11102056 (B.P.A.I. Jan. 23, 2012)

Ex Parte Schleicher

Board of Patent Appeals and InterferencesJan 23, 2012

11102056 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOERG SCHLEICHER ____________ Appeal 2010-011491 Application 11/102,056 Technology Center 3600 ____________ Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011491 Application 11/102,056 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 1, 2, 4, 6-9, and 11-14. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). The claimed invention is directed to techniques for automated and real-time authorization processing (Spec., para. [0001]). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A system, including: One or more processors; and memory coupled to the one or more processors and configured to store, a merchant interface, a buyer interface, and a network-based authorization and settlement service that interacts with the merchant interface and the buyer interface, and wherein the network-based authorization and settlement service uses one or more combinations of multiple disparate funding sources associated with buyers via the buyer interface to perform authorizations for each transaction for merchants that interact through the merchant interface. Claims 1, 2, 7-9, 11, and 13-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kramer (US Pat. No. 6,324,525 B1, iss. Nov. 27, 2001) in view of Napier (US Pub. No. 2005/0177447 A1, pub. Aug. 11, 2005)1; claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kramer in view of Napier and Grounds (US Pub. No. 2002/0128917 A1, pub. Sep. 12, 2002); claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kramer in view of Napier and Oliver (US Pub. No. 1 Page 8 of the Appeal Brief and page 3 of the Examiner’s Answer list claim 3 as rejected, however, all other portions of the Appeal Brief and the Examiner’s Answer indicated that claim 3 is cancelled. Appeal 2010-011491 Application 11/102,056 3 2002/0133412 A1, pub. Sep. 19, 2002); and claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kramer in view of Napier and Sowinski (US Pat. No. 6,601,033 B1, iss. Jul. 29, 2003). We REVERSE. ISSUE Did the Examiner err in asserting that a combination of Kramer and Napier renders obvious independent claim 12? The issue turns on a claim construction of “one or more combinations of multiple disparate funding sources,” as recited in independent claim 1. FINDINGS OF FACT Merriam-Webster’s Collegiate Dictionary FF1. A combination requires two or more features (11th Ed., 246 (2007)). Specification FF2. The Specification discloses that another feature of the network- based authorization and settlement service 103 is that it may provide an authorization and/or settlement from multiple funding sources. In other words, suppose a merchant (M) wants to authorize $100 for a given buyer (B), suppose further that the buyer B has two funding sources: a positive balance account of $50 and a credit card (CC). The network-based authorization and settlement service 103 may lock the $50 (since this is 2 We choose independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-011491 Application 11/102,056 4 within the control of the network-based authorization and settlement service 103) and then lock via traditional CC processing services $50 against the CC. Although the above-provided example used two funding sources, it should be apparent that more than two funding sources may be used for a single authorization. In fact, various combinations of different funding sources may be used to perform authorization with the network-based authorization and settlement service 103 (para. [0039]). ANALYSIS We are persuaded the Examiner erred in asserting that a combination of Kramer and Napier renders obvious independent claim 1 (App. Br. 9-14). The Examiner asserts “one or more combinations of multiple disparate funding sources” includes a combination having only one funding source (Exam’r’s Ans. 10-11). However, a combination requires two or more features (FF1), particularly where the combination must contain multiple elements, each disparate from one another. A combination results from things being combined. It is nonsensical to speak of combining a single element with nothing else. Thus, the recited combination requires two or more disparate funding sources. This also comports with the example given in paragraph [0039] of the Specification (FF2). The Examiner asserts that “[n]othing in Kramer teaches or suggests that only payment from one payment source must be made” (Exam’r’s Ans. 10). However, the initial burden is on the Examiner to show that Kramer discloses making a payment using two or more disparate funding sources. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (during examination, the examiner bears the initial burden of establishing a prima Appeal 2010-011491 Application 11/102,056 5 facie case of obviousness). To that end, the Examiner has not met that burden. The Examiner also asserts that “one of ordinary skill in the art would have recognized that Kramer can suggest that it would be common sense to use multiple funding sources. For example, a buyer could borrow funds from a friend and this would be from multiple disparate funding sources” (Exam’r’s Ans. 10). However, borrowing funds from a friend is still only one funding source. No further rationale for modifying Kramer to include making a payment using two or more disparate funding sources has been provided by the Examiner. DECISION The decision of the Examiner to reject claims 1, 2, 4, 6-9, and 11-14 is REVERSED. REVERSED hh