Shashi Kapur et al.

Patent Trials and Appeals Board

Oct 30, 2019

14416814 - (D) (P.T.A.B. Oct. 30, 2019)

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.
14/416,814 01/23/2015 Shashi Kapur A258 1070.2 7125
118311 7590 10/30/2019
Toering Patents PLLC
P.O. Box 1419
Leesburg, VA 20177
EXAMINER
MIKELS, MATTHEW
ART UNIT PAPER NUMBER
2876
NOTIFICATION DATE DELIVERY MODE
10/30/2019 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):
admin@toeringpatents.com
rick@toeringpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHASHI KAPUR and RALPH A. BIANCO
Appeal 2018-008385
Application 14/416,814
Technology Center 2800
Before GRACE KARAFFA OBERMANN, SHELDON M. MCGEE, and
JANE E. INGLESE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5, 6, 8, 12, and 13. We have
jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as MTS Holdings,
Inc. Appeal Br. 3.
Appeal 2018-008385
Application 14/416,814

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CLAIMED SUBJECT MATTER
The claims are directed to methods and systems for processing a funds
transfer transaction. Claim 1 is illustrative of the claimed subject matter and
is reproduced below with dispositive limitations italicized:
1. A method of processing a funds transfer transaction from
a funds provider to a requestor, comprising:
receiving, by an adaptive payment server and from a
server of the funds provider, first identification information of
the requestor, a request for a fund transfer, and a funds amount,
wherein the first identification information comprises a debit
card number, wherein the adaptive payment server comprises
one or more processors;
determining, by the adaptive payment server, an account
of the requestor associated with the first identification
information;
identifying, by the adaptive payment server, a
communication device of the requester based on the first
identification information;
initiating, by the adaptive payment server, a
communication to the communication device to request second
identification information from the requester, wherein the second
identification information comprises a Personal Identification
Number (PIN);
receiving, by the adaptive payment server, the PIN from
the requestor via the communication device;
authenticating, by the adaptive payment server, the
account of the requestor with the PIN; and
initiating, by the adaptive payment server and to an
electronic funds transfer (EFT) processor, a transfer of the funds
amount associated with the requested fund transfer from the
funds provider into the account of the requestor, wherein the EFT
processor causes the funds amount to be transferred substantially
immediately into the account of the requestor after the transfer of
the funds amount has been initiated.
Appeal Br. 14–15 (Claims Appendix).
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Application 14/416,814

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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Fisher US 2007/0257103 A1 Nov. 8, 2007
Godard US 2011/0184840 A1 July 28, 2011
REJECTIONS
I. Claims 1, 5, 6, 8, 12, and 13 are rejected under 35 U.S.C. § 112,
second paragraph as being indefinite;
II. Claims 1 and 8 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Godard; and
III. Claims 5, 6, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Godard in view of Fischer.
OPINION
Rejection I
The Examiner concludes the phrase “substantially immediately”––
recited in each independent claim 1 and 8––is indefinite. Final Act. 2–3. To
support the indefiniteness conclusion, the Examiner provides two separate
rationales:
1) the separate dictionary definitions for the terms “substantially”
and “immediately,” when combined, result in a definition for
“substantially immediately” as “being largely but not wholly
without interval of time.” Id. According to the Examiner, such
definition is “contradictory and indefinite” (id. at 3); and
2) the Specification lacks sufficient guidance regarding the term’s
meaning because the only apparent paragraphs that discuss time
periods, i.e., [0003] and [0004], range up to a period of several
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days which fails to provide “enough guidance to provide
certainty” to the skilled artisan. Id.
Appellant contends the rejection is erroneous because, at page 8 of the
Final Office Action dated August 24, 2017, “[t]he Examiner delineates what
one of ordinary skill in the art would understand from the record regarding
the boundaries for the term ‘substantially immediately’.” Appeal Br. 6–7.
According to Appellant, “[t]he Examiner concedes the boundaries are
between zero and less than a day.” Id. at 7.
We agree with Appellant and reverse this rejection.
When “substantially” is used as a word of degree––as it is here in
each independent claim––one must look to the specification to determine a
standard for measuring that degree. See Seattle Box Co. v. Industrial
Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (explaining
how “[d]efiniteness problems often arise when words of degree are used in a
claim,” and how lack of precision in claim language “does not automatically
render a claim invalid. When a word of degree is used the district court
must determine whether the patent’s specification provides some standard
for measuring that degree.”); see also Miles Laboratories Inc. v. Shandon
Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (“The test for definiteness is
whether one skilled in the art would understand the bounds of the claim
when read in light of the specification.”).
Here, Appellant correctly notes the Examiner has reviewed the
specification and record evidence, and has concluded the bounds of the
disputed limitation mean “some interval in the range of less than a day . . . to
no elapsed time at all.” Final Act. 8. In so doing, the Examiner has
determined that the skilled artisan would understand the upper and lower
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boundaries of “substantially immediately.” The Examiner appears to
improperly confuse claim breadth with indefiniteness by stating that the
“long time frame” of “no elapsed time at all” to “less than a day” fails to
provide “clear notice of the claim’s boundaries.” Id. The predecessor to our
reviewing court has held, however, that “breadth is not to be equated with
indefiniteness.” In re Miller, 441 F.2d 689, 693 (CCPA 1971).
The Examiner fails to establish the bounds of the term “substantially
immediately” would not be known to the skilled artisan upon reviewing the
Specification. On the contrary, the Examiner establishes that such
boundaries would be known. Accordingly, we reverse Rejection I.
Rejections II and III
In finding that claims 1 and 8 are anticipated, the Examiner relies on
Godard’s disclosure at paragraph 25 to evince the limitation “identifying, by
the adaptive payment server, a communication device of the requester based
on the first identification information.” Final Act. 4; Ans. 3.
Appellant contends, inter alia, that the Examiner’s finding of
anticipation is erroneous because this limitation is not disclosed in the relied-
upon paragraph of Godard. Appeal Br. 9. We have reviewed paragraph 25
of Godard and agree with Appellant. While the relied-upon disclosure of
Godard discusses an interface device 112 communicating with bank 120 and
service provider 130 via a network, the Examiner has not articulated how,
precisely, Godard “identif[ies] . . . a communication device of a requestor
based on the first identification information,” i.e., a debit card number, as
recited in claim 1. Notably, in the Answer, the Examiner does not squarely
address Appellant’s argument on this point.
The law of anticipation according to our reviewing court is clear:
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unless a prior art reference discloses within the four corners of
the document not only all of the limitations claimed but also all
of the limitations arranged or combined in the same way as
recited in the claim, it cannot be said to prove prior invention of
the thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Because the Examiner has failed to establish that Godard discloses
this limitation, the anticipation rejection cannot stand. Moreover, because
the obviousness rejection relies on the same erroneous fact finding, it, too,
must be reversed. Final Act. 5; Ans. 4.
CONCLUSION
Rejections I–III are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis /
Reference
Affirmed Reversed
1, 5, 6, 8, 12,
13
112 indefiniteness 1, 5, 6, 8, 12,
13
1, 8 102 Godard 1, 8
5, 6, 12, 13 103 Godard,
Fischer
5, 6, 12, 13
Overall
Outcome
1, 5, 6, 8, 12,
13

REVERSED