Ex Parte Bruder

Patent Trial and Appeal Board

Sep 6, 2018

13275744 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/275,744 10/18/2011
113123 7590
Harrity & Harrity, LLP
11350 Random hills road
Suite 600
Fairfax, VA 22030
09/10/2018
FIRST NAMED INVENTOR
Felix Bruder
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.
0095-0128 2641
EXAMINER
CHOO, JOHANN Y
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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):
docket@harrityllp.com
mpick@harrity llp .com
ptomail @harrity llp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FELIX BRUDER
Appeal2017-006895
Application No. 13/275,744 1
Technology Center 3600
Before ST. JOHN COURTENAY III, MARC S. HOFF, and SCOTT B.
HOWARD, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 6-8, 12, and 27--41. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant's invention is method, system, and computer program
product for enabling payment for items using a mobile device. The method
comprises authenticating the mobile device with a service provider, and
confirming said authentication by a device manager. The method further
comprises the steps of activating the authenticated mobile device by means
1 The real party in interest is Accenture Global Services Limited.
2 Claims 2-5, 9-11, 13-26 have been cancelled.
Appeal2017-006895
Application No. 13/275,744
of an activation signal, and responding to that activation signal by sending
an identification signal from the authenticated mobile device to the device
manager. After the mobile device is identified using an identification signal,
the mobile device receives an identifier list, said list including a first item
identifier identifying a first set of items. The method further comprises
sending, by the identified mobile device to the device manager, an indication
of a selection of the first item identifier. Abstract.
Claim 1 is exemplary of the claims on appeal:
1. A method comprising:
receiving, by a mobile device associated with a customer, an
activation signal from a device manager associated with a
merchant, the mobile device being registered with a service
provider for the service provider to provide payment to the
merchant;
activating, by the mobile device, a payment capability of the
mobile device based on the activation signal;
transmitting, by the mobile device and to the device manager,
an identification signal identifying the mobile device based on
the activation signal;
receiving, by the mobile device and from the device manager,
an identifier list including a plurality of item identifiers,
each item identifier, of the plurality of item identifiers,
identifies a set of items previously chosen by respective
customers for purchase from the merchant for which payment
has not yet been received, the identifier list being received
based on the identification signal, the plurality of item
identifiers including a first item identifier identifying a first set
of items previously chosen by the customer associated with the
mobile device for purchase from the merchant and a second
item identifier identifying a second set of items previously
chosen by a different customer for purchase from the merchant,
2
Appeal2017-006895
Application No. 13/275,744
the identifier list being received after the device manager
confirms authentication of the mobile device with the service
provider and before the mobile device causes an authorization
signal to be sent to the service provider;
selecting, by the mobile device and based on a customer input,
the first item identifier from the plurality of item identifiers;
sending, by the mobile device and to the device manager, an
indication of a selection of the first item identifier from the
plurality of item identifiers; and
causing, by the mobile device, the authorization signal to be
sent to the service provider to authorize the service provider to
provide payment to the merchant for the first set of items
previously chosen by the customer associated with the mobile
device,
the authorization signal indicating the service provider is
authorized to provide payment to the merchant for the first set
of items previously chosen by the customer associated with the
mobile device.
The Examiner applies the following prior art against the claims:
Bezy et al.
Hager et al.
Byman-Kivivuori et al.
Koskimies
House et al.
Lutnick et al.
Murphy
Otto et al.
Laracey
us 5,703,344
US 2001/0051901 Al
US 2004/0002305 Al
US 2004/0081110 Al
US 6,785,805 Bl
US 2008/0207296 Al
US 2009/0037285 Al
US 2009/0182630 Al
US 2011/0251892 Al
Dec. 30, 1997
Dec. 13, 2001
Jan. 1,2004
Apr. 29, 2004
Aug. 31, 2004
Aug.28,2008
Feb. 5,2009
July 16, 2009
Oct. 13, 2011
Claims 1, 6, 27, 28, 30, 31, and 33-41 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Otto, Koskimies, Murphy, and Hager.
