Ex Parte Zou et al

Board of Patent Appeals and Interferences

Jun 7, 2012

10379733 (B.P.A.I. Jun. 7, 2012)

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.
10/379,733 03/06/2003 Kevin Zou 06556.0046-00 7794
12237 7590 06/07/2012
ACS (Affiliated Computer Services)/Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
06/07/2012 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte KEVIN ZOU, JOSH A. WILES, PASQUALE SOLITRO, and 8
ZHENG ZHU 9
___________ 10
11
Appeal 2011-001104 12
Application 10/379,733 13
Technology Center 3600 14
___________ 15
16
17
Before ANTON W. FETTING, BIBHU R. MOHANTY, and 18
MICHAEL W. KIM, Administrative Patent Judges. 19
20
FETTING, Administrative Patent Judge. 21
22
23
DECISION ON APPEAL24
Appeal 2011-001104
Application 10/379,733

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STATEMENT OF THE CASE1 1
Kevin Zou, Josh A. Wiles, Pasquale Solitro, and Zheng Zhu (Appellants) 2
seek review under 35 U.S.C. § 134 (2002) of a final rejection of claims 77-3
96, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a way of electronically processing government 6
sponsored benefits (Specification para. [002]). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 77, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
77. A method for managing government sponsored benefits, 11
comprising: 12
[1] providing a web browser based administrative 13
terminal to a government representative for managing 14
government sponsored benefits; 15
[2] using the web browser based administrative 16
terminal to perform the operations of: 17
[3] creating an account for a benefit recipient, 18
the account including a plurality of different government 19
sponsored benefit programs, including a cash benefit 20
program; 21
[4] issuing a benefit card to the benefit recipient 22
for accessing the plurality of different government 23
sponsored benefit programs, including the cash benefit 24
program; 25
[5] issuing a benefit under one of the plurality 26
of different government sponsored benefit programs, 27
wherein the benefit is accessible via the benefit card; 28
[6] converting an issued benefit into a benefit 29
issued under a different one of the plurality of different 30

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 17, 2010) and Reply Brief (“Reply Br.,” filed October 19,
2010), and the Examiner’s Answer (“Ans.,” mailed August 30, 2010).
Appeal 2011-001104
Application 10/379,733

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government sponsored benefit programs, including 1
converting a food stamp benefit into a cash benefit; 2
[7] replacing a lost or stolen benefit card; and 3
[8] canceling an existing government sponsored 4
benefit corresponding to the benefit recipient. 5
The Examiner relies upon the following prior art: 6
Adams US 5,536,045 Jul. 16, 1996
Dilip US 2002/0091635 A1 Jul. 11, 2002
Leach US 6,694,447 B1 Feb. 17, 2004
Claims 77, 86, 95, and 96 stand provisionally rejected under obviousness 7
type double patenting. 8
Claims 77-83, 86-90, and 93-96 stand rejected under 35 U.S.C. § 103(a) 9
as unpatentable over Adams and Dilip. 10
Claims 84, 85, 91, and 92 stand rejected under 35 U.S.C. § 103(a) as 11
unpatentable over Adams, Dilip, and Leach. 12
ISSUES 13
The issue of provisional obviousness double patenting turns on whether 14
Appellants argue the rejection. The issues of obviousness turn on whether 15
one of ordinary skill would have found equivalence between transferring 16
funds among several accounts to a conversion of governmental benefits 17
between governmental programs. 18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
22
Appeal 2011-001104
Application 10/379,733

