Ex Parte BUI

Board of Patent Appeals and Interferences

Sep 1, 2010

09457839 (B.P.A.I. Sep. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
20995 7590 09/03/20 10
KNOBBE MARTENS OLSON & BEAR LLP
APPLICATION NO.
EXAMINER
2040 MAIN STREET SHERR, CRISTINA o
091457,839 12/09/1999 HONG Q BUI AMAZON .O25 A 8131
FILING DATE
FOURTEENTH FLOOR
IRVINE, CA 92614
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
09/03/2010 ELECTRONIC
jcartee@ kmob.com
efiling @ kmob.com
eOAPilot @kmob.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte HONG Q. BUI
Appeal 2009-012815
Application 091457,839
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012815
Application 091457,839
Hong Q Bui (Appellant) seeks review under 35 U.S.C. 5 134 (2002) of a
final rejection of claims 36-39,41,42,44-52, 60-64, and 66-69, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. 5 6(b) (2002).
The Appellant invented a way of processing transactions over the
Internet using an information service to provide customer information,
including payment information, to a third party Internet merchant
(Specification 1 :7- 10).
An understanding of the invention can be derived from a reading of
exemplary claim 36, which is reproduced below [bracketed matter and some
paragraphing added].
36. A system for providing a server-side wallet service, the
system comprising:
[I] a service web site that provides functionality for users
to register with the wallet service and
to provide customer information and authentication
information
for use of the wallet service,
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed October 23, 2006) and Reply Brief ("Reply Br.," filed December
30, 2008), and the Examiner's Answer ("Ans.," mailed December 11, 2008).
Appeal 2009-012815
Application 091457,839
said customer information including
payment information
for making purchases from merchant web
sites that support customer use of the wallet
service: and
[2] a server system that
authenticates registered users of the wallet service and
disseminates the customer information
of the registered users
to the merchant web sites
in response to user requests,
the server system thereby allowing registered users of the
wallet service
to make purchases from the merchant web sites
using previously-specified customer information;
[3] wherein the server system is responsive to a request to
transfer the customer information of a registered user to a
selected merchant web site by at least
(1) using the authentication information of the registered
user to authenticate the registered user, and
(2) if the registered user is successfully authenticated,
sending customer information of the registered
user to the selected merchant web site
to permit the merchant web site to transact a sale to
the registered user,
whereby the system enables the registered user to make a
purchase from the selected merchant web site
without having a preexisting account with the
selected merchant web site; and
[4] wherein the server system
maintains a log of purchases made by the registered user
from each of a plurality of merchant web sites,
Appeal 2009-012815
Application 091457,839
uses the log to generate an interests profile for the
registered user, and
disseminates the interests profile to the merchant web
sites
to allow the merchant web sites to provide
personalized content to the registered user.
The Examiner relies upon the following prior art:
Boesch US 6,092,053 Jul. 18, 2000
Linehan US 6,327,578 B1 Dec. 4,2001
Katis US 6,601,761 B 1 Aug. 5, 2003
Foster (Prov Appl.) US 601152,651 Nov. 1,2000
Claims 41,42, 44, and 45 stand rejected under 35 U.S.C. 5 101 as
directed to non-statutory subject matter.
Claims 36-39,41, and 42 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Foster.
Claims 44,45, and 67-69 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Boesch and Linehan.
Claims 46-52 and 60-64 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Katis.
ISSUES
The issue as to statutory subject matter hinges on whether the claims are
directed to no more than abstract concepts with only insignificant data
gathering and post solution activity. The issues as to obviousness hinge on
whether the claims narrowly require that data reside in certain places or
broadly move data that are not narrowly originated.
Appeal 2009-012815
Application 091457,839
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Foster
01. Foster is directed to an online payment system in which the
customer pays a merchant by sending payment information to the
payment processor instead of the merchant. Foster 1:29-2:7.
02. Foster maintains a log of transactions on the customer's
computer, but does not describe transmitting this log to the
merchant. Foster 65-8.
