Ex Parte Kinyua et al

Patent Trial and Appeal Board

Jul 19, 2018

13840560 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/840,560
98804 7590
Reed Smith LLP
P.O. Box488
Pittsburgh, PA 15230
03/15/2013
07/23/2018
FIRST NAMED INVENTOR
Josphat K. Kinyua
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
13-30007-US 4840
EXAMINER
WARDEN, MICHAEL J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/23/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptoipinbox@reedsmith.com
gdonovan@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSPHAT K. KINYUA, MARTIN NZIOKI, and
JULIANN. KYULA
Appeal2017-003295
Application 13/840,560 1
Technology Center 3600
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
CLEMENTS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-5, 7-14, 16-23, and 25-27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as "Mobile Decisioning
Holdings Limited." App. Br. 1.
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Application 13/840,560
STATEMENT OF THE CASE
The present invention advances credit from a lender to a prepaid
service provider, e.g., to a subscriber account of a prepaid cellphone
communications provider. Spec. ,r,r 17-18. Claim 1 is reproduced below
( disputed limitation in italics).
1. A method for advancing prepaid credit executed by one or
more computing devices, the method comprising:
receiving, by at least one of the one or more computing devices,
a request for an advance of prepaid credit from a subscriber,
wherein the subscriber has a subscriber account with a prepaid
service provider;
determining, by at least one of the one or more computing
devices, whether the subscriber is eligible for an advance based
at least in part on an assessment of historical data relating to the
subscriber account;
authorizing, by at least one of the one or more computing
devices, a transfer of prepaid credit from a lender account to the
subscriber account based at least in part on a determination that
the subscriber is eligible for an advance of prepaid credit,
wherein the lender account stores prepaid credits accepted by the
service provider;
monitoring, by at least one of the one or more computing devices,
the subscriber account on a network of the prepaid service
provider to detect any subsequent increase of prepaid credit in
the subscriber account; and
triggering, by at least one of the one or more computing devices,
recovery of at least a portion of the prepaid credit previously
advanced to the subscriber account based at least in part on
detection of a subsequent increase of prepaid credit in the
subscriber account.
App. Br. 26 (Claims Appendix).
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THE REJECTI0NS 2
Claims 1-5, 7-14, 16-23, and 25-27 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception of statutory subject matter. Final
Act. 6-7.
Claims 1, 7, 10, 16, 19, and 25 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Mobile Decisioning (MDSA), 3 Van Luchene
(US 2007/0087822 Al; published Apr. 19, 2007), and Ahmedzade (EP
2 184 708 A2; published May 12, 2010). Final Act. 8-17.
Claims 2, 11, and 20 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Mobile Decisioning, Van Luchene, Ahmedzade, and Zain
Kenya. 4 Final Act. 17-20.
Claims 3, 5, 12, 14, 21, and 23 5 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Mobile Decisioning, Van Luchene,
Ahmedzade, and Bierbaum et al. (US 8,181,867 Bl; issued May 22, 2012,
hereinafter "Bierbaum"). Final Act. 20-29.
2 The Examiner's Answer withdraws rejections of claims 8, 17, and 26
under 35 U.S.C. § 112, second paragraph, and claims 4, 13, and 22 under 35
U.S.C. § I03(a). Ans. 3.
3 Our Solutions, Emergency Airtime Credit Advances, Mobile Decisioning
denotes itself, by the footer of the corresponding website printout, as
available on July 2, 2014, http://web.archive.org/web/20101002105127/;
http://www.mdsafrica.com/ solutions.html (hereinafter "Mo bile
Decisioning").
4 Zain Kenya introduces airtime credit, call-back services, CET I News,
Aug. 10, 2010, http://www.telecompaper.com/news/zain-kenya-introduces-
airtime-credit-callback-services-.... " 1-5 (2010), last visited April 6, 2015
(hereinafter "Zain Kenya").
5 The rejection of Claims 4, 13, and 22 has been withdrawn. Final Act. 3;
supra n. 2.
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Claims 8, 9, 17, 18, 26, and 27 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Mobile Decisioning, Van Luchene,
Ahmedzade, Quillian (US 2013/0173464 Al; published July 4, 2013), and
Hannon et al. (US 2008/0312968 Al; published Dec. 18, 2008, hereinafter
"Hannon"). Final Act. 29--38.
