Ex Parte Reid et al

Patent Trial and Appeal Board

Apr 8, 2013

11132067 (P.T.A.B. Apr. 8, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte WILLIAM REID, 7
CRAIG SWACKHAMMER, 8
KERRY LYNCH, 9
and JOHNSON LAU 10
___________ 11
12
Appeal 2010-012165 13
Application 11/132,067 14
Technology Center 3600 15
___________ 16
17
18
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 19
JAMES A. TARTAL, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25
Appeal 2010-012165
Application 11/132,067

2

STATEMENT OF THE CASE1 1
William Reid, Craig Swackhammer, Kerry Lynch, and Johnson Lau 2
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 3
1, 2, 4-48, and 50-57, the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented a form of assurance and financing services, 6
providing assurance and financing services to buyers and sellers involved in 7
commercial transactions. (Spec., para. 0002). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A system comprising a server and a computer readable 12
medium stored on the server for providing financing services, 13
wherein the server executes comprising: 14
[1] control logic on the computer readable medium configured 15
to monitor a plurality of transactions 16
between a buyer and a seller; 17
[2] control logic on the computer readable medium 18
for sending a payment instruction 19
to the buyer 20
for one or more transactions 21
in the plurality of transactions; 22
[3] control logic on the computer readable medium configured 23
[3a] to provide the buyer with 24
the ability to assign buyer-assured status 25
to the one or more transactions 26
after the buyer receives the payment instruction, 27
[3b] wherein the buyer assured status 28
indicates that payment 29

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 24, 2010) and Reply Brief (“Reply Br.,” filed Sep. 07 20,
2010), and the Examiner’s Answer (“Ans.,” mailed Jul. 07, 2010).
Appeal 2010-012165
Application 11/132,067

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for the one or more transactions 1
[3b1] is assured by the buyer 2
and 3
[3b2] is an unconditional, irrevocable guarantee 4
that payment will be made by the buyer 5
on a specified date 6
with certainty; 7
[4] control logic on the computer readable medium 8
for storing terms and conditions relating to buyer assured 9
status; 10
[5a] control logic on the computer readable medium configured 11
to provide the buyer 12
with the ability to request assurance from a buyer 13
bank 14
for the one or more transactions 15
and 16
[5b] control logic on the computer readable medium configured 17
to 18
determine whether to provide assurance 19
to the one or more transactions requested by the 20
buyer 21
and 22
assign a bank-assured status 23
to each transaction for which assurance is to be 24
provided, 25
wherein the buyer bank handles processing of payables 26
for the plurality of transactions on behalf of the buyer; 27
[6] control logic on the computer readable medium configured 28
to provide the buyer bank 29
with the ability to offer buyer bank payable 30
discounting to the seller; 31
[7] control logic on the computer readable medium configured 32
to provide the buyer bank with 33
the ability to offer buyer bank payable discounting 34
aggregation to the seller; 35
[8] control logic on the computer readable medium configured 36
to provide a seller bank 37
with the ability to offer seller bank receivable 38
discounting to the seller, 39
Appeal 2010-012165
Application 11/132,067

