Ex Parte Crea et al

Board of Patent Appeals and Interferences

Jun 29, 2012

10406793 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KIM CREA, JENNIFER GRIMES, and
MARILYN BETHKE 1
____________________

Appeal 2011-002752
Application 10/406,793
Technology Center 3600
____________________
Before, BIBHU R. MOHANTY, KEVIN F. TURNER, and
MICHAEL W. KIM, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The Western Union Company is the real party in interest.
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STATEMENT OF CASE2
Claim 1-21 are currently pending and have been rejected. However,
Appellants state that they seek review of the rejection of only claims 1-4, 9-
16, and 21 (App. Br. 2), notwithstanding that the claims 1-21 are currently
pending. (App. Br. 2). As a result of these statements3, there is some
ambiguity as to which claims are on appeal. Although the Appellants did
not expressly state that claims 5-8 and 17-20 were withdrawn from appeal,
the arguments in the Appeal Brief are focused solely on claims 1-4, 9-16,
and 21.
Additionally, an Order Remanding Appeal to Examiner (hereinafter,
“Remand”) was mailed on May 26, 2010. In the Remand, it was indicated
that “claims 10 and 11 of the instant application contain functional language
that may be indefinite under 35 U.S.C. § 112 2nd paragraph,” and the
application was remanded to the Examiner for further review. (Remand 2.)
Upon return, the Examiner issued a second Examiner’s Answer with a New
Ground of Rejection for claims 10 and 11 under 35 U.S.C. § 112 second
paragraph. (Ans. 4.)
In response to this New Ground of Rejection, Appellants requested
that claims 10 and 11 be withdrawn from the appeal. (Reply Br. 1.) Again,

2 Our decision will make reference to the Appellants’ Amended Appeal
Brief (“App. Br.,” filed May 21, 2009) and Reply Brief (“Reply Br.,” filed
September 14, 2010), and the Examiner’s Answer (“Ans.,” mailed August 4,
2010).
3 Appellants additionally state that the rejection of claims 5-8 and 17-20 “is
not the subject of this appeal” (emphasis omitted) (App. Br. 2), even though
these claims are currently pending.

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Appellants focused solely on the rejection of claims 1-4, 9, 12-16, and 21,
with no mention of the rejection of claims 5-8 and 17-20. (Reply Br. 1-4.)
Accordingly, we will treat claims 5-8, 10, 11, and 17-20 as having
been withdrawn from appeal. (See Ex parte Ghuman, 88 USPQ2d 1478,
(precedential)). As a consequence, upon return of the application to the
Examiner, the Examiner should cancel claims 5-8, 10, 11, and 17-20
pursuant to MPEP §1215.03 (8th ed. Rev. 8, Jul. 2010).
Accordingly, we limit our review under 35 U.S.C. § 134 to the
rejection of claims 1-4, 9, 12-16, and 21. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ disclosure relates to a method of processing a payment
from a payer to a payee which sends both the debit transaction and the credit
transaction to a banking network within one banking day. (Abs.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of processing a payment from a payer to a payee,
comprising:
receiving at a host computer system a request to initiate a
payment;
transmitting from the host computer system to a payer computer
a file comprising a display screen configured for receiving,
from the payer, information relating to the payment;
receiving the information from the payer at the host computer
system;
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creating with the host computer system a credit transaction based
on the information that debits funds from a transaction
processor’s bank and credits funds to a bank of the payee;
creating with the host computer system a debit transaction based
on the information that debits funds from a bank of the payer
and credits funds to the transaction processor’s bank; and
sending both the debit transaction and the credit transaction to a
banking network within one banking day.
(App. Br., Claims Appendix 8.)

PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Crooks 5,943,656 Aug. 24, 1999
Embrey 6,311,170 Bl Oct. 30, 2001

The Examiner made the following rejections, applicable to the claims
on appeal:
Claim 9 rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicants regard as the invention.
Claims 1-4, 9, 12-16, and 21 rejected under 35 U.S.C. § 103(a) as
being unpatentable over Embrey and Crooks.

