owner's definition of "electronic funds transfer" as noted by the
Examiner (RAN 21) because the transactions described in the '220 patent
can be considered to originate from a check, that is, by reading the MICR
number from a consumer's check tendered (see Abstract of '220 patent).

4
As noted surpa, the Patent Owner conceded that "[a]t best, Ferguson
discloses [Electronic Fund Transfers] associated with credit/debit cards and
ATM cards" (Decl. of Tinkel, ¶ 66). Ferguson discussed supra also states
that "[a]lternate embodiments can establish a direct access to the customer's
bank or to external databases to initiate … electronic funds transfer in a
manner similar to that used for credit/debit and ATM cards." (Ferguson, col.
18, ll. 59-64; Decl. of Tinkel, ¶ 69). Further, Thomson discussed infra states
that "[e]lectronic transfers are made at that time crediting the customer's
payee's accounts receivable and debiting the customer's checking account at
the appropriate financial institution." (Thomson, col. 2, ll. 11-19).
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Thus, in view of the above, we affirm the anticipation rejection with
respect to independent claim 75. The Patent Owner does not proffer
arguments specifically directed to claims 77, 78 and 82 that ultimately
depend from claim 75 which also stand rejected as anticipated by Geer.
Hence, these claims fall with claim 75.
In Rejections 14 to 17, the Examiner rejects claims 76-80, 83 and 84
as being obvious over Geer in view of various secondary references (RAN
10-11). The Patent Owner relies on the dependency of these claims for
patentability and asserts that the secondary references do not cure the
asserted deficiency of Geer as forth respect to Rejection 13 (App. Br. 33).
However, as no deficiency in Geer has been established, Rejections 14 to 17
are also affirmed.

Rejection Based on Thomson (Rejection 18)
Claims 75-80 and 82-84 stand rejected as anticipated by Thomson.
The Examiner adopted the rejection proposed by the Requester as set forth
in Exhibit CC-K of the Reexam. Request (RAN 11).
The Patent Owner argues with respect to claims 75 and 83 that
Thomson does not disclose the recited limitation "verifying the accuracy of
the account information" (App. Br. 34-36). The Patent Owner also argues
that if "verifying the accuracy of the account information" limitation is
interpreted to mean "confirming the accuracy of the account information,"
then Thomson would fail to anticipate claim 75 because Thomson only
addresses "proper file formatting of a unit record and verification of the
accounts receivable payment transactions." (Reb. Br. 8-9).
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The Examiner disagrees and finds that "Thomson discloses
verification of the accuracy of the account information via redundancy"
(RAN 22). We agree with the Examiner. The system described in Thomson
does more than simply require proper file formatting as asserted by the
Patent Owner in that the system reads different fonts such as MICR, OCR
and bar codes of a check, and this redundant information is compared to
"insure accuracy of information lift." (Col. 17, ll. 35-47). Thus, Thomson
discloses "verifying the accuracy of the account information" as recited in
the claim, as well as "confirming the accuracy of the account information" as
interpreted by the Patent Owner.
With respect to claim 75, the Patent Owner further argues that
Thomson does not disclose the recited limitation "transmitting the account
information and the transaction amount to a financial institution to initiate an
electronic funds transfer" based on the definition of "electronic funds
transfer" in the Electronic Funds Transfer Act and because Thomson's
integrated document is a negotiable instrument (App. Br. 36-37). The
Examiner disagrees and finds that the "claims do not preclude the account
information and transaction amount from being a negotiable instrument. All
that is required is the transmission of account information and the
transaction amount to a financial institution to initiate an electronic funds
transfer which is disclosed in Thomson." (RAN 23).
We agree with the Examiner that Thomson discloses electronic fund
transfers based on the broadest reasonable interpretation thereof (RAN 21-
23). Thomson discloses that the Automated Clearing House processes can
be used wherein "the customer initiates a request to the corporation to
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electronically charge the customer's checking account for the exact payment
on a predetermined date each payment period. Electronic transfers are made
at that time crediting the customer's payee's accounts receivable and debiting
the customer's checking account at the appropriate financial institution."
(Col. 2, ll. 11-19, emphasis added; see also col. 18, ll. 27-36). As discussed
supra with respect to the rejection based on Geer, it appears the Patent
Owner's own invention would not satisfy the definition advocated.
Thus, in view of the above, we affirm the anticipation rejection with
respect to independent claims 75 and 83. The Patent Owner does not proffer
arguments specifically directed to claims 76-80 and 82, 84 that ultimately
depend therefrom which also stand rejected as anticipated by Thomson.
Thus, these claims fall with claims 75 and 83.

