Ex Parte Hirka et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11697440 (B.P.A.I. Mar. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY L. HIRKA and STEVEN J. FOX
____________

Appeal 2011-002133
Application 11/697,440
Technology Center 3600
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002133
Application 11/697,440

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 52-62 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Oral
arguments were presented on March 6, 2012.

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a linked account that
allows cardholders to apply funds in an account to transactions with a credit
card and which is reconciled on a daily basis (Spec. 1:5-9). Claim 52,
reproduced below with the numbering in brackets added, is representative of
the subject matter on appeal.

52. A system for facilitating electronic transactions, the system
comprising:
a transaction card containing point-of-sale readable
information, the transaction card being issued by an issuer to a
qualified consumer, wherein the qualified consumer becomes a
cardholder having a privilege to execute purchase transactions with
the transaction card at a plurality of merchants by submitting valid
demand deposit account (DDA) information [1] for a checking
account of the cardholder, and wherein the checking account is
provided by a financial institution other than the issuer of the
transaction card;
[2] an authorization server adapted for communication, through
a payment network, with point-of-sale transaction terminals; and
programming associated with the authorization server for:
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receiving transaction information, through the payment network, from
one of the point-of-sale transaction terminals in response to an
attempted transaction by the cardholder using the transaction card,
issuing a declined message and terminating card processing if the
transaction card is invalid or the attempted transaction falls outside
limits of card usage, authorizing the transaction by generating a debit
transaction for the checking account of the cardholder utilizing an
automated clearing house (ACH) network, and settling the transaction
at a time subsequent to the execution of the transaction from funds
retained within the checking account of the cardholder.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Jowers US 4,126,779 Nov. 21, 1978
Rosen US 5,455,407 Oct. 3, 1995
Gifford US 6,205,437 B1 Mar. 20, 2001

The following rejections are before us for review1:
1. Claims 54-56 and 61-62 are rejected under 35 U.S.C. § 112,
second paragraph.
2. Claims 52-54 and 56-62 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Gifford and Rosen.
3. Claim 55 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Gifford, Rosen, and Jowers.

1 The Answer indicates that the rejection made under 35 U.S.C. § 101 has
been withdrawn. (Ans. 10).

Appeal 2011-002133
Application 11/697,440

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THE ISSUES
With regard to the rejections made under 35 U.S.C. § 112, second
paragraph, the issue turns on whether claim 54 is indefinite.
With regard to the rejection of claim 52 under 35 U.S.C. § 103(a) the
issue turns on whether Gifford’s at the portions cited by the Examiner
discloses claim limitation [1]. The remaining claims turn on a similar issue.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Gifford has disclosed a system for purchasing goods or information
over a computer network. A network payment system is used. (Abstract).
FF2. Gifford at Col. 1:30-35, 55-58, Col. 2:35-38, 59-61, 65-66, and Col.
3:1-13, 30-33, 46-49, and 60-62 does not specifically disclose a “transaction
card” associated with a demand deposit account for a checking account of
the cardholder, and wherein the checking account is provided by a financial
institution other than the issuer of the transaction card.

ANALYSIS
Rejections under 35 U.S.C. § 112, second paragraph
The Examiner has determined that claim 54 is indefinite because it
fails to make any provision for the possibility of the authorization request

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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being denied (Ans. 3, 10-11). The Appellants have argued that this rejection
is not proper (Second Br. 9-10).
We agree with the Appellants. The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). Here, those skilled in the art
would understand what is being claimed. The cited lack of provision of the
possibility of the authorization request being denied may be as sign of claim
breadth, but it does not render the claim indefinite here. For these reasons
the rejection of the claims under 35 U.S.C. § 112, second paragraph, is not
sustained.

Rejections under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 52 is improper
because Gifford’s fails to disclose claim limitation [1] (Second Br. 11-13,
Reply Br. 2-3).
In contrast, the Examiner has determined that Gifford’s discloses the
cited claim limitation [1] at: Col. 1:30-35, 55-58; Col. 2:35-38, 59-61, 65-66,
and Col. 3:1-13, 30-33, 46-49 and 60-62 (Ans. 4, 12).
We agree with the Appellants. Claim 52 in part requires a
“transaction card” associated with a “demand deposit account for a checking
account of the cardholder, and wherein the checking account is provided by
a financial institution other than the issuer of the transaction card”.
Gifford’s at the portions cited by the Examiner fails to disclose a
“transaction card” associated with a demand deposit account for a checking
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account of the cardholder, and wherein the checking account is provided by
a financial institution other than the issuer of the transaction card (FF2). The
citations made the Examiner to Gifford’s do mention the use of credit cards,
demand deposit accounts, and external accounts, but not in the linked
manner which has been specifically claimed in claim limitation [1].
The Examiner in the response section of the Answer states that
“[i]ssuance of the card is obvious” without providing a rationale for such a
modification in context of the rest of the claim and the rejection lacks
articulated reasoning with some rational underpinning to support a legal
conclusion of obviousness. For these reasons the rejection of claim 52 and
its dependent claims is not sustained. The remaining claims contain similar
claim limitations and the rejection of these claims is not sustained for these
same reasons.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 52-62 is reversed.

REVERSED

MP