Ex Parte 8,027,913 B1 et al

Patent Trial and Appeal Board

Aug 31, 2016

95001944 (P.T.A.B. Aug. 31, 2016)

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.
95/001,944 03/19/2012 8,027,913 B1 P066-0002RE 1089
7590 08/31/2016
Rani K. Yadev-Ranjan
18730 Vista De Almaden
San Jose, CA 95120
EXAMINER
WORJLOH, JALATEE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/31/2016 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
____________

EBAY INC.,
Requester 1,

and

GOOGLE INC.,
Requester 2,

v.

Patent of PURPLE LEAF, LLC.
Patent Owner
____________

Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1
Technology Center 3900
____________

Before JEFFERY B. ROBERTSON, DENISE M. POTHIER, and
JEREMY J. CURCURI, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

2
I. STATEMENT OF CASE
EBay Inc. (Requester 1) made a third party request for inter partes
reexamination and ex parte reexamination of U.S. Patent No. 8,027,913 B1 (“the
’913 patent”) to Rani Yadav-Ranjan, entitled Process and Device for Conducting
Electronic Transactions, issued September 27, 2011, and assigned to Purple Leaf,
LLC. PO App. Br. 3; 3PR1 App. Br. 1–2.1 Google Inc. (Requester 2) also made a
third party request for inter partes reexamination of the ’913 patent. 3PR1 App.
Br. 2. Claims 1–20 were the subject of the original reexamination. RAN 1.
The Examiner’s Answer rejected claims 1–7 and determined claims 8–20 are
patentable. RAN 1, 3–4, 36; PO App. Br. 3.
Requester 1 appeals the decision in the RAN determining claims 8–20 of the
’913 patent are patentable. 3PR1 App. Br. 2. The original appeal brief filed May 7,
2014 was replaced with another appeal brief filed June 12, 2014. Patent Owner
responded. See generally PO Resp. Br.
Patent Owner cross appeals the decision in the RAN rejecting claims 1–7 of
the ’913 patent. PO App. Br. 3. Requesters 1 and 2 responded. See generally 3PR1
and 3PR2 Resp. Br.
Requester 2 also appealed the decision in the RAN determining claims 8–20
of the ’913 patent are patentable. 3PR2 App. Br. Requester 2 withdrew its appeal
on February 11, 2016.

1 Throughout this Opinion, we refer to: (1) the Examiner’s the Right of Appeal
Notice (RAN) mailed January 24, 2014, (2) the Patent Owner’s Appeal Brief (PO
App. Br.) filed May 7, 2014, (3) the Requester 1’s Respondent Brief (3PR1 Resp.
Br.) and the Requester 2’s Respondent Brief (3PR2 Resp. Br.) both filed June 9,
2014, (4) the Requester 1’s replacement Appeal Brief (3PR1 App. Br.) filed June
12, 2014, (5) the Patent Owner’s Respondent Brief (PO Resp. Br.) filed June 6,
2014, and (6) the Examiner’s Answer (Ans.) mailed January 30, 2015.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

3
We have been informed that the ’913 patent was the subject of litigation.
3PR1 App. Br. 1.
Additionally, we have been informed that the ’913 patent is a continuation of
U.S. Patent Nos. 7,603, 311 (“the ’311 patent.”) PO App. Br. 3; 3PR1 App. Br. 1.
The ’311 patent was the subject of inter partes and ex parte reexaminations
assigned Control Nos. 95/002,278, 95/001,877, and 90/012,595. These proceeding
were merged and appealed but subsequently withdrawn. A reexamination
certificate was issued on December 24, 2014, canceling claims 1–39.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We affirm the Examiner’s decision to reject claims 1–7 and the Examiner’s
decision determining that claim 9 is patentable.
We reverse the Examiner’s decision determining that claims 8 and 10–20 are
patentable.
Claim 3 is reproduced below with emphasis added:
A device, comprising:
a corporate database of a payee that generates a receipt and a payment
remittance information, wherein the corporate database enables a payor to
authorize a payment due on the receipt and associates the payment with the
payment remittance information;
a communication medium over which the device conducts a transaction,
wherein the communication medium communicates the receipt and the
payment remittance information to at least an intermediary; and
wherein the payment remittance information is arranged within a data
structure according to a prescribed format, the data structure comprising one
or more open data fields to hold data that the payor can enter, and the
payment remittance information further comprises a structured remittance
data that is kept hidden from the payee.

PO App. Br. 33, Claims App’x.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

4
A. Prior Art Relied Upon
Either the Examiner or Requester relies on the following as evidence of
unpatentability:
Rosen (“Rosen ’518”) US 5,557,518 Sept. 17, 1996
Elgamal US 5,825,890 Oct. 20, 1998
Rosen (“Rosen ’790”) US 6,081,790 June 27, 2000
Martin, Jr. (“Martin”) US 6,304,860 Oct. 16, 2001

Gennady Medvinsky & B. Clifford Neuman, NetCash: A design for practical
electronic currency on the Internet, 1st Procs. ACM Conf. on Computer &
Comms. Security 102-106 (Nov. 1993) (“Medvinsky”)

Benjamin Cox et al., NetBill Security and Transaction Protocol, 1st Procs.
USENIX Workshop on Elec. Com. 77-88 (July 1995) (“Cox”)

M. Bellare et al., VarietyCash: a Multi-purpose Electronic Payment System, 3rd
Procs. USENIX Workshop on Elec. Com. (Sept. 1998) (“Bellare”)

