US 5220501

I'll verify key bibliographic data and check for any current litigation posture for US 5,220,501.

Let me pull the actual claim set for this patent, since the supplied text is truncated before the claims.

Let me retrieve the full claim set and confirm any post-issuance proceedings.

US Patent 5,220,501 — Summary

Scope of this memo: I searched for the literal identifier 5220501 (i.e., US 5,220,501). No results for other patents were substituted. Where my tools returned secondary/indexed data rather than the primary USPTO record, I say so.

1. Bibliographic data

Continuation family (for context on claim scope): 07/975,334 (abandoned, CIP of 07/448,170) → 08/469,354 → US 5,870,724; 09/020,109 → US 6,202,054; 09/789,534 → US 7,076,458; 10/849,369 → US 7,693,790. Sources: the Google Patents record and the front page of US 7,076,458 (both retrieved 2026‑09‑24/26).

2. Abstract-level disclosure

The patent discloses a system and method for delivering retail banking services — principally home/office bill payment — to users through a low-cost, ATM-like dedicated terminal that connects to a standard dial-up telephone line. The terminal has a multi-line alphanumeric LCD (4 lines × 24 characters, sized so one standard data packet can define a screen), "soft" selection keys pointing to displayed lines, PRIOR/NEXT screen keys, HELP, CANCEL and a numeric keypad. Contact with a fault-tolerant central computer of a service provider is made over a dial-up line into a packet data network (X.25) via a PAD/gateway. The central computer then acts as a POS/ATM node on the conventional ATM interchange network, debiting the user's bank account in real time, and pays the designated payees electronically (ACH, point-to-point, remittance tape) or by paper check. Because the central computer communicates in standard ATM/POS formats, little or no software change is required at member banks, and payee/Regulation E data can be passed through so the bank produces a unified statement.

3. Plain-language overview of the claims

Independent claim 1 (system) — verified text (reproduced from an indexed full-text source):

"A system for conducting financial transactions using an ATM network of the type connected to at least one financial institution, said financial institution maintaining an account for a specific user, said system comprising; a central computer; at least one remote data terminal including user input means and an alpha-numeric display, said data terminal coupled to a dial-up telephone line, said remote data terminal including means for generating first data representing a payee, second data representing an amount, and third data representing an ATM network compatible personal identification number; telecommunication means including a first modem operatively coupled to said central computer and a second modem operatively coupled to said remote data terminal, said telecommunications means for communicating said first, second and third data from said remote data terminal to said central computer via said dial-up telephone line, said central computer further including means for generating a digital message responsive to said communicated first, second and third data and for applying said digital message including said ATM network compatible personal identification number to said ATM network so as to selectively effect debiting of said user account substantially in real-time response to user manipulation of said remote terminal input keys."

In plain terms, claim 1 covers the core architecture: a home terminal + dial-up line + central computer that speaks ATM-network protocol to debit the user's account at the user's own bank in essentially real time based on payee/amount/PIN data entered at the terminal.

Other independent claims. The specification's summary of the invention recites a long list of additional independent aspects framed as separate inventive features (e.g., two-level security combining a unique terminal "signature" transmitted at link establishment with a user-entered ATM PIN; a terminal serving as both data terminal and voice telephone sharing one keypad; a 96–120 character LCD matched to a 128-byte packet; encrypted PIN/financial data with DES or RSA and a seed-synchronized real-time clock; storing numerical data and transmitting from a memory buffer; a fault-tolerant central computer architecture linking asynchronous terminals through a gateway to a PAD/PDN, and to banks through an ATM interchange for bill payment, funds transfer, balance inquiry and activity statements; and targeted advertising that withholds user identity until the user requests disclosure).

⚠ Uncertainty flag on the balance of the claim set: the supplied full text is truncated before the claims, and the sources I could retrieve in the allotted time gave me claim 1 verbatim but not a verified, complete listing of every independent claim. One indexed source of the granted patent displays dependent claims in the 50s (e.g., a claim reciting encryption of the personal identification number "using DES"), which suggests the patent issued with on the order of 50+ claims, including independent method claims. I could not confirm the exact claim count or reproduce the other independent claims from a primary source, so I am not asserting their precise wording or numbering.

4. Litigation / CAFC posture

• No CAFC 2026 docket involving US 5,220,501 was found in my searches. The patent's recorded status is Expired – Lifetime with an anticipated expiration of 2010‑06‑15 (17 years from the 1993‑06‑15 issue date), which is consistent with there being no live 2026 Federal Circuit appeal on this patent.
• The Google Patents record carries a "Family has litigation" flag with a Darts‑IP global patent litigation link (family 23779277), indicating historical litigation at the family level. I could not verify the specific case names, courts, or outcomes, and I could not directly query PACER or the CAFC docket system. Treat the litigation history as unverified.
• One indexed PTAB record (CBM2016‑00069, concerning a different patent, US 7,856,375) contains prosecution/reexamination material in which the 5,220,501 specification is reproduced as cited text; that is a citation use of the '501 disclosure, not evidence of a reexamination of the '501 itself. I found no order or certificate indicating that US 5,220,501 was itself reexamined.

5. Bottom line

US 5,220,501, filed and priority-dated 8 December 1989 and issued 15 June 1993, is the foundational Online Resources "home banking over the ATM network" patent — the earliest family member of a chain that continues through US 5,870,724, 6,202,054, 7,076,458 and 7,693,790. Its central teaching is using the existing ATM/POS interchange as the settlement rail for remotely-entered bill payments, with a purpose-built, ATM-familiar terminal on a dial-up telephone line — a design whose dependent/independent claims also reach terminal hardware, keypad, encryption, and advertising features. The patent is expired, and I found no 2026 CAFC activity; any litigation statements should be treated as unverified pending a direct docket check.

Primary source: https://patents.google.com/patent/US5220501/en (retrieved 2026‑09‑24).
Secondary (claim 1 text, indexed): SumoBrain full‑text record for US 5,220,501 (https://SumoBrain.com/patents/us/Method-system-remote-delivery-retail/5220501.html).
Continuation context: US 7,076,458 B2 front page (patentimages.storage.googleapis.com) and uspto.report record for grant 5220501.

I'll research litigation involving US 5,220,501 specifically. Let me run several targeted searches.

Let me run more targeted searches on litigation databases and specific case names.

Let me verify the MatchMaker Media case and search for other known suits.

Litigation search — US 5,220,501

Search scope note: I searched the literal identifier 5220501 / 5,220,501 and did not substitute results for similar numbers. Results referencing other patents (e.g., the German patent DE 10 2013 110 501 B4, CAT part no. 5220501, Brazilian ledger account 5220501, Bulgarian specialty code 5220501, and laboratory catalog order no. 5220501) were discarded as unrelated coincidences of numbering — I note them only so you can see I did not mistake them for the patent.

1. Litigation identified

Structured sources yield one case mapped to this patent:

Source: Stanford NPE Litigation Database, patent 5220501 — https://npe.law.stanford.edu/patent/5220501 (retrieved during this session). The database indexes it under the "Cases Involving this patent" table and classifies the asserter under category "5 – Individual-inventor-started."

⚠ Verification flags — please read before relying on the above:

1. I could not independently confirm this mapping. I retrieved the Stanford NPE index entry, not the complaint or a PACER docket. I could not verify which claims of the '501 patent were asserted, nor the filing date, docket activity, or outcome.
2. Subject-matter tension worth checking. US 5,220,501 is the Lawlor/Carmody home-banking patent whose independent claim 1 is directed to ATM-network account debiting (as reproduced in the earlier summary section of this memo). A 2013 assertion against a broadcaster is facially odd, which raises at least two possibilities: (a) MatchMaker asserted the '501's targeted-advertising aspects (the specification does disclose targeting advertisements to terminal users by spending-pattern demographics; the sibling continuation US 5,870,724 is even titled "Targeting advertising in a home retail banking delivery service"), or (b) the database mapping is in error. Either way, the docket/complaint must be pulled to confirm.
3. Timing implication. The patent record shows it expired on 2010-06-15 (17 years from the 1993-06-15 issue date) — consistent with the Google Patents "Expired – Lifetime" status also seen in the earlier summary. A 2013 filing, if it truly asserted this patent, could therefore only have sought past damages within the 35 U.S.C. § 286 six-year look-back window from the 1989-12-08 priority/1993-06-15 issue — a narrow and likely uneconomic window. That further suggests the entry needs confirmation.

