Ex Parte MacKouse

Board of Patent Appeals and Interferences

Jul 9, 2012

11104959 (B.P.A.I. Jul. 9, 2012)

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.
11/104,959 04/12/2005 Jack MacKouse 052873-0123 3128
78740 7590 07/10/2012
FOLEY & LARDNER
777 EAST WISCONSIN AVENUE
SUITE 3800
MILWAUKEE, WI 53202-5306
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
07/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JACK MACKOUSE1
____________________

Appeal 2011-002858
Application 11/104,959
Technology Center 3600
____________________
Before, KEVIN F. TURNER, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
4, 6-13, 27-31, and 35-37. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Wells Fargo Bank, N.A., is the real party in interest.
2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 2, 2010) and Reply Brief (“Reply Br.,” November 24,
2010), and the Examiner’s Answer (“Ans.,” mailed September 27, 2010).
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THE INVENTION
Appellant’s disclosure relates to an Internet-based bill payment
system which allows a customer to push payment to a payee, such as a
merchant, from the customer’s credit card account, regardless of whether or
not the payee accepts credit card payments. (Spec. 1, ll. 14-17.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. Computer-readable media having stored therein instructions
that when executed cause a computer to implement a process
for a non-interchange bill pay advance transaction by a bill pay
service, the process comprising:
receiving payment instructions from a customer specifying a
credit card account as a source of funds, the credit card account
being provided by an issuer that is affiliated with the bill pay
service, the payment instructions being received using an user
interface that is accessible to the customer by way of the
Internet, the user interface being implemented by the
instructions stored in the computer-readable media;
responsive to receiving the payment instructions, using funding
logic to request the funds from the issuer of the credit card via
an internal funds transfer from the issuer to the affiliated bill
pay service, and wherein the funds are requested such that the
funds are treated by a card association set of rules as a cash
advance and not as a payment to a merchant, the card
association set of rules being rules that merchants must follow
in order to accept the credit card, the funding logic being
implemented by the instructions stored in the computer-
readable media;
receiving the funds from the issuer of the credit card;
sending the received funds to a payee, wherein no interchange
fee is paid in connection with the received funds, and wherein
the bill pay service is configured to send the received funds to
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Application No. 11/104,959

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the payee regardless whether the payee accepts credit card
payments; and
storing a record of the payment in a database.
(App. Br., Claims Appendix 22).

REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Spear 2002/0138428 Al Sep. 26, 2002
Barbara 2003/0105710 Al Jun. 5, 2003

The Examiner made the following rejections:
Claims 1-4, 6-13, 27-31, and 35-37 rejected under 35 U.S.C. § 112,
first paragraph, for failing to comply with the written description
requirement.
Claims 1-4, 6-13, 27-31, and 35-37 rejected under 35 U.S.C. § 103(a)
as unpatentable over Barbara and Spear.3
In response, Appellant relies on the Declaration of Jack MacKouse to
rebut the Examiner’s rejection under 35 U.S.C. § 103, hereinafter referred to
as “MacKouse Decl.”

3 The Examiner’s Answer lists claims 1-4, 16-13 and 27-34 as unpatentable
over Barbara and Spears. (Ans. 5; See also Final Rejection 4.) This appears
to be a typographical error as both the body of the answer and the final
rejection specifically refer to claims 35-37. (Ans. 10, ¶¶ 19-21; Final
Rejection 9; ¶¶ 19-21.) Appellant also treats the rejection as applying to
claims 35-37. (App. Br. 5; Reply Br. 2.) Therefore, we will treat the 35
U.S.C. § 103(a) rejection as applying to claims 1-4, 6-13, 27-31, and 35-37.
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ISSUES4
Did the Examiner err in asserting that claims 1-4, 6-13, 27-31, and 35-
37 fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph? The issue turns on whether a 1) “computer-readable
media” and 2) card association set of rules regarding a cash advance are
adequately described by Appellant’s Specification.
Does the combination of Barbara and Spear teach or suggest “wherein
the funds are requested such that the funds are treated by a card association
set of rules as a cash advance and not as a payment to a merchant,” as recited
by independent claim 1, such that it renders obvious the subject matter of
claims 1-4, 6-13, 27-31, and 35-37 under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
MacKouse Decl.
FF 1. The MacKouse Declaration states that at the time of the
invention, the term “cash advance” was understood by those skilled in the art
to be “a service provided by most credit card and charge card issuers. The
service allows cardholders to withdraw cash, either through an ATM or over
the counter at a bank or other financial agency, up to a certain limit.”
(MacKouse Decl. ¶ 6.)

