Ex Parte Raines

Board of Patent Appeals and Interferences

Nov 12, 2010

11120811 (B.P.A.I. Nov. 12, 2010)

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.
11/120,811 05/03/2005 Walter L. Raines Raines-003-Div. 4415
26604 7590 11/12/2010
KENNETH L. NASH
P.O. BOX 680106
HOUSTON, TX 77268-0106
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
11/12/2010 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 WALTER L. RAINES
____________________
Appeal 2009-012327
Application 11/120,811
Technology Center 3600
____________________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012327
Application 11/120,811

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 22, 23, and 27-33. We have jurisdiction under 35 U.S.C.
§ 6(b).
Additionally, parent application 10/628,819, of the present
Application, is currently on appeal, Appeal No. 2009-013706, and is being
concurrently decided.

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.2

THE INVENTION
Appellant’s claimed invention relates to a system and method for
chargeback inquiry whereby the merchant may be completely eliminated as
the data provider for the chargeback inquiry. (Spec. 28.)
Independent claims 22 and 27, which are deemed to be representative,
read as follows:
22. A system for processing credit card
transactions, comprising:
a credit card company responsive to customer
inquiries for issuing a chargeback inquiry into a selected
purchase;
a merchant, said merchant producing sales;
an electronic database comprising electronic
receipts of said sales, said electronic receipts being

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jul. 11, 2007) and Reply Brief (“Reply Br.,” filed Aug. 6, 2008),
and the Examiner’s Answer (“Ans.,” mailed Aug. 14, 2008).
Appeal 2009-012327
Application 11/120,811

3
indexed based on data produced simultaneously while
scanning a plurality of signed paper receipts; and
processor for receiving said chargeback inquiry,
said processor being in communication with said
database, whereupon said processor retrieves a copy of
an electronic receipt for said selected purchase from said
electronic database and forwards said copy of said
electronic receipt to at least one of said credit card
company or said customer.

27. A method for handling credit card chargeback
inquiries related to reported purchases from a plurality of
merchants, said chargeback inquiry resulting from a
customer contacting a credit card issuer to instigate a
chargeback inquiry into an underlying reported purchase
from one of said plurality of merchants, comprising:
without requesting that said one of said plurality of
merchants reply to said chargeback inquiry at least one of
said credit card issuer or another entity electronically
searching for said underlying transaction reported
purchase in a signed receipt database comprising
electronic data which includes electronic representations
of signed receipts in response to said chargeback inquiry;
if an electronic representation of a signed receipt
corresponding to said underlying reported purchase is
found by said electronically searching then forwarding
said electronic representation of said signed receipt to
said customer.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Algiene et al. 2004/0117298 A1 Jun. 17, 2004
The Examiner rejected claims 22, 23, and 27-33 under 35 U.S.C.
§ 102(e) as being anticipated by Algiene.
Appeal 2009-012327
Application 11/120,811

4
ISSUES
Appellant generally argues that Algiene fails to disclose a system and
method for handling credit card chargeback inquiries, as claimed. (App. Br.
16-25.) Specifically, Appellant argues that Algiene fails to disclose “that the
merchant not respond to a chargeback inquiry, or even be requested to do
so,” as generally recited by independent method claims 27 and 31, and
dependent system claim 23. (App. Br. 16; see also Reply Br. 10.)
In response, the Examiner found that Algiene anticipates the subject
matter recited by Appellant’s claims 22, 23, and 27-33. (Ans. 3-5).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
1. Did the Examiner err in finding that Algiene discloses “that the
merchant not respond to a chargeback inquiry” as generally recited by
independent method claims 27 and 31, and dependent system claim 23 under
35 U.S.C. § 102(e)?
2. Did the Examiner err in finding that Algiene discloses the system
for processing credit card transactions as recited by independent method
claim 22 under 35 U.S.C. § 102(e)?

Appeal 2009-012327
Application 11/120,811

5
FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
1. Algiene is directed to a system for initiating a chargeback request
through a network connection. (Abs.)
2. Algiene describes that once a user initiates a chargeback request, an
electronic document can be conveyed to the user. (¶ [0022].)
3. Algiene describes that “a merchant provides a sales receipt showing
the user's signature, the merchant can electronically submit the sales receipt
by scanning it and transmitting it to the processing center.”
(¶ [0022].)
4. Algiene further describes that “[a]n auditor at the processing center
can then forward (e.g., via email) the electronic image to the user for the
user's review” or “the electronic image can be stored in a database which is
accessible by the user.” (¶ [0022].)
5. Algiene describes that after disputing a charge, if the user comes to
the conclusion that the dispute is in error, the user can withdraw the disputed
charge. (¶ [0022].)
6. Figure 6 depicts at least a processor 601 electrically coupled to a
storage device 604 and memory 609. (Fig. 6.)