B. Adopted Rejections
The Examiner maintains the following proposed rejections, from which
Patent Owner appeals:

Reference(s) Basis Claims RAN
Cox (Ground 12) § 102(b) 3, 4, and 7 17–30
Bellare (Ground 3) § 102(b) 3 and 7 31
Medvinsky (Ground 6) § 102(b) 3 and 7 32
Cox (Ground 2) § 103(a) 6 30

2 We use the same ground numbers here and throughout the Opinion as the
Examiner. See RAN 3–4.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

5
Cox and Rosen ‘790
(Ground 10) § 103(a) 1 32
Cox, Rosen ‘790, and
Martin (Ground 13) § 103(a) 2 33
Cox and Martin (Ground
14) § 103(a) 6 33
Cox, Rosen ‘790, and
Elgamal (Ground 17) § 103(a) 5 34
Bellare (Ground 5) § 103(a) 6 31
Bellare and Rosen ‘790
(Grounds 4, 11) § 103(a) 1, 4 31, 33
Bellare and Martin
(Ground 15) § 103(a) 6 34
Bellare, Rosen ‘790, and
Elgamal (Ground 18) § 103(a) 5 35
Medvinsky (Ground 7) § 103(a) 6 32
Medvinsky and Martin
(Ground 16) § 103(a) 6 34
Ground 20 § 314 1 32

Ans. 2–3.

II. ISSUES ON APPEAL
We review the appealed rejections for error based upon the issues identified
by Owner, and in light of the arguments and evidence produced thereon. Cf. Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992)). “Any arguments or authorities not included in
the brief permitted under this section or [37 C.F.R.] §§ 41.68 and 41.71 will be
refused consideration by the Board, unless good cause is shown.” 37 C.F.R.
§ 41.67(c)(1)(vii).
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

6
Based on the disputed errors presented by Patent Owner and Requester 1, the
main issues on appeal are:
(1) Did the Examiner err in rejecting claim 3 by finding Cox discloses “a
corporate database of a payee that generates a receipt and a payment remittance
information, wherein the corporate database enables a payor to authorize a
payment due on the receipt”;
(2) Did the Examiner err in rejecting claim 1 by finding Cox and Rosen
’790 teach or suggest “wherein the authorizing comprises specifying . . . an
account at the payor from which to draw the amount” and “communicating the
payment remittance information directly to the payee”; and
(3) Did the Examiner err in not adopting the proposed rejections of claims
8–20 based on various references?

III. ANALYSIS
A. Claim Construction
During examination of a patent application, a claim is given its broadest
reasonable construction “in light of the specification, as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (internal citations and quotations omitted). There is a
“heavy presumption” that a claim term carries its ordinary and customary meaning.
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A patentee
may rebut this presumption, however, by acting as his own lexicographer,
providing a definition of the term in the specification with “reasonable clarity,
deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

7
Patent Owner and Requesters discuss the disputed limitations of claim 3 in
their respective appeal briefs. PO App. Br. 11–14, 3PR1 Resp. Br. 3–7, 3PR2
Resp. Br. 6–7. We select claim 3 as representative. 37 C.F.R. § 41.67(c)(1)(vii).
1. “a receipt” of independent claim 3
Claim 3 recites “a corporate database of a payee that generates a receipt.”
PO App. Br. 33, Claims App’x. Patent Owner argues that a “receipt” must include
a payment due, because the claim later recites “a payment due on the receipt.” PO
App. Br. 13. Requester 1 argues that Patent Owner improperly imports timing
limitations into the claim, requiring the receipt to contain “information relevant to
the period of time only prior to payment.” 3PR1 Resp. Br. 6 (emphasis and
bolding in original). Requester 2 urges that the term “receipt” in the claims
includes bills and invoices and is not confined to the traditional understanding of a
receipt. 3PR2 Resp. Br. 6. We agree with both Requester 1 and 2.
Turning to the disclosure, the ’913 patent states a receipt includes “a traffic
ticket, a citation, a utility bill, a court ticket, a court warrant, . . . a recycling waste
bill, . . . a visa application receipt, . . . an electric bill, a phone bill, a gas bill, . . .
and a parking ticket” as well as various, other receipts. The ’913 patent 4:66–5:17.
As such, the inclusion of bills, tickets and warrants broadens the recitation
“receipt” beyond the ordinary understanding of receipt that includes “a piece of
paper on which the things that you buy or the services that you pay for are
listed with the total amount paid and the prices for each.”3 See also 3PR2
Resp. Br. 6. Although claims 6 and 10 narrows some “receipts” from their claims,

3 Merriam-Webster Online Dictionary, available at http://www.merriam-
webster.com/dictionary/receipt.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

