Ex Parte Paulsen et al

Patent Trial and Appeal Board

Feb 14, 2013

11609785 (P.T.A.B. Feb. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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Ex parte KOBUS PAULSEN, 7
IAN HUGHES, 8
and MARK HOLLAND 9
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Appeal 2011-003719 12
Application 11/609,785 13
Technology Center 3600 14
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Before ANTON W. FETTING, BIBHU R. MOHANTY, and 18
MEREDITH C. PETRAVICK, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 13, 2010) and Reply Brief (“Reply Br.,” filed November
22, 2010), and the Examiner’s Answer (“Ans.,” mailed September 23,
2010).
Kobus Paulsen, Ian Hughes, and Mark Holland (Appellants) seek review 2
under 35 U.S.C. § 134 of a final rejection of claims 21-26 and 28-31, which 3
along with claims 1-20 and 27 withdrawn from consideration, are the only 4
claims pending in the application on appeal. We have jurisdiction over the 5
appeal pursuant to 35 U.S.C. § 6(b) . 6
The Appellants invented a system for processing a financial transaction 7
with an online merchant (Specification 2:20-21). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 21, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
21. A system 12
for monitoring a compulsive gambling behavior 13
of a customer 14
based on one or more prior requests 15
from the customer 16
to conduct financial transactions with the merchant, 17
said system comprising a processor and a memory, 18
said processor configured for: 19
20
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[1] storing, 1
in the memory, 2
information associated with 3
each of the one or more prior requests 4
from the customer 5
to conduct a financial transaction 6
with the merchant, 7
the information comprising 8
an amount of funds 9
and 10
a type of financial transaction; 11
[2] receiving a new request 12
to conduct a financial transaction with the merchant, 13
the request comprising 14
an amount of funds 15
and 16
a type of financial transaction; 17
[3] in response to receiving the new request, 18
retrieving a pre-determined acceptable limit 19
stored in the memory 20
for the type of financial transaction 21
in the new request, 22
the pre-determined acceptable limit based upon 23
the amount of funds 24
associated with the one or more prior requests 25
from the customer 26
for the type of financial transaction 27
in the new request; 28
[4] comparing 29
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the amount of funds in the new request 1
with 2
the pre-determined acceptable limit 3
for the type of financial transaction in the new 4
request; 5
and 6
[5] in response to 7
the amount of funds in the new request 8
exceeding 9
the predetermined acceptable limit, 10
notifying one or more of 11
the customer, 12
a payment source associated with the 13
customer, 14
or 15
the merchant 16
that the amount of funds in the new request 17
exceeds the pre-determined acceptable limit. 18
The Examiner relies upon the following prior art: 19
Johnson US 6,629,890 B2 Oct. 7, 2003
Claims 21-26 and 28-31 stand rejected under 35 U.S.C. § 102(b) as 20
anticipated by Johnson. 21
ISSUES 22
The issue of anticipation turns primarily on the breadth of the phrase 23
within limitation [3] of “the pre-determined acceptable limit based upon the 24
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amount of funds associated with the one or more prior requests from the 1
customer for the type of financial transaction in the new request.” 2
FACTS PERTINENT TO THE ISSUES 3
The following enumerated Findings of Fact (FF) are believed to be 4
supported by a preponderance of the evidence. 5
Facts Related to the Prior Art - Johnson 6
01. Johnson is directed to a control system for individuals who 7
require or desire to limit gaming expenditures, time spent 8
gambling and other, related parameters and factors. Johnson 1:22-9
26. 10
02. Johnson’s gaming control system isapplicable to all forms of 11
gambling, electronic or otherwise. The system includes an 12
Internet Web site, and associated control software, which 13
constitutes a portal that serves as a “safe gaming” interface 14
between individuals who gamble online and Internet-based 15
gambling sites. The control software tracks each registered 16
individual's gaming transactions and interjects alerts to the 17
individual when reaching loss limits, time limits, or when changes 18
in gambling behavior signal an issue, and other related services. 19
There is an “expert system” component to the software, in that 20
knowledge of the individual user, the gambling games, and 21
gambling behavior are programmed into the applications. Using 22
this “knowledge base”, the software can then reveal variances 23
from the norm or established parameters, and recognize problems 24
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based upon comparison of monitored behavior with the 1
knowledge base. Johnson 2:34-63. 2
03. First, the user is presented a series of questions and information 3
to fill out on line. This information exchange from the user to the 4
