Ex Parte Doran

Board of Patent Appeals and Interferences

Apr 29, 2010

10022957 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WAYNE M. DORAN
____________

Appeal 2009-009107
Application 10/022,957
Technology Center 3600
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Decided: April 29, 2010
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Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 48, 49, 50, 53, 57-60. We have jurisdiction under 35 U.S.C.
§ 6(b)(2002).
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims an improved approach to issuing certified checks.
(Specification 3:2-3)
Claim 48, reproduced below, is representative of the subject matter on
appeal.
48. A computer implemented method by a financial institution, the method
comprising, by a server associated with the financial institution:
receiving from a cheek payor a request for a validation number yet to be
generated and then associated with a check to be presented from the check payor to
a check payee;
determining if an account contains sufficient funds to cover the monetary
amount of the check to be presented from the check payor to the check payee;
generating a validation number when the account contains sufficient funds to
cover the monetary amount of the cheek to be presented from the check payor to
the check payee, wherein the validation number is randomly generated by the
financial institution; and
issuing the generated validation number to the check payor to allow the
check payor to associate the generated validation number with the check to be
presented to the cheek payee.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Chang US 5,884,22 Mar. 16, 1999
Talati US 5,903,878 May 11, 1999
Bozeman US 6,754,640 B2 Jun. 22, 2004
The following rejection is before us for review.
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The Examiner rejected claims 48, 49, 50, 53, 57, 58, 59, and 60 under
35 U.S.C. § 103(a) over Chang in view of Bozeman and Talati.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claims 48, 49, 50,
53, 57, 58, 59, and 60 on appeal as being unpatentable under 35 U.S.C. § 103(a)
over Chang in view of Bozeman and Talati on the grounds that a person with
ordinary skill in the art would understand that Talati in disclosing issuing a
UTID validation number when the client credit line is sufficient to cover the
monetary amount of the transaction to be processed constitutes a determination
by a financial institution of sufficient funding for a payment?

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the scope
and content of the prior art, (2) any differences between the claimed subject matter
and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-
called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these questions
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might be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Chang discloses
When the payor 202 authorizes payment of a specified
electronic bill 502 (i.e., when the payor authorizes
immediate payment or when the current date matches the
previously authorized payment data for an electronic
bill), the payor bank 206 checks that the payor's account
has sufficient funds to cover the bill payments and debits
the payor's account accordingly. The payor bank 206
then generates one or more electronic checks 504 on
behalf of the payor 202. Each electronic check is
digitally signed by the payor bank 206 and transmitted to
the payee 208 designated by the corresponding electronic
bill, preferably in electronic check envelopes. (Chang,
col. 7 ll. 19-30).
2. Talati discloses
In an alternative embodiment parties other than the
originator 50 may create the UTID, for example the TA
60. A system and method for this type of transaction are
illustrated in FIGS. 7 and 8. Initially, client 50 generates
at processor 70, a credit authorization request including
an originator identifier and relevant information to credit
authority (CA) 60 at step 200. The CA 60 processes the
credit request to determine the validity of the client 50
requesting credit based on the originator identifier and
the associated amount at step 205. The CA 60 then sends
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the credit transaction information along with an
associated UTID or a rejection of authorization back to
client 50 at step 210. Upon receipt of credit approval and
the UTID, the client 50, transmits a purchase request with
the provided UTID to the merchant 55 at step 15. (Talati,
col. 6 ll. 61-67, col. 7, ll. 1-8).

ANALYSIS
We affirm the rejections of claims 48, 49, 50, 53, 57, 58, 59, and 60 under
35 U.S.C. § 103(a).
Initially, we note that the Appellant argues independent claims 48, 49, 53,
57, 58, and 59 together as a group. Correspondingly, we select representative
claim 48 to decide the appeal of these claims, remaining claims standing or falling
with claim 48.
Appellant argues that
…each of claims 48, 49, 50, 53, 57, 58, 59, and 60
recites, inter alia, that the financial institution issues the
generated validation number to the check payor (over
the Internet, for example) to allow the check payor to
associate the issued validation number with the check to
be presented from the check payor to the check payee. In
this regard, Applicant submits that since Talati does
not even disclose the financial institution generating a
validation number in response to a determination being
made that an account contains sufficient funds, Talati
cannot disclose the financial institution issuing such a
validation number to a check payor. (Appeal Br. 8)
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We disagree with Appellant because in an alternative embodiment, Talati
discloses “parties other than the originator 50 may create the UTID”, e.g., the
credit authority 60 party. (FF 2) According to Talati, a credit authority 60 can
process the credit request from the client 50 to determine the validity of the client
50 and the associated amount. (FF 2) The credit authority can then send, in the
case where appropriate, both a credit approval and the UTID back to the client. (FF
2) We thus find that Talati discloses issuing a UTID, or a validation number, when
the client credit line is sufficient to cover the monetary amount of the transaction to
be processed. We further find that a credit authority is a financial institution
because a bank, which is described in the Specification as a financial institution
(Specification 3:6), is in the business of offering credit.
While the credit authority embodiment in Talati discussed above does not
necessarily connote an account with funds, we do not find this problematic because
the rejection is made under 35 U.S.C. § 103(a) also using Chang which discloses
an account with funds, rather than using credit for payments. (FF 1) Moreover,
Chang discloses that the payor bank 206 first determines whether the payor's
account has sufficient funds to cover the amount, and then generates one or more
electronic checks on behalf of the payor 202. (FF 1) Thus, Chang also discloses a
determining step based on if an account contains sufficient funds to cover the
monetary amount of the check to be presented from the check payor to the check
payee.
Appellant asserts that Talati fails to disclose items (i ) and (ii) set forth on
page 8 of his Brief. However, that argument is not well taken because the
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Appellant is attacking the Talati reference individually when the rejection is based
on a combination of references with Chang disclosing the required funded account,
and Talati disclosing the required financial institution generating a validation
number when a determination is made. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968).
Appellant’s remaining arguments are based on the overlying argument
that because Talati fails to disclose “the financial institution generating a validation
number in response to a determination being made that an account contains
sufficient funds, Talati cannot disclose…” the further limitations tied to the
validation number. However, since these arguments do not advance Appellant’s
position beyond that offered above, which we found unpersuasive, we likewise
find the latter arguments unpersuasive.

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 48, 49, 50, 53, 57, 58, 59, and 60.

DECISION
The decision of the Examiner to reject claims 48, 49, 50, 53, 57, 58, 59, and
60 is Affirmed.

AFFIRMED

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JRG

MICHAEL CHAN
NCR CORPORATION
1700 SOUTH PATTERSON BLVD
DAYTON, OH 45479-0001