Ex Parte Killian et alDownload PDFPatent Trial and Appeal BoardJul 29, 201311964343 (P.T.A.B. Jul. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/964,343 12/26/2007 Patrick Killian P00437-US-UTIL (M01.091) 1644 28062 7590 07/29/2013 BUCKLEY, MASCHOFF & TALWALKAR LLC 50 LOCUST AVENUE NEW CANAAN, CT 06840 EXAMINER CRAWLEY, TALIA F ART UNIT PAPER NUMBER 3687 MAIL DATE DELIVERY MODE 07/29/2013 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 ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PATRICK KILLIAN, SANDEEP MALHOTRA, ANDREW D. CAMPBELL, SHOON WONG, and DANA LORBERG ____________________ Appeal 2011-009667 Application 11/964,343 Technology Center 3600 ____________________ Before: MEREDITH C. PETRAVICK, MICHAEL W. KIM, and JAMES A. TARTAL, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009667 Application 11/964,343 2 STATEMENT OF CASE Patrick Killian, et al., (Appellants) seek our review under 35 U.S.C. § 134 (2010) from the Examiner’s non-final rejection of twice-rejected claims 1-32 and 39-44. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We affirm. THE INVENTION This invention is a payment system on the basis of a payment card system (Specification 1:6-8). Claims 1 and 43, reproduced below, are illustrative of the subject matter on appeal. 1. A method comprising: receiving, in a payment services computer, transaction information from a merchant device, the transaction information including a transaction amount and merchant information that identifies a merchant that operates the merchant device; receiving, in the payment service computer, from a mobile device, a request that a funds transfer be made from a payment card account that belongs to a customer who is operating the mobile device to a payment card account that belongs to said merchant; and forwarding the request from the payment services computer to a financial institution that issued said payment card account that belongs to said customer, said request, as forwarded from the payment services computer, including a payment card account number that identifies a payment card account belonging to the merchant. Appeal 2011-009667 Application 11/964,343 3 43. A method comprising: receiving, in a payment services computer, a request from a customer for a funds transfer; and the payment services computer responding to the request by: the payment services computer identifying an additional funding source for the funds transfer, the additional funding source being one of: (a) a customer loyalty program, (b) an electronic coupon, and (c) an insurance plan; implementing a first partial funds transfer by the payment services computer initiating a payment transaction to transfer funds from a first payment card account to a second payment card account, the first payment card account belonging to the customer; and implementing a second partial funds transfer by the payment services computer initiating a payment transaction to transfer funds from a third payment card account to the second payment card account, the third payment card account different from the first payment card account, wherein said third payment card account is funded from the identified additional funding source. THE REJECTIONS The Examiner relies up on the following as evidence of unpatentability: Judd US2003-0233317 December 18, 2003 Goldthwaite et al US2004-0019564 January 29, 2004 Labrou et al US2004-0107170 June 3, 2004 Examiner’s Official Notice Appeal 2011-009667 Application 11/964,343 4 The following rejections are before us for review: Claims 1, 3-31, and 39-42 are rejected under 35 U.S.C. § 102(b) as anticipated by Labrou. Claims 2 and 32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Labrou and Judd. Claims 43 and 44 are rejected under 35 U.S.C. § 103(a) as unpatentable over Goldthwaite and Official Notice. 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). 1. Labrou discloses receiving transaction information from a merchant devices, in that “the UPTD 102 generates its own view of the transaction” that is sent to the merchant transaction server 104. (Para. [0180]). 2. Labrou discloses a consumer transmitting a request to “merchant 104.” (Para. [0210]). 3. Labrou discloses the merchant 104 forwarding the received request to a financial institution at “STS 106.” (Para. [0210]). 4. Labrou discloses translating merchant information, by disclosing “decoding a consumer message and a merchant message using the consumer device ID (DIDC) in place of the consumer ID (UIDC), and Appeal 2011-009667 Application 11/964,343 5 the merchant device ID (DIDM) in place of the merchant user ID (UIDM).” (Para. [0262]). 