CardinalCommerce Corporation

Patent Trials and Appeals Board

Nov 30, 2020

2020000265 (P.T.A.B. Nov. 30, 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.
14/026,421 09/13/2013 Michael A. Keresman III 8223-1709852(CC-0001US09) 4785
144885 7590 11/30/2020
The Webb Law Firm / Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/30/2020 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL A. KERESMAN III,
CHANDRA S. BALASUBRAMANIAN,
and FRANCIS M. SHERWIN
____________

Appeal 2020-000265
Application 14/026,421
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING,
ROBERT J. SILVERMAN, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 to 6, 8 to12, and 14 to 22. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM IN PART.
THE INVENTION
Appellant claims a secure and efficient payment processing system
and relates to the art of Internet commerce. (Spec. ¶ 2, Title).
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Claim 1 is representative of the subject matter on appeal.
1. A system for processing transactions carried out over
the Internet between account holders and a plurality of
merchants, said system comprising:
at least one server computer programmed to:
register the plurality of merchants;
register one or more account holders by generating
account holder records for the account holders registered;
receive, from an account holder, a global authorization
for the plurality of merchants;
in response to the receiving of the global authorization,
authorizing each of the plurality of merchants registered by the
at least one server computer;
subsequent to the receiving of the global authorization,
receive a de-authorization of at least one first merchant of the
plurality of merchants to be de-authorized;
in response to the receiving of the de-authorization,
deauthorizing the at least one first merchant;
receive, from the account holder, a global de-
authorization for the plurality of merchants;
in response to the receiving of the global de-
authorization, deauthorizing each of the plurality of merchants
registered by the at least one server computer;
subsequent to the receiving of the global de-
authorization, receive an authorization of at least one second
merchant of the plurality of merchants to be re-authorized;  
in response to the receiving of the authorization, re-
authorizing the at least one second merchant;
receive a limit on a number of transactions for
automatically repeating transactions;
receive a purchase request of a buyer from a merchant of
the plurality of merchants over the Internet indicating that the
buyer desires to carry out a transaction with the merchant, said
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transaction including the buyer purchasing one or more selected
items;
receive, over the Internet, transaction details from the
merchant, said transaction details including a cost for the
purchase;
identify the buyer as an account holder by using an
alphanumeric code generated by a token, wherein the token is
an object running on a computer of the buyer;
authorize completion of the transaction when the buyer is
identified as an account holder and establish an authorization
determination therefor based on whether the merchant was
authorized or de-authorized by the buyer;
transmit the transaction details over the Internet to a
funding source which determines if the identified account
holder has sufficient funds on deposit with the funding source
to cover the cost of the purchase; and,
receive the authorization determination from the funding
source over the Internet; and,
communicate over the Internet the authorization
determination for the transaction to the merchant.
THE REJECTIONS
1. Claims 1–5, 9, 10, and 11 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ganesan (US 6,678,664 B1
issued Jan. 13, 2004) in view of Whitworth (US 2001/0034717
A1 published Jan. 13, 2004) in view of Duane et al
(US 7,111,172 B1 issued Sept. 19, 2006) in view of Heilman
(US 2001/0034689 A1 published Oct. 25, 2001) in view of
Mandler et al (US 5,732,400 issued Mar. 24, 1998).
2. Claims 6 and 12 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ganesan an in view of Whitworth in
view of Duane in view of Heilman in view of Mandler and
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further in view of Weiss ‘062 et al (US 5,361,062 issued Nov.
1994) and/or Weiss ‘520 (US 5,168,520 issued Dec. 1, 1992).
3. Claims 8 and 14 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ganesan in view of Whitworth in
view of Duane in view of Heilman in view of Mandler and
further in view of Perlman et al (US 6,173,400 B1 issued Jan. 9,
2001).
4. Claim 17 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ganesan in view of Whitworth in view of
Duane in view of Heilman and further in view of Marmor et al
(US 2002/0062310 A1 published May 23, 2002).
5. Claim 18 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ganesan in view of Whitworth in view of
Duane in view of Heilman and further in view of Barzilai et al
(US 6,012,045 issued Jan. 4, 2000).
6. Claims 19–22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ganesan in view of Whitworth in view
of Duane in view of Heilman in view of Mandler and further in
view of Selvarajan (US 2002/0032649 A1 published Mar. 14,
2002).
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 3 to 6 of the
Final Office Action.
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ANALYSIS
CLAIMS 1 TO 5, 9, 10 AND 11
These claims were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ganesan, Whitworth, Duane, Heilman and Mandler.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Heilman does not disclose the claimed global
authorization and de-authorization features. (Appeal Br. 14-15).
Examiner finds that Ganesan discloses a server computer programmed
to authorize completion of a transaction when the buyer is identified as an
account holder and establish an authorization determination. (Final Act. 3).
The Examiner also finds that Heilman teaches a buyer selecting a seller or a
plurality of sellers from whom the buyer wants to purchase goods. We find
that Heilman describes counterparties which are other firms that the
particular firm is willing to do business with i.e. preapproved counterparties.
Heilman describes a Firm Master Counterparty List which is created by an
authorized administrator for a given firm from among a complete set of
users registered on the system. (Heilman ¶ 70). Heilman also describes a
Personal Counterparty List created for convenience by individual users for
the firm from among the Counterparties on the Firm Master Counterparty
List. Heilman further describes a pre-approved Quote Counterparty List
which is used in determining who can accept a firm quote “as is” without
further confirmation from the originator of the quote. (Heilman ¶¶ 13, 52,
69). These Quote Counterparty firms do not need confirmation from the
originator to accept a quote and make a trade. Therefore, we find that this
Quote Counterparty List is a list of authorized merchants and therefore is a
“global authorization for the plurality of merchants” as required by claim 1.
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Heilman also depicts in Figure 15 a “Deselect All” button which we find to
be a “global de-authorization for the plurality of merchants” as required by
claim 1.
Appellant’s argues, with reference to paragraph 71 of Heilman, that
the “Deselect All” and “Select All” at most filters the entities that can be
selected by individual users for sending quotes. (Appeal Br. 15). However,
as we discussed above, Heilman describes at paragraph 70, a Quote