8
the above examples are not excluded from independent claim 3 or independent
claims 1, 2, 4, 8, and 9 for that matter.
We also agree with Requester 1 (see 3PR1 Resp. Br. 4) that the disputed
language related to generating a receipt and payment remittance information in
claim 3 is a functional recitation. See In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997). Although not drafted in a classical functional language of “adapted to”
or “configured to,” the claim recites “a device” and is thus an apparatus-type claim.
As such, language concerning the database of the device performing an action in
claim 3 must be functional. Otherwise, the claim would be directed to two
statutory classes (i.e., an apparatus and a method) and be indefinite. See
UltimatePointer, LLC v. Nintendo Co., Ltd., 816 F.3d 816, 827 (Fed. Cir. 2016).
Moreover, there is nothing in the claim concerning the type of information that
limits the corporate database to specific structural elements or structure. Granted,
claim 3 recites “the payment remittance information is arranged within a data
structure according to a prescribed format” but there is no structural tie of the data
structure to the recited “corporate database.”
Lastly, although claiming “the corporate database enables a payor to
authorize a payment due on the receipt” in claim 3, this does not require that the
receipt include a due payment. That is, the receipt need not have payment due in
order for the payor to be enabled to authorize a payment related to the receipt.
Rather, as indicated by Requester 1, this language in claim 3 requires the recited
corporate database to be structured such that it enables a payor to authorize any
payment due on a receipt (e.g., payment that is due upon receiving the receipt).
See 3PR1 Resp. Br. 4.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

9
Accordingly, we determine that the recited “receipt” includes bills, tickets,
warrants, acknowledgements, and papers that may, but do not require, a payment
due.
2. “a payment remittance information” of claim 3
Claim 3 also recites “a corporate database of a payee that generates . . . a
payment remittance information.” Patent Owner contends this information
includes “the price of the goods.” PO App. Br. 13. Other than the Summary,
Table 1, and the claims, the language “payment remittance information” is not
found in the disclosure of the ’913 patent. See, e.g., the ’913 patent 4:17, 20:15,
Table 1 (col. 9). Also, the discussions found in the ’913 patent of “payment
remittance information” merely rehash the language in the claim and do not
address the type of information that “payment remittance information” includes.
See id.
Thus, we turn to the phrase’s plain meaning. Payment is defined as the act
of paying and something that is paid.4 Remittance is defined as “a sum of money
remitted,” “an instrument by which money is remitted,” and “transmittal of
money” and “remit” is defined to mean “to send (money) as a payment.”5 Although
some of these definitions are circular (e.g., using the term “paying” to define
“payment”), we determine that these terms collectively define the phrase “a
payment remittance information” as information related to (a) money that is or is to
be transmitted or (b) the instrument by which money is or is to be transmitted.

4 Merriam-Webster Online Dictionary, available at http://www.merriam-
webster.com/dictionary/payment.
5 Merriam-Webster Online Dictionary, available at http://www.merriam-
webster.com/dictionary/remittance and http://www.merriam-
webster.com/dictionary/remitted.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

10
A. Cox (Ground 1)
Claims 3, 4, and 7 are rejected as being anticipated by Cox. Ans. 2, RAN
17-30. Patent Owner contends the Examiner erred in adopting this rejection. PO
App. Br. 11–15. Patent Owner argues that the Examiner does not identify and Cox
does not disclose a “corporate database of a payee” as recited. PO App. Br.
12–14. Patent Owner further asserts that Cox does not teach the “receipt” or the
“payment remittance information” is generated by the NetBill server mapped to the
recited corporate database. PO App. Br. 13–14. Rather, at best, Patent Owner
asserts the NetBill server copies information. PO App. Br. 13.
In the Examiner’s Answer, the Examiner adopts the rejection of Cox for
claims 3, 4, and 7 and refers to the January 24, 2014 Office Action. Ans. 2. In the
RAN mailed January 24, 2014, the Cox rejection maps the “corporate database of
the payee that generates a receipt and payment remittance information” to various
portions of Cox. RAN 17–20 (citing Cox 36 (col. 1), 5 (cols. 1, 2), 6 (col. 1)). The
Examiner further agrees with Requester 1’s position that the disputed limitation is
an intended use recitation. Ans. 4–5.
We determine, as stated above, that claim 3 recites a device and includes
functional recitations of “a corporate database of a payee that generates a receipt
and a payment remittance information” and “enables a payor to authorize a
payment due on the receipt.” See Schreiber, 128 F.3d at 1478. That is, Cox’s
database need only have the ability to (1) generate the recited receipt and payment
remittance information and (2) enable a payor to authorize a payment due on the
receipt. We further note that the database that “generates” a receipt and remittance

6 The Examiner maps the pages of Cox starting at page 1, although Cox starts with
page 77 and ends with page 88. As the Examiner did, we refer to the pages
sequentially when discussing the Examiner’s citations.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

11
information is mapped by Patent Owner to a database that does no more than
locate citation information and display the amount charged by the city. See PO
App. Br. 4 (mapping to this limitation to the ’913 patent 11:64–67, 14:16–19,
18:39–46). Patent Owner also maps a discussion of time stamping a “voucher” to
the corporate database’s functional limitations (PO App. Br. 4), but the ’913 patent
does not discuss how this voucher is generated as recited in claim 3. The ’913
patent 12:60–61, 14:25–27.
We thus construe the term “generates” in the phrase, “a corporate database
of a payee that generates a receipt and a payment remittance information” more
broadly than Patent Owner to include locating data information in the database so
as to formulate the recited receipt and payment remittance information.
Turning to the rejection, the Examiner finds that Cox generates specific data,
such as a signed EPO (electronic payment order) and encrypted goods. RAN 17–
19 (citing Cox 1 (col. 2), 3 (col. 1), 5 (cols. 1, 2), 6 (col. 1)). In the RAN, the
Examiner does not explicitly state Cox’s NetBill server is the recited corporate
database but does agree with Requester 1 that the recited intermediary can be a
merchant and that the “NetBill server sends a receipt” to the merchant and
customer. See RAN 8. Both Requester 1 and Requester 2 also state the corporate
database is Cox’s NetBill server. 3PR1 Resp. Br. 5, 3PR2 Resp. Br. 7. We thus
presume the Examiner has determined the NetBill server is or has the recited
“corporate database of the payee.”
Notably, Cox explains the NetBill or account server maintains accounts for
both customers (e.g., a payor) and merchants (e.g., a payee). Cox § 1. Requester 1
further indicates that the NetBill server acts as a proxy for the merchant in online
transactions. 3PR1 Resp. Br. 5 (citing Cox § 1). As such, in contrast with Patent
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

