Ex Parte Febonio et al

Patent Trial and Appeal Board

Aug 11, 2016

12486073 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/486,073 06/17/2009
37945 7590 08/15/2016
DUKEW, YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Barbara Febonio
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.
FR920080055US 1 4423
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARBARA FEBONIO and SANDRO PICCININI
Appeal2014-002857
Application 12/486,073
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-19 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2014-002857
Application 12/486,073
THE INVENTION
The Appellants' claimed invention is directed to a method and system
for authorizing an electronic payment (Spec., para. 11 ). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A method performed by a computer for authorizing an
electronic payment request, the method comprising:
[ 1] the computer requesting a first code from a user on
receipt of a payment request made with a payment card
configured with a one or more details of a one or more devices
in the possession of a one or more owners of the payment card;
[2] the computer refusing to make the payment in the event
the first code does not substantially match a predefined second
code;
[3] responsive to the first code substantially matching the
second code, the computer requesting a third code from the one
or more devices with whose details the payment card is
configured;
[ 4] the computer comparing the third code with a
predefined fourth code;
[5] responsive to the third code not substantially matching
the fourth code, the computer refusing to make the payment; and
[ 6] responsive to the third code substantially matching the
fourth code, the computer authorizing the payment.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
O'Connell
Felger
Dickson
Maes
Sheehan
Skowronek
Rados
US 2002/0035539 Al
US 2003/0195848 Al
US 6,736,313 Bl
US 7,003,497 B2
US 2007/0011099Al
US 2009/0112765 Al
US 7,600,676 Bl
2
Mar. 21, 2002
Oct. 16, 2003
May 18, 2004
Feb.21,2006
Jan. 11, 2007
Apr. 30, 2009
Oct. 13, 2009
Appeal2014-002857
Application 12/486,073
r-T""i1 ,.. 11 • • ' • 1 ,.. ,.. •
l ne rouowmg reJecuons are oerore us ror review:
1. Claims 1-5 and 10-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Maes, Dickson, and O'Connell.
2. Claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Maes, Dickson, O'Connell, Sheehan, and Skowronek.
3. Claims 7 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Maes, Dickson, O'Connell, and Sheehan.
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Maes, Dickson, O'Connell, and Rados.
5. Claims 9, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Maes, Dickson, O'Connell, and Pegler.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 1
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose elements of claim limitation [1] (App. Br.
6-11; Reply Br. 2, 3).
In contrast, the Examiner has determined that the cited rejection is
proper and that the cited claim limitations are found in Maes at column 4,
lines 55---67; column 5, lines 1-15; and column 8, lines 1---65 (Ans. 5-7).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-002857
Application 12/486,073
We agree with the Appellants. The Appellants first argue that the
cited prior art fails to disclose the claim limitation for "a payment card
configured with a one or more details of a one or more devices in the
possession of a one or more owners of the payment card" (App. Br. 6-13).
The Examiner has first determined that the cited claim limitation is
nonfunctional descriptive material, but we disagree with this contention.
Here, the claim requires that the method be carried out with a request from a
payment card configured in the manner recited in claim limitation [ 1]
identified above. In the Answer at page 7, the rejection also cites to the
portion of the argued claim limitation as being disclosed by Maes at column
4, lines 55----67; column 5, lines 1--45; and column 8, lines 1----65 under a
broadest reasonable interpretation, but we disagree with this contention.
Here, these citations to Maes fail to disclose the cited claim limitation for "a
payment card configured with a one or more details of a one or more devices
in the possession of a one or more owners of the payment card." Maes at
column 4, lines 55-67 discloses features such as those directed to electronic
transactions, but nothing of the cited limitation for a payment card
specifically configured "with a one or more details of a one or more devices
in the possession of a one or more owners of the payment card." Maes at
col. 5: 1--45 also fails to disclose a card with such claimed details. For
instance, at col. 5:16-22 it is disclosed that the location of the private
mailbox 12 is not disclosed, but rather a separate e-Notary 11 is used. Maes
at col. 8: 1----65 similarly fails to disclose a card with such claimed details.
Maes at col. 8: 1-11 discloses that a consumer may make a purchase and
receive a confirmation code for the transaction. There is no disclosure here,
however, of the credit card being configured with "details of a one or more
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Appeal2014-002857
Application 12/486,073
devices in the possession of a one or more owners of the payment card.''
Rather in contrast, in a second step, Maes at col. 8:9-40 discloses, again,
that the separate e-Notary service is used, which then contacts the consumer.
For these reasons, the rejection of claim 1 and its dependent claims is not
sustained.
Independent claims 10 and 11 contain similar limitations and the
rejection of these claims is not sustained for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.
DECISION
The Examiner's rejection of claims 1-19 is reversed.
REVERSED
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