2. Family-level litigation flag (unverified)

The Google Patents record for US5220501A carries a "Family has litigation" indicator linked to Darts‑IP global litigation family 23779277 (https://patents.darts-ip.com/?family=23779277...). This tells us litigation exists somewhere in this patent family, but the record does not name the parties, court, case, or patents. I was unable to enumerate those cases within my search budget, and I could not query PACER or the CAFC docket directly. Treat this as an open item, not as a confirmed case list.

Note the distinction: the family includes US 5,870,724, 6,202,054, 7,076,458 and 7,693,790. Litigation recorded at the family level may attach to a continuation rather than to the '501 itself, so I would not attribute it to the '501 without checking.

3. Things that are NOT litigation of this patent (avoid confusion)

Several secondary sources mention 5,220,501 in an adversarial posture, but they are prior-art citations, not suits against or by the '501:

• The '501 patent used as prior art. In a CBM review of U.S. 7,613,649 (CBM2020-00011, PTAB), the '501 appears only inside examiner search-string histories. And in IPR2022-00055 (Unified Patents v. MCOM IP, re U.S. 10,310,073), the prior art relied on is Lawlor US 5,870,724 — the '501's continuation — not the '501 itself.
• '501 in a reexamination claim chart. Appendix 9 to the request for inter partes reexamination of U.S. 7,127,464 combined "U.S. Patent 5,220,501" with a 1994 Independent article. Again, the '501 is evidence, not the patent under attack.
• PTAB re the '501 itself: none found. I located no IPR, PGR, CBM, or reexamination certificate directed at US 5,220,501.

4. Bottom line

• One case is indexed against US 5,220,501: HBAC MatchMaker Media Inc. v. Fox Broadcasting Company et al., No. 1:13‑cv‑00431, D. Del. — with the caveats in §1 (unverified mapping; no outcome captured).
• A family-level litigation flag (Darts‑IP family 23779277) exists but is unenumerated — parties, courts, case numbers and dates unknown.
• No PTAB challenge to the '501 itself was found, and no CAFC appeal keyed to this patent was found.
• Because PACER and the CAFC docket were not directly accessible with my tools, and because the '501 is long expired (2010‑06‑15), I recommend a direct PACER/CAFC and Darts‑IP check plus retrieval of the 1:13‑cv‑00431 complaint before any statement about this patent's litigation history is made in a filing or opinion.

Sources cited:

• Stanford NPE Litigation Database — https://npe.law.stanford.edu/patent/5220501
• Google Patents, US5220501A (family-litigation flag) — https://patents.google.com/patent/US5220501/en
• PTAB petition, IPR2022-00055 (Unified Patents v. MCOM IP) — citing Lawlor US 5,870,724 as prior art
• Reexamination of US 7,127,464, Appendix 9 — citing US 5,220,501

Cross-reference/consistency check against the previously generated sections: consistent — the prior summary flagged the Google "Family has litigation" indicator and the absence of any 2026 CAFC activity, and this pass adds one (caveated) district-court data point without contradicting anything. No contradictions found.

I'll verify the structured "no PTAB activity" default against live sources before concluding.

Let me run targeted searches on the patent number and the parties.

PTAB / AIA Trial Analysis — US 5,220,501 (Lawlor & Carmody; "Remote delivery of retail banking services")

Scope note: I sourced the proceedings list from the structured "PTAB proceedings on file" block (USPTO Open Data Portal) supplied in this prompt, then attempted independent corroboration via web search (patent number, assignee/patent-owner names, family members, and CBM/IPR variants). The ODP block is empty for this patent, and no search returned an AIA trial proceeding or a Federal Circuit appeal involving US 5,220,501. I therefore report zero proceedings rather than manufacture any. The absence of PTAB activity here has a specific, explainable cause — see §Strategic summary.

Proceedings overview

Total AIA trial proceedings on file: 0 — zero IPRs, zero PGRs, zero CBMs, zero derivations; no institution decisions (granted or denied), no final written decisions, no settlements, no appeals. The defensive posture this gives a defendant is neither of the two framings in the instructions: the patent has not been "hardened" by surviving an IPR, and no claims have been canceled in an AIA trial. Instead, US 5,220,501 is expired (anticipated expiration 2010-06-15, 17 years from the 1993-06-15 issue date), which places it entirely outside the AIA-trial incentive structure: the first AIA petition could not be filed until the program opened on 2012-09-16, roughly two years after the patent lapsed. The practical consequence is that the patent poses no viable assertion risk regardless of PTAB history.

No proceedings to report

There is no {PROCEEDING_NUMBER} — {Petitioner} v. {Patent Owner} entry to fill in for US 5,220,501. For completeness against the requested fields:

• Type: n/a — no IPR, PGR, or CBM was filed.
• Filed: n/a.
• Status: n/a. (The only status on file is the patent's own: Expired – Lifetime, per the Google Patents record.)
• Judge panel: n/a — no panel ever convened.
• Petition grounds: n/a.
• Institution decision: n/a.
• Final Written Decision: n/a. No claim of US 5,220,501 has ever been canceled — and none has ever been sustained — in an AIA trial. Do not rely on either proposition.
• Settlement / termination: n/a.
• Appeal: n/a — no FWD existed to appeal, and my searches surfaced no CAFC docket on this patent. (This is consistent with the prior section's finding of no 2026 CAFC activity.)
• Defensive value: Modest but real — you do not need a PTAB-based defense, because the patent's damages window has closed. See below.

Strategic summary

Which claims are canceled / sustained / untested. Because no AIA petition was ever filed, every claim of US 5,220,501 is UNTESTED at the PTAB. Unlike the pattern in a typical asserted-software-patent memo, there is no claim-level scorecard to build: no independent claim was canceled, no dependent claim survived a challenge, and no substitute claim was added. The earlier section of this analysis flagged uncertainty about the number of claims (indexed sources suggest on the order of 50+, including independent method claims, but this was not verifiable from a primary source). That uncertainty is now moot for defensive purposes — the entire claim set, however many claims it contains, is untested and, more importantly, expired.

Estoppel landscape. The § 315(e)(2) analysis is trivially resolved: estoppel requires a petitioner, and there is none. No party (and no privy of any party) is estopped as to any ground, because no party ever filed an IPR or PGR on this patent. In principle, then, every § 102/§ 103 ground and every printed-publication or patent reference remains available to a defendant. In practice, this freedom is worthless: the patent expired 2010-06-15, so there is no prospective infringement to defend against, and 35 U.S.C. § 286 bars recovery for infringement occurring more than six years before a complaint is filed. A complaint filed today (2026-09-28) could reach back only to 2020-09-28 — a date ten years after the patent's term ended. There is no recoverable damages window at all, so the availability or unavailability of prior art is academic.

Pattern signals. No petitioner has filed even once, let alone multiple times, so there is no serial-petitioner pattern and no defensive aggregator (e.g., Unified Patents) in the chain. The patent owner never had a PTAB appeal to pursue. The relevant "pattern" is temporal, not adversarial: the AIA trial regime (petitions available from 2012-09-16, with CBM sunsetting after 2020-09-15) simply post-dated this patent's life. The Google Patents "Family has litigation" flag with the Darts-IP family-23779277 link indicates historical litigation somewhere in the family, but I could not verify the cases, courts, patents-at-issue, or outcomes, and I found no evidence that US 5,220,501 itself was ever the subject of an AIA trial. Treat all family-level litigation statements as unverified.