REJECTION OF CLAIMS 1-27
UNDER 35 U.S.C. § 101
We select claim 1 as representative of claims 2-27 for this rejection.
See 37 C.F.R. 4I.37(c)(l)(iv) (representative claims). For the following
reasons, we are unpersuaded of error in this rejection of claim 1.
A. Principles of Law
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
"abstract ideas" category embodies the longstanding rule that an idea, by
itself, is not patentable. Alice Corp., 134 S. Ct. at 2354--55 (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp., 134 S. Ct. at 2355. The first step in the analysis is
to "determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea. Id. There is no definitive rule
to determine what constitutes an "abstract idea." Rather, the Federal Circuit
has explained that "both [it] and the Supreme Court have found it sufficient
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to compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (Explaining that, in
determining whether claims are patent-eligible under 35 U.S.C. § 101, "the
decisional mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen-what prior cases were
about, and which way they were decided."). The Federal Circuit also noted
that "[E]xaminers are to continue to determine if the claim recites (i.e., sets
forth or describes) a concept that is similar to concepts previously found
abstract by the courts." Amdocs, 841 F.3d at 1294 n.2 (citation omitted.)
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. at 1293 (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S.at 79-80 (2012)). In other words, the second step is to
"search for an 'inventive concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id. at
1293-1294(quoting Mayo, 566 U.S. at 72). The prohibition against
patenting an abstract idea "'cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment' or adding
'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-
611 (2010) ( citation omitted).
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B. Examiner's Findings
The Examiner finds claim 1 is "directed towards lending an item of
value[, which] is a fundamental economic practice," and "do[ es] not include
limitations that are 'significantly more' than the abstract idea." Final Act. 6.
The Examiner elaborates:
Appellant's claims are similar to loaning a friend money and
determining that payday is the best time to ask for the money
back; or waiting until a friend's paycheck is deposited to cash a
check from that friend. Appellant's claims do not address a
technical problem in trying to recover the item of value (prepaid
credit). Appellant merely describes the computer
implementation of this process.
Ans. 5.
C. Appellants ' Contentions
Appellants contend claim 1 "recite[s] limitations that are 'significantly
more' than the abstract idea of 'lending an item of value[]"' (App. Br. 7)
because:
The [claim] limitations ... improve the technology of prepaid
credit advancement systems in multiple ways. By determining
whether a subscriber is eligible for an advance based at least in
part on "an assessment of historical data relating to the subscriber
account," the system is configured to advance to credits to
subscribers who may not have any funds in their account or have
a linked account, but who are likely to repay the advance based
on an analysis of the historical data relating to the subscriber
account. Additionally, by storing prepaid credits accepted by the
service provider on the lender account, the present advancement
system removes any delay or lag time in transferring the credits
to an account of the subscriber.
Furthermore, the limitations . . . improve the functioning of a
computer. As explained in the Application, the Recovery
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Service disclosed therein "can be a computer system and
software system responsible/or recovering advances from
subscribers of the prepaid service bv intercepting events (refills,
top-ups, peer transfers, deposits, time-based events)." .... By
directly monitoring the account of the subscriber on the network
of the prepaid service provider and triggering recovery based
upon detection of a subsequent increase of prepaid credit, the
present system avoids wasting computing resources attempting
recovery when there are insufficient funds in the subscriber's
account.
Id. at 8-9 ( emphasis omitted).
D. Analysis
We are unpersuaded of error.
As to the first step, we agree with the Examiner that claim 1 is
directed to an abstract idea of lending an item of value-namely by
advancing, tracking, and recouping prepaid credit for a service. Appellants
argue that the claimed invention additionally "improve[ s] the technology of
prepaid credit advancement ... based at least in part on 'an assessment of
historical data relating to the subscriber account"' and "[b ]y directly
monitoring the account of the subscriber on the network of the prepaid
service provider." App. Br. 8-9 (see block-quoted supra). As a result,
according to Appellants, "the present system avoids wasting computing
resources attempting recovery when there are insufficient funds in the
subscriber's account." Id. at 9. Appellants do not show, however, that these
features do more than merely implement the abstract idea via generic
technology and limit the claimed invention to a technological environment.
