Ex Parte Lorberg et al

Patent Trial and Appeal Board

Mar 24, 2014

11836892 (P.T.A.B. Mar. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/836,892 08/10/2007 Dana Lorberg P00313-US-UTIL(M01.061) 4001
28062 7590 03/24/2014
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
03/24/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte DANA LORBERG and PATRICK KILLIAN 7
___________ 8
9
Appeal 2011-011817 10
Application 11/836,892 11
Technology Center 3600 12
___________ 13
14
15
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
18
FETTING, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL22
Appeal 2011-011817
Application 11/836,892

2

STATEMENT OF THE CASE1 1
Dana Lorberg and Patrick Killian (Appellants) seek review under 2
35 U.S.C. § 134 of a final rejection of claims 2 and 9-21, the only claims 3
pending in the application on appeal. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented systems on the basis of an international 6
payment card system. (Spec. 1:7-9). 7
An understanding of the invention can be derived from a reading of 8
exemplary claims 2 and 17, which are reproduced below (bracketed matter 9
and some paragraphing added). 10
2. A method comprising: 11
[1] using a computer to receive an inquiry, 12
the inquiry identifying 13
a first currency, 14
a monetary amount in the first currency 15
and 16
at least some digits of a recipient's payment card 17
account number, 18
said recipient's payment card account number identifying 19
a payment card account 20
into which a funds transfer is to be made, 21
said inquiry originating from a mobile telephone 22
operated by a sender of the funds transfer; 23
[2] using the computer to retrieve conversion fee information 24
from a database 25
by using at least some digits of the payment card account 26
number, 27
said database storing information 28
indicative of fees 29

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 11, 2011) and Reply Brief (“Reply Br.,” filed July 12,
2011), and the Examiner’s Answer (“Ans.,” mailed May 17, 2011).
Appeal 2011-011817
Application 11/836,892

3

charged by payment card issuers 1
for performing currency conversions; 2
[3] using the computer to calculate 3
a monetary amount in a second currency by using 4
(a) the retrieved conversion fee information, 5
(b) conversion rate information 6
and 7
(c) said monetary amount in the first currency; 8
and 9
[4] using the computer to respond to the inquiry 10
by providing the calculated monetary amount in the 11
second currency, 12
said calculated monetary amount in the second currency 13
corresponding to 14
a proposed currency conversion 15
to be applied to said monetary amount 16
in said first currency. 17
17. A method comprising: 18
[1] using a computer to receive an inquiry concerning a 19
proposed funds transfer, the inquiry including recipient 20
information and a first monetary amount; 21
[2] using the computer to look up a foreign exchange 22
conversion rate based at least in part on the recipient 23
information; 24
[3] using the computer to calculate a second monetary amount 25
that is an estimated amount to be remitted to a recipient of the 26
proposed funds transfer, said calculation using the foreign 27
exchange conversion rate and the first monetary amount; 28
and 29
[4] using the computer to respond to the inquiry by indicating 30
the second monetary amount. 31
32
Appeal 2011-011817
Application 11/836,892

4

The Examiner relies upon the following prior art: 1
Landa US 2004/0024697 A1 Feb. 5, 2004 2
Beck US 2004/0148255 A1 Jul. 29, 2004 3
Claims 17, 18, and 20 stand rejected under 35 U.S.C. § 102(b) as 4
anticipated by Beck. 5
Claims 2, 9-16, 19, and 21 stand rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Beck and Landa. 7
8
ISSUES 9
The issues of anticipation turn primarily on the scope of the limitation 10
regarding the calculation step. The issues of obviousness turn primarily on 11
whether Beck describes a way of implementing Landa’s telephonic 12
worldwide currency transfers. 13
14
FACTS PERTINENT TO THE ISSUES 15
The following enumerated Findings of Fact (FF) are believed to be 16
supported by a preponderance of the evidence. 17
Facts Related to the Prior Art 18
Beck 19
01. Beck is directed to processing credit card transactions involving 20
currency conversion, and in particular to determining the 21
conversion rate at the time of authorization in order to provide a 22
cardholder with the final price of the transaction in the 23
cardholder's billing currency based upon a specific currency 24
exchange rate that is developed by reference to a combination of 25
merchant, merchant location, acquirer, gateway, value-added 26
Appeal 2011-011817
Application 11/836,892

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reseller, currency, card type, transaction type, and/or card issuer. 1
Beck, para. 0003. 2
02. Beck performs a time-of-transaction currency conversion 3
(hereafter TOT currency conversion) from the currency in which 4
the merchant sells goods or services to the currency in which the 5
cardholder's credit card is denominated utilizing a rate that is 6
specifically developed by reference to the particular merchant, 7
acquirer, card association, and issuer. At some point after a 8
merchant has generated an authorization request in the merchant's 9
currency for a transaction by a cardholder in a different currency, 10
but before authorization, the authorization request is identified as 11
being one for which currency conversion is appropriate. The 12
transaction amount in the authorization is converted from the 13
merchant's currency to the currency of the cardholder's issuing 14
currency, and optionally modified to include additional fees. The 15
converted authorization request is then transmitted to the 16
appropriate card association and then to the issuing bank for 17
authorization. An authorization response approving the 18
transaction is transmitted back ultimately to the merchant. The 19
cardholder thus sees the transaction and can approve it in the 20
cardholder's issuing currency, rather than in the merchant's 21
currency, and in an amount that accurately reflects the appropriate 22
currency conversion rates, markups and fees for the transaction. 23
Beck, para. 0011. 24
03. Merchant preferably uses a POS device designed to support the 25
TOT process by comparing the credit card number used in the 26
Appeal 2011-011817
Application 11/836,892