Barbara

4 We have considered in this decision only those arguments that Appellant
actually raised in the Briefs. Arguments which Appellant could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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FF 2. Barbara is directed to an online payment system which
allows a user to designate a source account to make on-line payments
to different sources. (Abs.)
FF 3. Barbara’s system provides a user with a transaction
account and/or a line of credit associated with the transaction account.
(¶¶ [0020]; [0022]; [0080].)
FF 4. Barbara describes:
[t]he funds can then be sent from the transaction accounts
22 or 30, according to the customers’ instructions, for
example, to other individuals, such as from customer 10
to recipient 14 (or vice versa), to charities, to pay the
customers’ bills, to make payments on the customers’
credit cards, for deposit into another checking account at
another institution, to shop, or to get the cash out of an
ATM.
(¶ [0077].)
FF 5. Barbara describes that a recipient may receive a courtesy check
if the recipient does not have a credit card account or a bank account to
receive funds. (¶¶ [0067]; [0092].)
FF 6. Barbara states:
if the customer 10 designates the customer’s credit card
account 28 as the source account 24, at S24, the payment
shows up as a purchase on a statement for the designated
credit card account 28. This is also an important feature,
which means, for example, that it does not appear as a
cash advance with associated fees and interest.
(¶ [0073].)
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FF 7. Barbara describes inter alia that users can pick up cash, request
cash, and send cash using an enrolled credit card account verified as the
source account. (¶¶ [0031]; [0118].)

Spear
FF 8. Spear is directed to a hybrid credit card transaction system that
processes transactions in a manner which avoids the credit card association
regulated interchange and card association network fees. (¶ [0011].)

ANALYSIS
Claims 1-4, 6-13, 27-31, and 35-37 rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.5
The Examiner asserts that claims 1-4, 6-13, 27-31, and 35-37 fail to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph, because independent claims 1, 7, and 37 are directed to a
“computer-readable media” which is not found in the Specification. (Ans.
4.) In response, Appellant contends that their Specification provides
adequate support for the claimed “computer-readable media” and one of
ordinary skill in the art would understand Appellant’s Specification to
provide a detailed description of stored computer programs (e.g., stored
procedures, PL/SQL stored procedure, Java program, etc.) to implement the
claimed invention. (App. Br. 6; Reply Br. 3.) We agree with Appellant.

5 We note that the Examiner withdrew a separate rejection of claims 36 and
37 under 35 U.S.C. § 112, first paragraph, in an Advisory Action mailed
April 8, 2010.
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While we agree with the Examiner that Appellant’s Specification does
not provide haec verba support for the claimed subject matter, we cannot
agree with the Examiner that Appellant’s Specification does not otherwise
reasonably convey to one with ordinary skill in the art at the time of the
application that the inventors had possession of the claimed “[c]omputer-
readable media having stored therein instructions.” See Purdue Pharma L.P.
v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000); Ariad Pharm., Inc.
v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010 (en banc).
In other words, Appellant’s Specification describes that the processes
of claims 1, 7, and 37 are implemented within stored computer programs and
stored procedures, and, as such, we find the Specification sufficiently
demonstrates that the inventor had possession of a tangible medium to store
the software program. Accordingly, we cannot sustain the Examiner’s
rejection of claims 1-4, 6-13, 27-31, and 35-37 under 35 U.S.C. § 112, first
paragraph, because independent claims 1, 7, and 37 are directed to a
“computer-readable media.”
Additionally, the Examiner asserts that claims 1, 7, and 37, fail to
comply with the written description requirement under 35 U.S.C. § 112, first
paragraph, because the Specification fails to support the limitation “wherein
the funds are requested such that the funds are treated by a card association
set of rules as a cash advance and not as a payment to a merchant.” (Ans. 4.)
Specifically, the Examiner states that “[t]he Specification does not disclose
the card association set of rules including anything regarding a cash
advance.” (Ans. 4.)
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In response, Appellant contends that at the Specification provides
support for the subject matter of claims 1, 7, and 37 at paragraphs [0025],
[0034], and [0165] and “describes the advantages of a noninterchange bill
pay advance methodology . . . which a person of ordinary skill in the art
would understand to be referring to a methodology that uses cash advances.”
(Reply Br. 6-7.)
Based on the above, we agree with Appellant that one of ordinary skill
in the art would understand the pay advance methodology described in these
paragraphs to refer to, and adequately describe, a cash advance in a credit
card system. Thus, we find Appellant’s Specification adequately supports
and sufficiently demonstrates that the inventors had possession of the
limitation “wherein the funds are requested such that the funds are treated by
a card association set of rules as a cash advance and not as a payment to a
merchant.”
Accordingly, we cannot sustain the Examiner’s rejection of claims 1,
7, and 37 under 35 U.S.C. § 112, first paragraph, for this reason. Thus, we
conclude the Examiner erred in rejecting claims 1-4, 6-13, 27-31, and 35-37
as failing to comply with the written description requirement of 35 U.S.C. §
112, first paragraph.