Boesch
03. Boesch is directed to presenting a consumer's purchasing
information to a merchant's computer to allow a sale of goods or
services to be consummated. Boesch 2:66-3:l.
04. Boesch describes the existing electronic wallet process as
including a step where a consumer sends information to make a
purchase to a merchant web site. Some wallets are referred to as
thin wallets. Boesch 3: 13-63.
05. Boesch stores a cookie identifying a user on the user's
computer. Boesch 4: 13-17.
Appeal 2009-012815
Application 091457,839
06. When Boesch retrieves a web page from a merchant after the
initial purchase transmission by the customer, Boesch sends a
request for data (an object) providing purchase authorization to a
CIS (Consumer Information Server). An object is returned that
incorporates the user identity for display to confirm that the actual
user is the same person as identified in the cookie. Boesch 7:l-44.
Linehan
07. Linehan is directed to doing business for electronic commerce
that expands the role of a "thin" consumer's wallet by providing
issuers with an active role in each payment by adding an issuer
gateway and moving the creditldebit card authorization function
from the merchant to the issuer. This enables an issuer to
independently choose alternate authentication mechanisms
without changing the acquirer gateway. Linehan 3:66-4:7.
Katis
08. Katis is directed to co-branding an on-line electronic payment
platform, such as an electronic purse or wallet. Katis 1 : 14- 18.
ANALYSIS
Claims 41, 42, 44, and 45 rejected under 35 U.S. C. § 101 as directed to non-
statutory subject matter.
These claims are to methods facilitating online commercial transactions.
Claims 41 and 44 are independent. Claim 41 recites steps including storing,
verifying, and transmitting customer information. Claim 44 recites steps
Appeal 2009-012815
Application 091457,839
including maintaining purchase history, generating an interests profile, and
transmitting the profile to a merchant web site. Both claims therefore store
and transmit data.
The Examiner found that none of the claims referred explicitly to
another of the statutory classes, nor did they transform something physical.
The Examiner found the recitation of transmission to a web site to be
insignificant post solution activity. Answer 6. The Appellant responded that
the web site necessarily includes a machine, and that the web site is
significant because the claims further recite that the web site allows
purchases (claims 41 and 42) or allows personalization (claims 44 and 45).
Reply Br. 14-17.
Here we disagree with the Appellant. The Supreme Court recently held
that claims that explained the basic concept of an activity (hedging) would
allow the Appellant to pre-empt the use of this approach in all fields, and
would effectively grant a monopoly over an abstract idea. Bilski v. Kappos,
130 S.Ct. 3218, 3231 (June 2010). Abstract ideas are not patent eligible. Id.
at 3225.
Claims 41,42,44, and 45 do no more than lay out the concept of storing
and sending data. The claims neither refer to a specific machine by reciting
structural limitations that narrow the web site to something more specific
than a general purpose computer, nor recite any specific operations
performed by the web site that would cause a machine to be the mechanism
to allow purchases or customization. Indeed to simply allow any operation
requires no machine, only the acquiescence of the one controlling the
operation. Absent any specific structural limitations on how the server
Appeal 2009-012815
Application 091457,839
operates upon the data and on acts to allow operations, these claims recite no
more than the abstract concept of sending information and allowing
something as a result. As in Bilski, a patent including these claims would
allow the Appellant to pre-empt the use of this approach in all fields, and
would effectively grant a monopoly over an abstract idea.
Claims 36-39, 41, and 42 rejected under 35 U.S. C. § 103(a) as unpatentable
over Foster.
As to claims 36-39, the Appellant argues Foster has no server and does
not use a log to generate an interests profile and disseminate the interests
profile to the merchant web sites. The Appellant makes similar arguments
regarding claims 41 and 42. Appeal Br. 8-9; Reply Br. 2-4. The Examiner
made no findings as to the presence of a server, or of transmission of an
interests profile to a web site. Ans. 4. The Examiner's response only found
that an interests profile was created, not that it was transmitted. Ans. 6-8.