12
Owner’s argument (PO App. Br. 14), a database of this server is “of the payee” as
recited.
Cox explains that the “NetBill server returns a digitally signed receipt,
which includes a key, to the merchant.” Cox § 3 (referring to “[o]bjective (a) from
Section 2.1.”) As further explained by the Examiner and Requester 1, Cox teaches
the NetBill server issues a receipt containing the result code, the party identities,
the price and description of the goods, the EPOID (Electronic Payment Order ID or
Identifier), and the key K, and the server digitally signs the receipt. Ans. 4, 19
(citing portions of Cox § 3.4); 3PR1 Resp. Br. 6 (citing Cox § 3.4). As such, the
server locates certain information (e.g., the receipt containing various information),
makes a decision about the transaction based on signature verification, the
customer’s account balance, and the EPOID, issues the above-discussed receipt,
and digitally signs the receipt. Cox §§ 2.1, 3, 3.4.
Thus, the NetBill server locates certain information to make the decision
about the transaction and generates (e.g., issues and digital signs) information in
response. That is, the server digitally signs the receipt and generates a new receipt
(e.g., one that is digitally signed). See id. We thus disagree that the NetBill server
merely copies or duplicates a receipt previously generated. PO App. Br. 13
(stating pertinent information “is apparently copied onto the NetBill ‘receipt.’”)
Moreover, we further note that the act of copying and duplicating information
previous created is a form of generating data. Thus, even if the NetBill server is
determined merely to copy or duplicate the receipt, copying involves generating
the recited information as broadly as claimed.
We further disagree with Patent Owner that the phrase “receipt” as construed
above, requires information related to “a payment due.” Id.; see also 3PR1 Resp.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

13
Br. 6 and 3PR2 Resp. Br. 7. However, to the extent such a limitation exists in
claim 3, we agree with Requester 1 that the last price offered before agreement
between customer and merchant and the agreed price after negotiation are the
same. See 3PR1 Resp. Br. 6. Thus, even if the receipt generated by the NetBill
server includes “a price of goods, which is a price already paid” (PO App. Br. 13),
this amount is and was also the “payment due on the receipt.” Thus, Cox’s
corporate database is capable of “enabl[ing] a payor to authorize a payment due on
the receipt” as recited.
As for the disputed “payment remittance information” (PO App. Br. 13–14),
we determined above that such information may relate to information (a)
concerning money transmitted or to be transmitted or (b) concerning the instrument
by which money is transmitted or to be transmitted. We agree with the Examiner
and Requester 1 that the account balance information (e.g., Bal) formulated in step
7 is “payment remittance information.” RAN 19; 3PR1 Resp. Br. 5–6 (citing Cox
§ 3.4). That is, the balance concerns the instrument by which money is
transmitted. We further agree with Requester 1 that the NetBill server generates a
new account balance, which relates to the money transmitted. Moreover, as
Requester 1 indicates, the account balance is “payment remittance information”
because, in certain scenarios, such information “informs the customer of the effects
of the remittance on the account of the customer.” 3PR1 Resp. Br. 6.
Accordingly, we disagree that the NetBill server of Cox fails to generate the
recited receipt and payment remittance information found in claim 3.
Patent Owner further argues that the “payment remittance information” is
not “structured remittance data that is kept hidden from the payee.” PO App. Br.
13–14. Patent Owner admits that the receipt issued by the NetBill server encrypts
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

14
the account balance, but repeats that such information “is not part of payment
remittance information.” PO App. Br. 13. As stated above, we disagree. Further,
step 7 shows that the account balance is encrypted when sent to the merchant (e.g.,
ECN(EPOID, CAcct, Bal, Flags)) and Cox also states the information returned to
the merchant, including the customer’s new account balance, is encrypted so only
the customer can read the balance. Cox § 3.4.    
  Accordingly, we determine that the Examiner has not erred in rejecting
claim 3 and claims 4 and 7, which rely on the same arguments presented for claim
3. PO App. Br. 15.
B. Cox Alone or with Other References (Grounds 2, 14, and 17)
Claim 6 is rejected as being obvious over both (1) Cox and (2) Cox and
Martin; claim 5 is rejected as being obvious over Cox, Rosen ’790, and Elgamal.
Ans. 2–3; RAN 30, 33–34. Patent Owner relies on the arguments presented for
claim 3. PO App. Br. 15, 29, 31. Patent Owner further argues that Martin, Rosen
’790, and Elgamal do not cure the alleged deficiencies of Cox. PO App. Br. 29,
31. We are not persuaded for reasons previously presented for claim 3,
demonstrating that Cox has the purported deficiencies asserted. We sustain these
rejections.
C. Cox and Rosen ’790 (Ground 10)
Claim 1 is rejected as being obvious over Cox and Rosen ’790.7 Ans. 2; RAN
32 (incorporating 3PR1 Response 22–26 and 3PR2 Response 25–30). Notably,
unlike claim 3, claim 1 does not recite a corporate database but rather an article of

