Ex Parte Carroll et al

Patent Trial and Appeal Board

Aug 15, 2016

13271111 (P.T.A.B. Aug. 15, 2016)

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.
13/271,111 10/11/2011 Tonya Lin Carroll 013647.00034 8771
33649 7590 08/15/2016
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS AVENUE
SUITE 600
DALLAS, TX 75201
EXAMINER
ULLAH MASUD, MOHAMMAD R
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
08/15/2016 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 TONYA LIN CARROLL, CHANTAL ADAIR GASPIE,
GWEN ELLEN MURRAY, and LAKSHMA REDDY EAPUR
___________

Appeal 2014-001743
Application 13/271,111
Technology Center 3600
___________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Tonya Lin Carroll, Chantal Adair Gaspie, Gwen Ellen Murray, and
Lakshma Reddy Eapur (Appellants) seek review under 35 U.S.C. § 134 of a
final rejection of claims 21–40, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 25, 2013) and Reply Brief (“Reply Br.,” filed November 18,
2013), and the Examiner’s Answer (“Ans.,” mailed September 16, 2013),
and Final Action (“Final Act.,” mailed October 24, 2012).
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The Appellants invented a way of updating merchant on file payment
data that allows a merchant to get updates to the data prior to the occurrence
of a payment event. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 21, which is reproduced below (bracketed matter and some
paragraphing added).
21. A system for updating merchant payment data comprising:
[1] a recurring payment system
for processing a plurality of recurring payment
transactions
using a plurality of customer recurring payment account
records,
wherein the recurring payment transactions are
authorized in advance by each customer associated with
the customer recurring payment account records;
[2] a merchant processing selection system
operating on a processor
and
configured to receive selection data
from a merchant
for one of two or more types of payment data
update processing
for one of a plurality of merchant account records
stored in an electronic data memory,
wherein the merchant account record
includes the plurality of customer recurring
payment account records for that merchant;
and
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[3] a merchant account update system
configured to receive the selection data
and
to subsequently process account update data
for the merchant account record
based on the selection data
to automatically modify one or more fields of one
or more of the customer recurring payment
account records.
The Examiner relies upon the following prior art:
Hutchings US 5,940,813 Aug. 17, 1999
Ballard US 2004/0267673 A1 Dec. 30, 2004
Jamison US 7,958,049 B2 June 7, 2011
LaRoux US 8,046,288 B1 Oct. 25, 2011
Claims 31–40 stand rejected under 35 U.S.C. § 101 as directed to non–
statutory subject matter.
Claims 21–29 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hutchings, LaRoux, and Jamison.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hutchings, LaRoux, Jamison, and Official Notice.
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Claims 31–35 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hutchings, Ballard, LaRoux, and Jamison.2
Claims 36–40 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hutchings, LaRoux, and Ballard.
ISSUES
The rejection under statutory subject matter is uncontested. The
rejections under obviousness turn primarily on whether the references
describe merchant update of recurring payment transactions.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Hutchings
01. Hutchings is directed to a transaction processing system.
Hutchings 1:18–22.
02. Hutchings describes processing payments from different
sources. Hutchings 3:50–59.
03. Hutchings describes batch data from lock-box facilities and
from other batch data sources being converted to a transaction

2 Although the statutory statement of rejection omits Jamison, the analysis
includes it. Final Act. 8–11. This omission was acknowledged in
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format. The batch converter reformats the data so that the
information for each account includes not only the account
number and payment amount but also includes the effective date
of the payment. The batch converter transfers the transaction data
to temporary pay queues. Hutchings 6:38–60.
LaRoux
04. LaRoux is directed to processing payment data that allows
transaction data and payment data to be combined in a single
report record. LaRoux 1:6–10.
05. LaRoux describes user created report criteria. LaRoux
6:63–7:13.
06. LaRoux describes a recurring bill flag. LaRoux 8:27.
Jamison
07. Jamison is directed to electronic bill presentment and payment
(“EBPP”) systems. Jamison 1:20–25.
08. Jamison describes an integrated electronic bill presentment and
payment system which obtains bills for customers and allows
payments including payments by credit card to be processed at the
biller websites on behalf of customers. The integrated EBPP
system obtains bills for customers from paper billers, electronic
billers, and scrape-enabled biller websites. The integrated EBPP
system enables customers to automatically set up a user account at
biller websites, with customers providing user access information

Applicant-Initiated Interview Summary, mailed January 31, 2013.
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and user financial account information for accessing biller web
sites and for initiating payments at biller websites. Jamison
Abstract.
09. Jamison describes advanced credit card payment capabilities in
which customers can initiate credit card payments to biller
websites though an automatic or recurring payment rule that
customers have established. Jamison 6:24–29.
10. Jamison describes customers setting up recurring payment
rules. Jamison 40:19–36.
Ballard
11. Ballard is directed to processing of credit card payments.
Ballard para. 1.
12. Ballard describes a credit card issuer performing its usual
operations on a transaction received from a credit card processor,
including the routing of the incoming transaction to the
appropriate issuing member bank, based upon the transaction
information. Once the transaction arrives at the appropriate
issuing bank datacenter, the credit card account number is
retrieved from the bank's database to determine various aspects of
the credit account status and how much available credit is
remaining. Assuming there are no problems with the credit
account status, and that the remaining credit is sufficient to accept
the presented transaction amount, an approval code is generated
and rerouted back to the credit card issuer datacenter that
originated the credit transaction. The credit card issuer then
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communicates the approval of the transaction to IP credit card
gateway 34 or to Direct IP credit card processor. Ballard para. 48.
ANALYSIS
Claims 31–40 rejected under 35 U.S.C. § 101 as directed to non–statutory
subject matter
We summarily affirm this rejection as Appellants do not contest it.
Claims 21–40 rejected under 35 U.S.C. § 103(a) as unpatentable over
Hutchings, LaRoux, Jamison, Official Notice, and Ballard
We are persuaded by Appellants’ argument that none of the reference
describes the merchant processing of recurring records recited in the claims.
Reply Br. 2–7.
All of the claims recite some form of merchant update of recurring
payment transactions. Hutchings and Ballard do not mention recurring
transactions. LaRoux describes a recurring bill flag, and Jamison describes
customer rather than merchant update of recurring payment transactions.
The Examiner makes findings as to the claim limitations, but none of the
cited references support those findings in regard to merchant update of
recurring payment transactions. FF 01–12. The Examiner correctly finds
separate descriptions of recurring transactions and of merchant editing of
records, but does not show that one of ordinary skill would have applied
such record editing to recurring payment transactions in the manner recited.
For these reasons, we do not sustain this rejection.
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CONCLUSIONS OF LAW
The rejection of claims 31–40 under 35 U.S.C. § 101 as directed to
non–statutory subject matter is summarily affirmed.
The rejection of claims 21–29 under 35 U.S.C. § 103(a) as unpatentable
over Hutchings, LaRoux, and Jamison is improper.
The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable over
Hutchings, LaRoux, Jamison, and Official Notice is improper.
The rejection of claims 31–35 under 35 U.S.C. § 103(a) as unpatentable
over Hutchings, Ballard, LaRoux, and Jamison is improper.
The rejection of claims 36–40 under 35 U.S.C. § 103(a) as unpatentable
over Hutchings, LaRoux, and Ballard is improper.
DECISION
The rejection of claims 21–30 is reversed.
The rejection of claims 31–40 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED–IN–PART