Ex Parte Allen-Rouman et al

Board of Patent Appeals and Interferences

Aug 22, 2012

09991497 (B.P.A.I. Aug. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte TERRY ALLEN-ROUMAN, 8
JOHN JOSEPH MASCAVAGE III, 9
and MARGARET MORGAN WEICHERT 10
___________ 11
12
Appeal 2011-007015 13
Application 09/991,497 14
Technology Center 3600 15
___________ 16
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 19
MEREDITH C. PETRAVICK, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 15, 2010) and Reply Brief (“Reply Br.,” filed January
13, 2011), and the Examiner’s Answer (“Ans.,” mailed November 24, 2010).
Terry Allen-Rouman, John Joseph Mascavage III, and Margaret Morgan 2
Weichert (Appellants) seek review under 35 U.S.C. § 134 (2002) of a final 3
rejection of claims 1-10, 12-18, and 20-22, the only claims pending in the 4
application on appeal. We have jurisdiction over the appeal pursuant to 5
35 U.S.C. § 6(b) (2002). 6
The Appellants invented a way of online funds transfers (Specification ¶ 7
02). 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 method 12
for transferring funds 13
in an online transaction 14
between a first party and a second party, 15
the method comprising steps of: 16
[1] receiving payment information from the first party, 17
the payment information including a payee identification; 18
[2] determining a first account associated with the first party; 19
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[3] determining a second account associated with the second 1
party, 2
wherein at least one of the first account and the second 3
account is a bank account; 4
[4] providing a third account, 5
the third account not associated with either the first party 6
or the second party, 7
wherein the third account is a stored value account, 8
the third account receiving credits from the first account 9
and debits from the second account, 10
wherein the store value account holds stored value funds; 11
[5] initiating a first transfer from the first account to the third 12
account; 13
[6] receiving payee information from the second party, 14
the payee information including the payee identification; 15
[7] checking the payee identification received from the second 16
party with the payment information; 17
[8] if the payee identification received from the second party is 18
the same as the payment information, 19
initiating a second transfer from the third account to the 20
second account, 21
wherein initiating the second transfer occurs before the 22
first transfer has cleared; 23
and 24
[9]if the payee identification received from the second party is 25
not the same as the payment information, 26
denying the second transfer from the third account to the 27
second account. 28
The Examiner relies upon the following prior art: 29
Rosen US 5,557,518 Sep. 17, 1996
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Kolling US 5,920,847 Jul. 6, 1999
Claims 1-10, 12-18, and 20-22 stand rejected under 35 U.S.C. § 103(a) 1
as unpatentable over Rosen, Kolling, and Applicant Admitted Prior Art. 2
ISSUES 3
The issues of obviousness turn primarily on whether the claims recite the 4
payee supplying payee identification to the intermediary party and if so, 5
whether the art describes this. 6
FACTS PERTINENT TO THE ISSUES 7
The following enumerated Findings of Fact (FF) are believed to be 8
supported by a preponderance of the evidence. 9
Facts Related to the Prior Art 10
Rosen 11
01. Rosen is directed to a system for facilitating open electronic 12
commerce. In particular, the system utilizes tamper-proof 13
electronic units, referred to as “trusted agents” in combination 14
with money modules to create a secure transaction environment 15
for both the buyer and seller of electronic merchandise and 16
services. Rosen 1:6-11. 17
02. Rosen allows customers to buy electronic merchandise or 18
services on demand without enrolling in an electronic community; 19
enables remote delivery of electronic merchandise or services with 20
real-time anonymous payment or real-time authorization-based 21
payment where neither the customer nor the merchant can 22
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interfere with the payment and delivery process once they have 1
agreed to the transaction; uses trusted agents and money modules 2
to create a system for open electronic commerce where both 3
customers and merchants can securely transact remotely over 4
electronic networks without prior knowledge of each other; and 5
provides a secure electronic real-time purchase transaction 6
between buyer and seller without third-party intervention. Rosen 7
1:61 – 2:12. 8
03. A customer trusted agent establishes a cryptographically secure 9
session with a merchant trusted agent and securely communicates 10
with a first money module, and the merchant trusted agent 11
securely communicates with a second money module. The 12
merchant trusted agent delivers electronic merchandise that is 13
provisionally retained by the customer trusted agent. The trusted 14
agents participate in a secure dialogue and mutually agree on the 15
payment terms. The first money module transmits electronic 16
money to the second money module. Upon successful completion 17
of the money module payment, the first money module informs 18
the customer trusted agent, and the second money module informs 19
the merchant trusted agent. The merchant then logs the sale and 20
the customer may use the purchased electronic merchandise. 21
Rosen 2:13-28. 22
04. The customer may pay for the electronic merchandise by 23
presenting a credential representing a credit or debit card; 24
electronic tickets may be presented to other trusted agents in order 25
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to obtain services; and the trusted agents may be used for 1
performing a secure identity-based payment. Rosen 2:29-37. 2
Kolling 3
05. Kolling is directed to electronic bill payment systems that allow 4