See Alice, 134 S. Ct. at 2358 ("[M]ere recitation of a generic computer
cannot transform a patent ineligible abstract idea into a patent eligible
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invention."); Versata, 793 F.3d 1306, 1332 (Fed. Cir. 2015) ("[P]atenting an
ineligible concept cannot be circumvented by limiting the use of an
ineligible concept to a particular technological environment."); cf, Bascom
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348
(Fed. Cir. 2016) (The at-issue claim, though directed to the abstract idea of
filtering, was patent-eligible due to locating the filter tool so as to
unconventionally provide "both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server."). Appellants' unsupported
allegations are insufficient to overcome the judicial exception. See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (Mere conclusory statements
hold little probative value.).
Appellants also attempt to analogize their claims to those in DDR
Holdings LLC v. Hotels.com LP, 773 F.3d 1245 (Fed. Cir. 2014), by arguing
that (1) "the present system is also necessarily rooted in computer
technology" because it "is directed to overcoming the problem of
determining when to initiate recovery of prepaid credit that has been
previously advanced to a subscriber of a prepaid service" and (2) "the
invention specifically arises in the realm of computer networks since prepaid
service companies operate on a different activity and payment network than
prepaid credit advance companies." App. Br. 9--10 ( emphasis omitted).
This argument is not persuasive because it neglects that the problem
overcome by the claimed invention, not merely the invention itself, must
arise in the realm of computer networks. DDR, 773 F.3d at 1257
("[O]vercome a problem specifically arising in the realm of computer
networks."). Here, the problem overcome by the invention does not arise in
the realm of computer networks but is, rather, the commonplace problem of
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timing a recovery of credit (knowing when to "cash the check") by
monitoring the debtor's ability to pay. See DDR, 773 F.3d at 1258
(Distinguishing DDR 's Internet-centric problem of advertisement banner
hyperlinks snatching website visitors over "the 'brick and mortar' context"
because "[t]here is ... no possibility that[,] by walking up to [a kiosk in a
warehouse store], the customer will be suddenly and completely transported
outside the warehouse store.").
Appellants' argument also neglects DDR 's holding that those
patent-eligible claims recited a non-routine, unconventional process in the
realm of computer networks. Id. at 1258-59 (Holding the claims specified
"a result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink. "). Even assuming
Appellants' contention that the claimed monitoring is performed across two
networks, 6 Appellants still fail to show the monitoring does more than
merely "broadly and generically claim 'use of [ different networks]' to
perform an abstract business practice." Id. (citing the "use of the Internet"
language of Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir.
2014)). For example, Appellants do not show that monitoring data from
another network was unconventional at the time of the invention.
6 Appellants have alleged, but not established, that the claimed invention is
restricted to "prepaid service companies operat[ing] on a different activity
and payment network than prepaid credit advance companies." App. Br. 10
(quoted supra). Because the Examiner does not dispute that these claimed
entities operate on different networks (for whatever "networks" may mean),
we accept this alleged claim restriction for purposes of appeal.
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As to the second step, we find nothing in claim 1 that adds anything
"significantly more" to transform the abstract idea of loaning an item of
value. Alice, 134 S. Ct. at 2357. Beyond that abstract idea, the
claims merely recite "well-understood, routine, conventional activit[ies ],"
such as performing steps "on a computing device." Alice, 134 S. Ct. at 2359
(citing Mayo, 566 U.S. at 73). Appellants do not identify any error in the
Examiner's findings regarding these routine elements. Considered
individually or taken together as an ordered combination, the claim elements
fail "to 'transform' the claimed abstract idea into a patent-eligible
application." Alice, 134 S. Ct. at 2357 (citing Mayo, 566 U.S. at 72-73, 78).
E. Dependent claims 9, 18, and 2 7
Claim 9 depends from claim 1 and adds the following argued
limitations: "extracting subscriber activity data from activity logs relating to
the subscriber account; determining a pattern of prepaid credit additions
from the subscriber activity data; and calculating the grace period based at
least in part on the pattern of prepaid credit additions."