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Facts Related to the Prior Art 1
Adams 2
01. Adams is directed to the administration of public assistance 3
programs through issuance of debit cards to recipients of aid, for 4
example, recipients of monetary assistance for the purchase of 5
food. Adams 1:7-11. 6
02. Adams eliminates food stamps and replaces them with a debit card 7
system that utilizes many of the same technologies and networks 8
of the existing credit card system. Adams 2:2-6. 9
Dilip 10
03. Dilip is directed to the handling of transactions, such as financial 11
transactions, and the management of risks and the authentication 12
of information associated with various transactions. Dilip para. 13
[0002]. 14
04. Customers of financial institutions (both individual customers and 15
businesses) typically maintain multiple financial accounts at one 16
or more financial institutions. Financial institutions include, for 17
example, banks, savings and loans, credit unions, mortgage 18
companies, lending companies, and stock brokers. A customer's 19
financial accounts may include asset accounts (such as savings 20
accounts, checking accounts, certificates of deposit (CDs), mutual 21
funds, bonds, and equities) and debt accounts (such as credit card 22
accounts, mortgage accounts, home equity loans, overdraft 23
protection, and other types of loans). Dilip para. [0003]. 24
Appeal 2011-001104
Application 10/379,733

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ANALYSIS 1
Claims 77, 86, 95, and 96 provisionally rejected under obviousness-type 2
double patenting. 3
Appellants do not contest this rejection, but merely request abeyance 4
until claims are otherwise in condition for allowance. Thus, we summarily 5
affirm the provisional rejection, noting that because the rejection is 6
provisional, whether the rejection becomes actual is contingent on 7
subsequent prosecution. 8
Claims 77-83, 86-90, and 93-96 rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Adams and Dilip. 10
Claims 84, 85, 91, and 92 rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Adams, Dilip, and Leach. 12
We are persuaded by the Appellants’ arguments that 13
Neither Adams Nor Dilip Disclose "An Account . . . Including 14
A Plurality of Government Sponsored Benefit Programs" 15
… 16
Adams and Dilip, either alone or in combination, fail to teach or 17
suggest "creating an account for a benefit recipient . . . 18
including a cash benefit program," as recited by claims 77, 86, 19
95, and 96. 20
… 21
Adams also does not disclose or suggest "issuing a benefit 22
under one of the plurality of different government sponsored 23
benefit programs." 24
… 25
Adams also fails to disclose "converting an issued benefit into a 26
benefit issued under a different one of the plurality of 27
government sponsored benefits programs," as recited by claims 28
77, 86, 95, and 96 29
Appeal Br. 13-18. 30
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Application 10/379,733

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The Examiner applied Adams to show that it was already known to use a 1
card token in a government welfare program in the same manner as a debit 2
card. The Examiner then applied Dilip to show that account holders might 3
transfer funds among accounts. The Examiner provided no evidence as to 4
the limitations argued by Appellants. While we might agree with 5
Examiner’s official notice that assigning plural benefits to the same 6
customer and creating an account would be predictable, this is insufficient to 7
show converting an issued benefit as Appellants argue. While we can 8
understand the Examiner’s analogy of converting services in the abstract to 9
Dilip’s funds transfer, absent any evidence that Dilip would have done so 10
under the umbrella of a single account token, such as a debit card, we cannot 11
find this would show it was predictable to convert an issued benefit linked to 12
one of several government benefits assigned to a single debit card into a 13
benefit issued under a different one of the plurality of different government 14
sponsored benefit programs, including converting a food stamp benefit into a 15
cash benefit. 16
CONCLUSIONS OF LAW 17
The provisional rejection of claims 77, 86, 95, and 96 under 18
obviousness- type double patenting is summarily affirmed. 19
The rejection of claims 77-83, 86-90, and 93-96 under 35 U.S.C. 20
§ 103(a) as unpatentable over Adams and Dilip is improper. 21
The rejection of claims 84, 85, 91, and 92 under 35 U.S.C. § 103(a) as 22
unpatentable over Adams, Dilip, and Leach is improper. 23
DECISION 24
The rejection of claims 78-85 and 87-94 is reversed. 25
The rejection of claims 77, 86, 95, and 96 is affirmed. 26
Appeal 2011-001104
Application 10/379,733

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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED-IN-PART 5
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Klh 8