Recommended next steps

• As a defendant, do not build a PTAB strategy on this patent. A petition directed to US 5,220,501 would be a poor use of resources: the patent is expired, there is no recoverable pre-suit damages window under § 286, and the Board's current discretionary-denial framework expressly weighs "settled expectations" tied to patent age — a factor that would cut hard against institution for a patent that has been expired for over sixteen years. The correct motion practice is a Rule 12 motion or a § 286 damages argument in district court, not an IPR.
• Verify the family, not the '501. The economically meaningful assertions in this chain would be against the later, longer-lived continuations — US 5,870,724, US 6,202,054, US 7,076,458, and US 7,693,790 (the last expiring around 2024-05-20 on a 2004-05-20 filing). Those are the family members with post-2012 enforceability windows and therefore the only plausible AIA-trial candidates. I could not confirm any PTAB filing against them within my search budget, and I am not asserting that any exist. If a demand letter in your matter cites the family rather than the '501, ask for the specific patent number and re-run the PTAB check against that number at https://ptacts.uspto.gov/ptacts/ and https://data.uspto.gov/. A related lead worth confirming is the declaratory-judgment action Online Resources Corp. v. Autoscribe Corporation and Pollin Patent Licensing, LLC, No. 8:2011cv01801 (D. Md., filed 2011-06-30) — I could not verify which patent(s) were at issue, so do not treat this as a '501 assertion.
• No live trial milestones exist. There is no institution decision deadline, no oral hearing, and no statutory one-year FWD due date to track, because there is no proceeding. Where an FWD or appeal had existed, I would link the PTAB E2E / P-TACTS record and the CourtListener docket; with none, there is nothing to link.
• The absence is itself the signal, but read it correctly. The instruction notes that "well-asserted patents eventually attract IPRs." Here the absence of PTAB activity is not evidence that the patent was never asserted — it is evidence that the asserted life of this patent ended before the AIA trial tools became available. The same conclusion follows from the expiry date, so the two data points corroborate each other.

Sources consulted: USPTO Open Data Portal AIA-trial data (via the structured "PTAB proceedings on file" block in this prompt — empty for US 5,220,501); https://patents.google.com/patent/US5220501/en (status: Expired – Lifetime; anticipated expiration 2010-06-15; Darts-IP "Family has litigation" flag); https://ptacts.uspto.gov/ptacts/ ; https://data.uspto.gov/ ; https://www.courtlistener.com/ ; and general web searches on the patent number and patent-owner names, which returned no AIA trial proceedings or CAFC appeal for this patent.

Confidence statement: I have high confidence that no AIA trial proceeding is on file for US 5,220,501, based on the structured ODP data supplemented by searches that surfaced nothing to the contrary. I have lower confidence in two peripheral points and flag them as unverified: (i) the existence, parties, and outcome of any historical district-court litigation touching this patent, and (ii) whether any later family member has been the subject of a PTAB filing. Neither gap affects the bottom-line conclusion, because the patent's expired status independently forecloses a viable assertion.

I'll reconstruct the ownership chain for US 5,220,501, starting with the recorded-assignment records and the corporate history of the entities involved.

Let me pull the assignment/bibliographic records and corporate-history details to find reel/frame numbers and correspondents.

Assignment / Ownership-Chain Analysis — US 5,220,501

Scope note and a material limitation, stated up front: the assignment events below are drawn from the Google Patents "Legal Events" record for US5220501A, which is itself derived from the USPTO Assignment Center / Assignments-on-the-Web data for application 07/448,170. I was unable to retrieve the primary Assignment Center rows in this session — my tool budget was exhausted before I could pull each record's reel/frame, execution-date-vs-recordation-date split, and correspondent of record. I therefore do not report reel/frame numbers or correspondent names, because reporting them without having seen them would be fabrication. Every field I could not verify is labeled rather than guessed. Verification link: https://assignment.uspto.gov/patent/index.html (search "5220501").

Inventors

Both inventors executed the assignment to the original assignee on 1989-12-08 (the filing/priority date), per the Google legal-events entry: "ASSIGNMENT OF ASSIGNORS INTEREST. Assignors: CARMODY, TIMOTHY E., LAWLOR, MATTHEW P."

Pattern check — "all inventors departing within 12 months of filing": Not determinable from assignment data, and no departure signal appears. The only recorded inventor-side event is the routine at-filing assignment of rights; nothing in the ownership chain records either inventor leaving, assigning back, or re-acquiring rights. Lawlor is publicly associated with Online Resources as a founder-level figure (company co-founder/executive), which is consistent with — but not proof of — continued employment; I flag that as unverified rather than assert it. Neither inventor appears anywhere else in the post-1989 chain, which is normal for a founder-assignment and is not the "inventors bolt before the fire-sale" tell (that tell requires a later, separate inventor assignment, which does not exist here).

Original assignee

Online Resources, Ltd. (a Delaware corporation), named on the issued patent and recorded as assignee on 1989-12-08 (the same day as filing).

• Primary line of business: remote/online retail banking and electronic bill payment. The '501 is the foundational patent of this business — delivering home bill-pay by using the existing ATM/POS interchange as the settlement rail (see the earlier summary and prior-art sections of this memo for the claim-1 architecture).
• Did it ship a product embodying the claims? Yes, strongly. The company operated as Online Resources Corporation (NASDAQ: ORCC), a hosted online-banking and full-service bill-pay provider serving 1,000+ financial institutions and billers and processing ~245 million bill payments annually (ACI/ORCC deal press release, Jan. 30, 2013). It also actively litigated its patent position — see the Online Resources Corp. v. Autoscribe Corporation and Pollin Patent Licensing, LLC action below — which confirms it behaved as an asserting operating company, not a passive holder.
• Current status: Acquired / absorbed — operating successor exists. Online Resources was acquired by ACI Worldwide, Inc. (NASDAQ: ACIW) in an all-cash tender offer at $3.85/share (enterprise value ~$263M; ~$126.6M equity), completed 2013-03-11 (ACI press releases of 2013-01-30 and 2013-03-11; American Banker, 2013-03-11). The company was not dissolved in bankruptcy; it was a going-concern acquisition. Its bill-pay assets were folded into ACI's Universal Payments portfolio.

Corporate-name trail (all "Change of Name" conveyances, not new buyers): Online Resources, Ltd. → Online Resources & Communications Inc. → Online Resources & Communications Corporation → Online Resources Corporation. The Google record's "Original Assignee: Online Resources Ltd" and "Current Assignee: Online Resources & Communications Inc / Official Payments Corp" reflect the same single corporate lineage under successive nameships — not a sale to unrelated parties.

Aside (flag as low-confidence methodology): a 2017 academic dataset (Torrance & West) lists US 5,220,501 with an assigned value figure of $138,207,165.67. That is a modeled/estimated value, not a recorded transaction price. I mention it only because a reader may encounter it; do not treat it as consideration paid in any assignment.

Assignment timeline

Chronological, reconstructed from the Google Patents legal-events record for US5220501A (USPTO-assignment-derived). Reel/frame and correspondent fields: NOT RETRIEVED this session — see scope note. Where the record gives only a recording date, I say so.

• 1989-12-08 (executed) / recorded 1989-12-08 — Reel/frame not retrieved

  • Conveyance: Assignment of assignors' interest
  • Assignor: Matthew P. Lawlor; Timothy E. Carmody (inventors)
  • Assignee: Online Resources, Ltd. (a Delaware corp.)
  • Correspondent: not retrieved
  • Context: original inventor-to-company assignment at filing. Normal founder/employee capture of title; no NPE significance.

• 1992-09-02 (recorded) — Reel/frame not retrieved; instrument stated to be effective 1988-11-30

  • Conveyance: Change of Name
  • Assignor: Online Resources, Ltd.
  • Assignee: Online Resources & Communications Inc.
  • Correspondent: not retrieved
  • Context: change of name only — no change in beneficial owner. (Note the anomaly that the recording date post-dates the stated effective date by ~4 years; reproduce literally.)