3
Appeal2017-006895
Application No. 13/275,744
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Otto, Koskimies, Murphy, Hager, and House.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Otto, Koskimies, Murphy, Hager, and Lutnick.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Otto, Koskimies, Murphy, Hager, Lutnick, and Laracey.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Otto, Koskimies, Murphy, Hager, and Byman-Kivivuori.
Claim 29 stands rejected3 under 35 U.S.C. § 103(a) as being
unpatentable over Otto, Koskimies, Murphy, Hager, and Bezy.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed November 29, 2016), the Reply Brief ("Reply Br.," filed
March 27, 2017), and the Examiner's Answer ("Ans.," mailed February 22,
2017) for their respective details.
ISSUES
1. Does the combination of Otto, Koskimies, Murphy, and Hager
disclose or fairly suggest receiving, by the mobile device and from the
device manager, an identifier list including a plurality of item identifiers,
each item identifier serving to identify a set of items previously chosen by
respective customers for purchase from the merchant?
2. Does the claimed "second item identifier identifying a second set of
items previously chosen by a different customer for purchase from the
merchant" constitute nonfunctional descriptive material?
3 The Examiner has withdrawn the 35 U.S.C. § 112(b) rejection of claims
29, 30, and 32. Ans. 2.
4
Appeal2017-006895
Application No. 13/275,744
PRINCIPLES OF LAW
When descriptive material is not functionally related to the substrate,
the descriptive material will not distinguish the invention from the prior art
in terms ofpatentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1993).
ANALYSIS
CLAIMS 1, 6, 27, 28, 30, 31, AND 33--41
Appellant argues that the Examiner's prior art combination of Otto,
Koskimies, Murphy, and Hager fails to disclose or suggest two elements of
independent claim 1: (a) "a set of items previously chosen by respective
customers for purchase from the merchant for which payment has not yet
been received," and (b ), "a second item identifier identifying a second set of
items previously chosen by a different customer for purchase from the
merchant." App. Br. 11.
"A SET OF ITEMS"
We do not agree with Appellant's allegation that the combination of
references fails to disclose or suggest the claimed "item identifiers" or
"identifier list." We agree with the Examiner's finding that Otto discloses
the selection, use, and display of an item identifier. Final Act. 7; Otto
,r,r 120, 125. The Examiner finds, and we agree, that Koskimies discloses
allowing for a user to select from a catalog of identifiers. "The midlet will
then retrieve a list of available content items from the content server and
display them to the user via the mobile device." Koskimies ,r 50; Final Act.
8.
The Examiner then finds that the combination of Otto and Koskimies
does not disclose an item identifier that identifies a set of items chosen by
5
Appeal2017-006895
Application No. 13/275,744
respective customers for purchase from a merchant, including a first item
identifier identifying a first set of items previously chosen by the customer.
Final Act. 9. We agree with the Examiner's finding that Murphy discloses
an identifier as a reference to a set of items: "A selection of one or more
items may be received at block 1202. A total for the selection may be
generated at block 1204. The total for the selection may be presented on a
display of a point of sale (POS) device at block 1206." Murphy ,r 92; Final
Act. 10. We also agree with the Examiner's conclusion that it would have
been obvious to modify Otto and Koskimies in view of Murphy "for the user
to be able to select groups of related or previously selected items." Final
Act. 10.
"A SECOND ITEM IDENTIFIER"
The Examiner finds "Otto does not specifically disclose "a second
item identifier identifying a second set of items previously chosen by a
different customer for purchase from the merchant." Final Act. 11. The
Examiner cites Hager as disclosing this limitation. Id.
The Examiner further finds that "the limitations applicant is currently
asserting as not being taught by the prior art are descriptions of registrations,
files, signals, identifier lists and what they indicate, etc., which do not
manipulate the process being performed, nor the system performing, nor the
CRM storing instructions and therefore does not move to distinguish over
the prior art." Final Act. 3.
