Ex Parte Kerestic

Patent Trial and Appeal Board

Jul 2, 2013

12133476 (P.T.A.B. Jul. 2, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DONNE KERESTIC
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Appeal 2011-008426
Application 12/133,476
Technology Center 3600
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Before, ANTON W. FETTING, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008426
Application 12/133,476

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4 and 6-10. We have jurisdiction under 35 U.S.C.
§ 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellant’s invention relates to a gift registry services for engaged
couples (Spec., para. [0002]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of funding a down payment for a
residence, comprising the steps of:
providing a computer system on a network;
configuring an electronic interface to
communicate to the computer system over the
network;
using the electronic interface to accumulate
contributions towards the down payment at least in
part as a first function of purchases made through a
first business;
keeping track of the contributions on the
computer system; and
funding at least a part of the down payment
with the contributions.

1 Our decision will make reference to Appellant’s Appeal Brief (“App.
Br.,” filed January 12, 2011) and Reply Brief (“Reply Br.,” filed April 18,
2011), and the Examiner’s Answer (“Ans.,” mailed February 18, 2011).
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THE REJECTIONS
The following rejections are before us for review:
Claims 1-3, 6-8, and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shaer (US 2002/0128934 A1, pub. Sep. 12, 2002) in
view of Schmidlin (US 2006/0129469 A1, pub. Jun. 15, 2006) and further
in view of Rowland (US 2008/0201196 A1, pub. Aug. 21, 2008).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shaer in view of Schmidlin and further in view of
Rowland and further in view of Gordon (US 2006/0235748 A1, pub.
Oct. 19, 2006).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shaer in view of Schmidlin and further in view of
Rowland and further in view of Pandhe (US 2006/0161484 A1, pub. Jul. 20,
2006).

ANALYSIS
Independent claim 1 and dependent claims 2-4, 7, 8, and 10
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellant’s argument that the Examiner “fails
to provide any rationale as to why a person of ordinary skill in the art would
combine Shaer with Schmidlin that does not come from the Applicant’s own
specification” (App. Br. 4-5, emphasis in original). Instead, in our view, the
Examiner’s obviousness determination is adequately supported by rational
underpinning (Ans. 4-6 and 11-13).
Shaer discloses an interactive gift registry system in which couples
receive a commission on gifts that are purchased for them via a
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cybermediary (Shaer, para. [0078]). A guest may also make a cash donation
through the registry system, which is credited to the couple’s registry
account in the same way as purchase commissions (Shaer, para. [0086]).
Shaer describes that the couple may use the funds in the registry account to
buy further items through the registry or withdraw the funds for use towards
non-registry expenses (Shaer, para. [0303]).
Schmidlin discloses a PLAN fund that is a savings account for
engaged couples through which friends, family, and others can make
monetary gifts for use at a subsequent time towards, e.g., a down payment
for a mortgage (Schmidlin, para. [0001]). Shaer also discloses that
“[c]ouples can . . request cash donations, either open-ended or targeted to
specific forthcoming expenses, e.g., for a mortgage on a new home . . . .”
(Shaer, para. [0072]).
We agree with the Examiner that combining the commission funds of
Shaer with the PLAN fund used for a down payment in Schmidlin is nothing
more than a combination of known elements according to their established
functions, and yields the predictable result of allowing couples to earn
money that can be used to fund a down payment for a mortgage (Ans. 12).
As such, it would have been obvious at the time of Appellant’s invention.
See KSR Int’l Co. v. Teleflex Inc., 550 U. S. 398, 416(2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results”).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of dependent claims 2-4, 7, 8, and 10, which were not separately
argued.
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Dependent claim 6
Claim 6 depends from claim 1 and recites that “at least some of the
purchases are made by the potential home buyer.”
We are not persuaded that the Examiner erred in rejecting claim 6
under 35 U.S.C. § 103(a) (App. Br. 5). Instead, we agree with, and adopt the
Examiner’s response to Appellant’s argument as set forth at page 13 of the
Examiner’s Answer.
Appellant argues that “[w]hen Shaer’s home buyer makes additional
purchases using those accumulated contributions, commission payments
from those additional purchases are not allocated towards the down payment
but are rather allocated towards the cybermediary. (See Shaer, para
[0078][)]” (App. Br. 5). However, as the Examiner points out, even if
claim 6 is interpreted, as Appellant proposes, to require that a portion of the
purchases made by the potential home buyer, i.e., a commission payment, be
used to fund the down payment, it would have been obvious that a couple
may purchase an item from their gift registry for themselves.
Therefore, we will sustain the Examiner’s rejection of claim 6 under
35 U.S.C. § 103(a).
Dependent claim 9
Claim 9 depends from claim 8, which, in turn, depends from claim 1.
Claim 8 recites that the method of claim 1 further comprises “a third party
matching at least a portion of the contributions,” and claim 9 recites that “the
third party is selected from the list consisting of a commercial lender, a
relative, a builder and a builder’s agent.”
Appellant argues that the Examiner erred in rejecting claim 9 under
35 U.S.C. § 103(a) because while Pandhe teaches that relatives may
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purchase items through a gift registry, purchasing items through a gift
registry is “very different from matching online contributions that are used
to fund a down payment on a home” (App. Br. 5-6 and Reply Br. 3).
Appellant’s argument is not persuasive not the least because claim 9
stands rejected under 35 U.S.C. § 103 as obvious over a combination of
references, not over Pandhe alone. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (Nonobviousness cannot be established by attacking
references individually when the rejection is based on the teachings of a
combination of references).
Schmidlin discloses at paragraph [0001] that a participating financial
institution can structure the PLAN fund to accept matching gift contributions
by third parties, e.g., wedding service vendors. Combining Pandhe’s method
of having relatives contribute gifts with Shaer’s cybermediary for the
purpose of allowing relatives to make contributions toward a mortgage down
payment, including matching gift contributions, as disclosed in Schmidlin is
nothing more than the combination of known elements according to their
established functions, and yields a predictable result. Therefore, it would
have been obvious at the time of Appellant’s invention. See KSR, 550 U. S.
at 416.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 9 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejections of claims 1-4 and 6-10 under 35 U.S.C.
§ 103(a) are affirmed.

Appeal 2011-008426
Application 12/133,476

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (2011).

AFFIRMED

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