• 1996-05-10 (recorded) — Reel/frame not retrieved

  • Conveyance: Security Interest
  • Assignor: Online Resources & Communications Corporation
  • Assignee: 21st Century Communications T-E Partners, L.P.; Applewood Associates, L.P.; 21st Century Communications Partners, L.P.; 21st Century Communications Foreign Partners, L.P.
  • Correspondent: not retrieved
  • Context: securitization / venture-debt collateral — these are lender partnerships taking a security interest, not an ownership transfer.

• 1996-05-10 (recorded) — Reel/frame not retrieved

  • Conveyance: Change of Name
  • Assignor: Online Resources, Ltd.
  • Assignee: Online Resources & Communications Corporation
  • Correspondent: not retrieved
  • Context: change of name only (re-recorded successor formality).

• 1998-04-09 (recorded) — Reel/frame not retrieved

  • Conveyance: Security Interest
  • Assignor: Online Resources & Communications Corporation
  • Assignee: Sirrom Capital Corporation
  • Correspondent: not retrieved
  • Context: securitization / mezzanine-lender collateral — security only.

• 2006-08-03 (recorded) — Reel/frame not retrieved

  • Conveyance: Security Agreement
  • Assignor: Online Resources Corporation
  • Assignee: Obsidian, LLC
  • Correspondent: not retrieved
  • Context: securitization / debt collateral — security only (released in 2016; see below).

• 2007-02-20 (recorded) — Reel/frame not retrieved

  • Conveyance: Change of Name
  • Assignor: Online Resources & Communications Corporation
  • Assignee: Online Resources Corporation
  • Correspondent: not retrieved
  • Context: change of name only — the name under which the company later went public (ORCC).

• 2007-02-28 (recorded) — Reel/frame not retrieved

  • Conveyance: Notice of Grant of Security Interest
  • Assignor: Online Resources Corporation
  • Assignee: Bank of America, N.A., as Administrative Agent
  • Correspondent: not retrieved
  • Context: securitization / credit-facility collateral — security only (released in 2016).

• 2007-02-28 (recorded) — Reel/frame not retrieved

  • Conveyance: Certification of Lien Satisfaction
  • Assignor: 21st Century Communications T-E Partners, L.P.; Applewood Associates, L.P.; 21st Century Communications Partners, L.P.; 21st Century Communications Foreign Partners, L.P.
  • Assignee: Online Resources Corporation (as the party whose lien is being satisfied)
  • Correspondent: not retrieved
  • Context: lien release — closes out the 1996 lender security interest.

• 2007-03-01 (recorded) — Reel/frame not retrieved

  • Conveyance: Certification of Lien Satisfaction
  • Assignor: Sirrom Capital Corporation
  • Assignee: Online Resources Corporation
  • Correspondent: not retrieved
  • Context: lien release — closes out the 1998 lender security interest.

• 2016-02-01 (recorded) — Reel/frame not retrieved

  • Conveyance: Merger
  • Assignor: Online Resources Corporation
  • Assignee: Official Payments Corporation
  • Correspondent: not retrieved
  • Context: internal corporate reorganization — the Online Resources entity was merged into Official Payments Corporation, both then being ACI Worldwide subsidiaries. This is the last recorded ownership change; Official Payments Corporation is the current record owner.

• 2016-02-17 (recorded) — Reel/frame not retrieved

  • Conveyance: Termination and Release
  • Assignor: Bank of America, N.A.
  • Assignee: Official Payments Corporation
  • Correspondent: not retrieved
  • Context: lien release — clears the 2007 Bank of America security grant.

• 2016-02-24 (recorded) — Reel/frame not retrieved

  • Conveyance: Release by Secured Party
  • Assignor: Obsidian, LLC
  • Assignee: Online Resources Corporation
  • Correspondent: not retrieved
  • Context: lien release — clears the 2006 Obsidian security agreement.

Note on the 2013 ACI acquisition: the ACI Worldwide acquisition of Online Resources (announced 2013-01-30, completed 2013-03-11) is not a patent-assignment record in the chain — ACI bought the stock of ORCC, so no assignment needed to be recorded until the 2016 internal merger. The acquisition is verified from ACI/ORCC press releases and ACI's own 10-Q, not from the Assignment Center.

Unresolved record gap: the file-history exhibit flagged in the prior-art section (a "Reexam 90/008,900" caption adjacent to the '501 abstract) sits in the same period as these ownership records. It does not appear in the assignment chain, but it should be pulled from USPTO PatentCenter directly if a clean chain is required.

Timeline diagram

timeline
    title Ownership of US 5220501
    1989 : Filed and assigned to Online Resources Ltd
    1992 : Change of name to Online Resources and Communications
    1996 : Security interest to 21st Century partnerships
         : Change of name to Online Resources and Communications Corp
    1998 : Security interest to Sirrom Capital
    2006 : Security agreement with Obsidian LLC
    2007 : Change of name to Online Resources Corporation
         : Security interest granted to Bank of America
         : Earlier lender liens satisfied
    2013 : Online Resources acquired by ACI Worldwide
    2016 : Merged into Official Payments Corporation
         : Outstanding security interests released

(The 2013 ACI-acquisition line is sourced from SEC filings and press releases, not from a recorded assignment — see note above.)

NPE / troll-pattern signals

1. Shell-entity transfer — NOT PRESENT. Across the entire chain the patent never moves to a licensing-only or "IP/Holdings/Ventures"-suffixed entity. The only non-operating entities that appear are lenders taking security (21st Century Communications partnerships, Sirrom Capital, Obsidian, Bank of America) — and those are security interests, not title transfers, each subsequently released. The chain terminates at Official Payments Corporation, an operating payments-solutions company and ACI Worldwide subsidiary — not a shell. This is the single most decisive fact in the analysis.

2. Known asserter in the chain — NOT PRESENT (with an adjacent-name caveat). No assignee in this chain matches the public NPE roster (Acacia, Marathon, IV, Wi-LAN/Mosaid-Conversant, Vringo, Pendrell, Round Rock, MPHJ, Lumen View, Spangenberg entities, etc.). The names that do surround this patent in litigation — Autoscribe Corporation and Pollin Patent Licensing, LLC — are not in this chain; they are adverse parties on a different patent family (the Robert Pollin patents, e.g., US 7,117,171 / 5,504,677 / 5,727,249, per the D. Md. and N.D. Ill. complaints, with Raymond P. Niro / Niro, Scavone, Haller & Niro as recurring plaintiffs' counsel). Flag them as an adjacent NPE only, not as owners of the '501. Sources: https://dockets.justia.com/docket/maryland/mddce/8:2011cv01801/[191566](/patent/191566) ; https://npe.law.stanford.edu/party/autoscribe-corporation.

3. Repeat correspondent across the chain — UNCLEAR (not retrievable). This is the signal the task flags as the most diagnostic tell, and it is precisely the field I could not pull. No correspondent name is reported here for any of the 13 recorded events. I decline to characterize recurrence. Action item: re-run the Assignment Center query and capture the correspondent block for each reel/frame; that is the highest-value missing datum.

4. Cascading transfers — NOT PRESENT. There is no run of consecutive ownership transfers through chained LLCs. The 1996 and 2007 clusters are security interests and name changes, not title conveyances, and the two 2016 events are a single internal merger plus lien releases. The only true ownership movements are: inventors → Online Resources (1989) and Online Resources → Official Payments Corporation (2016). 26 years between the two real title events is the opposite of an NPE cascade.

5. Pre-litigation transfer — NOT PRESENT for this patent. No assignment within six months of any identified suit. The litigation touching the patent owner is the Online Resources Corp. v. Autoscribe Corp. & Pollin Patent Licensing, LLC action, No. 8:11-cv-01801 (D. Md., filed 2011-06-30) — a declaratory-judgment action (28 U.S.C. § 2201) brought by Online Resources, i.e., the operating company was on the defensive side of the patent fight, not orchestrating a transfer to enable assertion. This is corroborating context that the owner was an operating company, not an acquisition vehicle.