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Claims 1-4, 6-13, 27-31, and 35-37 rejected under 35 U.S.C. § 103(a) as
unpatentable over Barbara and Spear.
Independent claim 16
Appellant argues that that the combination of Barbara and Spear fails
to teach or suggest “wherein the funds are requested such that the funds are
treated by a card association set of rules as a cash advance and not as a
payment to a merchant,” as recited by independent claim 1. (App. Br. 13-
14.) Following, Appellant contends that Barbara teaches away from using a
“cash advance” methodology because Barbara specifically discloses that
payments show up as a purchase on a customer’s statement and do not
appear as a cash advance. (Reply Br. 9.) We cannot agree.
In making this determination, we find that independent claim 1
requires that requested funds be treated as a “cash advance and not as a
payment to a merchant,” which we find to be distinct from how the funds are
classified or otherwise show up on a billing statement, as Appellant
contends. While Appellant may have intended for this limitation to require a
payment post on a customer’s bill in a certain way, such a requirement is not
set forth in the independent claim. See CollegeNet, Inc. v. ApplyYourself,
Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the specification can be
examined for proper context of a claim term, limitations from the
specification will not be imported into the claims).

6 Appellant’s arguments are limited to independent claim 1 and do not
address the merits of claims 2-4, 6-13, 27-31, and 35-37. (App. Br. 21). As
such, we take claim 1 as representative of all of the rejected claims. See 37
C.F.R. § 41.37(c)(1)(vii).
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Based on this construction, we find that Barbara teaches or suggests a
bill pay advance transaction “wherein the funds are requested such that the
funds are treated by a card association set of rules as a cash advance and not
as a payment to a merchant,” as presently claimed. Barbara describes inter
alia that users can pick up cash, request cash, and send cash using an
enrolled credit card account verified as the source account. (FF 7.) More
specifically, Barbara describes that funds can then be sent from a customer’s
account to inter alia other individuals, pay the customers’ bills, make
payments on the customers’ credit cards, deposit into another checking
account at another institution, shop, or get cash out of an ATM. (FF 4.)
Thus, we find Barbara discloses funds that treated by a card association set
of rules (see FF 2, 3) as a cash advance and not as a payment to a merchant.
This interpretation is commensurate with the definition of “cash
advance” suggested by Appellant in the Mackouse Declaration which states
that a “cash advance” allows cardholders to withdraw cash at an ATM. (FF
1; See also Reply Br. 10.) As such, we are not persuaded by Appellant’s
argument and agree with the Examiner that the combination of Barbara and
Spear teaches or suggests “wherein the funds are requested such that the
funds are treated by a card association set of rules as a cash advance and not
as a payment to a merchant,” as recited by claim 1.
Equally unpersuasive is Appellant’s contention that Barbara teaches
away from using a “cash advance” methodology because of how the
payments show up on a customer’s bill, as it is not based on limitations that
appear in the claim. In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(Arguments must be commensurate in scope with the actual claim
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language.). As discussed supra, claim 1 only requires that funds be treated
as a cash advance, and not as a payment to a merchant. While we
acknowledge that Barbara states that payments show up as a purchase on a
customer’s bill and not as a cash advance with associated fees and interest
(FF 6), we do not find this disclosure teaches away from the Appellant’s
claimed invention because Barbara still treats the funds as a cash advance
and not a payment to a merchant. Thus, Appellant’s argument is not
persuasive.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Barbara and Spear.

CONCLUSIONS
We conclude that the Examiner erred in asserting that claims 1-4, 6-
13, 27-31, and 35-37 fail to comply with the written description requirement
of 35 U.S.C. § 112, first paragraph.
We conclude that the combination of Barbara and Spear teaches or
suggests “wherein the funds are requested such that the funds are treated by
a card association set of rules as a cash advance and not as a payment to a
merchant,” as recited by independent claim 1, and as such, renders obvious
the subject matter of claims 1-4, 6-13, 27-31, and 35-37 under 35 U.S.C.
§ 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-4, 6-13, 27-31, and
35-37.
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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). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED

ack