Foster does not appear to transmit this information. FF 02. As both
independent claims 36 and 41 in this group require such transmission, we
agree with the Appellant that the Examiner failed to present a prima facie
case.
Claims 44, 45, and 67-69 rejected under 35 U.S.C. § 103(a) as unpatentable
over Boesch and Linehan.
Claims 44 and 45 recite that an interest profile that reflects purchases is
generated and transmitted to a merchant web site. Neither the contents nor
the physical source of the profile is specified. The claims only state that the
interest profile "reflects said purchases made by the first user from the
Appeal 2009-012815
Application 091457,839
plurality of online merchants." The Appellant argues that the references fail
to describe this. Appeal Br. 10- 11; Reply Br. 4-7.
Here we agree with the Examiner that Boesch generates and transmits
such a profile. Ans. 4. In Boesch, the profile is the information sent in
making a purchase. FF 04. Since the claims do not limit the contents of the
profile other than reflecting purchases, the credit card information and
customer identity sent to the merchant form a profile that reflects purchase
history by that customer with that credit card.
The Appellant also argue lack of reason to combine Linehan with
Boesch (Appeal Br. 11; Reply Br. 6) but we find that Linehan describes
implementation details for a thin electronic wallet described by Boesch. FF
07.
Claims 67-69 recite sending a cookie that identifies a user and
responding to a request for an object from a retrieved web page with the
name of the user. These claims recite the returned information is for display
within a web page, but this is merely a statement of intended use as the
claims do no recite actually displaying the returned information in the web
page. We take notice of the Appellant's admission that the word "graphic"
in claim 67 is meant as "object." Reply Br. 7-8.
The Examiner initially made no findings as to these claims, which the
Appellant so argued. Appeal Br. 12. The Examiner responded with findings
as to how the art described these claims. Ans. 9-12. The Appellant then
argued that the references fail to describe the claims. Reply Br. 8-10. We
agree with the Examiner that Boesch describes these steps. FF 05-06.
Appeal 2009-012815
Application 091457,839
Claims 46-52 and 60-64 rejected under 35 U.S.C. § 103(a) as unpatentable
over Katis.
Claims 46 and 60 are the independent claims in this group and both
recite providing a reference to a graphic within a merchant site web page
where the graphic is served, not by the merchant site, but by an information
service provider, where the information service provider returns a single
selection action button as a graphic. The Appellant argues Katis does not
describe this.
We agree with the Appellant. The Examiner cites a portion of Katis that
describes the processing of an electronic wallet, but does not describe the
contents of a merchant web page, much less describing a reference to a
graphic stored on an information provider site within the web page. Ans.
12-13.
CONCLUSIONS OF LAW
Rejecting claims 41,42,44, and 45 under 35 U.S.C. 5 101 as directed to
non-statutory subject matter is in not error.
Rejecting claims 36-39,41, and 42 under 35 U.S.C. 5 103(a) as
unpatentable over Foster is in error.
Rejecting claims 44,45, and 67-69 under 35 U.S.C. 5 103(a) as
unpatentable over Boesch and Linehan is not in error.
Rejecting claims 46-52 and 60-64 under 35 U.S.C. 5 103(a) as
unpatentable over Katis is in error.
Appeal 2009-012815
Application 091457,839
DECISION
To summarize, our decision is as follows.
The rejection of claims 41,42,44, and 45 under 35 U.S.C. 5 101 as
directed to non-statutory subject matter is sustained.
The rejection of claims 36-39,41, and 42 under 35 U.S.C. 5 103(a) as
unpatentable over Foster is not sustained.
The rejection of claims 44,45, and 67-69 under 35 U.S.C. 5 103(a) as
unpatentable over Boesch and Linehan is sustained.
The rejection of claims 46-52 and 60-64 under 35 U.S.C. 5 103(a) as
unpatentable over Katis is not sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
AFFIRMED-IN-PART
mev
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