Appellants argue the claimed calculating of a grace period from
subscriber activity data achieves a "transformation" that overcomes Alice's
second step because:
[T]he subscriber activity data contained in the activity logs is
transformed into a grace period which is used to determine when
to initiate recovery of a prepaid credit advance. Referring to
section ( c) of MPEP 2106(2)(B)[], this transformation changes
the function of the data. Prior to the transformation, the activity
data indicated the activity of a subscriber account with the
service provider. After the transformation, the grace period is
used by the prepaid credit advance provider to determine when
to initiate recovery of a prepaid credit advance.
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App. Br. 11.
We are unpersuaded of error. Appellants' argument references the
"transformation" prong of the machine-or-transformation test, which "can
provide a useful clue in the second step of the Alice/Mayo framework,"
Smart Sys. Innovations, 873 F.3d at 1375. Appellants do not show,
however, that calculating a customer parameter (grace period) from
customer statistics (subscriber activity data) constitutes a "transformation"
overcoming Alice's second step. The Appeal Brief does not analyze or
apply any precedent, but merely quotes USPTO guidelines citing Bilski
( determining seller's gain "under each historical weather pattern" held
patent-ineligible (claim 7)) and Gottschalk (converting decimal numerals to
binary numerals held patent-ineligible). App. Br. 11. Calculating a
customer parameter from customer statistics, however, is not a
"transformation" overcoming Alice's second step. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1361---64 (Fed. Cir. 2015) (Patent-ineligle
method of gathering sales statistics for different price points and calculating
an estimated outcome for each price point from those statistics.); see also
In re Bilski, 545 F .3d 962---63 (Examples of signal and data processing that
do not satisfy the transformation prong of the test.).
F. Conclusion
For the foregoing reasons, we are not persuaded of error.
Accordingly, we sustain the 35 U.S.C. § 101 rejection of representative
claim 1 and claims 2-27 falling therewith.
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35 U.S.C. § 103(A) REJECTION OF CLAIMS 1, 7, 10, 16, 19, AND 25
OVER MOBILE DECISIONING, VAN LUNCHENE,
AND AHMEDZADE
We select claim 1 as representative of claims 7, 10, 16, 19, and 25 for
this rejection. See 37 C.F.R. 4I.37(c)(l)(iv) (representative claims). For the
following reasons, we are unpersuaded of error in this rejection of claim 1.
The disputed limitation of claim 1 is "monitoring, by at least one of
the one or more computing devices, the subscriber account on a network of
the prepaid service provider to detect any subsequent increase of prepaid
credit in the subscriber account." Appellants argue the Examiner erred in
finding Ahmedzade teaches or suggests the claimed monitoring because:
The relevant portion of Ahmedzade discloses receiving a list of
network subscribers that have made a balance top-ups,
comparing the list to a list of debtors, and charging the accounts
of network subscriber's that have made a top-up. However, this
section of Ahmedzade does not disclose or suggest "monitoring
the subscriber account on a network of the prepaid service
provider" to detect any subsequent increase of prepaid credit.
Unlike the present system, Ahmedzade relies on receiving logs
of all subscriber activity and comparing the logs to debtor's lists.
By contrast, the present system recovers advances "from
subscribers of the prepaid service by intercepting events (refills,
top-ups, peer transfers, deposits, time-based events)." See
Application, para [0051].
App. Br. 14.
This argument is not persuasive because it is not commensurate with
the scope of claim 1, which does not require the monitoring be performed by
the network of the prepaid service provider. Claim 1 does not recite, for
example, that the monitoring entails "intercepting events (refills, top-ups,
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peer transfers, deposits, time-based events)" on the subscriber network, as is
argued (above block quote). Claim 1 recites "monitoring, by at least one of
the one or more computing devices, the subscriber account on the network
of the prepaid service provider." App. Br. 2 6 ( Claims Appendix) ( emphasis
added). We interpret "on a network of the prepaid service provider" of
claim 1 as modifying "the subscriber account"-i.e., the subscriber account,
not the monitoring, is "on a network of the prepaid service provider." Id.; In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (claim
terms given their "their broadest reasonable interpretation consistent with the
specification"). We, therefore, agree with the Examiner's finding that
Ahmedzade teaches the claimed monitoring by reviewing the logs of
subscriber activity to track subscriber accounts that are located on the
service provider network. Ans. 7; Final Act. 13.
