Ex Parte Raymond et al

Patent Trials and Appeals Board

Mar 30, 2016

11695560 - (D) (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111695,560
125665 7590
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112
0410212007
04/01/2016
FIRST NAMED INVENTOR
Doug Raymond
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. CONFIRMATION NO.
070457.2265 2861
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
nycdocket@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUG RAYMOND, DEREK MADISON,
JOYCE O'CONNELL, MICHELLE GRIST, and
DALE WILKIS
Appeal2013-010550 1
Application 11/695,5602
Technology Center 3600
Before ANTON W. PETTING, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Jan. 22,
2013), and the Examiner's Answer ("Ans.," mailed May 2, 2013) and Final
Office Action ("Final Act.," mailed Dec. 19, 2011).
2 Appellants identify MasterCard International Incorporated as the real party
in interest. Br. 3.
Appeal2013-010550
Application 11/695,560
CLAIMED INVENTION
Appellants' claimed invention "relates to a method and system for
identifying financial transactions that occur across national and regional
borders and processing currency conversion for such financial transactions."
Spec. ,-r 2.
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
1. A method for processing cross-border transactions
in a multiple-entity payment card processing network, wherein
the multiple entities include at least two entities such as
merchants, acquirers, service providers, debit switches, card
associations and issuers associated with the payment card
transaction processing, the method comprising:
[a] at an entity in the payment card processing network,
said entity distinct from a merchant involved in a payment card
transaction, receiving from at least one of said multiple entities
an inbound transaction message corresponding to said payment
card transaction involving a payment account associated with an
account=holder;
[b] evaluating the inbound transaction message using
computer-based logic to determine if the payment card
transaction is a cross-border financial transaction wherein said
evaluating comprises comparing distinct elements within said
inbound transaction message;
[ c] further, at said entity in the payment card processing
network, using computer-based logic to evaluate the inbound
transaction message to determine if currency conversion
processing has been performed, wherein determining if currency
conversion processing has been performed comprises evaluating
whether a transaction currency in the inbound transaction
message equals a national currency of a merchant country; and
[ d] using a transaction processor to perform currency
conversion processing for the payment card transaction to
convert the national currency of the merchant country to a
designated currency in which said payment account associated
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Appeal2013-010550
Application 11/695,560
with the account-holder is held, when the evaluations indicate
that the payment card transaction is a cross-border financial
transaction and currency conversion has not been performed
prior to receiving the inbound transaction message.
REJECTIONS3
Claims 11 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1-16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Knowles (WO 2004/077246 A2, pub. Sept. 10, 2004) and Beck (WO
2004/044822 A2, pub. May 27, 2004).
ANALYSIS
Indefiniteness
Appellants do not present any response in the Appeal Brief to the
rejection of claim 11 under 35 U.S.C. § 112, second paragraph. Therefore,
we summarily sustain the Examiner's rejection.
Obviousness
Appellants argue claims 1-16 as a group (App. Br. 11-15). We select
independent claim 1 as representative. The remaining claims stand or fall
with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
In the Final Action, the Examiner finds that Knowles does not
explicitly disclose "using computer-based logic to evaluate the inbound
transaction message to determine if currency conversion processing has been
performed," i.e., limitation ( c ), as recited in claim 1. Final Act. 4. And the
3 The rejection of claim 1 under 35 U.S.C. § 112, second paragraph, as
indefinite has been withdrawn by the Examiner. Ans. 2.
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Appeal2013-010550
Application 11/695,560
Examiner relies on Beck to cure the deficiency. Id. at 5 (citing Beck iii! 3,
28, 43, 45--47, 51-53, 57, 72-73).
Knowles relates to a "system and method of processing data
transactions." Knowles, if 2. A transaction processing center 30 is a third
party service provider that acts for, or on behalf of, acquiring bank 24 or
merchant 20 as an interface to credit card association 34. Id. if 20. The
transaction processing center processes the transaction and then routes the
processed transaction over communication link 36 to card association 34.
Id. if 20.
Transaction center 30 records settings for use in the currency
conversion process, such as a request currency 120 that a merchant 20 or
cardholder selects as the stated currency that the merchant expects to
receive. Id. iii! 70-71. When merchant 20 submits the purchase
authorization request to the transaction processing center, there is a request
currency 120 associated with the purchase amount. Id. if 71. Because
request currency 120 can be any currency denomination from any country, a
transaction currency 122 (which is more established and accepted currency)
is provided and used as a baseline currency for account reconciliation and
other functions. Id. iii! 71-72. If the request currency and transaction
currency differ, then transaction processing center 30 performs a currency
conversion from request currency 120 to transaction currency 122. See id.
ir 72.
Transaction processing center 30 also provides clearing currency 124,
which is selectable in accordance with the desires of the merchant and
acquiring bank. Id. if 7 4. That is, the transaction processing center may shift
the currency conversion procedure away from the card association and
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Appeal2013-010550
Application 11/695,560
issuing back by converting the transaction currency 122 to clearing currency
124. Id. i-f 76. The clearing currency 124 is selected to match the native
currency of issuing bank 14 and/or the billing currency of cardholder 12.
Id. i-f 79.
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because (1) the proposed modification would render
Knowles inoperative and contrary to its principle of operation (Br. 9-10),
and (2) Beck does not disclose or suggest the missing feature (id. at 10-11).
With respect to the first argument, Appellants assert that Knowles discloses
that a merchant submits a purchase authorization request having a request
currency associated with the purchase amount, and performs a currency
conversion from the request currency to the transaction currency. Id. at 9
(citing Knowles, i-f 71-72). Appellants conclude
[t]o the extent the conversion [from the request currency to the
transaction currency] has already been performed, the system of
I<~O\'V-les \'l/ould be unable to perform the claimed "evaluating
the inbound transaction message using computer-based logic to
determine if the payment card transaction is a cross-border
financial transaction wherein said evaluating comprises
comparing distinct elements within said inbound message,"
because the only information the system would receive is the
identification of a transaction currency, i.e., "a baseline
currency used for account reconciliation .... "
Id. at 9-10 (citing Knowles, i-f 72). Appellants assert that Knowles "merely
determines whether conversion is required [by] comparing the request
currency and the transaction currency" (id. at 10), and does not evaluate
whether the transaction is a cross-board financial transaction by comparing
distinct elements within the inbound transaction message and does not use a
transaction processor to perform currency conversion when the evaluations
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Appeal2013-010550
Application 11/695,560
indicate that the payment card transaction is a cross-border transaction and
currency conversion has not been performed prior to receiving the inbound
transaction message," as recited in claim 1.
Limitation (b ), as recited in claim 1, requires "evaluating comprises
comparing distinct elements within said inbound transaction message," and
limitation ( c) requires "evaluating whether a transaction currency in the
inbound transaction message equals a national currency of a merchant
country." Responding to Appellants' arguments, the Examiner finds that
Knowles discloses limitation (b) by evaluating request currency 120,
transaction currency 122, and clearing currency 124, and that Knowles
discloses limitation ( c) by evaluating request currency 120, transaction
currency 122, and clearing currency 124. Ans. 10.
The Examiner's findings and rationale as set forth at pages 5-11 of the
Answer are not addressed in Appellants' Appeal Brief. And Appellants did
not file a Reply Brief.
On the present record, we are not persuaded that the Examiner erred
in rejecting claim 1under35 U.S.C. § 103(a). Therefore, we sustain the
Examiner's rejection of independent claim 1. We also sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claims 2-16, which fall
with claim 1.
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Application 11/695,560
DECISION
The Examiner's rejection of claim 11 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The Examiner's rejection of claims 1-16 under 35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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