11836881 (P.T.A.B. Jul. 23, 2013)

Ex Parte Rethorn et al

Patent Trial and Appeal BoardJul 23, 2013

11836881 (P.T.A.B. Jul. 23, 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. 11/836,881 08/10/2007 Michael L. Rethorn P00376-US-UTIL (M01.067) 3972 28062 7590 07/24/2013 BUCKLEY, MASCHOFF & TALWALKAR LLC 50 LOCUST AVENUE NEW CANAAN, CT 06840 EXAMINER GOTTSCHALK, MARTIN A ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 07/24/2013 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 ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL L. RETHORN, ROBERT K. WALLS, and MICHELLE L. GRIST ____________ Appeal 2011-009045 Application 11/836,881 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and JAMES A. TARTAL, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009045 Application 11/836,881 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 17-20 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We AFFIRM. THE INVENTION The Appellants’ claimed invention is directed to a remittance system on the basis of a payment card system (Spec. 1:6-9). Claim 17, reproduced below, is representative of the subject matter on appeal. 17. A method comprising: receiving at a first issuer computer at least one message relating to a person-to-person remittance transaction, said transaction having been routed from the first issuer computer by a credit card system to a second issuer computer, the first issuer computer operated by or on behalf of a first issuer of payment card accounts, the second issuer computer operated by or on behalf of a second issuer of payment card accounts, the at least one message including information indicative of the name of an individual who owns a payment card account issued by the second issuer, the person-to-person remittance transaction for being credited to the payment card account owned by the individual; charging the person-to-person remittance transaction to a credit card account issued by the first issuer to a sender of the person-to-person remittance transaction; and generating a periodic statement of transactions charged to the sender’s credit card account, the periodic statement including an entry for the person-to-person remittance transaction, the entry including the name of the individual who Appeal 2011-009045 Application 11/836,881 3 owns the payment card account to which the person-to-person remittance transaction was credited; wherein the at least one message received at the first issuer computer is from the second issuer computer. THE REJECTIONS The following rejections are before us for review: 1. Claims 17-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Judd (US 2003/0233317 A1, pub. Dec. 18, 2003) and Lawlor (US 2002/0038289 A1, pub. Mar. 28, 2002). FINDINGS OF FACT We find the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANALYSIS The Appellants argue that the rejection of claim 17 is improper because the prior art fails to disclose “that a message received by the sending financial institution, and containing the name of the recipient, is from the receiving financial institution” (Br. 6). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 5-10). We agree with the Examiner. We begin with claim construction and determine that the contents of the message relating to the name of the 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-009045 Application 11/836,881 4 recipient is non-functional descriptive material that does not affect how the underlying computer substrate operates. The PTO need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). See also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994). Regardless, as cited in the rejection of record, Lawlor at paragraph [0136] discloses providing names and account information in processing payments (see Ans. 6). The Appellants also argue that the prior art fails to show that the message is from the receiving financial institution (Br. 6-7). In contrast, the Examiner has determined that the combination would have been obvious in view of the prior art (Ans. 7) and we agree. Here, Judd shows that a receipt is generated as to whether the transaction took place or not, and that the validations of some kind are made by both the sending and receiving financial institutions ([0062], [0063], [0068], [0069]). Here, it would have been obvious to have the receiving financial institution generate the receipt, if desired, to provide direct proof of the transaction being completed by that party in the cited combination. Further, there are a finite number of solutions for generating the receipt, as it is either done by one of the parties or some third party operator, and thus such a modification would have been obvious. For these reasons the rejection of claim 17 and its dependent claims is sustained. The Appellants have provided the same reasoning for the remaining claims and the rejection of these claims is sustained for the same reasons. Appeal 2011-009045 Application 11/836,881 5 CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claims 17-20 as unpatentable over Judd and Lawlor. DECISION The Examiner’s rejection of claims 17-20 is sustained. AFFIRMED mls