Ex Parte Hansen et al

Patent Trial and Appeal Board

Feb 26, 2014

11497813 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KURT L. HANSEN, THOMAS B. SAYOR,
SHARON K. VIALPANDO, and KENNETH ALGIENE
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Appeal 2011-012630
Application 11/497,813
Technology Center 3600
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Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012630
Application 11/497,813

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 48-70, 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.

THE INVENTION
The Appellants’ claimed invention is directed to systems and methods
for accepting payments for goods and services (Spec. 2, ¶ [0008]). Claim
48, reproduced below, is representative of the subject matter on appeal.
48. A computer implemented method for staging a
transaction, wherein payments are accepted from a consumer
for a good or service provided by a merchant, where the goods
or services are ordered on behalf of a consumer by a third party,
the method comprising:
a payment service provider receiving, in response to
transactions in which goods or services are ordered by one or
more third parties rather than the consumer, transaction requests
from the merchant, the transaction requests comprising a set of
transaction identifiers, the set of identifiers associated with
consumer purchases;
storing the transaction requests in a consumer database
accessible by the payment service provider;
receiving a payment at the payment service provider
from the consumer, including receiving a transaction identifier
from the consumer that corresponds to the transaction request;
using a computer to associate the payment with the
transaction request and transaction identifier and to establish a
payment account with the payment service provider that reflects
the payment; and
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Application 11/497,813

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sending at least a portion of the payment in the payment
account to the merchant.

THE REJECTIONS
The following rejections are before us for review1:
1. Claims 48-54, 56-64, 66, 69, and 70 are rejected under 35
U.S.C. § 103(a) as unpatentable over Moreau (US 2002/0069166 A1,
published June 6, 2002) and Hirano (US 2002/0004909 A1, published Jan.
10, 2002).
2. Claims 55, 65, 67, and 68 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Moreau, Hirano, and Chenevich (US 2002/0111886
A1, published Aug. 15, 2002).

FINDINGS OF FACT
We find the facts in the Analysis section below are supported at least
by a preponderance of the evidence2.

ANALYSIS
Claims 48-63
The Appellants argue that the rejection of claim 48 is improper,
because the prior art does not disclose “a payment service provider
receiving, in response to transactions in which goods or services are ordered

1 The Examiner’s Answer indicates that the rejection of claims 48-63 made
under 35 U.S.C. § 112, second paragraph, has been withdrawn (Ans. 12).
2 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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Application 11/497,813

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by one or more third parties rather than the consumer, transaction requests
from the merchant” as recited in claim 48 (emphasis added) (App. Br. 7, see
also Reply Br. 1-2).
In contrast, the Examiner has determined that the cited claim
limitation is found in Moreau at paragraphs [0009], [0011], [0033-36],
[0064], [0071], [0091] and Hirano at paragraph [0085] (Ans. 5, 13).
We agree with the Appellants. Moreau at the cited portions does not
disclose the goods or services ordered by a third party. For example,
Moreau at paragraph [0035] discloses that the customer 310 orders the
product or service from the merchant 300. While Hirano does mention a
third party at paragraph [0085], the order is placed by an ID holder. While
Hirano at paragraph [0085] does mention “ordering information,” this after
the product has been ordered to obtain and deliver the product. Regardless,
Hirano at paragraph [0085] make no mention of the payment service
provider as claimed in the claim limitation. For these reasons, the rejection
of claim 48 and its dependent claims 49-63 is not sustained.

Claims 64-68
The Appellants argue that the rejection of claim 64 is improper
because the prior art does not disclose elements of the claim limitation for
“providing a confirmation to the consumer from the payment service
provider after receiving the payment at the service provider from the
consumer, the confirmation reflecting the good or service being provided by
the merchant” as recited in the claim (emphasis added) (App. Br. 9, see also
Reply Br. 2-3).
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In contrast, the Examiner has determined that the cited claim
limitation is found in Moreau at paragraphs [0009], [0064], [0099], [0104],
and [0117] (Ans. 6).
We agree with the Appellants. Moreau at the above cited portions
does not disclose that a confirmation is given to the consumer from the
payment service provider as required. For example, in Moreau at paragraph
[0099], it is the merchant that displays the transaction code, not a payment
service provider. In Moreau at paragraph [0104], the Payment Batch File is
transmitted to the merchants, not the consumer. For these reasons, the
rejection of claim 64 and its dependent claims 65 and 66 is not sustained.
Claim 67 contains a similar limitation and the rejection of this claim, and its
dependent claim 68 is not sustained for the same reasons given above.

Claims 69 and 70
The Appellants argue that the rejection of claim 69 is improper
because the prior art does not disclose:
a transaction identifier having “first and second portions,
wherein the first portion is associated with and is capable of
identifying the consumer and the second portion is associated
with a specific transaction,” in conjunction with “separately
accessing the consumer database with the first portion of the
transaction identifier only and apart from using the computer to
associate a payment with the transaction request, so data
relating to the consumer may be accessed in the consumer
database using the first portion of the transaction identifier,” as
recited in claim 69.
(App. Br. 10).
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Application 11/497,813

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In contrast, the Examiner has determined that the cited claim
limitations are found in Moreau at paragraphs [0072], [0086], [0089],
[0115], and [0119] (Ans. 6, 15).
We agree with the Appellants. Here, while Moreau does disclose, for
instance at paragraph [0086], the use of customer ID and an order ID, it is
not specifically disclosed that they are broken into two separate portions as
claimed, or that only that the database may be accessed using only the
customer ID. While Moreau at paragraph [0115] does disclose the use of a
“second code,” this code has not been shown to be part of the “Transaction
Code,” but rather associated with it. Here, none of the cited portions
disclose separately accessing the consumer database with the first portion of
the transaction identifier only. For these above reasons, the rejection of
claim 69 and its dependent claim 70 is not sustained.

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 48-70 is reversed.

REVERSED
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