Ex Parte Bauchot et alDownload PDFPatent Trial and Appeal BoardJan 24, 201311081045 (P.T.A.B. Jan. 24, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FREDERIC BAUCHOT, GERARD MARMIGERE, and JOAQUIN PICON ___________ Appeal 2011-000048 Application 11/081,045 Technology Center 3600 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and MEREDITH C. PETRAVICK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000048 Application 11/081,045 2 STATEMENT OF THE CASE Frederic Bauchot et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-5 and 8-14. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. 1 THE INVENTION This invention is a method and system “for performing a commercial transaction by using a Short Message Service (SMS) terminal.” Spec. 1:6-9. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for conducting a commercial transaction between a customer and a commercial server, the customer having a computer and an SMS terminal, the computer is connected to the commercial server through a public network, and the SMS terminal can receive and send SMS messages over a cellular network, said method comprising the steps of: the customer ordering an article by using the computer to send an order to the commercial server through the public network; sending an SMS message, through said cellular network, from said commercial server to the 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed Nov. 25, 2009) and Reply Brief (“Reply Br.,” filed Aug. 11, 2010), and the Examiner’s Answer (“Ans.,” mailed Jun. 11, 2010). Appeal 2011-000048 Application 11/081,045 3 customer, via said SMS terminal, said SMS message including at least the address on said cellular network of a payment server, information about said article, and a public encryption key of the payment server; and said customer, after receiving said SMS message on said SMS terminal, adding to said SMS message identification information enabling identification of a customer payment means, and encrypting said identification information using the public encryption key of the payment server received in said SMS message from the commercial server, wherein a modified SMS message is formed, and using the address of the payment server received from the commercial server, redirecting said modified message, including said encrypted identification information, to said payment server through said cellular network. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Goldthwaite Pailles US 2004/0019564 A1 US 6,807,410 B1 Jan. 29, 2004 Oct. 19, 2004 Tyson, How Encryption Works, HowStuffWorks.com (2003), http://www.howstuffworks.com/encryption.htm [Hereinafter “Tyson”]. Scourias, A Brief Overview of GSM (1998), http://ccnga.uwaterloo.ca/~jscouria/GSM/gsmreport.html [Hereinafter “Scourias”]. 9 WAP Gateways, Section 9.3.4: Others (2003) [Hereinafter “WAP”]. Appeal 2011-000048 Application 11/081,045 4 The following rejections are before us for review: 1. Claims 1 and 8-14 are rejected under 35 U.S.C. §103(a) as being unpatentable over Goldthwaite, Pailles, and Tyson. 2. Claim 2 is rejected under 35 U.S.C. §103(a) as being unpatentable over Goldthwaite, Pailles, Tyson, and Scourias. 3. Claims 3-5 are rejected under 35 U.S.C. §103(a) as being unpatentable over Goldthwaite, Pailles, Tyson, Scourias, and WAP . ISSUE The issue is whether the combination of Goldthwaite, Pailles, and Tyson teaches claim 1’s step of: sending an SMS message, through said cellular network, from said commercial server to the customer, via said SMS terminal, said SMS message including at least the address on said cellular network of a payment server, information about said article, and a public encryption key of the payment server. FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). Appeal 2011-000048 Application 11/081,045 5 1. Goldthwaite describes sending a customer’s GSM phone an SMS message from an authentication server 10. See Goldthwaite para. [0037] and fig. 2. 2. Goldthwaite describes the customer communicating with the merchant server through the Internet. See Id. 3. Pailles describes sending a customer’s GSM phone a message from a payment server. Col. 3, ll. 63-65. 4. Pailles describes that the customer and the merchant/merchant server communicate through voice messages or dial tone multi frequency codes. Col. 3, ll. 37-45. 5. Tyson states: “To decode an encrypted message, a computer must use the public key, provided by the originating computer, and its own private key.” Pg. 5. ANALYSIS The rejection of claims 1 and 8-14 under §103(a) as being unpatentable over Goldthwaite, Pailles, and Tyson We are persuaded by the Appellants’ argument (see App.Br. 17-22 and Reply Br. 2-8) that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Goldthwaite, Pailles, and Tyson. We agree with the Appellants that none of Goldthwaite, Pailles, or Tyson, individually or in combination, teaches sending an SMS message, which includes a public encryption key of the payment server, from the commercial server to the customer’s SMS terminal using a cellular network. While both Goldthwaite and Pailles describe a customer communicating with a commercial server (e.g., a merchant’s server), the communication between Appeal 2011-000048 Application 11/081,045 6 the customer and commercial server is not an SMS message that includes a public encryption key of a payment server, as is required by claim 1. See FF 2 and 4. Further, while both Goldthwaite and Pailles describe sending messages to a customer’s GSM phone, this message is not sent from a commercial server (e.g., the merchant’s server), as required by claim 1. See FF 1 and 3. Finally, Tyson’s teaching of using a public encryption key of an originating computer (FF 5) does not cure the deficiencies in Goldthwaite and Pailles. We note that independent claim 10 recites a similar limitation and is rejected using the same rationale (see Ans. 7-8). Accordingly, the rejection of claims 1 and 10, and claims 8-9 and 11-14, dependent thereon, under 35 U.S.C. § 103(a) over Goldthwaite, Pailles, and Tyson is reversed. The rejection of claim 2 under §103(a) as being unpatentable over Goldthwaite, Pailles, Tyson, and Scourias and the rejection of claims 3-5 under §103(a) as being unpatentable over Goldthwaite, Pailles, Tyson, Scourias, and WAP These rejections are directed to claims dependent on claim 1, whose rejection we have reversed above. For the same reasons, we will not sustain the rejections of claims 2-5 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”) Appeal 2011-000048 Application 11/081,045 7 DECISION The decision of the Examiner to reject claims 1-5 and 8-14 is reversed. REVERSED mls Copy with citationCopy as parenthetical citation