Furthermore, even if claim 1 required the monitoring be performed by
the network of the prepaid service provider, Appellants not persuaded us that
the Examiner erred. The Examiner finds Ahmedzade teaches "monitoring"
not only by teaching reviewing of the log, but also by teaching logging of
top-ups. See Final Act. 13 ("The creation of the list of subscriber accounts,
receiving of the list of subscriber accounts, and analysis of the subscriber
account are a monitoring of subscriber accounts" (citing Ahmedzade ,r 17).).
Appellants contrast this logging of top-ups by Ahmedzade' s operator
network with the "intercepting [top-up] events" example from the
Specification. App. Br. 14 ("By contrast, the present system recovers
advances 'from subscribers of the prepaid service by intercepting events
(refills, top-ups, peer transfers, deposits, time-based events)."') (citing Spec.
,r 51) ( emphasis omitted). Appellants' argument does not persuasively rebut
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that Ahmadezade' s logging of top-ups teaches the claimed monitoring,
however, because claim 1 does not limit "monitoring" to intercepting top-
ups. Appellants' argument asks us to read the "intercepting" example into
claim 1 without presenting a disclaimer of the broader "monitoring" claim
language. "[ A ]bsent a clear disclaimer in the specification, the embodiments
in the specification do not limit broader claim language." Eolas
Technologies Inc. v. Microsoft Corp., 399 F.3d 1325, 1337 (Fed. Cir. 2005).
For the foregoing reasons, we are not persuaded of error.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of representative
claim 1 and claims 7, 10, 16, 19, and 25 falling therewith.
35 U.S.C. § 103(a) REJECTION OF CLAIMS 2, 11, AND 20
OVER MOBILE DECISIONING, VAN LUNCHENE, AHMEDZADE,
AND ZAIN KENYA
We select claim 2 as representative of claims 11 and 20 for this
rejection. See 37 C.F.R. 4I.37(c)(l)(iv) (representative claims). For the
following reasons, we are unpersuaded of error in the rejection of claim 2.
The disputed limitation of claim 2 is "determining a maximum
amount of prepaid credit that the subscriber is eligible to be advanced based
on an assessment of historical data relating to the subscriber account."
Appellants argue the Examiner erred in finding the combination of Mobile
Decisioning (MDSA) and Zain Kenya suggest the claimed determining
because:
[T]he disclosure of "MDSA [being] able to lend various airtime
amounts depending the usage history of the subscriber" does not
necessarily require the determination of a maximum amount of
prepaid credit that the subscriber is eligible to be advanced based
on an assessment of historical data relating to the subscriber
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account. For example, MDSA could receive a request for a
certain amount of prepaid credit from a subscriber, determine
whether the subscriber is entitled to the requested amount of
prepaid credit, and either approve or deny the request, all without
determining a maximum amount of prepaid credit that the
subscriber is eligible to receive.
Zain relies on a generic credit check of the customer in order to
determine an amount that the customer is eligible for but does
not involve an assessment of historical data relating to the
subscriber account. Under the system disclosed in Zain, a
subscriber with a bad credit score who consistently repays
prepaid credit advances with the system would be eligible for a
smaller advance that a subscriber with a good credit score who is
frequently delinquent in repaying prepaid credit advances.
App. Br. 16-18.
We are not persuaded of error. As the Examiner finds, Mobile
Decisioning teaches determining an amount of prepaid credit based on the
subscriber's historical data and Zain Kenya determines a maximum amount
of prepaid credit. Final Act. 18-19; Ans. 7-8. Specifically, Mobile
Decisioning teaches "various airtime [advance] amounts depending on usage
history" and "dynamically customiz[ing] airtime advances ... to reward [a
subscriber] for past usage of the services." Mobile Decisioning, 1.
Zain Kenya teaches airtime advances by denominations of "KES 20, KES 50
and KES100." Zain Kenya, 1. In view of these teachings, we agree with the
Examiner that a person of ordinary skill in the art would contemplate
determining "various airtime [advance] amounts depending on usage
history" (Mobile Decisioning) and as denominations (Zain Kenya). Mobile
Decisioning, 1; Zain Kenya, 1. We also agree that the above combination
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achieves the claimed determining of a maximum amount of prepaid credit
( denomination) based on historical data of a subscriber account (based on
usage history). Appellants' arguments against the references individually
are not persuasive because, as explained, the Examiner is relying upon the
combination of references. See, e.g., In re Keller, 642 F.2d 413, 426 (CCPA
1981) ("one cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references"); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
For the foregoing reasons, we are not persuaded of error.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of representative
claim 2 and claims 11 and 20 falling therewith.
