Ex Parte Phillips et al

Patent Trial and Appeal Board

Aug 1, 2016

12731521 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121731,521 03/25/2010
28062 7590 08/03/2016
BUCKLEY, MASCHOFF & TALWALKARLLC
50 LOCUST A VENUE
NEW CANAAN, CT 06840
Simon Phillips
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.
P00609-US-UTIL
(MOl.152)
CONFIRMATION NO.
1285
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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):
Martin@BMTP A TENT.COM
szpara@bmtpatent.com
colabella@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON PHILLIPS and RONALD D. CARTER
Appeal2014-002808
Application 12/731,521
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-5, 7-11, and 18-20 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2014-002808
Application 12/731,521
THE INVENTION
The Appellants' claimed invention is directed to a method to aid a
user in managing spending limits (Spec. 4, 11. 9-11). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A method comprising:
setting, in a payment card issuer computer, a risk management
limit to be applied to authorized purchase transactions for a payment
card account;
detecting in the payment card issuer computer that purchase
transactions for the payment card account have approached the risk
management limit;
sending a warning message from the payment card issuer
computer to a mobile telephone of a holder of the payment card
account to notify the holder that the risk management limit is
imminent;
detecting that the holder has requested re-setting of the risk
management limit; and
in response to detecting the holder requested re-setting of said
risk management limit, re-setting said risk management limit in the
payment card issuer computer.
THE REJECTION
The following rejections is before us for review:
Claims 1-5, 7-11, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosenberger (US 2010/0268615 Al, pub. Oct. 21, 2010)
and John (US 2012/0143722 Al, pub. June 7, 2012).
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Appeal2014-002808
Application 12/731,521
FTI'-JDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the prior art fails to disclose the claim limitation which requires:
sending a warning message from the payment card issuer computer to
a mobile telephone of a holder of the payment card account to notify
the holder that the risk management limit is imminent.
(App. Br. 11-13; Reply Br. 6, 7 (emphasis added)).
In contrast, the Examiner has determined that the cited claim
limitation is found in John at para. 133, and that the rejection is proper (Ans.
7, 16).
We agree with the Appellants. Here, the cited claim limitation above
requires "sending a warning message ... to a mobile telephone of a holder
of the payment card account to notify the holder that the risk management
limit is imminent" (emphasis added). John at the cited para. 133 fails to
disclose this. John at para. 133 does disclose the ability to allow clients to
modify their e-profiles for "setting limits" for a client's card. However, the
citation to John at para. 133 drawn to contacting a client by cellular (mobile)
telephone does not disclose the cited claim limitation. While John at para.
133 does disclose notifying a client of a rejection, this disclosure is for a
rejection rather than "sending a warning message ... to notify the holder
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-002808
Application 12/731,521
that the risk management limit is imminent" (emphasis added). For this
reason, the rejection of claim 1 and its dependent claims is not sustained.
Claim 18 contains a similar limitation and the rejection of this claim and its
dependent claims is not sustained for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims 1-5, 7-11, and 18-20 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberger and John.
DECISION
The Examiner's rejection of claims 1-5, 7-11, and 18-20 is reversed.
REVERSED
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