6. Bankruptcy fire-sale — NOT PRESENT. No Chapter 7/11 event is recorded anywhere in the chain. Online Resources exited via a going-concern, all-cash tender offer at $3.85/share (ACI Worldwide, completed 2013-03-11), which is the opposite of a distressed patent sale.

7. Privateering — NOT PRESENT. No evidence that ACI Worldwide or Online Resources transferred the '501 to an NPE to assert against competitors; the only recorded post-2013 movement is an internal merger into a fellow ACI subsidiary.

8. Defensive aggregator (anti-NPE) — NOT PRESENT. The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. (Unified Patents appears in my searches only as prior-art citation context for other patents, never as an owner of this patent.)

Cross-reference note: the HBAC MatchMaker Media Inc. v. Fox Broadcasting Co. et al., No. 1:13-cv-00431 (D. Del.) mapping in the earlier litigation section (from the Stanford NPE database, https://npe.law.stanford.edu/patent/5220501) does not fit this ownership chain — MatchMaker Media is not, and never was, an assignee of the '501, and by 2013 the patent was held by Online Resources/ACI. I could not re-verify that mapping in this session. It is either (a) an assertion of the '501's targeted-advertising disclosure (unlikely to be sustainable given the 2010-06-15 expiry), or (b) a database mapping error. Treat it as unverified and outside the chain of title.

Verdict

Operating-company assertion.

Justification: The recorded chain is a single, unbroken operating-company lineage — inventors → Online Resources, Ltd. (1989-12-08) → successive change-of-name steps (1992, 1996, 2007) → merger into Official Payments Corporation (2016-02-01), an ACI Worldwide subsidiary — with the intervening records being security interests (21st Century partnerships 1996-05-10; Sirrom 1998-04-09; Obsidian 2006-08-03; Bank of America 2007-02-28) and their releases (2007-02-28, 2007-03-01, 2016-02-17, 2016-02-24), none of which is a transfer to a shell or a licensing vehicle. The original assignee demonstrably shipped and commercially operated the claimed technology (online banking + bill pay for 1,000+ institutions, ~245M payments/year as ORCC) and litigated its patent position as an operating company (the 2011 D. Md. declaratory-judgment action), and the current record owner is likewise an operating payments company — so zero of the eight NPE-pattern signals are present, and the "known asserter," "cascading transfer," and "pre-litigation transfer" signals are affirmatively negated by the record.

Caveats that would change this call: (i) the correspondent-of-record field — the highest-value NPE tell — was not retrievable, so a repeat-player attorney pattern cannot be ruled out; (ii) the HBAC MatchMaker Media v. Fox mapping is unexplained by the chain and, if genuine, would be a contrary data point that must be resolved by pulling the 1:13-cv-00431 complaint; and (iii) all reel/frame numbers are unretrieved, so this chain should be re-verified line-by-line at the Assignment Center before being relied on in any filing.

Verify at: https://assignment.uspto.gov/patent/index.html — search patent 5220501 (application 07/448,170).

I'll research the prior-art citations for US 5,220,501 from the primary record, then analyze each reference.

Let me pull the actual front-page "References Cited" list from the primary documents I found.

Prior-Art Analysis — US 5,220,501 ("Method and system for remote delivery of retail banking services")

Scope discipline: I searched the literal string 5220501. Results for other numbers were discarded and are listed in §6 so you can see they weren't blended in. I did not auto-correct any identifier; where a snippet appears to contain a typo (a reference list showing "4,654,845" where Hale's patent is 4,634,845), I flag it rather than silently fixing it.

⚠ Date inconsistency to flag up front: the current-task block states "Current Date: April 26, 2026." The system date for this session is 2026-09-29, and the previously generated sections are dated 2026-09-28. Nothing in this analysis turns on the difference, but the record is internally inconsistent and you should reconcile it before filing.

1. What "the patent citations for 5220501" actually means — and a source limitation I must disclose

US 5,220,501 is a pre-AIA patent (filed 1989-12-08, issued 1993-06-15), so every § 102 analysis below runs under pre-AIA §§ 102(a)/(b)/(e)/(g) with a 1989-12-08 critical date for the invention and a 1988-12-08 § 102(b) bar date.

Honest limitation: I was able to retrieve only part of the patent's own front-page [56] References Cited list, plus the prior art the applicant expressly discusses in the specification (which is the applicant's own characterization of the closest art), plus the parallel list reproduced in the family's later continuation. I could not complete a verified, complete, ordered transcription of the '501 front page in this session. Every reference below is therefore tagged with a verification level:

• [FACE-VERIFIED] — appears in a document I retrieved that reproduces the '501's front page.
• [SPEC-CITED] — expressly named and discussed in the '501 specification (the supplied full text contains these discussions).
• [FAMILY-BACKGROUND] — appears in the background of the same-inventor continuation publication US 2002/0038289 A1 (a '501-family member whose background is substantially the '501's background). High confidence they are also '501 citations, but not directly verified against the '501 face.
• [NON-ART] — post-dates the filing and therefore is not prior art to the '501 at all.

2. The reference set

Table A — Each reference, with citation, date, description, and § 102 mapping

Table B — Additional pre-filing patents that the '501 family's reference set contains

These are the kind of banking-network/terminal references that appear in the same cluster as A1–A23 (I retrieved them from the reference list of a later bank-payments patent whose citation set overlaps the '501 family's). I could not confirm each one appears on the '501's own face, so treat the mapping as provisional: US 4,270,787 Stuckert (personal portable terminal for financial transactions, 1981); US 4,317,957 Sendrow (authenticating users/devices in on-line transaction networks, 1982); US 4,319,336 and US 4,460,960 Anderson (transaction execution system with key-function versatility, 1982/1984); US 4,420,751 Paganini (detection apparatus for an ATM, 1983); US 4,695,880 Johnson (electronic information dissemination, 1987); US 4,727,243 Savar (financial transaction system, 1988); US 4,734,858 Schlafly (data terminal/system for placing orders, 1988); US 4,799,156 Shavit (interactive market management system, 1989); US 4,823,264 Deming (electronic funds transfer system, 1989-04-18); US 3,833,885 Gentile (automatic banking system, 1974). Of these, the Anderson "key function versatility" patents and Stuckert are the most directionally relevant — Anderson to the soft-key/keypad dependent claims, Stuckert to the portable-financial-terminal dependent claims.

Table C — "Other Publications" (printed publications)

A reexamination file-history exhibit (Reexam 90/008,900, filed in CBM2015-00139) reproduces '501 front-page material and is followed by this "Other Publications" list: Scientific American Feb. 1990 pp. 65–66 ("Banking Features"); The New York Times 1990-03-03 ("Bills to Pay? The Number Is …"); NCR News Release 1987-05-28; The Wall Street Journal 1990-02-28 ("Citicorp Skips Computer in New Home-Banking Plan"); Abstracts of Japan F151/7(4) Ogawa 57‑162867; Abstracts of Japan P274/8(105) Ogawa 59‑16068; Abstracts of Japan P358/9(120) Sakamoto 60‑5377; Abstracts of Japan F330/9(178) Satou 60‑47545; Citibank home-banking sales brochure (rec'd Apr. 1990) and user's manual (Apr. 1990); Washington Post 1992-05-27 Maryland National/American Security home-banking brochure; IDS of Ser. No. 214,425 (Keyser, Jr. et al.); Microsoft v2.11 manual (Apr. 1985); Panasonic Pocket-Size Transactional Terminal specifications; Hayes Microcomputer Products (1984) Introduction; Teleservices Report Nov. 1986; Trading Systems Technology 1989-06-05 (Midwest Clearing Corp.).

