Ex Parte Wong

Patent Trial and Appeal Board

Sep 10, 2018

13517512 (P.T.A.B. Sep. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/517,512 06/13/2012 Erick Wong
66945 7590 09/12/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
79900-841005-806010USNP 5277
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/12/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICK WONG
Appeal2018-007535
Application 13/517,512
Technology Center 3600
Before CARL W. WHITEHEAD JR., ERIC B. CHEN, and
AARON W. MOORE, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-007535
Application 13/517,512
This is an appeal under 35 U.S.C. § I34(a) from the final rejection of
claims 1, 2, 4, 8, 9, 11-13, 20-22, and 25-32. Claims 3, 5-7, 10, 14--19, 23,
and 24 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
Appellant's invention relates to mobile payments, in particular, an
application running on a phone that includes a mobile gateway that
determines whether one or more transactions were conducted within a time
window. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method comprising:
[i] receiving, by a mobile gateway from a mobile
communication device, a time window specified by a consumer
during which the consumer does not have to reenter a passcode for
each transaction after a payment application in the mobile
communication device has verified the consumer's passcode, the time
window including a start time point and an end time point;
[ii] receiving, by the mobile gateway from the mobile
communication device comprising the payment application over a first
network, a validation message that includes an indication that the
payment application has verified the consumer's passcode, an account
identifier, and a timestamp when the passcode was entered into the
mobile communication device;
[iii] storing, by the mobile gateway in a database, the validation
message including the indication that the payment application has
verified the consumer's passcode, the account identifier, and the
timestamp when the passcode was entered into the mobile
communication device;
[iv] receiving, by a payment processing network, a first
authorization request message comprising the account identifier from
a first access device over a second network, after the first access
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Application 13/517,512
device interacts with the mobile communication device during a first
transaction;
[ v] querying, the mobile gateway by the payment processing
network, to determine if the consumer's pass code has been validated;
[ vi] searching, by the mobile gateway, the database using the
account identifier received in the first authorization request message
from the first access device;
[ vii] determining, as a result of searching the database by the
mobile gateway, that the validation message associated with the
mobile communication device has been received indicating that the
payment application has verified the consumer's pass code;
[ viii] determining, by the mobile gateway, that the first
transaction is occurring within the time window after the timestamp;
[ix] receiving, by the payment processing network from the
mobile gateway, the indication that the payment application has
verified the consumer's passcode has been received, and a
determination that the validation message with the indication that the
payment application has verified the consumer's passcode has been
received and that the first transaction is occurring during the time
window;
[ x] modifying, by the payment processing network, the first
authorization request message based on a determination that the
validation message with the indication that the payment application
has verified the consumer's passcode has been received and that the
first transaction is occurring during the time window by including the
indication that the payment application has verified the consumer's
passcode in the first authorization request message to form a modified
first authorization request message;
[xi] transmitting, by the payment processing network, the
modified first authorization request message to an issuer computer for
authorization;
[xii] receiving, by the payment processing network, a second
authorization request message from a second access device, after the
second access device interacts with the mobile communication device
during a second transaction, and wherein the consumer did not re-
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Application 13/517,512
enter the passcode into the payment application to conduct the second
transaction;
[xiii] determining, by the mobile gateway, that the second
transaction occurs within the time window;
[xiv] receiving, by the payment processing network from the
mobile gateway, the determination that the second transaction occurs
within the time window;
[xv] modifying, by the payment processing network, the second
authorization request message based on the determination that the
second transaction occurs within the time window by including the
indication that the payment application has verified the consumer's
passcode in the second authorization request message to form a
modified second authorization request message; and
[xvi] transmitting, by the payment processing network, the
modified second authorization request message to the issuer computer
for authorization.
Claims 1, 2, 4, 8, 9, 11-13, 20-22, and 25-32 stand rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1, 2, 4, 8, 9, 20-22, 25-30, and 32 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. 1
Claims 11-13 and 31 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention. 2
1 The Examiner inadvertently rejected these claims under 35 U.S.C. § 112,
second paragraph, "as being incomplete for omitting essential
steps/functions." (Final Act. 11.)
2 Appellant does not present any arguments with respect to the rejection of