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transaction against an account range file containing credit card 1
prefixes of all credit cards to which TOT can be applied. In an 2
alternative embodiment, the identification of TOT-eligible 3
transactions occurs at a payment gateway that includes the account 4
range file. Beck, para. 0031. 5
Landa 6
04. Landa is directed to transfer of money between locations and the 7
transfer of money or lines of credit using a set of verification 8
numbers and recipient information. Landa, para. 0001. 9
05. Landa describes a system for transferring money. The system 10
may include a card with a unique identification number, a 11
verification number, a service provider system, and a distributor. 12
The service provider system may collect the unique identification 13
number and verification number from a purchaser. Further, the 14
service provider may collect information associated with verifying 15
the identity of the recipient. The distributor may then contact the 16
service provider, verify the identity and transfer amount, and 17
distribute the currency or line of credit. The currency of the 18
denomination associated with the card and the currency of 19
distribution may be the same or different or include other means 20
of facilitating trade. The verification number may be generated 21
from data associated with the date of the vending, the vendor 22
identity, the vending location, the card number, and the 23
denomination, among others. Landa, paras. 0013-0014. 24
Appeal 2011-011817
Application 11/836,892

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06. Billions of dollars are transferred across borders, continents, and 1
oceans. Landa provides a solution for such transfers. Landa, para. 2
0029. 3
07. Landa describes communicating its information over a telephone. 4
Landa, paras. 0050-0061. 5
6
ANALYSIS 7
Claims 17, 18, and 20 rejected under 35 U.S.C. § 102(b) as anticipated by 8
Beck. 9
We are not persuaded by the Appellants’ argument that 10
Beck's system calculates the amount to be charged to the 11
purchaser, and not an amount to be remitted to the funds 12
transfer recipient. 13
App. Br. 14. The step at issue is “using the computer to calculate a second 14
monetary amount that is an estimated amount to be remitted to a recipient of 15
the proposed funds transfer.” Thus, the step is simply calculating an 16
amount. That Beck calculates an amount is undisputed. The amount is 17
estimated, not actual, and is about the amount to be remitted. The amount to 18
be remitted is a value whose size is computed in Beck. Finally, in any funds 19
transfer, there is a payor and payee. To say a party is a payor rather than a 20
payee simply ignores the corresponding payee. 21
Claims 2, 9-16, 19, and 21 rejected under 35 U.S.C. § 103(a) as 22
unpatentable over Beck and Landa. 23
We are not persuaded by the Appellants’ argument that 24
[r]eceiving the payment card account information from the 25
purchaser is simply not the same as receiving "an inquiry 26
identifying ... at least some digits of a recipient's payment card 27
account number". To put this in simple terms solely for the 28
Appeal 2011-011817
Application 11/836,892

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purpose of illustrating the difference, if the merchant of Beck is 1
akin to the claimed "recipient", and the customer of Beck is 2
akin to the claimed "sender", there is simply no teaching in 3
Beck to provide the creation of an inquiry in which "at least 4
some digits of the [merchant's] payment card account number" 5
are provided to initiate a transfer. 6
App. Br. 10. Both references show accepting data representing an amount of 7
currency and a card number, looking up the card number to obtain further 8
information, and performing a financial transaction. Landa describes getting 9
its input from a phone. This scope encompasses mobile phones. Landa also 10
describes the necessity of currency conversion and loading the transaction 11
proceeds into an account represented by the card. Beck describes the 12
process of currency conversion and fee assessment. Thus, Landa describes 13
the limitations of receiving an inquiry for a currency and amount and 14
payment card, generally converting into another currency, and providing the 15
second currency on the card account, and Beck describes actually 16
performing a currency conversion using the fee and rate information. 17
Landa’s explicit recitation of transferring money around the world provides 18
the reason for finding an implementation such as that in Beck. 19
Appellants’ contention regarding Beck simply misses the Examiner’s 20
point that it is the phone in Landa that would necessitate the inquiry. We 21
also find that claim 2 does not recite a step of originating anything from a 22
mobile phone, but merely describes an aspirational source for the data 23
received in its first step. 24
25
CONCLUSIONS OF LAW 26
The rejection of claims 17, 18, and 20 under 35 U.S.C. § 102(b) as 27
anticipated by Beck is proper. 28
Appeal 2011-011817
Application 11/836,892

9

The rejection of claims 2, 9-16, 19, and 21 under 35 U.S.C. § 103(a) 1
as unpatentable over Beck and Landa is proper. 2
3
DECISION 4
The rejection of claims 2 and 9-21 is affirmed. 5
No time period for taking any subsequent action in connection with 6
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 7
§ 1.136(a)(1)(iv) (2011). 8
9
AFFIRMED 10
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hh 15