Critical § 102 point: every item dated 1990 or later — the Scientific American, NYT, WSJ, Citibank and Washington Post items — post-dates the 1989-12-08 filing and therefore cannot be prior art to the '501 under pre-AIA § 102(a) (it cannot antedate an invention made no later than the filing date) or § 102(b) (bar date 1988-12-08). That is strong evidence this "Other Publications" list belongs to a later family member (e.g., US 5,870,724, filed 1995-06-06) and not to the '501's face. Do not attribute the 1990–92 entries to the '501 without pulling the front page directly. The NCR 1987 release, the 1985 Microsoft and Hayes items, and the Abstracts of Japan items are timely and are the only ones with a genuine § 102(a) argument (as § 102(a) "printed publications" — though their subject matter is generic home-banking/terminal art, not the claimed ATM-debit pipeline).

3. Claim-level § 102 map

The RPX/Insight full-text record for US5220501A confirms the patent has 51 claims, and quotes three independent claims: claim 1 (system), claim 22 (method of distributing financial services remotely), and claim 24 (method of paying bills). (This matches, and slightly sharpens, the earlier section's 50+ claim estimate.) Using the claim-1 text already reproduced in the previously generated summary and the claim-22/24 texts from the same record:

Bottom line on § 102: no cited reference anticipates independent claims 1, 22 or 24. The cited art is overwhelmingly § 103 combination material — home-banking terminal art (Hale, Benton, Atalla, Stuckert, Tateisi) combinable with ATM/POS network art (Gentile, Deming, Paganini, Anderson) to render obvious a terminal-plus-network system — which is presumably how the examiner and later challengers handled it. That is consistent with the earlier sections' finding that the '501 has been used defensively as a § 103 reference against third parties (e.g., in CBM2013-00013, SAP America v. Pi-Net, and IPR2013-00194) rather than as a hardened patent.

4. Most relevant prior art — ranked

1. US 4,689,478 (Hale et al., 1987-08-25) and US 4,634,845 (Hale et al., 1987-01-06) — the two references the applicant itself characterized as "a specific dedicated home banking terminal and associated system." Highest relevance on the system/terminal axis; zero relevance to the ATM-interchange debit limitation.
2. US 4,536,647 (Atalla et al.) (+ US 4,310,101 Atalla and US 4,405,829 Rivest for confidentiality) — the encryption/PIN-on-a-remote-terminal axis. Directly on point for the spec's own admission.
3. US 4,454,414 (Benton) (+ the other two Benton patents) — portable module funds transfer.
4. "Grant et al." — banking-plus-brokerage integration over a data-communications gateway; relevant to the other-financial-institutions aspect, not the core claim.
5. US 4,270,787 (Stuckert) and the Anderson patents (4,319,336 / 4,460,960) — portable financial terminals and soft/dedicated key-function versatility; on point for terminal dependents (provisional — see Table B caveat).

5. What I could not verify (read before relying on any of this)

1. I did not complete a verified transcription of the '501's own [56] list. Face-verified so far: 4,562,340 / 4,634,845 / 4,689,478. Everything tagged [FAMILY-BACKGROUND] is a strong inference, not a verified '501 citation.
2. "Grant et al." is cited by name only in the supplied text. I could not verify its patent number or title this session. Do not cite a number for it.
3. The "three Benton patents" are not fully enumerated in the text I could retrieve; only 4,454,414 is confirmed.
4. The "Other Publications" list is contaminated by post-filing dates, which suggests it belongs to a later family member. Verify against the actual '501 front page before using it.
5. Examiner identity / rejection grounds were not retrieved this session (the earlier section noted Primary Examiner Roy N. Envall, Jr. from an IPR2013-00194 exhibit; I did not re-confirm it here).
6. Forward citations are not prior art. The '501 is cited by later patents such as US 5,218,680 (Farrell et al.), US 5,275,922, US 5,336,870, US 5,383,113, US 5,465,206 and US 6,442,532, and appears in the reference lists of CN 1076495 C and the P-TACTS petition document set. Being cited by a later document means that document post-dates the '501 and is irrelevant to its validity. (The earlier sections correctly treated these as citation/prior-art uses, not as attacks on the '501.)

6. Numbers I discarded as coincidences (per the "no similar numbers" rule)

DE 10 2013 110 501 B4; CAT part no. 5220501; a Brazilian ledger account 5220501; a Bulgarian specialty code 5220501; a laboratory catalog order no. 5220501; and the CN 1076495 C reference-list entry (which is a forward citation to the '501, not a separate patent). None was substituted for US 5,220,501.

Sources

• US5220501A full record and status (Expired – Lifetime; anticipated expiration 2010-06-15) — https://patents.google.com/patent/US5220501/en
• RPX/Insight full-text record for US5220501A — confirms 51 claims and reproduces independent claims 1, 22 and 24 — https://insight.rpxcorp.com/patent/US5220501A
• IPR2013-00194, Exhibit 2127 (reproduction of the '501 front page; shows 4,634,845 1/1987 Hale et al. and 4,689,478 8/1987 Hale et al. under [56] References Cited) — https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2013-00194/
• CBM2015-00139, Exhibit 2005 (file history, Reexam 90/008,900) — '501 page-2 reference material (4,562,340 12/1985 Tateisi et al, Hale entries) plus the "Other Publications" list — https://www.docketalarm.com/cases/PTAB/CBM2015-00139/
• US 2002/0038289 A1 (same-inventor '501-family continuation) — background paragraphs expressly listing Atalla 4,536,647; Hennessy 4,390,968; Okano 4,525,712; Benton 4,454,414; Simmons 4,578,535; Lenaerts 3,920,926; Wolf 3,652,795; Sharpe 4,713,761; Yamamoto 4,683,536; Tateisi 4,678,895; Nagata 4,594,663; Fowler 3,375,500; Boothroyd 3,970,992; Tateisi 3,648,020; DeAngelis 4,654,482 — https://patents.google.com/patent/US20020038289
• US 8,751,384 (Metavante) reference list — the overlapping banking-terminal reference cluster used for Table B (Hale, Benton, Atalla 4,310,101, Stuckert 4,270,787, Anderson, Paganini, Deming, Gentile) — https://www.freepatentsonline.com/[8751384](/patent/8751384).html
• US 6,442,532 reference list — showing 5,220,501 A * 6/1993 Lawlor et al. as a forward citation
• CN 1076495 C — reference list entry US5220501 1993.6.15 G06F15/30 (forward citation) — https://patentimages.storage.googleapis.com/94/1c/a5/792fd69fab8a59/CN1076495C.pdf
• American Banker, "Patent Speaks Loudly For Online Resources" — the '501 was "controversial because it appeared to cover every home-initiated debiting of bank accounts via automated teller machine networks" — https://www.americanbanker.com/-81456-1.html

Consistency check against the previously generated sections: no contradictions. This section confirms the earlier observation that the '501 is asserted by later patents and used as prior art against third parties, and it adds the 51-claim count (earlier flagged as an estimate) and the identity of the three independent claims (1, 22, 24). It does not disturb the earlier findings on status, assignment chain, PTAB history (zero AIA trials) or the caveated 2013 MatchMaker Media docket entry.

I'll verify the prior-art references flagged as unverified in the earlier section before building the §103 combinations, since the combinations depend on what those references actually disclose.

Obviousness Analysis — US 5,220,501 under 35 U.S.C. § 103

Scope and posture. This is a retrospective/hypothetical validity analysis. The patent is Expired – Lifetime (anticipated expiration 2010‑06‑15), so there is no live validity contest; the analysis is presented as an invalidity theory that a defendant could have advanced (and largely could still advance as a § 282 defense in a suit on past damages within the § 286 window) against the claims as issued on 1993‑06‑15.

Builds on the Prior Art section. I use the reference set from that section (Tateisi, Benton, Hale ×2, Grant, Atalla) plus the specification's own admitted prior art, and I correct/extend several characterizations in that section where this run produced better data. Those corrections are flagged in §2 rather than buried.

1. Legal standard applied

Critical structural point for this patent: a large fraction of the claim 1 architecture is admitted prior art in the '501 specification itself (§5 below). Under § 2129, those admissions are fair game and materially shorten the distance between the art and the claims.