7 Rosen ’518, which is discussed by Patent Owner (PO App. Br. 23), is
incorporated by reference in Rosen ’790. Rosen ’790 1:15–18.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

15
manufacture comprising a medium encoded with instructions for execution by a
processor to perform various steps. PO App. Br. 33, Claims App’x.
Patent Owner argues that Cox’s NetBill server does not authorize a payment
due on the receipt to the payee, “wherein the authorizing comprises specifying . . .
an account at the payor from which to draw the amount.” PO App. Br. 24. Without
any citation, Patent Owner asserts the customer— not the NetBill server —in Cox
specifies an account when submitting the signed EPO. Id. We are not persuaded.
The Examiner’s rejection for claim 1 incorporates Requester 1 and 2’s
responses. RAN 32 (incorporating 3PR1 Response 22–26 and 3PR2 Response
25–30). Requester 2 states Cox renders claim 1 obvious “as shown above” except
for the limitation of “wherein the data entered by the payor includes a credit card
number.” 3PR2 Response 30. When discussing Cox “above,” the rejection of the
“authorizing” step discusses a customer authorizes “a payment due on a receipt to a
payee” when the customer sends an Electronic Payment Order (EPO) that contains
the customer account information (e.g., CAcct) from which to drawn the price of the
goods (step 5), and the EPO is sent to merchant (step 6). Cox § 3.4, cited in 3PR2
Response 2–3 and 3PR2 Resp. Br. 4–5. Requester 2 also explains that, under the
broadest reasonable construction of claim, the “authorizing” is “through the payor”
in Cox and thus the payor participates in the authorizing step. 3PR2 Resp. Br. 4.
The rejection further explains that when the EPO is sent to the NetBill server
(step 6), the customer’s account is eventually debited the negotiated price because
the server maintains accounts for both the customer and merchants, linked to
financial institutions. Cox § 1, cited in 3PR2 Response 3. Requester 2 even further
explains that the account specified is “at the payor” because the NetBill server acts
as a proxy for the customer. Id.; see also 3PR1 Resp. Br. 5–6.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

16
As broadly as recited and as mapped in the adopted rejection, the processor at
the NetBill server need not be the recited “processor” by which the
“computer-executable instructions” are executed as recited in claim 1, contrary to
Patent Owner’s contentions. See PO App. Br. 24–25. That is, the customer in Cox
sends (e.g., communicates) the EPO that contains payment remittance information
(e.g., price of goods) directly to the payee (e.g., merchant) to initiate payment (step
5). 3PR2 Request, Ex. BB 3 (citing Cox 5 (cols. 1–2), 6 (col. 1)). As such, Patent
Owner’s argument concerning the NetBill server’s processor not performing the
“authorizing” and “communicating” steps is not consistent with the rejection. We
further highlight, as does Requester 1, that claim 1 recites an “article of manufacture
comprising a non-transitory computer-readable medium encoded with computer-
executable instructions for execution by a processor to perform the steps of:
authorizing . . . [and] communicating.” 3PR1 Resp. Br. 12–13 (italics added). As
such, claim 1 does not positively recite the processor.
Patent Owner asserts Rosen ’790 does not cure the alleged deficiency of Cox.
App. Br. 24–25. However, as noted above and in Requester 2’s respondent brief,
Cox teaches this limitation. 3PR2 Resp. Br. 6 (indicating the rejection does not rely
on Rosen ’790 “for teaching the ‘authorizing’ limitation.”) Requester 2’s adopted
rejection turns to Rosen ’790 to teach the excepted limitation of “wherein the data
entered by the payor includes a credit card number.” 3PR2 Response 30. Patent
Owner’s remarks concerning Rosen ’790 and its purported failure to teach the
“authorizing” limitation are not consistent with Requester 2’s adopted rejection.
To the extent that the rejection does rely on a processor at the NetBill server
to perform the “authorizing” step (see 3PR1 Resp. Br. 13), Requesters 1 and 2
indicate that Cox teaches the NetBill server acts as a customer proxy and maintains
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

17
customer’s accounts, which may be debited after transactions. Cox § 1, cited in
3PR2 Response 3 and 3PR1 Resp. Br. 13. Requester 2 also states the customer
provides the EPO containing the customer account (e.g., CAcct) number which is
sent to the NetBill server and whose account is eventually debited. Cox § 3.4, cited
in 3PR2 Response 2–3 and 3PR2 Resp. Br. 5. That is, the NetBill server receives
the “an account of a payor” (e.g., CAcct) within the EPO at step 6. Cox § 3.4. The
server in turn decides on the transactions and returns the results at step 7, which also
includes account information (e.g., CAcct) within ECN. See id.
Thus, the customer presents to the merchant at step 5 a signed EPO that
includes a customer’s NetBill account number. Cox § 3.4. The signing of an EPO
is an act of authorization payment due on a receipt “through the payor” as recited.
As noted by Requester 2, the fact that other actors are involved in the authorization
does not diminish that the fact that authorization of payment is provided “through a
payor” (e.g., the customer) as recited in contrast with Patent Owner’s argument (PO
App. Br. 23–24). See 3PR2 Resp. Br. 5–6. Additionally, the NetBill server allows
for the exchange of payment though the customer and merchant’s accounts. See
3PR1 Resp. Br. 13. Thus, the NetBill server in Cox authorizes payment, the
authorizing is through a payor, and the authorizing also involves “specifying an
account at the payor from which to drawn the amount” as recited.
Based on the above discussion, we determine the arguments concerning
Rosen ’790 are unavailing even though Requester 1’s adopted rejection (3PR1
Response 23–24) may rely on Rosen ’790 for some of the same disputed
limitations. Furthermore, we need not address whether the prior art provides a
reason or suggestion to modify Cox’s NetBill server to perform the “authorizing”
step. PO App. Br. 24–25. Patent Owner further contends that one skilled in the art
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