Counterparty List that allows a merchant to accept a quote without further
confirmation from the originator if the merchant is on the Quote
Counterparty List. As such, we agree with the Examiner that Heilman
discloses a global authorization and a global de-authorization.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that there is no motivation to combine all five
references.
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U. S. 298, 427 (2007). The facts
underlying an obviousness inquiry include: the scope and content of the
prior art; differences between the prior art and the claims at issue; and the
level of ordinary skill in the pertinent art resolved. Against this background
the obviousness or nonobviousness of the subject matter is determined.
A combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 414. As explained in KSR:
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
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would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.
KSR, 550 U.S. at 417.
On appeal, Applicant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of
the prior art. Applicants may sustain their burden by showing that where the
Examiner relies on a combination of disclosures, the Examiner failed to
provide sufficient evidence to show that one having ordinary skill in the art
would have done what Applicants did. United States v. Adams, 383 U.S. 39,
50–52 (1966).
We find that Ganesan discloses a method of conducting transactions
over the Internet. (Ganesan col. 1, ll. 6–11). The Examiner combines the
teachings of Ganesan with the teaching in Whitworth of restricting the
number of transactions for recurring charges. (Final Act. 4).
We find that Whitworth discloses a method of confirming the identity
of users who wish to access sites or systems via the Internet especially those
involving financial transactions (Whitworth ¶ 38). Whitworth also describes
a situation where a cardholder wishes to make recurring charges, often of the
same or similar amounts at regular intervals. The account can be restricted
in many ways, including: time of use, amount per transaction, maximum
amount per transaction, number of transactions, or total dollar value of all
transactions.
Ganesan and Whitworth describe systems of conducting transaction
on the Internet. Whitworth is evidence that it was known in the art to limit
recurring transactions on the Internet. We agree with the Examiner that it
would have been obvious to modify Ganesan to include the feature taught by
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Whitworth to allow restrictions on the number and type of transactions
which would enhance the flexibility and security of the process. In addition,
in our view modifying Ganesan with these teachings of Whitworth would
have been no more than the predictable use of known process to achieve
predictable results.
We find that Duane teaches the concept of authenticating a user
during an Internet session by identifying the user using codes/numbers
generated by an authentication token wherein the authentication token is a
program code running on the user’s laptop. (Duane col. 1, ll. 18–30, l. 61 to
col. 2, l. 11; col. 5, l. 65 to col. 6 l. 5). Duane teaches that the described
process increases security. As such, we agree with the Examiner’s reasons
for combining the teaching of Ganesan and Duane of enhancing the security
of the process. In addition, the use of tokens in an authentication process
such as the one disclosed in Ganesan would have been no more than the
predictable use of a known process to achieve predictable results.
As we found above, Heilman also relates to a process of conducting a
transaction on the Internet. (Heilman ¶ 2). Heilman’s Quote Counterparty
List is a list of authorized firms which may accept a quote for a transaction
without further confirmation from the originator of the quote. As such, we
agree with the Examiner that it would have been obvious to modify the
teachings in Ganesan with these teachings of Heilman to allow buyers to
select participating entities based on a buyer’s preference. In addition, the
use of selection and de-selection such as what is taught in Ganesan would
have been no more than the predictable use of a known process to achieve
predictable results.
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Mandler discloses a method to improve electronic commerce using
electronic networks as electronic marketplaces for business to business or
consumer transactions. (Mandler col. 2, l. 65 to col. 3, l. 2). We find that
Mandler describes the concept of a buyer selecting a seller or a plurality of
sellers from whom the buyer wants to purchase goods such that the
authorization for settlement of such purchase is based on whether the buyer
selects the seller or sellers. We agree with the Examiner that it would have
been obvious to one of ordinary skill in the art to modify Ganesan in view of
the teachings of Heilman in order to allow completion of transactions
according to the buyer’s wishes. In addition, allowing buyers in the
Ganesan system to select which sellers to buy from as taught by Mandler
would have been no more than the predictable use of a known process to
achieve predictable results.
We do not agree with Appellant that Mandler teaches away from a
global authorization because Mandler teaches that the buyer selects the seller
with the lowest price prior to the authorization. A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out the reference, or
would be led in a direction divergent from the path that was taken by the
applicant. The degree of teaching away will of course depend on the
particular facts; in general, a reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant. See Adams, 383 U.S. at 52
(“known disadvantages in old devices which would naturally discourage the
search for new inventions may be taken into account in determining
obviousness”); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540,
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1550–51 (Fed. Cir. 1983) (the totality of a reference’s teachings must be
considered), cert. denied, 469 U.S. 851 (1984); In re Sponnoble, 405 F.2d
578, 587 (CCPA 1969) (references taken in combination teach away since
they would produce a “seemingly inoperative device”); In re Caldwell, 319
F.2d 254, 256 (CCPA 1963) (reference teaches away if it leaves the
impression that the product would not have the property sought by the
applicant). Although Mandler does teach that a buyer selects sellers prior to
a sale, there is nothing in Mandler that suggests using a global authorization
and global de-authorization is unlikely to be productive of the result sought
by the Appellant and thus Mandler does not teach away.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the Examiner’s rejection of claims 2–5, 9, 10,
and 11 because Appellant has not argued the separate patentability of these
claims.
CLAIMS 6 AND 12
We will also sustain the rejection of claims 6 and 12 because we are
not persuaded of error on the part of the Examiner. Appellant argues that it
is unreasonable to combine the teachings of seven references. But the
Examiner's reliance on many references in a rejection does not itself weigh
against the obviousness of the claimed invention. See In re Gorman, 933
F.2d 982, 986 (Fed. Cir. 1991) (explaining that “[t]he criterion, however, is
not the number of references, but what they would have meant to a person of
ordinary skill in the field of the invention.”).
In view of the foregoing, we will sustain the rejection of claims 6 and
12.