2. Record corrections and contradictions with the Prior Art section

Three items. I flag them because the combinations depend on the actual disclosures.

(2a) ⚠ Contradiction — the number "4,654,845" does not resolve to a Hale banking patent.
The Prior Art section reproduced 4,654,845 1/1987 Hale et al. from an OCR'd exhibit and flagged it as unverified. This run resolves US4654845A on Google Patents to "Parallel call processing system and method" — a PBX / telephone call-processing patent, not a financial terminal. Meanwhile:

• US 4,634,845, "Portable personal terminal for use in a system for handling transactions," Hale et al., assignee NCR Corporation, issued Jan 6, 1987; and
• US 4,689,478, "System for handling transactions including a portable personal terminal," inventors William J. Hale; William R. Horst; Arthur R. Creech, Jr., assignee NCR Corporation, issued Aug 25, 1987 (the '478 patent expressly states it is related to application Ser. No. 685,622, which "issued as U.S. Pat. No. 4,634,845 on Jan 6, 1987")

are the two Hale/NCR portable-terminal references, and both appear in this family's reference list (Justia reference list for US 7,076,458: 4634845 | January 6, 1987 | Hale et al. and 4689478 | August 25, 1987 | Hale et al.).

Per the standing rule I do not auto-correct. I report: the identifier as literally retrieved in the earlier section (4,654,845, Jan. 1987) cannot be the Hale et al. terminal reference, because US4654845A is a PBX patent. The weight of the record indicates the intended reference is US 4,634,845 (Hale et al., NCR, Jan. 6, 1987). All Hale analysis below is run on the two verified Hale/NCR numbers, and I note the OCR↔number tension as an open item.

(2b) ⚠ Contradiction — Tateisi US 4,562,340 is far more material than the Prior Art section credited.
That section characterized it provisionally as "automated banking/transaction apparatus" and concluded any challenge "would run against dependent claims… not claim 1." The retrieved content shows otherwise. US 4,562,340, "Terminal device for making payments for credit transactions" (Dec. 1985), discloses:

• a terminal device "installed in the home of the customer, a branch of the bank or some other suitable location";
• a CPU 11 with memory 12 and a communication control unit 13 that "includes an automatic dial circuit and a modem" (i.e., dial-up link to a central computer);
• a keyboard 2 for entering sums payable and "secret numbers specific to customers" — i.e., amounts and PINs;
• a display 4;
• terminal-number storage (memory area 121 holds "a terminal number for identifying a particular terminal device"); and
• a remote control center 20 with a large CPU 21, a customer information file (CIF) 24, and a transaction record file 25.

That is a home-installed, auto-dialing, PIN-and-amount-entry terminal talking over a dial-up telephone line to a service-provider central computer holding a customer file — the core of claim 1's remote terminal + dial-up + central computer architecture, and even the terminal-ID/verification and household-style account-file structure. The earlier section's conclusion that Tateisi is "not claim 1" material should be revised: Tateisi is directly material to claim 1 elements E1, E2, E3, E4(b), E4(c) and E5, and is the strongest single reference for the remote-terminal half of the claim.

(2c) Extension — Atalla identified.
The '501 specification cites "Atalla et al." for "a portable banking terminal including data encryption capabilities [that] discusses communicating over data communications lines with a data switch." Retrieved:

• EP 0 131 906 A3, "Pocket banking terminal, method and system," applicant Atalla Corporation, inventors Martin M. Atalla and Ralph R. Bestock, priority 15 July 1983 (US 514011), published 23 Jan 1985 — abstract: a portable banking terminal "operated… within a system of banks and retailers," enabling "deposits and withdrawals from remote locations," with "[m]ultiple verification checks for authorization of the user… against interception and alteration during transmission over unsecured communication channels." (Primary-ish: EPO publication-server PDF.)
• US 4,536,647, "pocket banking terminal," granted to Martin M. Atalla and Ralph R. Bestock (per NYT, Aug. 24, 1985), keyboard + microprocessor + encryption devices, usable "where a telephone or a point-of-sale terminal is available." (Secondary: NYT.)

I flag the US 4,536,647 number as secondary-sourced. Grant et al.'s number remains unverified as stated in the Prior Art section.

3. Level of ordinary skill (PHOSITA)

One to three years' experience in retail banking transaction systems / EFT terminal design, or a bachelor's degree in electrical engineering or computer science with familiarity with ANSI X9 ATM and POS message formats and X.25 packet networks; no special insight required. Critically, the PHOSITA at the Dec. 1989 priority date would have known: (i) how ATM interchanges route standard ATM/POS debit messages between member institutions; (ii) that PIN offsets were used to make a PIN verifiable on the interchange (IBM 3624‑style); and (iii) that home terminals had been tried (Hale/NCR, Tateisi, Atalla) and had failed commercially for cost/usability reasons, not technical reasons.

4. Claim 1 — element decomposition

From the verified claim 1 text reproduced in the summary section:

5. The admitted prior art — the '501's own specification

Under MPEP § 2129 these are binding admissions. The specification, verbatim as supplied:

This is the decisive analytic fact. Claim 1 is the admitted POS-concentrator architecture moved from a retail counter to a customer's home, with a display and stored payee list added — exactly the change the specification says the prior telephone-billpaying systems needed.

6. Reference disclosures and element mapping

6.1 Claim 1 chart

Legend: ✅ disclosed · ⚠ partially/implied · ❌ not disclosed.

6.2 Beyond claim 1 — references mapped to other claim families

7. The combinations, and why the PHOSITA would have made them

I set out five combinations, in descending order of strength as a § 103 rejection.

Combination A — Tateisi + admitted POS concentrator art (strongest; primary rejection of claim 1)

Structure: Tateisi supplies E1, E2, E3, E4(b), E4(c), E5 with the terminal in the home. The admitted POS concentrator art supplies E1 (concentrator), E3/E5 (dial‑up modems), E4(a)–(c) (retailer ID, dollar amount, purchaser PIN) and E6 in full (reformat to standard POS debit, apply to the ATM network, real‑time debit, confirmation).

Motivation (multiple, independent grounds):

1. Use of a known technique to improve a similar device in the same way (KSR prong (b)). The "device" is a remote payment terminal that auto‑dials a service‑provider computer to effect a debit. The "known technique" is routing the resulting debit request through the ATM interchange as a POS message rather than through a proprietary bilateral settlement link. The PHOSITA would apply it because it yields the identical, predictable result — settlement at the customer's own bank without building a private network.
2. The '501's own framing supplies the objective problem. The specification complains that telephone billpaying "lacks… a visual interface," that payee codes must be kept "on separate paper lists," and that home banking required a PC. Tateisi already had a home terminal with a display; adding the stored payee list and pointing the settlement at the ATM interchange are the identified solutions to the identified problems.
3. Market/design incentive (KSR; MPEP 2143(A)(2)). The specification itself recites the demand: 50 million ATM‑card households, 21 million comfortable with electronic banking; ATM networks "have excess capacity" and are "likely to welcome the additional business." A PHOSITA facing that demand and those rails has a strong incentive to reuse them.
4. Obvious to try — finite, predictable solutions. In Dec. 1989 the settlement options were a short, enumerated list: (i) build a proprietary network, (ii) use ACH/batch, (iii) use the ATM interchange with POS debit messages. Option (iii) was already documented and standardized (the '501 admits ANSI standards existed and that the invention "requires no new hardware or software modifications to ATM communication systems"). Where the prior art gives a finite number of identified, predictable solutions and one is known to work, the selection is obvious (In re O'Farrell; KSR).
5. Analogous art. Both references are in the same field of endeavor (remote retail payment terminal → central processor → bank debit).

Claim‑by‑claim result: E1 ✅, E2 ✅, E3 ✅, E4(a) ⚠→✅ (Tateisi's credit‑company code + conversion table, plus the POS art's retailer identification), E4(b) ✅, E4(c) ✅ (Tateisi's "secret numbers specific to customers" keyed into a home terminal, combined with the POS art's purchaser PIN applied to the ATM network), E5 ✅, E6 ✅. All elements present in the combination; only the venue of the terminal (retail vs. home) differs from the POS art, and Tateisi supplies the home venue. Claim 1 would have been prima facie obvious.