Appellant argues in response that the claimed identifier list[ s] must be
given patentable weight, because Appellant is "not merely attempting to
claim the contents of an 'identifier list' as an end result of a process, but
rather is claiming a functional use of the 'identifier list' to cause 'the service
6
Appeal2017-006895
Application No. 13/275,744
provider to provide payment to the merchant for the first set of items
previously chosen by the customer."' App. Br. 16.
We observe that the "second item identifier" recited in claim 1 is not
tied to any other claim limitation, and performs no function in any claim.
We agree with the Examiner that the "second item identifier, identifying a
second set of items previously chosen by a different customer," constitutes
descriptive material not functionally related to the "substrate" of the claim,
and does not distinguish the invention from the prior art. Gulack, 703 F.2d
at 1385.
The "second item identifier" material in the appealed claims is
analogous to the nucleic acid sequence numbers recited in the claims of Ex
parte Nehls, 88 USPQ2d 1883 (BPAI 2008). The invention in Nehls was a
computer-based system for identifying nucleic acid fragments of the human
genome. The claims recited "a) a data storage means comprising the sense
or antisense sequence of at least 18 contiguous nucleotides of any one of
SEQ ID NOS:9-1,008; b) search means for comparing a target sequence to
each of the sequences of the data storage means of step a) to identify
homologous sequence(s); and c) retrieval means for obtaining said
homologous sequence(s) of step (b)." Nehls, 88 USPQ2d at 1884.
The Board in Nehls found no evidence that the sequence ID numbers
functionally affect the process of comparing a target sequence to a database.
Id. at 1888. The sequence ID numbers, the Board concluded, are merely
information being manipulated by a computer, and do not affect how the
method of the prior art is performed. Id. In the invention under appeal, as in
Nehls, the second item identifiers similarly have no effect on the function of
7
Appeal2017-006895
Application No. 13/275,744
the steps of the claimed method; the item identifiers are merely information
being manipulated by computer hardware and software.
As a result, we conclude the claimed "second item identifiers
identifying a second set of items" are directed to nonfunctional descriptive
material that does not serve to distinguish the invention from the prior art. It
is of no moment, then, that Hager does not disclose second item identifiers
that identify a second set of items previously chosen by a different customer.
We conclude that the Examiner did not err in combining Otto,
Koskimies, Murphy, and Hager. We sustain the Examiner's§ 103(a)
rejection of claims 1, 6, 27, 28, 30, 31, and 33--41.
CLAIMS 7, 8, 12, 29, AND 32
With respect to these dependent claims, Appellant argues only that the
claims are patentable for the same reasons given with respect to claim 1.
App. Br. 17-19. Because we are not persuaded that the Examiner erred in
rejecting claim 1 over Otto, Koskimies, Murphy, and Hager, we also sustain
the Examiner's rejection of:
claim 32 over Otto, Koskimies, Murphy, Hager, and House;
claim 7 over Otto, Koskimies, Murphy, Hager, and Lutnick;
claim 8 over Otto, Koskimies, Murphy, Hager, Lutnick, and Laracey;
claim 12 over Otto, Koskimies, Murphy, Hager, and Byman-
Kivivuori; and
claim 29 over Otto, Koskimies, Murphy, Hager, and Bezy, all for the
same reasons given with respect to claim 1, supra.
8
Appeal2017-006895
Application No. 13/275,744
CONCLUSIONS
1. The combination of Otto, Koskimies, Murphy, and Hager fairly
suggests receiving, by the mobile device and from the device manager, an
identifier list including a plurality of item identifiers, each item identifier
serving to identify a set of items previously chosen by respective customers
for purchase from the merchant.
2. The claimed "second item identifier identifying a second set of
items previously chosen by a different customer for purchase from the
merchant" constitutes nonfunctional descriptive material.
ORDER
The Examiner's decision to reject claims 1, 6-8, 12, and 27--41 under
35 U.S.C. § 103(a) 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
9