09851553 (B.P.A.I. Sep. 23, 2010)

Ex Parte Chang et al

Board of Patent Appeals and InterferencesSep 23, 2010

09851553 (B.P.A.I. Sep. 23, 2010)

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. 09/851,553 05/08/2001 Jerry Shaw-Yau Chang PA1640US 4034 22830 7590 09/24/2010 CARR & FERRELL LLP 2200 GENG ROAD PALO ALTO, CA 94303 EXAMINER APPLE, KIRSTEN SACHWITZ ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 09/24/2010 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 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte JERRY SHAW-YAU CHANG, 8 MATTHEW CHIANG, and 9 DAVID HOLMES-KINSELLA 10 ___________ 11 12 Appeal 2009-009482 13 Application 09/851,553 14 Technology Center 3600 15 ___________ 16 17 Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 18 THU A. DANG, Administrative Patent Judges. 19 FETTING, Administrative Patent Judge. 20 DECISION ON APPEAL1 21 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 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 2009-009482 Application 09/851,553 2 STATEMENT OF THE CASE2 1 2 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed March 6, 2008) and the Examiner’s Answer (“Ans.,” mailed June 9, 2008). Jerry Shaw-Yau Chang, Matthew Chiang, and David Holmes-Kinsella 2 (Appellants) seek review under 35 U.S.C. § 134 (2002) of a final rejection of 3 claims 1-12, the only claims pending in the application on appeal. We have 4 jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5 The Appellants invented a method of electronic transaction settlement 6 (Specification 1:¶ 0001). 7 An understanding of the invention can be derived from a reading of 8 exemplary claim 1, which is reproduced below [bracketed matter and some 9 paragraphing added]. 10 1. A method for settling an electronic transaction, comprising 11 the steps of: 12 [1] a customer providing a merchant with a customer identifier; 13 [2] the merchant sending the customer identifier and a 14 transaction amount to a settlement house; 15 [3] the settlement house contacting the customer; 16 [4] the customer selecting a payment method and transmitting 17 the selected payment method to the settlement house; 18 Appeal 2009-009482 Application 09/851,553 3 [5] the settlement house sending the transaction amount and 1 customer identifier to a financial service provider associated 2 with the payment method; 3 [6] if the electronic transaction is approved by the financial 4 service provider, sending an approval to the settlement house; 5 [7] the settlement house sending the approval to the customer; 6 [8] the customer approving the transaction amount; and 7 [9] the settlement house finalizing the electronic transaction 8 with the financial service provider and the merchant. 9 The Examiner relies upon the following prior art: 10 Hultgren US 6,868,391 B1 Mar. 15, 2005 Claims 1-8 and 10-11 stand rejected under 35 U.S.C. § 102(e) as 11 anticipated by Hultgren. 12 Claims 9 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable 13 over Hultgren and Official Notice. 14 15 ISSUES 16 The issues of novelty and non-obviousness turn on whether Hultgren 17 describes the customer selecting a payment method and transmitting the 18 selected payment method to the settlement house. 19 20 FACTS PERTINENT TO THE ISSUES 21 The following enumerated Findings of Fact (FF) are believed to be 22 supported by a preponderance of the evidence. 23 Appeal 2009-009482 Application 09/851,553 4 Facts Related to the Prior Art 1 Hultgren 2 01. Hultgren is directed to a tele/datacommunications network that 3 has a service node (TSN) which facilitates payment/transfer from 4 a customer account of a customer financial institution to a 5 merchant account of a merchant financial institution. The TSN 6 acquires a merchant identifier and transaction amount from a 7 customer mobile station. The TSN sends a transaction verification 8 request message to both the customer mobile station and the 9 merchant terminal. Upon receipt of transaction verification, the 10 TSN requests transfer of the transaction amount from the customer 11 account to the merchant account. Hultgren 1:55-64. 12 02. Hultgren provides its method of payment so that having 13 physical credit cards or checks are unnecessary. Hultgren 1:21-14 52. 15 03. The SIM (subscriber identification mobile) card in the customer 16 mobile station can also serve as a credit card, in which case 17 payment can be debited to the customer's credit card account or 18 telephone bill. In this regard, the SIM card has the customer's 19 account number stored therein, which account number can be 20 automatically communicated by the customer mobile station unit 21 to the telepay TSN. Hultgren 12:66 -13:6. 22 Appeal 2009-009482 Application 09/851,553 5 ANALYSIS 1 Claims 1-8 and 10-11 rejected under 35 U.S.C. § 102(e) as anticipated by 2 Hultgren. 3 This is an anticipation rejection. Limitation [4] requires the customer 4 selecting a payment method and transmitting the selected payment method 5 to the settlement house. The Examiner admitted that “[t]he examiner has 6 already agreed that she has not directly found this teaching in Hultgren and 7 uses Official Notice to teach ‘selecting a payment method.’” Indeed, 8 Hultgren simply uses the credit card identified in the user’s telephone 9 account. FF 03. Thus, the Examiner has admitted Hultgren fails to 10 anticipate the claims. 11 Claims 9 and 12 rejected under 35 U.S.C. § 103(a) as unpatentable over 12 Hultgren and Official Notice. 13 Claim 9 further requires a handheld computing device. It is undisputed 14 that Hultgren describes this additional limitation, but claim 9 depends from 15 claim 1 via claim 7. Claim 12 further limits the payment selection limitation 16 from claim 1. 17 These claims are rejected over obviousness, raising the issue of whether 18 the Examiner’s official notice with the above claims is sufficient to present a 19 prima facie case, even before examining the additional limitations in these 20 dependent claims. Again, Hultgren specifically describes the ease of 21 programming by having a single payment method pre-identified, and more 22 critically, is designed so the customer does not have to hold any credit cards. 23 FF 02. Indeed, were the customer holding credit cards, the customer would 24 Appeal 2009-009482 Application 09/851,553 6 not need Hulbert’s device, but would simply hand over the credit card to the 1 merchant, or type its number into the web ordering system. 2 Absent some evidence for why one would change Hulbert’s 3 programming with its taught advantages of simplicity, and how one would 4 make such a selection when holding no credit cards, the Examiner’s official 5 notice that customers often select different forms of payment fails to present 6 a prima facie case. 7 CONCLUSIONS OF LAW 8 Rejecting claims 1-8 and 10-11 under 35 U.S.C. § 102(e) as anticipated 9 by Hultgren is in error. 10 Rejecting claims 9 and 12 under 35 U.S.C. § 103(a) as unpatentable over 11 Hultgren and Official Notice is in error. 12 DECISION 13 To summarize, our decision is as follows. 14 • The rejection of claims 1-8 and 10-11 under 35 U.S.C. § 102(e) as 15 anticipated by Hultgren is not sustained. 16 • The rejection of claims 9 and 12 under 35 U.S.C. § 103(a) as 17 unpatentable over Hultgren and Official Notice is not sustained. 18 19 REVERSED 20 21 22 23 mev 24 Appeal 2009-009482 Application 09/851,553 7 1 Address 2 CARR & FERRELL LLP 3 2200 GENG ROAD 4 PALO ALTO CA 94303 5