35 U.S.C. § 103(a) REJECTION OF CLAIMS 8, 9, 17, 18, 26, AND 27
OVER MOBILE DECISIONING, VAN LUNCHENE,
AHMEDZADE, QUILLIAN, AND HANNON
The disputed limitation of claim 8 is "determining a period of time
that has passed since the transfer of prepaid credit from the lender account to
the subscriber account; determining whether the period of time is greater
than a grace period for the subscriber." Claims 1 7 and 26 recite similar
subject matter. Claims 9, 18, and 27 respectively depend from claims 8, 17,
and 26. We address the arguments with reference to the language of
claim 8.
Appellants argue the Examiner erred in finding Ahmedzade' s
paragraph 16 teaches the claimed "period of time" because:
There is no "determination" of a time period disclosed in
Ahmedzade, which simply discloses waiting for some preset
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period of time prior [to] confirming that a transaction occurred.
More significantly, the cited section of Ahmedzade also states
that the network subscriber is moved from the pre-debtor list to
the debtor list "in case of transaction success." Therefore, the
period of time referred to in Ahmedzade is merely the period of
time the system waits to verify whether the transfer actually went
through.
App. Br. 21.
We are persuaded of error. Ahmedzade teaches that the "[d]eposit
into the balance of NS 10 is done immediately upon receiving of the
information about request 31" and "[ t ]hen a certain period of time ( for
instance 5 hours) is allowed for confirmation of the transaction 63."
Ahmedzade ,r 16. Thus, Ahmedzade teaches waiting for a "period of time
( for instance 5 hours)" and then determining whether the deposit has
occurred, i.e., yes or no. Id. Ahmedzade does not teach determining how
much time has elapsed since the deposit occurred, as required to teach the
claimed "determining a period of time that has passed since the transfer of
prepaid credit."
The Examiner finds that "[i]n order to confirm the transaction after a
certain period of time, the system of Ahmedzade must be able to determine a
period of time has passed since the transfer." Ans. 8. The Examiner thus
appears to find that any confirmation of a past transfer will necessarily
confirm that a period of time has elapsed since the transfer occurred. As
such, the Examiner appears to construe the claimed "determining a period of
time that has passed since the transfer of prepaid credit" as encompassing a
mere determination that a past transfer has occurred. Id.
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Appeal2017-003295
Application 13/840,560
We find this construction to be neither reasonable nor consistent with
claim 8 and the Specification. As further recited by claim 8, the determined
period of time is weighed against a grace period ("determining whether the
period of time is greater than a grace period for the subscriber"). In view of
this recited feature and its corresponding description within the
Specification's paragraph 62, a person of ordinary skill in the art would
understand that the claimed period of time and grace period are each
quantified for weighing against one another. In tum, the artisan would
understand the claimed "determining a period of time that has passed"
means quantifying that period of time. As argued, the Examiner has shown
only that Ahmedzade teaches waiting a predetermined period of time (before
verifying whether a transfer occurred).
For the foregoing reasons, we are persuaded of error. Accordingly,
we do not sustain the 35 U.S.C. § 103(a) rejection of claims 8, 9, 17, 18, 26,
and 27.
35 U.S.C. § 103(a) REJECTION OF CLAIMS 3, 5, 12, 14, 21, AND 23
OVER MOBILE DECISIONING, VAN LUNCHENE,
AHMEDZADE, AND BIERBAUM
Appellants do not present separate arguments against this rejection of
claims 3, 5, 12, 14, 21, and 23, which do not depend from any claims found
to overcome their rejections. Accordingly, we sustain the 35 U.S.C.
§ 103(a) rejection of claims 3, 5, 12, 14, 21, and 23.
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Appeal2017-003295
Application 13/840,560
DECISION
We affirm the Examiner's decision rejecting claims 1-5, 7, 10-14, 16,
19-23, and 25.
We reverse the Examiner's decision rejecting claims 8, 9, 17, 18, 26,
and 27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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