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wherein the seller bank handles processing of receivables 1
from the plurality of transactions on behalf of the seller; 2
and 3
[9] control logic on the computer readable medium configured 4
to provide the seller bank 5
with the ability to offer seller bank receivable 6
discounting aggregation to the seller. 7
8
The Examiner relies upon the following prior art: 9
Yuan US 2002/0038277 A1 Mar. 28, 2002
Claims 1, 2, 4-48, and 50-57 stand rejected under 35 U.S.C. § 102(b) 10
as anticipated by Yuan. 11
12
ISSUES 13
The issues of anticipation turn primarily on whether Yuan describes 14
structure configured to provide the buyer with the ability to assign some 15
status to transactions after the buyer receives payment instruction; a buyer in 16
Yuan providing buyer assurance for transactions; and providing any ability 17
for buyers to request for bank assurance. 18
19
FACTS PERTINENT TO THE ISSUES 20
The following enumerated Findings of Fact (FF) are believed to be 21
supported by a preponderance of the evidence. 22
Facts Related to the Prior Art - Yuan 23
01. Yuan is directed to involving banks, factors or other 24
financial institutions to aid in sales transactions of goods and 25
services between sellers and buyers. By involving banks, 26
factors, or other financial institutions, letters of credit may 27
be eliminated. Yuan, para. 0002. 28
Appeal 2010-012165
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02. Yuan does not mention any structure configured to provide 1
the buyer with the ability to assign some status to 2
transactions after the buyer receives payment instruction. 3
03. The financing method of Yuan involves a tri-party 4
agreement and assignment between the coordinator of a 5
sales marketplace, a financial institution such as a factor that 6
guarantees the buyer's credit and that is obligated to collect 7
the buyer's payment, and another financial institution such as 8
a bank that is associated with the seller. Yuan, para. 0033. 9
04. Based on the factor's guarantee of the buyer's credit and an 10
obligation to pay the bank upon collection of the buyer's 11
payment, the bank may provide an advance to the seller 12
against the sales price thereby providing the seller with cash 13
flow. Upon the buyer's payment to the factor, the factor 14
pays the bank that may in turn pay the seller the remaining 15
amount of the sale. Based on the tri-party (assignment) 16
agreement, the factor also pays an agreed-upon payment to 17
the coordinator, and the coordinator may negotiate a mark-18
up or fee with the buyer for arranging the transaction. Yuan, 19
para. 0034. 20
05. Yuan provides an auction that involves a financial 21
institution, such as a factoring entity, to provide some form 22
of guaranteed payment to sellers who deliver appropriate 23
goods or services. The current invention also addresses the 24
need to avoid fraud by providing the buyer with an amount 25
of time to inspect the goods or services before actually 26
Appeal 2010-012165
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having to pay for them. The current invention also serves to 1
avoid fraud by combining these concepts, and by providing 2
for the foregoing to occur online. Yuan, para. 0036. 3
4
ANALYSIS 5
As to independent claim 1, we are persuaded by the Appellants’ 6
argument that Yuan fails to describe providing the buyer with the ability to 7
assign some status to transactions after the buyer receives payment 8
instruction. The Examiner finds that “[i]t cannot be seen how a buyer 9
applying for credit differs from assigning buyer-assured status to a 10
transaction.” The Examiner fails to consider the explicit timing recited in 11
claim 1, as being after receiving payment instruction for specific 12
transactions that have been monitored. Thus the transactions in claim 1 13
cannot be prospective transactions, as might be applicable at the time the 14
buyer makes application. 15
The failure of Yuan to describe this limitation is fatal to the 16
Examiner’s findings, and so the Examiner has failed to present a prima facie 17
case of anticipation. We express no opinion regarding whether the claims 18
would be obvious over Yuan. 19
Claims 2, 4-26, 48, 50, and 52-54 depend from claim 1. 20
Claim 27, however, omits this timing recitation. Although the 21
limitations in claim 27 are expressed as means-plus-functions, the 22
Appellants do not argue or even present claim construction based on the 23
Specification. Appellants choose to argue solely on the basis of the 24
functions recited in the claim. Thus, any arguments Appellants might have 25
made based on construction of the means are waived. 26
Appeal 2010-012165
Application 11/132,067

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Appellants contend that Yuan fails to describe either (1) a buyer in 1
Yuan providing buyer assurance for transactions (Appeal Br. 32); or (2) 2
providing any ability for buyers to request for bank assurance (Appeal Br. 3
33). Yuan explicitly allows buyers to obtain bank payment guarantees for 4
purchases. FF 03-05. Such guarantees provide buyer assurance for 5
transactions by assuring payment and provide ability for buyers to request 6
such assurance through the application process. 7
Although Appellants recite additional limitations in claim 27, they do 8
no more than make a general allegation that Yuan fails to describe them. 9
This is insufficient to act as a separate argument under 37 C.F.R. § 41.37. 10
As our reviewing court held, 11
we hold that the Board reasonably interpreted Rule 41.37 to 12
require more substantive arguments in an appeal brief than a 13
mere recitation of the claim elements and a naked assertion that 14
the corresponding elements were not found in the prior art. 15
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). 16
Claims 28-47, 51, and 55-57 depend from claim 27. 17
18
CONCLUSIONS OF LAW 19
The rejection of claims 1, 2, 4-26, 48, 50, and 52-54 under 35 U.S.C. 20
§ 102(b) as anticipated by Yuan is improper. 21
The rejection of claims 27-47, 51, and 55-57 under 35 U.S.C. § 102(b) 22
as anticipated by Yuan is proper. 23
24
DECISION 25
The rejection of claims 1, 2, 4-26, 48, 50, and 52-54 is reversed. 26
The rejection of claims 27-47, 51, and 55-57 is affirmed. 27
Appeal 2010-012165
Application 11/132,067

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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2011). 3
4
AFFIRMED-IN-PART 5
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hh 11