Rejection Based on White '82 (Rejection 19)
Claims 75-79 and 82 stand rejected as obvious over White '82 in view
of White '79. The Examiner adopted the rejection proposed by the
Requester as set forth in Exhibit CC-L of the Reexam. Request (RAN 11-
12).
With respect to claim 75, the Patent Owner asserts that the White
references do not disclose "verifying the accuracy of account information."
(App. Br. 37, citing Decl. Tinkel, ¶ 100). However, as noted by the
Examiner (RAN 23), White '86 specifically states "[p]resent [automated
clearing house] rules require an initial one-time, non-dollar pre-notification
to verify the accuracy of the account number when the customer first
authorizes debiting of the account." (Page 46, 3
rd
col., 1
st
para., emphasis
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20
added). Indeed, White '82 further explains that in the ACH network,
financial institutions "can transmit the payment data from truncated checks."
(Page 46, 2
nd
col., 2
nd
para.) The Patent Owner argues that this explicit
disclosure in White '82 "says nothing about confirming the accuracy of a
checking account number received from a check." (App. Br. 37, citing Decl.
Tinkel, ¶ 100). However, as noted by the Examiner (RAN 23), all that is
required by the claim is the step of verifying the accuracy of the account
information which is what occurs in White '82. The verification step recited
does not require verification of the account information in any particular
manner.
Therefore, in view of the above, we sustain the Examiner's rejection
of claim 75. The Patent Owner relies on the dependency for patentability of
claims 76-79 and 82 that also stand rejected as obvious over the combination
of White '82 and White '79, and did not proffer arguments specifically
directed thereto (App. Br. 38). Thus, these claims fall with claim 75.

Rejection Based on Gifford (Rejection 5)
Claim 93 stands rejected as being anticipated by Gifford. The
Examiner adopted the rejection proposed by the Requester as set forth in
Exhibit CC-B of the Reexam. Request (RAN 7).
The Patent Owner argues that Gifford "does not enable electronic
check processing," and does not use a paper check or an electronic check
(App. Br. 19-20). However, as the Examiner notes, claim 93 does not
require electronic check processing (RAN 16) or even a check. Instead,
claim 93 merely requires "at least one database … enabling electronic funds
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21
transfer communication for transferring funds without presentment of a bank
check." Thus, the Patent Owner's argument improperly relies on features not
appearing in the claims. In re Self, 671 F.2d at 1348. We further observe
that processing non-check transactions including debit transactions as in
Gifford are done "without presentment of a bank check" thereby satisfying
the recited limitation. Whereas the Patent Owner argues that "[t]ransactions
using credit and debit cards are materially different from those using checks"
(App. Br. 19, citing declarations of Tinkel and Gaines), claim 93 does not
include limitations that reflect these differences.
The Patent Owner also argues that Gifford does not disclose "at least
one terminal adapted to receive consumer bank account information"
because Gifford is only concerned with receiving credit card, debit card and
internet card information (App. Br. 21-22). However, we discern no error in
the Examiner's finding that "[d]ebit cards are associated with a consumer
bank account and necessarily contain consumer bank account information
encoded on their magnetic strips. Terminals of Gifford receive consumer
bank account information when the card is swiped at the terminal." (RAN
16).
Finally, the Patent Owner asserts that Gifford does not have a
database for "performing a consumer bank account status search" (App. Br.
22-24). However, as found by the Examiner (RAN 17), Gifford discloses an
account database 73 that is used to check the consumer bank account's daily
spending limit, and settlement database 74 which is used to check consumer
bank account status information including what payment orders have already
been authorized for the account (Gifford, pg. 6, ll. 5-16; pg. 15, ll. 2-23).
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Gifford specifically discloses that "[a]fter the payment order passes the
replay check, temporal spending limits are checked in account database 73.
… The limits can be applied to any duration of time, for example a
maximum spending amount per hour or per day." (Gifford, pg. 17, ll. 2-11).
Thus, Gifford discloses a database for "performing a consumer bank
account status search" as recited. Correspondingly, in view of the above, we
affirm the Examiner's rejection of claim 93 as anticipated by Gifford.