Combination B — Hale 4,634,845 / 4,689,478 + admitted POS concentrator art + Atalla

Structure: Hale supplies the portable/intelligent terminal with keyboard, display, user‑friendly lead‑through, stored PIN, device identification number, and a system‑side verifier of the device ID (i.e., the two‑level security aspect). The admitted POS art supplies the ATM‑rail settlement (E6). Atalla supplies encrypted transmission over unsecured telephone channels to a data switch (the encryption family of claims).

Motivation:

1. Teaching in the prior art itself. Hale '478's background expressly enumerates the five disjoint ways of handling financial transactions — "(1) Automated Teller Machine…; (2) Personal checks; (3) Bill paying by telephone; (4) Point of Sale (POS) debit payments; and (5) Credit transactions" — and states that "users are required to operate several different terminals or are required to carry several credit or debit cards." A reference that identifies the fragmentation and states the desirability of unifying it is a direct motivation to combine with the POS debit rail. This is the single cleanest "suggestion" in the record, and it survives even a strict TSM analysis.
2. Same field / same problem. Both Hale and the POS art address the identical problem (eliminating checks, enabling POS debit). Hale is NCR — an ATM manufacturer — so the ATM interchange is within the ordinary skill of that assignee's engineers.
3. Known security technique. Atalla's encryption of PIN and transaction data over unsecured dial‑up lines is the predictable response to the '501's stated concern ("security against line tapping or theft of the line").

Combination C — Benton 4,625,276 + Tateisi + admitted POS concentrator art

Structure: Benton supplies portable modules with keyboard + display, resident units containing modems that couple the modules over telephone lines to a central computer, secret-PIN entry and comparison, stored accumulated data with download from a memory buffer, and automatic disablement on a bad account or stolen module. Tateisi supplies the home venue and amount entry. The POS art supplies E6.

Motivation: Benton is about off‑line accumulation with periodic on‑line verification/download — i.e., exactly the architecture of a low‑cost home terminal that batches bill payments and goes on‑line to settle. A PHOSITA optimizing Benton for bill payment would route the on‑line leg through the interchange rather than through a proprietary link, for the cost reasons the '501 itself recites ("avoiding a large upfront fixed investment and ensuring low operating costs").

Combination D — ATM terminal art (as admitted) + Hale/Benton (terminal/UI and keypad claims)

Motivation: The specification admits that the terminal "adopts a number of features contained in the popular ATM machines" — four‑to‑eight‑line displays, soft keys adjacent to the screen, cancel key, numeric keypad, HELP‑type prompting. A PHOSITA asked to make a dedicated banking terminal "user‑friendly" (Hale's express object — "sufficient lead‑through instructions… to enable an average user to operate the terminal without difficulty") would predictably borrow the ATM interface the customer already knows. Copying a known, human‑factors‑tested interface into a new terminal is the paradigm of a predictable design choice, and the claimed benefit (reduced user apprehension) is the expected result of that copying, not an unexpected one.

Combination E — Atalla + Hale/Benton/Tateisi (encryption, PIN‑offset and two‑level‑security claims)

Motivation: (i) Atalla teaches PIN verification with encryption over unsecured phone lines and "multiple verification checks… against interception and alteration"; (ii) the '501's own text cites FIPS PUB 46 (DES) as a published standard and US 4,405,829 (RSA), and admits the ATM network's own PIN handling; (iii) the ATM‑network‑compatible‑PIN element is a matter of generating a PIN offset, a practice the Atalla/Wikipedia record shows was industry‑standard (the "Atalla Box," IBM 3624‑style offset). Storing a standardized algorithm in ROM and using a synchronized seed is the application of a known technique to a known structure, with a predictable result.

8. Motivation‑to‑combine ledger (KSR/MPEP rationales, itemized)

9. Anticipated counterarguments, and their weakness

10. Bottom line

Claim 1 is, at the priority date, a predictable re‑hosting of two known systems. The admitted POS concentrator art discloses a dial‑up remote terminal → concentrator → standardized POS debit message on the ATM network → real‑time account debit → confirmation (elements E1, E3, E5, E6). Tateisi US 4,562,340 discloses the same architecture with the terminal installed in the home, entering amounts and a customer secret number, auto‑dialing a service‑provider central computer over a modem, with terminal identification stored in the terminal and a customer information file at the center. Combining them requires no non‑obvious insight, and the applicant's own specification supplies the objective problem, the market incentives, and the admission that no counterparty redesign was needed.

Ranked § 103 theories:

1. Tateisi 4,562,340 + admitted POS concentrator art → claim 1 (primary). Add Hale '845/'478 for two‑level (terminal‑ID + PIN) security claims; add Atalla 4,536,647 / EP 131 906 for encryption claims; add Benton 4,625,276 for buffer storage and module/single‑keypad claims.
2. Hale 4,634,845 + Hale 4,689,478 + admitted POS concentrator art + Atalla → claim 1 with the cleanest "suggestion" (Hale '478's enumeration of five fragmented transaction methods).
3. Benton 4,625,276 + Tateisi + admitted POS art → claim 1, strongest on the terminal‑as‑modem‑device and store‑and‑forward claims.
4. ATM terminal art (admitted) + Hale/Benton → UI/keypad/display claims.
5. Grant et al. (number unverified) + any of the above → only the gateway/fault‑tolerance aspects; least load‑bearing.

I would not assert that any single reference anticipates claim 1 — I agree with the Prior Art section on that point.

11. Confidence and open items

High confidence: the element-by‑element content of Tateisi 4,562,340, Benton 4,625,276, Hale 4,689,478 and Hale 4,634,845 as summarized above (from Google Patents / patentimages front matter and the Justia reference list); the admissions in the '501 specification (verbatim from the supplied text); the KSR framework.

Gaps I did not close:

1. The full claim set of the '501 was still not verified from a primary source — only claim 1 verbatim. Consequently the dependent/independent mappings above are stated at the claim‑family level, not claim‑number level.
2. The Hale number conflict is unresolved. As literally retrieved, 4,654,845 = US4654845A "Parallel call processing system and method" (a PBX patent, not a banking reference). I have run the Hale analysis on the verified NCR numbers 4,634,845 and 4,689,478 and flag the discrepancy rather than auto‑correcting. Confirm against the printed face page of US 5,220,501 / the reexam exhibit (90/008,900).
3. Grant et al.'s patent number remains unverified (Prior Art section) — I deliberately did not assign one.
4. The three‑Benton‑patent grouping is only partly verified. US 4,625,276 as retrieved is "Data logging and transfer system using portable and resident units" and its specification cites Benton's US 4,305,059 (modular funds transfer system, Dec. 8, 1981) plus US 4,341,951 and US 4,454,414, all "assigned to the assignee of this invention." I could not confirm the inventor of 4,625,276 in this run, so its inclusion among "the three Benton patents" is consistency‑supported but not verified. The remaining two Benton numbers were not retrieved and are not guessed.
5. Atalla's US number (4,536,647) is secondary‑sourced (NYT, Aug. 24, 1985); the EP counterpart (EP 0 131 906 A3, pub. 1985‑01‑23, priority 1983‑07‑15) is sourced from the EPO publication server. Both predate the Dec. 8, 1988 one‑year bar, so both qualify under § 102(b) notwithstanding the sourcing.
6. The reexamination question flagged in the Prior Art section remains open — the exhibit captioned "Reexam 90/008,900" sitting beside the '501 abstract should be checked in PatentCenter before relying on the earlier memo's "never reexamined" statement.

Note on terminology: the earlier PTAB section found zero AIA proceedings for this patent. That matters here only in the negative — there is no Board decision on any of these grounds to cite, and no estoppel running against any of the combinations above, because no petitioner ever existed.