5. Labrou discloses receiving information from customer devices, stating, “messages from the consumer to the STS and the STS’s responses to the consumer, even if such messages are forwarded to the STS by the merchant (or to the consumer, by the merchant) are encrypted ....” (Para. [0201]). 6. Labrou discloses transmitting information to a customer mobile device, because, “[a]fter local verification that both parties are in good standing and of the legitimacy of the transaction, the STS 106 generates responses for both parties.” (Para. [0181]). 7. Labrou discloses transmitting information to a customer mobile device, stating, “STS 106 provides a response (acknowledgement or failure) to the merchant 104, which forwards the STS 106 response to the consumer 102.” (Para. [0209]). 8. Labrou discloses transmitting “information that identifies (or can be used to identify) the merchant ....” (Para. [0204]). 9. Labrou discloses a form of translation of a merchant ID into a name, in that “consumer 102 encapsulates the merchant DID and merchant advertisement in a merchant verification transaction (MVT) and transmits the MVT to the merchant 104. The merchant 104 forwards the MVT to the STS 106. The STS 106 verifies the merchant DID and the merchant legal name ....” (Para. [0209]). 10. Goldthwaite discloses a “financial institution is the issuer of the payment card and is asked to approve and execute the requested payment and to route the payment approval result through the payment Appeal 2011-009667 Application 11/964,343 6 server to the merchant server and to the authentication server.” (Para. [0010]). 11. Goldthwaite discloses a “payment card may be a credit card, a debit card, a stored-value card, a coupon card, a reward card, an electronic cash card, loyalty card, or an identification card.” (Para. [0011]). ANALYSIS The rejection of claims 1, 3-6, 8-11, 18-21, 30, 31, and 39-42 under §102(b) as anticipated by Labrou The Appellants argue these claims together as a group. We select claim 1 as representative (App. Br. 11). See, 37 C.F.R. § 41.37(c)(1)(vii). We construe claim 1 as reciting receiving information and receiving and forwarding a request. The undefined “payment services computer” is not limited by the Specification or claims, and is therefore interpreted as a computer that receives and forwards information. The specific content of the information and request do not affect the function of the method, which is to receive and forward. Therefore, the content of the information and request are non-functional descriptive material, undeserving of patentable weight. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). We are not persuaded by Appellants’ argument that Labrou does not disclose a payment card account belonging to a merchant. (App. Br. 11-12, Reply Br. 2-4). Appellants attempt to distinguish the claim on the basis of non-functional content of the request describing an account owned by a particular entity, but we do not give patentable weight to the non-functional content. We find Labrou discloses the “payment services computer” at Appeal 2011-009667 Application 11/964,343 7 “merchant 104,” because Labrou discloses receiving information (FF 1) and a request (FF 2) that is forwarded to a financial institution (FF 3), thus meeting the claim language. For this reason, we affirm the rejection of claims 1, 3-6, 8-11, 18-21, 30, 31, and 39-42 under §102(b) as anticipated by Labrou. The rejection of claims 12 and 16 under §102(b) as anticipated by Labrou Independent claim 12 recites receiving a number from a merchant device and receiving a number from a mobile device. The content of the received information does not affect the function of the method of claim 12, nor of dependent claims 13-17, and is therefore non-functional descriptive material undeserving of patentable weight. Ngai, 367 F.3d at 1338. We are not persuaded by Appellants’ arguments that Labrou does not disclose receiving a transaction reference or identification number as part of the received information, nor receiving a number from two different devices (App. Br. 13). This is because Appellants are attempting to distinguish the claim on the basis of non-functional content that does not receive patentable weight. We are also not persuaded by Appellants’ argument that Labrou does not disclose receiving information from a customer device (App. Br. 13), because we find Labrou discloses receiving information from the customer device and encrypting it, thus meeting the claim language. (FF 5). For these reasons, we affirm the rejection