Rejections Based on Ogram (Rejection 20)
Claim 93 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Ogram. The Examiner adopted the rejection proposed by the
Requester as set forth in Exhibit CC-M of the Reexam. Request (RAN 12).
The Patent Owner asserts that Ogram is not valid prior art because it
has established prior invention before Ogram's effective date of Feb. 5, 1996
through Declaration and evidence of conception, diligence, and
actual/constructive reduction to practice (App. Br. 38-41). However, the
Examiner finds, and we agree, that no conception prior to pertinent date has
been established because the facsimile evidence dated May 7 and 21, 1996
submitted to address deficiencies noted by the Examiner, do not predate
Ogram's critical date of February 5, 1996 (RAN 4-5; ACP 3-5; see also
Resp. Br. 16-17; Requester's Comments filed May 16, 2011, pgs. 4-6).
The Patent Owner argues that Ogram is not enabling because
"debit/credit card processing systems are inherently different from electronic
check processing" (App. Br. 41-42). However, we agree with the Examiner
that "[c]laim 93 does not require electronic check conversion." (RAN 24).
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Claim 93 merely states "transferring funds without presentment of a bank
check to an issuing financial institution." As discussed supra, this limitation
is satisfied by transactions that use a debit/credit card since such transactions
do not involve presentment of a bank check. Correspondingly, we affirm the
Examiner's rejection of claim 93.

Declarations
The Patent Owner asserts that the Examiner did not consider
patentability of the claims in view of Declaration of Gaines, and merely
considered it for "knockdown ability" quoting the Examiner's statement that
"'even if the examiner accepts every statement made by Mr. Gaines as fact,
there is insufficient evidence to overcome the prima facie case of
obviousness set forth in this proceeding.' (ACP, pg. 26.)". (App. Br. 43).
The Patent Owner asserts that the Declaration of Gaines establishes state of
the art and that "the '220 patent discloses electronic check conversion."
(App. Br. 43). The Patent Owner further asserts that the Examiner
improperly dismissed the Declaration of Tinkel as mere restatement of
arguments and as opinion (App. Br. 43-44).
However, the Patent Owner ignores the Examiner's statement in the
RAN with respect to the declarations under 37 CFR § 1.132 that "the
examiner has weighed the evidence provided in the declarations and found
that it does not outweigh the overwhelming evidence of obviousness set
forth in the proceeding." (RAN 24). Furthermore, the record is clear that the
Examiner fully considered the declaration evidence (RAN 13, 24 and
Requester's Comments filed May 16, 2011 (pgs. 6-9) that was incorporated
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by reference; see also ACP 25-28). That the Patent Owner disagrees with
the outcome of the Examiner's consideration of the evidence does not mean
that the Examiner did not consider the evidence. Moreover, in also having
reviewed the Declaration evidence, we agree with the Examiner's evaluation
thereof (see also Resp. Br. 24-25).

CONCLUSIONS
1. Rejection 5 based on Gifford is AFFIRMED.
2. Rejections 6-7 based on Ferguson are AFFIRMED.
3. Rejections 13-17 based on Geer are AFFIRMED.
4. Rejection 18 based on Thomson is AFFIRMED.
5. Rejection 19 based on White '82 is AFFIRMED.
6. Rejection 20 based on Ogram is AFFIRMED.
7. We do not reach the following:
A. Rejections 1-4 based on Higashiyama.
B. Rejections 8-9 based on Bravman.
C. Rejections 10 based on Doggett.
D. Rejections 11-12 based on Baker.

ORDER
The Examiner's rejection of claims 67-70, 72, 74-80, 82-84 and 93 is
AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
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25

AFFIRMED

cc:

Third Party Requester:

MICHAEL J. MALLIE
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040