18
would not have combined Cox with Rosen to perform the “communicating” step.
PO App. Br. 25–26. Once again, as explained above, Cox teaches this limitation.
Patent Owner argues that endorsing the EPO and forwarding to the NetBill
server does not teach the “communicating” step in claim 1 because the same
“processor” must perform the “various steps.” PO App. Br. 25. Because the
merchant in Cox is a separate actor than the NetBill Server, Patent Owner argues
Cox does not teach the NetBill server also performs the “communicating” step. Id.
Also, Patent Owner also contends that there is no reason to modify the NetBill
server to perform the “communicating” step. PO App. Br. 25–26.
As previously discussed, the processor is not a positive element of claim 1.
Nonetheless, to the extent such a limitation exists, we noted above that Cox teaches
this feature when the customer (e.g., a payor) sends the EPO to the merchant. Cox
§ 3.4. Also, as Requester 1 indicates, a processor alone cannot perform the step of
communicating the payment remittance information directly to the payee. 3PR1
Resp. Br. 14. Instead, Requester 1 highlights that some other system or network is
necessary to send information to a payee. Id. Thus, the argument that the recited
“processor” that is “for execution” of the computer-executable instructions must
solely perform all the recited steps is somewhat misplaced. PO App. Br. 25.
Even so and assuming that a processor of Cox’s NetBill server must perform
this function, this server acts as the payee’s proxy, is linked to the customer and
merchant’s financial institutions (Cox § 1), and thus does “communicat[e] payment
remittance information directly to the payee” (see id.) as broadly recited. Cox’s
NetBill server also communicates a receipt containing the price of the goods and the
customer’s account balance to a merchant (e.g., a payee) at step 7. Cox § 3.4. This
discussion teaches and suggests that the NetBill server and its processor perform
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

19
multiple steps, including “communicating the payment remittance information
directly to the payee” as recited.
For the above reasons, we determine that the Examiner has not erred in
rejecting claim 1.
D. Cox, Rosen ’790, and Martin (Ground 13)
Claim 2 has been rejected as being obvious over Cox, Rosen ’790, and Martin.
Ans. 3; RAN 4. Patent Owner has not argued this rejection. See PO App. Br. 3
(indicating that claims 1 and 3–7 are appealed). We summarily sustain the rejection.
See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that when
appellant fails to contest a ground of rejection, the Board may affirm the rejection
without considering its substantive merits); see also 37 C.F.R. § 41.67(c)(1)(vii);
Manual of Patent Examining Procedure (MPEP) § 1205.02, 9th ed. (Nov. 2015) (“If
a ground of rejection stated by the examiner is not addressed in the appellant’s brief,
that ground of rejection will be summarily sustained by the Board.”) 
E. Claim 1 Under 35 U.S.C. § 134 (Ground 20)
Claim 1 is rejected under 35 U.S.C. § 314 as enlarging the scope of the
claim. Ans. 3; RAN 32 (incorporating the 3PR1 Response 8 and 3PR2 Response
23–24). Requester 1 states that Patent Owner has omitted the phrase “enabling
payor to authorize” in claim 1 and replaced it with “authorizing a payment due on
the receipt, the authorizing through a payor . . . .” 3PR1 Response 8. According to
Requester 1, this amendment broadens the scope of the claim to enable any party to
authorize the payment due. Id.; 3PR2 Response 23–24. Additionally, Requester 1
states that the phrase “authorizing through a payor” does not limit the claim to
what was previous recited because “a party other than the payor could still
authorize a payment.” 3PR1 Response 8.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

20
In response, Patent Owner argues that the amended claim language does not
broaden the scope of claim 1. PO App. Br. 21–22. In particular, Patent Owner
asserts that both the processor and the payor are recited in both the original and the
amended claims and that “the processor is required in both the issued and amended
versions to interact with the payor in order to effect the authorization.” PO App.
Br. 22. Additionally, Patent Owner argues that the original claim 1 did not require
the payor to authorize payment but the amended claim does “actually perform the
‘authorizing through a payor.’” Id.
Although we agree with Patent Owner that amended claim 1 now recites the
computer-executable instructions for execution by a processor performs the step of
“authorizing a payment due on the receipt to a payee” rather than “enabling . . . to
authorize” the same payment, as Requesters 1 and 2 state, amended claim 1 omits
who authorizes the payment by reciting “authorizing a payment due on the receipt
to a payee.” See 3PR1 Resp. Br. 11–12 and 3PR2 Resp. Br. 3. From this
perspective, claim 1 is enlarged in scope to permit any party or entity to authorize
payment.
Amended claim 1 further recites “the authorizing through a payor.” Patent
Owner argues that this limitation limits claim 1, such that authorization is done by
the payor as original recited. PO App. Br. 22. Both Requester 1 and 2 counter,
indicating that newly added limitation claims the payor is an intermediary in the
authorization process by reciting “authorizing through a payor” (italics added).
3PR Resp. Br. 11–12; 3PR2 Resp. Br. 4. We agree with Requesters 1 and 2.
For the above reasons, we sustain the rejection of claim 1.
F. Remaining Adopted Rejections (Grounds 3–7, 11, 15, 16, 18)
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