Appeal 2009-012327
Application 11/120,811

6
PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987).

ANALYSIS
ISSUE 1
Claims 22, 23, and 27-33 rejected under 35 U.S.C. § 102(e) as anticipated
by Algiene.
Independent claims 27 and 31
Appellant argues inter alia, that Algiene fails to disclose “that the
merchant not respond to a chargeback inquiry, or even be requested to do
so,” as generally recited by independent method claims 27 and 31. (App. Br.
16; see also Reply Br. 10.) In response, the Examiner finds this limitation
disclosed by Algiene since Algiene teaches “that a user may withdraw the
dispute at anytime online (citation omitted).” (Ans. 6.) We cannot agree
with the Examiner and instead find Appellant’s argument to be compelling.
While we agree with the Examiner that Algiene discloses a system
which initiates a chargeback request (FF 1), Algiene’s system does not
process a chargeback where the merchant does not respond to the
chargeback inquiry, as generally recited by independent claims 27 and 31.
In an attempt to address this feature, the Examiner relied on a portion of
Algiene which allows a customer to withdraw a chargeback inquiry after its
Appeal 2009-012327
Application 11/120,811

7
submission, and reasoned that “if the user decides that the dispute is not
valid, the user may withdraw the dispute without the merchant ever having
responded to the chargeback inquiry.” (Ans. 6.) We cannot agree with the
Examiner’s reasoning and instead find that it is clear in Algiene’s disclosure
that once a chargeback inquiry is initiated by a customer, it is the merchant,
and only the merchant, who must respond to the inquiry by scanning the
receipt at issue and transmitting it to the processing center. (FF 3.)
Therefore, we agree with Appellant’s argument and find that Algiene does
not anticipate independent method claims 27 and 31.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claims 27 and 31 under 35 U.S.C. § 102(e) as being
anticipated by Algiene. As such, we find that the rejections of claims 28-30,
32, and 33 which depend from claims 27 and 31, respectively were also
made in error for the same reasons discussed supra.
Additionally, dependent claim 23 which depends on independent
claim 22, discussed infra, recites the same limitation “wherein said merchant
does not respond to said chargeback inquiry.” As such, we must reverse
dependent claim 23 for the same reasons we discussed with respect to
independent claims 27 and 31, discussed supra.

Independent claim 22
Appellant generally argues that the Examiner has not established a
prima facie case of anticipation under 35 U.S.C. 102(e) because the essential
elements required by independent claim 22 are clearly not shown. (App. Br.
19.) Specifically, Appellant argues that Algiene provides no understanding
Appeal 2009-012327
Application 11/120,811

8
of the technology involved to implement Appellant’s methods. (App. Br.
19-20.) We are not persuaded by Appellant’s arguments and find that
Algiene’s system is capable of performing the functions as presently claimed
in Appellant’s independent system claim 22. It is well established that while
the features of an apparatus claim may be recited functionally, the apparatus
must be distinguished from the prior art in terms of structure, rather than
function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
As such, we find that Algiene’s chargeback inquiry system (FF 1)
discloses the requisite structure as presently required by Appellant’s system
claim. Specifically, Algiene discloses an electronic database of electronic
receipts (FF 4) and a processor for receiving chargeback inquiries which is
in communication with the database. (FF 2, 3, 6.) Since Appellant’s
processor is not performing a function other than retrieving the chargeback
inquiry, we cannot find that Algiene’s processor is not capable of
performing the same function as presently claimed by Appellant. Therefore,
we find that Algiene anticipates independent system claim 22 as presently
claimed.
Appeal 2009-012327
Application 11/120,811

9
CONCLUSIONS OF LAW
1 We conclude that the Examiner erred in finding that Algiene
discloses “that the merchant not respond to a chargeback inquiry” as recited
by independent method claims 27 and 31, and dependent system claim 23
under 35 U.S.C. § 102(e).
2 We conclude that the Examiner did not err in finding that Algiene
discloses the system for processing credit card transactions as recited by
dependent method claim 22 under 35 U.S.C. § 102(e).

DECISION
The decision of the Examiner to reject claims 23 and 27-33 is
REVERSED. The decision of the Examiner to reject claim 22 is
AFFIRMED.
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)(2007).

AFFIRMED-IN-PART

ack

cc:

KENNETH L. NASH
P.O. BOX 680106
HOUSTON, TX 77268-0106