a consumer or business to direct their bank, an agent of their bank, 5
or a non-bank bill pay service bureau, to pay amounts owed to 6
merchants, service providers and other billers who bill consumers 7
or businesses for amounts owed, and allows a consumer or 8
business to receive electronic invoices. Kolling 1:15-21. 9
06. Participating consumers pay bills to participating billers using a 10
bill payment network where billers are universally identified and 11
for which all participants agree to a set of protocols. The 12
protocols include data exchange and messaging protocols as well 13
as operating regulations which bind and direct the activities of the 14
participants. The participating consumers receive bills from 15
participating billers (paper/mail bills, e-mail notices, implied bills 16
for automatic debts, etc.) which indicate an amount, and a unique 17
biller reference number (“BRN”) identifying the biller to the 18
payment network. To authorize a remittance, the consumer 19
transmits to its bank (a participating bank), or an agent of its bank 20
or any other party connected to the network, a transaction 21
indicating (1) an amount to pay, (2) the source of the funds, (3) a 22
date on which to make the payment, (4) consumer C's account 23
number with biller B (C-B account #), and (5) biller B's BRN. 24
Kolling 11:5-25. 25
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07. Bank C does not submit the transaction until funds are good or 1
Bank C is willing to take the risk of loss if funds are not good. 2
Bank B, upon receipt of the transaction, releases the funds to biller 3
B, and is assured that the payment network will credit Bank B 4
with the funds from Bank C. The reversal messages may be 5
allowed to follow a payment message if sent within some period 6
after the payment message, in which case Bank C might send 7
payment messages without first securing funds. Kolling 12:10-23. 8
ANALYSIS 9
We are persuaded by the Appellants’ argument as to independent claim 1 10
and its dependent claims that 11
Kolling's specification vaguely mentions payment 12
reversal in a few other places, but none of them teach or suggest 13
making the transfer from the third account to the second 14
account contingent on positively authenticating a “payee 15
identification received from the second party.” The most 16
pertinent disclosure that Appellant can identify in Kolling with 17
regards to making a payment contingent is found at col. 8, lines 18
23-30, which provides that “the transaction might have to be 19
sent back ... [if] the service bureau S [i.e., the settlement bank 20
as per the Examiners' Answer pg 17] cannot identify biller B 21
from information provided by consumer C, it will reverse the 22
transaction. If biller B is misidentified ... the transaction will be 23
reversed[.]” This description, however, is different than making 24
the transfer contingent on positively authenticating a “payee 25
identification received from the second party” since it clearly 26
describes that the transaction is sent back or reversed if the 27
service bureau cannot identify biller B from information 28
provided by consumer C. Since consumer C is not equivalent 29
to the claimed second party, this portion of Kolling does not 30
teach or suggest “initiating a second transfer from the third 31
account to the second account ... if the payee identification 32
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received from the second party is the same as the payment 1
information[.]” In essence, the description merely describes that 2
if the service bureau does not know where to route funds 3
because consumer C has not identified biller B, the transaction 4
must be sent back or reversed. 5
Because the Kolling reference does not teach or suggest 6
that the settlement bank can make the transfer from the third 7
account to the second account contingent on positively 8
authenticating a “payee identification received from the second 9
party,” the settlement bank cannot be the equivalent of the third 10
account recited in the claims. 11
Reply Br. 3. The limitation at issue is that of receiving payee identification 12
from the second party, viz, the payee, in limitation [8] of “if the payee 13
identification received from the second party is the same as the payment 14
information, initiating a second transfer from the third account to the second 15
account, wherein initiating the second transfer occurs before the first transfer 16
has cleared.” 17
Appellants argued this originally at Appeal Brief 9. The argument is 18
simply that the applied references provide the payee identification from the 19
payor rather than the payee. The claim requires payee identification from 20
the payee. We agree. The Examiner did not respond to this in the Response 21
to Argument section of the Answer. 22
While this same argument also applies to independent claim 20 and its 23
dependent claims, it does not apply to independent claim 12 and its 24
dependent claims. As to these claims, we adopt the Examiner’s findings and 25
analysis and arrive at similar legal conclusions. Appellants have not 26
separately argued claim 12 and its dependent claims. 27
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CONCLUSIONS OF LAW 1
The rejection of claims 1-10 and 20-22 under 35 U.S.C. § 103(a) as 2
unpatentable over Rosen, Kolling, and Applicant Admitted Prior Art is 3
improper. 4
The rejection of claims 12-18 under 35 U.S.C. § 103(a) as unpatentable 5
over Rosen, Kolling, and Applicant Admitted Prior Art is proper. 6
DECISION 7
The rejection of claims 1-10 and 20-22 is reversed. 8
The rejection of claims 12-18 is affirmed. 9
No time period for taking any subsequent action in connection with this 10
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 11
§ 1.136(a)(1)(iv) (2011). 12
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AFFIRMED-IN-PART 14
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