21
The above discussions address all the rejected claims on appeal and are
dispositive, rendering it unnecessary to reach the propriety of the remaining,
adopted rejections. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984); In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009); 37 C.F.R. 41.77 (a)
(“The Patent Trial and Appeal Board . . . may affirm or reverse each decision of
the examiner on all issues raised on each appealed claim.”)
REQUESTER’S APPEAL
The Examiner did not adopt the following proposed rejections, for which
Requester 1 appeals:

Reference(s) Basis Claims
Cox § 102(b) 8, 9, 11, 12, 14–20
Cox § 103(a) 10, 13
Cox and Rosen ’790 § 103(a) 12
Cox and Martin § 103(a) 10
Bellare § 102(b) 4
Medvinsky and Rosen
’790 § 103(a) 1
Medvinsky, Rosen ’790,
and Elgamal § 103(a) 5

3PR1 App. Br. 5–6.8
1. Rejections Based on Cox
A. Claims 8 and 10–20

8 As previously noted, Requester 2 withdrew its appeal on February 11, 2016.
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

22
The Examiner provides an explanation of patentability of claims 8–20.
RAN 36. The Examiner explains that “Cox fails to teach ‘a computer for:
communicating the payment instructions to the payor to initiate payment of the
amount’ as recited in claims 8 and 9” because “the NetBill server does not
communicate the payment instructions to the payor instead the instructions are
transmitting from the merchant to the customer (or the customer to the merchant).”
Id. Requester 1 disputes this conclusion. 3PR1 App. Br. 10–14.
Requester 1 argues that the Examiner’s rationale is “improper because it is
based upon a misinterpretation of the claim, and fails to recognize that Cox indeed
discloses the NetBill server (a computer) can, and does, perform the recited
function.” 3PR1 App. Br. 12. Specifically, Requester 1 asserts that claim 8 does
not require or preclude transmitting payment instructions through an intermediary,
such as the merchant, and is consistent with claim 9 which recites “the computer
communicates the receipt and the payment remittance information to at least an
intermediary.” 3PR1 App. Br. 13. Requester 1 also argues the language discussed
by the Examiner is functional and merely requires the computer in the prior art to
be capable of performing the “communicating” step, which Cox discloses in Figure
1 and Section 2. 3PR1 App. Br. 13–14 (citing Cox § 2, Fig. 1).
Cox states that the NetBill transaction involves three parties (e.g., Customer,
Merchant, and NetBill server) and three phases (e.g., price negotiation, goods
delivery, and payment). Cox § 2, Fig. 1. Cox further states, for the first two
phases (e.g., price negotiation and good delivery), the NetBill server is not
involved. Id. However, as noted by Requester 1 (3PR1 App. Br. 14), Cox further
describes a scenario where the “customer contacts the NetBill server directly only
in the case of communications failure.” Cox § 2, cited in 3PR1 App. Br. 14. In
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

23
such a scenario (e.g., communications failure between the customer and merchant),
Cox suggests a computer of the NetBill server may in turn communicate
information between the customer and merchant rather than the merchant which
would usually communicate directly to the customer (e.g., information exchanged
during the first two phases). See Cox § 2, Fig. 1.
For example, in the usual situation, the customer may request a price request
from the merchant, and the merchant provides a price quote and product identifier
(e.g., payment instructions to the payor to initiate payment of the amount), once the
price is negotiated at steps 1 and 2. Cox § 3.2. After negotiation, the customer
then directs delivery of goods, and the merchant sends an EPOID in steps 3 and 4.
Cox § 3.3. After which, the customer submits payment to the merchant in the form
of a signed EPO (e.g., initiates payment) that includes the negotiated price and
product identifier, and the merchant forwards the endorsed EPO to the NetBill
server at steps 5 and 6. Cox § 3.4. These steps are also noted by Patent Owner.
PO Resp. Br. 7–8. However, in the scenario where communications failure
between the customer and merchant occurs, such as during steps 2 and 4, Cox
suggests that the customer communicates with the NetBill server directly. See Cox
§ 2, Fig. 1.
This above example of communications failure between the customer and
merchant further suggests to one skilled in the art that the merchant would
communicate with the NetBill server information (e.g., the information in steps 2
and 4, which includes payment instructions such the price negotiated for the goods)
due to the failure. As such, Cox may not teach that the NetBill server’s computer
necessarily communicates payment instructions to the payor such that Cox
anticipates claim 8. However, we determine that Cox suggests under an
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