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ISSUES4
Did the Examiner err in asserting that claim 9 is indefinite under 35
U.S.C. § 112?
Does the combination of Embrey and Crooks teach or suggest the step
of “sending both the debit transaction and the credit transaction to a banking
network within one banking day,” as generally recited by independent
claims 1 and 13, such that it renders the subject matter of claims 1-4, 9, 13-
16, and 21 obvious under 35 U.S.C. § 103(a)?
Does the combination of Embrey and Crooks teach or suggest the step
of “linking the payer to a transaction processor’s computer system that is
programmed to present a series of payment information receiving screens
having branding information relating to the payee,” recited by claim 12, such
that it renders the subject matter of claim 12 obvious under 35 U.S.C.
§ 103(a)?

FINDINGS OF FACT
Embrey
1. Embrey is directed to an automated payment system which
consolidates payments from a plurality of payor entities to a plurality of
payee entities through a service provider. (Abs.)

4 We have considered in this decision only those arguments that Appellants
actually raised in the Briefs. Arguments which Appellants could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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2. Embrey describes that throughout one business day, a trusted
intermediary financial institution processes and compares positive pay sheets
to approved pay sheets. (Col. 13, ll. 34-54.)
3. Following, Embrey describes that its system utilizes conventional
electronic funds transfers to pull funds from the accounts of the payor
entities and deposits funds into the trusted intermediary financial institution
account, and then substantially simultaneously, the trusted intermediary
financial institution funds the payee’s bank account throughout the course of
a business day. (Col. 13, l. 55 – Col. 14, l. 18; See also Fig. 1, element 55.)
4. Embrey describes:
payor 19 and trusted intermediary financial institution 13
enter into a contractual relationship which allows trusted
intermediary financial institution 13 to withdraw and
otherwise handle funds of payor 19 in a manner which is
consistent with the contractual obligations between payor
19, trusted intermediary financial institution 13, and
service provider 11.
(Col. 11, ll. 26-41.)
5. Figure 27 of Embrey depicts a report representing receipts for
electronic funds transfers provided by a service provider to a payee. (Col.
24, ll. 29-35; See Fig. 27.)

Crooks
C1. Crooks is directed to a computerized billing and payment
authorization method and system which provides remote electronic access to
billing information in a host computer. (Col. 1, l. 62 – Col. 3, l. 3.)
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ANALYSIS
Claim 9 rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Appellants make no arguments with respect to the rejection of claim 9
under 35 U.S.C. § 112, second paragraph, but instead defer discussion.
(App. Br. 5.) Appellants’ Reply Brief is silent with respect to this rejection.
Thus, Appellants have not persuaded us that the Examiner erred in rejecting
claim 9 as indefinite. Accordingly, we summarily sustain the Examiner’s
rejection of claim 9 under 35 U.S.C. § 112, second paragraph, as being
indefinite.

Claims 1-4, 9-16, and 21 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Embrey and Crooks.
Independent Claims 1 and 13
Appellants argue that the combination of Embrey and Crooks fails to
teach or suggest the step of “sending both the debit transaction and the credit
transaction to a banking network within one banking day,” as generally
recited by independent claims 1 and 13. (App. Br. 6.) Specifically,
Appellants assert that Embrey fails to recite a time or range of time for its
transactions. (Reply Br. 2.)
We are not persuaded by Appellants’ argument and agree with the
Examiner that Embrey teaches or suggests sending both a debit and credit
transaction within one banking day. (Ans. 8.) Specifically, we find that
Embrey teaches an automated payment system which processes and
compares positive pay sheets with approved pay sheets, within one business
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day, in preparation for an electronic funds transfer, which Embrey states
occurs substantially simultaneously and throughout the course of a business
day. (FF 2, 3.) This electronic funds transfer is conducted over an
electronic automated clearinghouse and pulls funds from a payor’s account
into a trusted intermediary financial institution’s account, and then into the
payee’s bank account. (FF 3.) Thus, in contrast to Appellants’ contention
that Embrey fails to recite a time or range of time for its transactions, we
find that Embrey reasonably teaches performing these transactions within
one banking day, as presently claimed.
Moreover, Appellants have failed to provide objective evidence which
would establish that the automated payment system of Embrey would be
incapable of “sending both the debit transaction and the credit transaction to
a banking network within one banking day” or any other persuasive
evidence of nonobviousness, such as unexpected results. Thus, we are not
persuaded by Appellants’ argument.
Accordingly, we sustain the Examiner rejection of claims 1 and 13
under 35 U.S.C. § 103(a) as unpatentable over Embrey and Crooks.

