Ex Parte Lorberg et al

Patent Trial and Appeal Board

Sep 16, 2013

11836902 (P.T.A.B. Sep. 16, 2013)

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.
11/836,902 08/10/2007 Dana Lorberg P00345-US-UTIL(M01.062) 4022
28062 7590 09/16/2013
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
SCARITO, JOHN D
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
09/16/2013 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
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANA LORBERG and PATRICK KILLIAN
____________________

Appeal 2011-008647
Application 11/836,902
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 5-16, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM1.

BACKGROUND
Appellants’ invention is directed to a remittance system that may aid
recipients of funds transfers in finding nearby locations to access the
transferred funds (Spec. 5, ll. 1-4).
Claim 1, reproduced below with added bracketed notations, is
representative of the subject matter on appeal:
1. A method comprising:
[a] receiving, in a computer system, a first indication,
said first indication indicative that a funds transfer has been
completed by crediting of said funds transfer to a recipient’s
payment card account;
[b] in response to receiving the first indication,
transmitting from the computer system, to a mobile telephone
system, a request for a current location of a mobile telephone
operated by the recipient;
[c] receiving in the computer system, from the mobile
telephone system, information indicative of the current location
of the mobile telephone operated by the recipient;

1 Our decision will make reference to Appellants’ Appeal Brief (“App.
Br.,” filed October 29, 2010) and Reply Brief (“Reply Br.,” filed March 9,
2011) and the Examiner’s Answer (“Ans.,” mailed January 19, 2011).
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[d] using the current location of the mobile telephone to
determine at least one cash location for retrieving cash from the
recipient's payment card account; and
[e] after determining the at least one cash location,
transmitting, from the computer system to the mobile telephone
operated by the recipient, a message that indicates to the
recipient that the funds transfer has occurred and said at least
one cash location.

THE REJECTIONS
The following rejections are before us for review:
Claims 1, 5, 9, 11, 16, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ginsberg (US 2008/0200144 A1, pub. Aug. 21, 2008) in
view of Calvert (US 6,526,275 B1, iss. Feb. 25, 2003), in further view of
Rangarajan (US 6,757,544 B2, iss. Jun. 29, 2004), and in further view of
Tulluri (US 2006/0163341 A1, pub. Jul. 27, 2006).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ginsberg, in view of Calvert, in further view of Rangarajan, in further view
of Tulluri, in further view of Choey (US 2003/0182194 A1, pub. Sep. 25,
2003), and in further view of Avec Mobile, Wayfinder Earth: navigation on
a phone without GPS (June 5, 2006) (hereinafter “Wayfinder”).
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ginsberg, in view of Calvert, in further view of Rangarajan, in further
view of Tulluri, in further view of Choey, in further view of Wayfinder, and
in further view of Downing (US 5,963,647, iss. Oct. 5, 1999).
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ginsberg, in view of Calvert, in further view of Rangarajan, in further view
of Tulluri, and in further view of Maya Fisher-French, talking ‘bout a
revolution, Maverick Magazine, 38 (Nov. 3 2005).
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Claims 12-15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ginsberg, in view of Calvert, in further view of Rangarajan, in further
view of Tulluri, and in further view of Dunn (US 5,659,596, iss. Aug. 19,
1997).

ANALYSIS
Appellants argue claims 1, 5-16, and 20 as a group (App. Br. 8). We
select claim 1 as representative, consistent with Appellants’ designation of
claim 1 “as exemplary of all of the pending claims” (id.). The remaining
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellants’ argument that the Examiner “failed
to provide ‘articulated reasoning with rational underpinning’ as to why one
who is skilled in the art would combine the references” and was guided in
his obviousness determination by impermissible hindsight (App. Br. 8 and
10; see also Reply Br. 2, 3). Instead, we find that the Examiner’s articulated
rationale for modifying Ginsberg, in view of Calvert, Rangarajan, and
Tulluri, i.e., to provide a system of alerts that notifies a recipient, via the
recipient’s mobile device, that a funds transfer has occurred, and also
identifies a location at which the funds can be retrieved, in order to curtail
user confusion, preempt customer service calls, and increase customer
satisfaction (Ans. 21-22), is amply supported by rational underpinnings. We
also find that the Examiner has not engaged in any impermissible hindsight
but instead has based his obviousness determination on the combined
teachings of the cited references.
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Ginsberg discloses a system and method for providing alerts to a
user’s mobile device in response to a transaction, e.g., loading of funds to
the user’s account, and describes that the alert may be a text based message,
including, e.g., the transaction amount (see Ginsberg, para. [0023]), and may
also include optional appended information, e.g., “service provider[]
information” and “location information” (see, e.g., Ginsberg, para. [0052]).
Appellants argue that one skilled in the art would understand that
“location information” (as referenced in paragraph [0052] of Ginsberg)
relates to user requests for information, as described in paragraph [0039],
and would recognize that the “alerts” in paragraph 0023 and those in
paragraph 0039 are different notwithstanding that “Ginsberg [ ] uses the
term ‘alert’ to refer to all messages sent to the user’s mobile phone” (App.
Br. 9 and Reply Br. 2-3). That argument is not persuasive.
We find nothing in paragraph [0052] that precludes the appending of
supplemental information, including location information, to the “activity”
alerts described in paragraph [0023]. And Appellants have provided no
evidence or reasoning to demonstrate otherwise.
Each of Calvert, Rangarajan, and Tulluri is concerned with providing
location-based services. Calvert discloses a system that determines the
location of a mobile device, either in response to a user request for product
information or on the system’s own initiative, and forwards product
information to the device based on its current location (see, Calvert, col. 2,
ll. 26-43; col. 7, l. 30 – col. 10, l. 64). Rangarajan is similarly directed to
determining location information, and describes, in one embodiment, that
the system responds to a user’s request by determining the location of the
user’s mobile device and providing information regarding the location of the
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nearest ATM (see, e.g., Rangarajan, col. 1, l. 66 – col. 2, l. 8).
Tulluri describes a computer-implemented system for transferring funds
from a sender to a receiver; the system receives information regarding the
location of the receiver and notifies the receiver of the funds transfer and
provides information on nearby ATM locations where the funds may be
received (see, e.g., Tulluri, paras. [007] – [010])
In our view, the Examiner’s proposed modification of Ginsberg to
include features, as taught by Calvert, Rangarajan, and Tulluri, is nothing
more than a combination of prior art elements according to their established
functions, and yields a predictable result. Therefore, it would have been
obvious at the time of Appellants’ 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 the absence of specific, technical arguments as to why the
Examiner’s stated rationale is insufficient or why the Examiner’s proposed
modification of Ginsberg is more than the predictable use of prior art
elements according to their established functions, we find Appellants’
argument for patentability unpersuasive.
Therefore, we will sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a). We also will sustain the Examiner’s rejections of
claims 5-16 and 20, which stand or fall with claim 1.

DECISION
The Examiner’s rejections of claims 1, 5-16, and 20 under 35 U.S.C.
§ 103(a) are affirmed.
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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)(iv).

AFFIRMED

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