24
obviousness analysis a scenario where the NetBill server has a computer that
communicates the payment instructions to the customer (e.g., a payor) to initiate
payment of the amount as recited.
Patent Owner argues that the rejection proposes that when the merchant
transmits the EPOID to the customer as part of the goods delivery phase that the
merchant communicates payment instructions and the merchant acts as an
intermediary of the NetBill server. PO Resp. Br. 8-9. But, as explained above, this
is not how the rejection is being formulated. We thus are not persuaded by this
argument.
Patent Owner further asserts that the EPOID or payment instructions do not
include the amount and the account of the payor as recited. Granted, the payment
instructions to the payor that come from the merchant as described in Cox or that
come from the NetBill server as suggested by Cox does not include the payor’s
account. See Cox §§ 2, 3.2. Yet, we take exception with claim 8 requiring the
recited “computer for: communicating the payment instructions to the payor to
initiate payment” and the payment instructions communicated to the payor would
include the account at the payor. That is, the disclosure describes a computer that
communicates an amount to a payor (e.g., the customer) to initiate payment that
does not include the payor’s account. The ’913 patent 11:60–12:55, 14:10–20,
Table 1(col. 9), Figs. 1–2. Given the above understanding, we construe the
recitation of the “computer for: communicating the payment instructions . . . to
initiate payment of the amount” need not include the recited “account at the
payor.” As such, we are not persuaded by this argument. PO Resp. Br. 9.
For the above reasons, we determine the Examiner erred in not rejecting
claim 8. Although we agree that Cox does not explicitly disclose “a computer for:
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

25
communicating the payment instructions to the payor to initiate payment of the
amount” as recited, Cox teaches and suggests this limitation as explained. Thus,
the rejection of claim 8 is based on 35 U.S.C. § 103 and not § 102 as presented by
Requester 1.
As for the remaining limitations in claims 8, 11, 12, 14–20, we adopt the
findings presented by Requester 1 as the Examiner previously adopted in the
Non-Final Action dated June 26, 2013 as well as those presented in (1) Requester
1’s Response and (2) Requester 1’s Request. Non-Final Act. 37–55; 3PR1
Response 13–14; 3PR1 Request 31–37. These finding have not been disputed by
Patent Owner. See generally PO Resp. Br.
Claims 10 and 13 were also proposed to be rejected based on Cox under
§ 103. 3PR App. Br. 15–16. Patent Owner contends the decision not to adopt this
rejection should be upheld because claim 8 is allowable. See PO Resp. Br. 11. We
are not persuaded for the above reasons and further adopt the Requester 1 and
Examiner findings concerning these claims. 3PR1 App. Br. 15–16; Non-Final Act.
55 (incorporating 3PR1 Request 63–65, Ex. CC-A).
According, claims 8 and 10–20 are newly rejected under 35 U.S.C. § 103(a)
as being unpatentable based on Cox.
B. Claim 9
We reach the opposite conclusion related to the patentability of claim 9.
Granted, claim 9 recites the same limitation of “a computer for: communicating the
payment instructions to the payor to initiate payment of the amount” but further
recites “the computer communicates the receipt and the payment remittance
information to at least an intermediary.” Using the above communications’ failure
example, we determine that the mapped computer in Cox (e.g., the NetBill server’s
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

26
computer) does not teach or suggest the ability to communicate the receipt and the
payment remittance information to at least an intermediary. That is, if the
communication between the customer and merchant fails, then communication
between the customer and the NetBill server (e.g., a computer) is direct. Cox’s
merchant is not an intermediary in this situation. Nor is there a suggestion in the
proposed rejection to include an intermediary for communicating the receipt and
payment remittance information in this scenario. Thus, we determine the
Examiner failed to err in not adopting the proposed rejection of claim 9 based on
Cox.
C. Additional Proposed Rejections of Claims 10 and 12
The above discussions address all the claims on appeal and are dispositive,
rendering it unnecessary to reach the propriety of any remaining proposed
rejections based on Cox, Bellare, or Medvinsky. See Beloit, 742 F.2d at 1423; see
also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999).

IV. CONCLUSIONS
The Examiner’s decision to reject claims 1–7 based on Cox alone or in
combination with other references is affirmed.
The Examiner’s decision that claim 9 is patentable is affirmed.
We do not sustain the Examiner’s decision determining claims 8 and 10–20
are patentable.
We present a new ground of rejection for claims 8 and 10–20.

V. TIME PERIOD FOR RESPONSE
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

27
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes a new
ground of rejection. Section 41.77(b) provides that “[a] new ground of rejection
. . . shall not be considered final for judicial review.” That section also provides
that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to the
new grounds of rejection to avoid termination of the appeal proceeding as to the
rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must
be either an amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. The request
for rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under § 41.77(a).” A request for rehearing
must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the
request and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c)–(d), respectively. Under 37 C.F.R. § 41.79(e), “[t]he times for
requesting rehearing under paragraph (a) of this section, for requesting further
rehearing under paragraph (c) of this section, and for submitting comments under
paragraph (b) of this section may not be extended.”
Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

28
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding “commenced” on or after November 2, 2002 may not be
taken “until all parties’ rights to request rehearing have been exhausted, at which
time the decision of the Board is final and appealable by any party to the appeal to
the Board.” 37 C.F.R. § 41.81; see also MPEP §§ 2682, 2683 (8th ed., Rev. 8, July
2010).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983.

AFFIRMED-IN-PART
37 C.F.R. § 41.77(b)

Appeal 2015-008098
Merged Reexamination Control 95/001,944, 95/002,282, and 90/012,608
Patent 8,027,913 B1

29

FOR PATENT OWNER:

Rani K. Yadev-Ranjan
18730 Vista De Almaden
San Jose, CA 95120

FOR THIRD-PARTY REQUESTER:

Dentons US LLP
P.O. Box 061080
Chicago, IL 60606-1080

Haynes and Boone, LLP
2323 Victory Avenue, Suite 700
Dallas, TX 75219