Dependent claims 2-4, 9, 14-16, and 21
Appellants do not separately argue claims 2-4, 9, 14-16, and 21,
which depend from independent claims 1 and 13, respectively, and so we
sustain the rejection of these claims under 35 U.S.C. §103(a) as unpatentable
over Embrey and Crooks for the same reasons we found as to claims 1 and
13 supra.

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Independent claim 12
Appellants argue that the combination of Embrey and Crooks fails to
teach or suggest the step of “linking the payer to a transaction processor’s
computer system that is programmed to present a series of payment
information receiving screens having branding information relating to the
payee,” as recited by claim 12. (App. Br. 6.) Specifically, Appellants assert
that Figure 27 of Embrey is not a “payment information receiving screen,”
as presently recited. (App Br. 7; Reply Br. 3.) Additionally, Appellants
state that the brands pictured in Figure 27 are payor brands and not payee
brands as the claim recites. (App. Br. 7.) We cannot agree.
While we agree with Appellants that Figure 27 of Embrey does not
explicitly depict a “payment information receiving screen,” we cannot agree
with Appellants that it does not fairly suggest that Embrey’s automated
payment system would not otherwise be programmed to present a series of
payment information receiving screens in order to display the report
information depicted in Figure 27. (FF 5.) Even so, the Examiner
additionally relies on the contract entered into between the payor and trusted
intermediary financial institution (FF 4), which we find addresses the
claimed “series of payment information receiving screens.”
Turning next to “branding information relating to the payee,” we are
not persuaded by Appellants’ argument, as we take this argument to be
directed to non-functional descriptive material which is unrelated to the
underlying system in any functional way. See In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983) (when descriptive material is not functionally related to the substrate,
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the descriptive material will not distinguish the invention from the prior art
in terms of patentability). Additionally, whether the brands pictured in
Figure 27 are for the payor or payee does not change the fact that a brand is
displayed. Thus, we find that Appellants’ argument regarding the type of
information displayed fails to distinguish the claimed subject matter from
Embrey such that the Embrey would function any differently.
While Appellants assert that the “[r]ecord does not include the
required ‘clear articulation’ of the reasons why this teaching would render
the claims obvious,” with respect to claim 12 (App. Br. 7), Appellants have
only presented a conclusory statement without any objective evidence to
support this assertion. An attorney’s arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Even so, we disagree with Appellants’ assertion and find that that the
Examiner has provided an articulated reasoning with rational underpinning
for why a person with ordinary skill in the art would modify Embrey’s
automated payment system with the web communication features described
by Crooks. (See Ans. 22-23.) Accordingly, Appellants’ argument with
regard to the combination of Embrey and Crooks is not persuasive as to error
in the rejection.
Based on the above, we are not persuaded by Appellants’ arguments,
and as such, sustain the Examiner’s rejection of claim 12 under 35 U.S.C.
§ 103(a) as unpatentable over Embrey and Crooks.

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CONCLUSIONS
We conclude that the Examiner did not err in asserting that claim 9 is
indefinite under 35 U.S.C. § 112, second paragraph.
We conclude that the combination of Embrey and Crooks teaches or
suggests the step of “sending both the debit transaction and the credit
transaction to a banking network within one banking day,” as generally
recited by independent claims 1 and 13, and as such, renders the subject
matter of claims 1-4, 9, 13-16, and 21 obvious under 35 U.S.C. § 103(a).
We conclude that the combination of Embrey and Crooks teaches or
suggests the step of “linking the payer to a transaction processor’s computer
system that is programmed to present a series of payment information
receiving screens having branding information relating to the payee,” as
recited by claim 12, and as such, renders the subject matter of claim 12
obvious under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-4, 9, 13-16, and 21
over the prior art.
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).

AFFIRMED

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