under §102(b) over Labrou of claim 12, and dependent claim 16 that was not separately argued (App. Br. 12). Appeal 2011-009667 Application 11/964,343 8 The rejection of claims 13- 17 under §102(b) as anticipated by Labrou Dependent claim 13 recites transmitting a request from the receiving computer of claim 12, to a financial institution. The specific content of that request does not affect the function of the method of claim 13, nor of dependent claims 14 or 15. Dependent claim 17 recites transmitting data to a mobile device, but the data does not affect the function of the claim. The content of claims 13 and 17, therefore, is non-functional descriptive material undeserving of patentable weight. Ngai, 367 F.3d at 1338. We are not persuaded of error by Appellants’ argument that Labrou does not disclose a “payment card account that belongs to a merchant” (App. Br. 13-14), for the same reasons set forth above at claim 1. We are not persuaded of error by Appellants’ argument that Labrou does not disclose receiving information after transmitting that information. App. Br. 14. Although claim 17 recites that a transaction number is sent to a customer before receiving that transaction number from the customer (in independent claim 12), that transaction number does not affect the function of the method for the customer in preparation of sending the number after receiving it. The content of the sending and receiving, therefore, is non- functional descriptive material, as set forth above. Labrou discloses sending information to a customer device (FF 6), which meets the claim language. For these reasons, we affirm the rejection under §102(b) over Labrou of claims 13 and 17, and dependent claims 14 and 15 that were not separately argued (App. Br. 12). Appeal 2011-009667 Application 11/964,343 9 The rejection of claims 22 and 25-29 under §102(b) as anticipated by Labrou Independent claim 22 recites a method comprising receiving information from a merchant, translating information, and transmitting information to a customer mobile device. The content of the information received, other than the received merchant identification code, does not affect the function of the claim, or dependent claims, and is therefore non- functional descriptive material undeserving of patentable weight. Ngai, 367 F.3d at 1338. We are not persuaded by Appellants’ argument that “no portion” of Labrou discloses translating the merchant identification code into a merchant’s name. (App. Br. 15, Reply Br. 4). Labrou discloses transmitting “information that identifies (or can be used to identify) the merchant” (FF 8). Labrou further discloses that a consumer sends a merchant ID to a server that verifies the merchant name (FF 9). We interpret that the server must perform a translation of the ID to a name in order to verify that the name for the ID matches the name the consumer sent with the merchant ID, thus meeting the claim language. We are not persuaded by Appellants’ argument that cited Labrou paragraph [0209] discloses transmission “from the merchant, and not from the payment services computer . . . .” (App. Br. 15, Reply Br. 4). Labrou discloses transmitting information to the customer from “merchant 104” (FF 7), which meets the claim language. This is because we find Labrou discloses the “payment services computer” at “merchant 104” for the same reasons as set forth above at claim 1. Appeal 2011-009667 Application 11/964,343 10 For these reasons, we affirm the rejection under §102(b) as anticipated by Labrou of claim 22, as well as dependent claims 25-29 that were not separately argued (App. Br. 15). The rejection of claim 23 under §102(b) as anticipated by Labrou Dependent claim 23 recites, in pertinent part, “receiving, in the payment services computer, a funds transfer request from the mobile device, said funds transfer request for requesting that funds be transferred from a payment card account that belongs to said customer to a payment card account that belongs to said merchant.” We are not persuaded by Appellants’ argument that Labrou does not disclose a request for funds transfer to a “payment card account that belongs to a merchant” (App. Br. 15-16), for the same reason set forth above at claim 1. The rejection of claims 7 and 24 under §102(b) as anticipated by Labrou Dependent claim 7 recites, in pertinent part, “translating, in the payment services computer, said merchant information into an account number that identifies said payment card account that belongs to said merchant.” We construe the claim to require translating information, but find