system's database allows an “assessment” of the user’s personal 5
financial, social, and psychological factors that help to determine 6
the gaming control parameters that should be implemented once 7
the registration process is complete. These gaming control 8
parameters are used in the monitoring software that tracks 9
gambling activity and intervenes when appropriate. Johnson 3:14-10
22. 11
04. At the end of the assessment, the user is presented with the 12
“expert system’s” suggested parameters, based upon the responses 13
he/she provided, including any legislated or jurisdictional 14
parameters, and the guidelines and norms maintained within the 15
system. Among other things, monetary amounts to limit losses 16
over a period of time, and a time budget for gambling are 17
suggested. Johnson 3:23-29. 18
05. During the period immediately following initial registration by 19
the user, credit checks and other security verifications are 20
performed as a part of the Safe Gaming System process, to 21
minimize the possibility of fraud or misrepresentation. A unique, 22
permanent account (identification) number is assigned to the new 23
user (client), which associates the monitoring parameters 24
established and information required for personal identification. 25
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Key fields of this account information are periodically transmitted 1
in encrypted format to the “back end” systems of all certified 2
gaming operators for use to identify Safe Gaming System clients 3
on their internal networks and servers. Johnson 3:58 – 4:7. 4
06. As a part of the registration authorization, a separate, special 5
monetary set-aside for gaming purposes within the user’s Safe 6
Gaming System account number is strongly recommended. The 7
set-aside amount will be governed by the system parameters. If 8
the user agrees to establish this set-aside, this then serves as the 9
exclusive account to be used for debit and credit transactions 10
initiated from gaming sites and locations, in lieu of any other 11
“unprotected” account the client may have. Each transaction to 12
and from this special account is reported to and controlled by the 13
Safe Gaming System. In addition, agreements are established 14
between certified gaming operators, credit card companies, 15
financial institutions, and the Safe Gaming System that all gaming 16
transactions will be controlled by and limited to the Safe Gaming 17
System account. For example, if a user’s loss limits have been 18
reached for a specific period, further transfers of money into the 19
Safe Gaming System account will be denied for that period and no 20
certified gaming operator will accept other forms of payment for 21
gambling activities. Johnson 4:8-28. 22
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ANALYSIS 1
We are not persuaded by the Appellants’ argument that in Johnson, 2
the parameters (e.g., limits) imposed on the individual are the 3
result of the individual accepting and/or editing parameters 4
determined by answers and information provided on 5
questionnaires. 6
In contrast, the pre-determined acceptable limit recited in 7
Claims 21-26 is based upon the amount of funds associated 8
with the one or more prior requests from the customer for the 9
type of financial transaction in the new request. Therefore, 10
unlike the parameters in Johnson, the pre-determined 11
acceptable limit recited in Claims 21-26 is based on one or 12
more prior requests from the customer. Thus, under the features 13
of Claims 21-26, the monitoring process involves comparing 14
the customer's current proposed transaction with a parameter 15
based on the customer’s past history of transactions, so that at 16
least one of the limits to which a newly requested behavior is 17
compared was determined based on past behaviors of the 18
particular customer stored in the system memory. 19
App. Br. 11. The actual limitation at issue is “the pre-determined acceptable 20
limit based upon the amount of funds associated with the one or more prior 21
requests from the customer for the type of financial transaction in the new 22
request.” The claim does not narrow the manner or character of such a basis 23
of association. Clearly the limit imposed in Johnson is based upon the 24
amount of funds set aside in Johnson. These funds are associated with the 25
prior requests in that the same funds were used for similar tests when prior 26
withdrawals were made. Appellants’ arguments are simply not 27
commensurate with the scope and breadth of the claim. 28
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CONCLUSIONS OF LAW 1
The rejection of claims 21-26 and 28-31 under 35 U.S.C. § 102(b) as 2
anticipated by Johnson is proper. 3
DECISION 4
The rejection of claims 21-26 and 28-31 is affirmed. 5
No time period for taking any subsequent action in connection with this 6
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
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AFFIRMED 10
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