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CLAIMS 8 AND 14
We do not agree with Appellant that the Examiner has not provided
sufficient motivation to combine the teachings of Perlman with the teachings
of Ganesan. (Appeal Br. 23). Appellant specifically argues that enhancing
the security of the process/system is not sufficient motivation but does not
explain why. We agree with the Examiner that one skilled in the art would
have a reason to combine the teachings of Perlman with the teachings of
Ganesan to increase the security of the transaction as taught by Perlman at
col. 1, ll. 38–40; col. 4, ll. 40–41; col. 5, ll. 57–62. In addition, modifying
Ganesan so as to use tokens activated by a PIN as taught by Perlman would
have been no more than the predictable use of a known process to achieve
predictable results.
CLAIM 17
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose transmitting and receiving a security
question. The Examiner relies on paragraph 38 of Marmor for teaching this
subject matter. (Final Act. 9). We find that paragraph 38 of Marmor
describes an existing protocol that routes packets from computer to
computer in a chain on their way to their destination. Marmor also teaches
that in most cases it would be more efficient to attempt to deliver packets
directly from the computer with the content to the computer requesting it,
using the more complex routing scheme only when necessary. Thus, the
requesting computer can identify itself to the computer with the content and
ask for a direct download. However, this paragraph of Marmor does not
disclose transmitting and receiving a security question as required by claim
17.
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CLAIM 18
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that it is not clear how the relied on portions of
Barzilai relate to the features of claim 18. Claim 18 recites a server
programmed to receive a default delivery destination from a buyer and if the
buyer requests an alternate destination, a security question is transmitted and
received to invoke an additional security measure. Barzilai discloses at
column 8, lines 2–19, which was relied on by the Examiner, that if a member
seeks to change their address, special password data, such as the member’s
mother’s maiden name is used for added security. We agree with the
Examiner’s finding that this is a teaching of transmitting and receiving an
answer to a security question if the address of a member is changed.
Therefore, we will sustain the rejection of claim 18.
CLAIMS 19 TO 22
We will sustain this rejection because the Appellant has not argued
the separate patentability of these claims.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–6, 8–12,
14–16, and 18–22 under 35 U.S.C. § 103(a).
We conclude the Examiner did err in rejecting claim 17.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 9, 10,
11
103 Ganesan,
Whitworth, Duane,
Heilman, Mandler
1–5, 9, 10,
11

6, 12 103 Ganesan,
Whitworth, Duane,
Heilman, Mandler,
Weiss ‘062,
Weiss ‘520
6, 12
8, 14 103 Ganesan,
Whitworth, Duane,
Heilman, Mandler,
Perlman
8, 14
17 103 Ganesan,
Whitworth, Duane,
Marmor
17
18 103 Ganesan,
Whitworth, Duane,
Heilman, Barzilai
18
19–22 103 Ganesan,
Whitworth, Duane,
Heilman, Mandler,
Selvarajan
19–22
Overall
Outcome
1–6, 8–12,
14–16, 18–
22
17
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART