Alexander Ran

Patent Trials and Appeals Board

Sep 17, 2020

2020001339 (P.T.A.B. Sep. 17, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/893,958 05/14/2013 Alexander S. Ran 37202/526001; 1307037US 8065
57956 7590 09/17/2020
FBFK/Intuit
Robert Lord
3200 Southwest Freeway, Suite 3200
HOUSTON, TX 77027
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
docketing@fbfk.law
jhathaway@fbfk.law
rlord@fbfk.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER S. RAN
____________

Appeal 2020-001339
Application 13/893,958
Technology Center 3600
____________

Before PHILLIP J. KAUFFMAN, CATHERINE SHIANG, and
BETH Z. SHAW, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 7–12, and 14–19, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Intuit Inc. as the real party in interest. Appeal. Br. 4.

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STATEMENT OF THE CASE
Introduction
The present invention relates to “presence based mobile payments.”
Spec. ¶ 1. In particular,
embodiments of the invention provide a method and system for
presence based mobile payments. Specifically, an owner or
user of a mobile device registers an account with a mobile
payment service. After registering, the user of the mobile
device may desire to purchase an item. . . . . The mobile device
of the user is able to . . . authorize the mobile payment service
to pay for the item.

Spec. ¶ 13. Claim 1 is exemplary:
1. A method for presence based mobile payment,
comprising:
receiving, from a user, a request for registration with a
mobile payment service;
registering, by the mobile payment service, the user
based on the request, wherein registering includes receiving a
plurality of information items identifying the user;
receiving, from a point of sale system (PoS), one or more
of the information items from the plurality of information
items, and a payment authorization for a transaction,
wherein the one or more information items is broadcast
through an advertising channel by a mobile device to the PoS in
accordance with a communication standard without pairing the
PoS to the mobile device,
wherein the advertising channel is a channel of the
communication standard and is used for identification of
available nearby devices,
wherein the one or more information items broadcasted
over the advertising channel includes a financial account of the
user,
wherein the payment authorization authorizes payment
from a payment account of the user, and
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wherein at least one of the broadcasted information items
changes each time the broadcast is sent out to avoid fraud; and
facilitating, by the mobile payment service, payment for
the transaction.

References and Rejections2

Claims
Rejected
35 U.S.C.
§
References
1–4, 7–11,
14–18
103 Ornce (US 2012/0203700 A1; published
Aug. 9, 2012), McKenna (US
2010/0241527 A1; published Sept. 23,
2010)
5, 12, 19 103 Ornce, McKenna, AWAD (US
2013/0166399 A1; published June 27,
2013)

ANALYSIS3
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred in determining Ornce and McKenna
collectively teach
the one or more information items is broadcast through an
advertising channel by a mobile device to the PoS [point of sale
system] in accordance with a communication standard without
pairing the PoS to the mobile device,

2 Throughout this opinion, we refer to the (1) Non-Final Office Action dated
June 5, 2019 (“Non-Final Act.”); (2) Appeal Brief dated August 16, 2019
(“Appeal Br.”); (3) Examiner’s Answer dated October 9, 2019 (“Ans.”); and
(4) Reply Brief dated December 6, 2019 (“Reply Br.”).
3 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not address the additional arguments.
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wherein the advertising channel is a channel of the
communication standard and is used for identification of
available nearby devices,

as recited in independent claim 1 (emphases added). See Appeal Br. 10–18;
Reply Br. 2–9.
I
The Examiner cites McKenna’s paragraphs 12, 14, and 37–39 for
teaching the italicized limitations. Non-Final Act. 4–5; Ans. 3.4
Specifically, the Examiner cites McKenna’s broadcast channel 303 for
teaching the claimed “advertising channel” and finds:
See e.g. [0014]- The subscriber is uniquely identified as part of
the registration process, and can communicate with the Reverse
Path Transaction Management System via the reverse path of
the multicast channel in a secure, subscriber-specific manner.
[0037] The multi-media content typically is encoded or
encrypted to prevent non-subscribers from receiving the multi-
media content. [0012]- The multicast or broadcast transmits
information to subscribers who populate the target audience.)

1) Since McKenna’s teaching prevents non-subscribers from
receiving the multi-media content via the broadcast channel, it
is understood that delivery of the broadcast is only to the
identified subscribers/devices.

McKenna also teaches - “subscriber device 101, 102, which is
used to transmit a registration request to the carrier’s operations
center 304. The request is processed by the carrier to identify
and authenticate the subscriber multi-mode device, verify the
authorization of this subscriber to receive the requested service.
and return a decryption key to the subscriber multi-mode device

4 The Answer includes a typographical error, as it marks each page as “Page
1.” See Ans. 1–7.
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101, 102 to enable it to decrypt the multimedia content 303 that
is being broadcast.”

2) Furthermore, identification of available devices is taught by
McKenna (at least for the devices that have sent back
transaction information).

Ans. 3; see also Non-Final Act. 2.
We agree with Appellant that the cited McKenna paragraphs do not
teach the italicized limitations. See Appeal Br. 16–17; Reply Br. 3–4. In
particular, the italicized limitations require both (i) “one or more information
items is broadcast through an advertising channel by a mobile device to the
PoS” and (ii) “the advertising channel . . . is used for identification of
available nearby devices” (claim 1). Contrary to the above requirements, the
cited McKenna paragraphs describe a broadcast channel 303 for
broadcasting information from the serving multi-media content transmitter
to subscriber devices:
[T]he wireless subscriber device 101 is connected to a
broadcast channel 303 from the serving multi-media content
transmitter 302, receiving this transmission on the forward path
of the broadcast channel 303 along with other wireless
subscriber devices 102. . . . If the subscriber wishes to
purchase the advertised product or service, this can be done
without having the subscriber disconnect or interrupt the multi-
media content that is being delivered on the forward channel of
the broadcast channel 303. The subscriber is one of a plurality
of subscribers whose wireless subscriber devices 101, 102 are
concurrently connected to the same broadcast channel 303, so
all the subscribers are receiving the same multi-media content.

McKenna ¶ 38 (emphases added).
Further, the Examiner’s finding that “McKenna’s . . . delivery of the
broadcast is only to the identified subscribers/devices” (Ans. 3) does not
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adequately explain why McKenna teaches the italicized limitations. Nor is
the Examiner’s finding that “identification of available devices is taught by
McKenna (at least for the devices that have sent back transaction
information)” (Ans. 3) sufficient, as the italicized limitations require more
than “identification of available devices” (Ans. 3).5
II
In addition to mapping the disputed limitations (discussed above), the
Examiner also determines “wherein the advertising channel is a channel of
the communication standard and is used for identification of available
nearby devices” states an intended use, and “is given little, if any, patentable
weight.” Non-Final Act. 2; see also Ans. 1.
We agree with Appellant that the Examiner has failed to provide
adequate support for the determination. See Appeal Br. 13. In particular,
the Examiner has not provided any analysis explaining why the wherein
clause constitutes intended use, and why it should not have patentable
weight. See Appeal Br. 13; In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed.
Cir. 2016) (the USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made”).

5 If prosecution reopens, we leave it to the Examiner to determine whether
the Bluetooth Low Energy standard teaches “the advertising channel . . . is
used for identification of available nearby devices.” See Ran Declaration
dated February 26, 2019 ¶ 6 (“The Bluetooth Low Energy standard defines
an advertising channel that provides an example of an initial communication
channel that allows for the transmission of rich data between devices. The
initial communication channel is the channel that is used to identify
available nearby devices and that is used to create a formal connection
between devices.”).

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Because the Examiner fails to provide sufficient support for the
rejection, we are constrained by the record to reverse the Examiner’s
rejection of claim 1. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(we will not resort to speculation or assumptions to cure deficiencies in the
Examiner’s fact finding or analysis).
For independent claims 8 and 15, the Examiner cites the same
findings and conclusions as discussed above for claim 1. See Non-Final Act.
5. Therefore, for similar reasons, we are constrained by the record to reverse
the Examiner’s rejection of independent claims 8 and 15.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2–5, 7, 9–12, 14, and 16–19. Although the Examiner cites an
additional reference for rejecting some dependent claims, the Examiner has
not shown the additional reference overcomes the deficiencies discussed
above in the rejection of claim 1.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–5, 7–12, and
14–19 under 35 U.S.C. § 103.

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In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 7–11,
14–18
103 Ornce, McKenna 1–4, 7–11,
14–18
5, 12, 19 103 Ornce, McKenna,
AWAD
5, 12, 19
Overall
Outcome
1–5, 7–12,
14–19

REVERSED