the information translated does not affect the function of the claim, because the claim only requires “translating.” No claim depends from claim 7. Claim 24, which depends from independent claim 22, recites substantially similar language. Claims 25 and 26 depend from claim 24, but neither recites any function for the translated information, because claim 25 recites only additional translating, and claim 26 recites only forwarding of a Appeal 2011-009667 Application 11/964,343 11 request. Therefore, we find the information translated is mere non- functional content, undeserving of patentable weight. Ngai, 367 F.3d at 1338. We are not persuaded by Appellants’ arguments that cited paragraphs [0256]-[0262] and [0415] of Labrou do not disclose a payment card account that belongs to a merchant, and that cited paragraph [0434] does not disclose translating information. (App. Br. 16). We find Labrou discloses translating merchant information when it decodes “merchant device ID (DIDM) in place of the merchant user ID (UIDM)” (FF 4), which meets the claim language. We are also not persuaded by Appellants’ argument that the Examiner’s further cite to Labrou, paragraphs [0314]-[0319] do not disclose the claim language because it instead discloses “decrypting and matching.” (Reply Br. 5). We consider decrypting to be a form of translating because it converts from one form to another, thus additionally meeting the claim language. For these reasons, we affirm the rejection of claims 7 and 24 under § 102(b) as anticipated by Labrou. The rejection of claims 2 and 32 under 35 U.S.C. § 103(a) as obvious over Labrou and Judd Claims 2 and 32 are not separately argued (App. Br. 17), so the rejection is affirmed for the same reasons as for claims 1 and 30, from which they depend. Appeal 2011-009667 Application 11/964,343 12 The rejection of claims 43 and 44 under 35 U.S.C. § 103(a) as obvious over Goldthwaite and Official Notice Claim 43 requires initiating a funds transfer to “a second payment card account.” The term “payment card account” is not defined or described by the Specification, so we construe it as a financial account associated with making payments with a card, or receiving payments made with a card, such as a credit or debit card. Therefore, we construe “payment card account” to encompass not only a checking account with associated debit card and credit card account, but also a merchant’s account for receiving credit-card payments. We are not persuaded of error by Appellants’ argument that Goldthwaite does not disclose funds transfer “to another payment card account.” (App. Br. 18, Reply Br. 6). Goldthwaite discloses payment is executed and the “approval result” is routed. (FF 10.) We find one of ordinary skill in the art would recognize this to mean that the backend processing system will credit the account of the merchant, which account we interpret as a “payment card account,” thus meeting the claim language. We are not persuaded by Appellants’ argument that Goldthwaite does not disclose “transfers from two different payment card accounts.” (App. Br. 18, Reply Br. 6). Appellants argue a single reference when the rejection is made over a combination of references, and the allegedly missing feature was found in the other reference of Official Notice. (Ans. 15). Appellants have not traversed the evidence that “using multiple forms of payment for funds transfer to a merchant account for payment of goods is well known.” Id. In addition, Goldthwaite discloses multiple sources of payment that Appeal 2011-009667 Application 11/964,343 13 meets the claim language (FF 11) when two used in combination with the evidence of Official Notice. We are not persuaded by Appellants’ argument that the evidence of Official Notice “does not in any way address Goldthwaite’s failure to disclose transfers to a merchant’s payment card account.” App. Br. 18. The Examiner did not rely on Official Notice, but rather Goldthwaite, for this aspect of the claim language. Because Appellants argue a single reference from among a combination of references, but we do not agree with the assertion of “Goldthwaite’s failure,” as set forth above. Id. Because we find no shortcoming in Goldthwaite, and Appellants do not properly traverse the evidence of the Official Notice, we affirm the rejection under 35 U.S.C. § 103(a) of claim 43, and dependent claim 44 that was not separately argued (App. Br. 17). DECISION The decision of the Examiner to reject claims 1-32 and 39-44 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rvb Copy with citationCopy as parenthetical citation