claims 11-13 and 31 under 35 U.S.C. § 112, second paragraph. Thus, any
such arguments are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/517,512
§ 101 Rejection
We are persuaded by Appellant's arguments (App. Br. 11; see also
Reply Br. 2) that the Examiner has not satisfied the initial burden of
demonstrating that independent claims 1 and 11 are directed to patent-
ineligible subject matter under 35 U.S.C. § 101.
The Examiner found that the "[ c ]laims are directed to performing the
transaction by utilizing a computer which is considered to [be] an abstract
idea as such activity is considered both fundamental economic practice and
organizing human activities" (Final Act. 2) and thus, "[t ]he claim is similar
in nature to claims that [have] been held by the court to be directed toward
abstract idea such as Alice ... which dealt with fundamental economic
practice[ s] and organizing human activities by utilizing the computer" (id.
at 6).
Although the Examiner generally states that "performing the
transaction by utilizing a computer [ as recited in claim 1] ... is considered
both [a] fundamental economic practice and organizing human activities"
(Final Act. 2) with a citation to Alice (id. at 6), such statement does not
provide a reasoned rationale that identifies the judicial exception recited in
the claim and why it is considered an exception. In particular, while method
claim 1 recites sixteen separate detailed payment processing steps, the
Examiner has not adequately articulated why the claimed concepts recited in
these sixteen steps are either a "fundamental economic practice" or
"organizing human activities." Therefore, the Examiner has not satisfied the
prima facie burden of clearly articulating the reasons why the claimed
invention is not eligible.
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Application 13/517,512
Accordingly, we are persuaded by Appellant's arguments that "[s]ince
the Examiner fails to clearly identify the abstract idea or apply the patent
eligibility test correctly, the Examiner has failed to establish that the claims
are prima facie ineligible." (App. Br. 11; see also Reply Br. 2.)
Thus, we do not sustain the rejection of claims 1 and 11 under 35
U.S.C. § 101. Claims 2, 4, 8, 9, 12, 13, 20-22, and 25-32 depend from
independent claims 1 and 11. We do not sustain the rejection of claims 2, 4,
8, 9, 12, 13, 20-22, and 25-32 under 35 U.S.C. § 101 for the same reasons
discussed with respect to independent claims 1 and 11.
§ 112, First Paragraph Rejection
We are persuaded by Appellants' arguments (App. Br. 18-19) that
independent claim 1 complies with 35 U.S.C. § 112, first paragraph.
The Examiner concluded that independent claim 1 is not enabled "as
being incomplete for omitting essential steps/functions, such omission
amounting to a gap between the steps/functions." (Final Act. 11.) In
particular, the Examiner found that:
Claim[] [ 1] recites "[ v] to determine if the consumer's passcode
has been validated" and "[ vii] indicating that the payment
application has verified the consumer's passcode." The omitted
steps are: "validating by the payment application a consumer's
passcode" and "verifying by the payment application the
consumer's passcode"
(id.), and
Claim 1 recites "[ xiii] determining by the mobile gateway that
the second transaction occurs within the time window." It is
unclear to one of the ordinary skill in the how the mobile gateway
can determine the second transaction without receiving second
transaction data from payment processing network.
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Application 13/517,512
(Id. at 11-12.) We do not agree.
In general, a claim that omits matter disclosed in the Specification to
be essential may be rejected under 35 U.S.C. 112, first paragraph, as not
enabled. See In re Mayhew, 527 F.2d 1229, 1233 (CCPA 1976). However,
in determining that claim 1 omits essential matter, the Examiner has not
provided any citations to Appellants' Specification that "validating by the
payment application a consumer's passcode," "verifying by the payment
application the consumer's passcode," and "receiving second transaction
data from payment processing network" are essential elements. Therefore,
the Examiner has not met the initial burden of demonstrating that 1, 2, 4, 8,
9, 20-22, 25-30, and 32 fail to satisfy the enablement requirement set forth
under 35 U.S.C. § 112, first paragraph.
In addition, claim 1 recites "querying, the mobile gateway by the
payment processing network, to determine if the consumer's passcode has
been validated," which implicitly requires performing the initial step of
validating by the payment application a consumer's passcode. Likewise, the
limitations "determining, as a result of searching the database by the mobile
gateway, that the validation message associated with the mobile
communication device has been received indicating that the payment
application has verified the consumer's pass code" and "determining, by the
mobile gateway, that the second transaction occurs within the time window"
implicitly require performing the initial steps of verifying by the payment
application the consumer's passcode and receiving second transaction data
from payment processing network, respectively.
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Accordingly, we do not sustain the rejection of claims 1, 2, 4, 8, 9,
20-22, 25-30, and 32 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
DECISION
The Examiner's decision rejecting claims 1, 2, 4, 8, 9, 11-13, 20-22,
and 25-32 under 35 U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 1, 2, 4, 8, 9, 20-22, 25-30,
and 32 under 35 U.S.C. § 112, first paragraph is reversed.
The Examiner's decision rejecting claims 11-13 and 31 under 35
U.S.C. § 112, second paragraph, 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)(l )(iv).
AFFIRMED-IN-PART
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