Ex Parte Jain

Board of Patent Appeals and Interferences

Sep 22, 2010

10190387 (B.P.A.I. Sep. 22, 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.
10/190,387 07/03/2002 Ravi Jain RJAIN01PAT.US 3060
22145 7590 09/22/2010
KLEIN, O'NEILL & SINGH, LLP
18200 VON KARMAN AVENUE
SUITE 725
IRVINE, CA 92612
EXAMINER
ADE, OGER GARCIA
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
09/22/2010 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 RAVI JAIN 8
___________ 9
10
Appeal 2009-013317 11
Application 10/190,387 12
Technology Center 3600 13
___________ 14
15
Before JAMES E. THOMAS, ANTON W. FETTING, and 16
JOSEPH A. FISCHETTI, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL1 19

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 2009-013317
Application 10/190,387

2
STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 2, 2008) and Reply Brief (“Reply Br.,” filed May 6,
2009), and the Examiner’s Answer (“Ans.,” mailed March 10, 2009), and
Final Rejection (“Final Rej.,” mailed February 11, 2008).
Ravi Jain (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a 2
final rejection of claims 1-16 and 26-33, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way to facilitate micro-payments for on-line 6
transactions (Specification 1:¶ 0004). 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 on-line transactions, comprising: 11
[1] registering a user to a micro-payment system; 12
[2] wherein upon successful registration, the user is an 13
authorized user and the authorized user selects a 14
preferred payment provider from among a plurality of 15
payment providers; 16
[3] registering a payment provider to the micro-payment 17
system; 18
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[4] wherein upon registration, the payment provider 1
operates as an intermediary between the authorized user 2
and an authorized merchant; and 3
[5] the payment provider has varying degrees of authority 4
including 5
billing the authorized user for goods, and services and 6
allowing the authorized user to directly register with the 7
payment provider 8
so that the authorized user uses the micro-payment 9
system; 10
[6] registering a merchant system that enables the merchant to 11
conduct business with a plurality of authorized users; 12
[7] wherein upon merchant registration, the merchant is 13
provided with varying degrees of authority, 14
including authority that allows the authorized user 15
to directly set up a micro-payment account through 16
the authorized merchant; 17
[8] providing a unique identifier to the merchant upon purchase 18
of goods and services; 19
[9] wherein the authorized user provides the unique 20
identifier; 21
[10] authenticating the unique authorized user identifier; 22
[11] wherein the merchant, and the micro-payment 23
system authenticate the authorized user; 24
[12] transmitting transaction information to the payment 25
provider for the purchase of goods and services; 26
[13] wherein the micro-payment system transmits the 27
transaction information to the payment provider; 28
[14] generating a bill, from the payment provider, 29
which includes the authorized user's transactions using 30
the micro-payment system and the payment provider's 31
regular services bill; 32
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[15] paying the payment provider for the payment provider's 1
regular services and the authorized transaction; 2
[16] wherein the user pays the payment provider for the 3
regular services bill and the authorized transaction; 4
[17] forwarding individual payments to the micro-payment 5
system and consolidating plural micro-payments from one or 6
plural authorized users; 7
[18] wherein a micro-payment is less than a dollar and 8
the payment provider consolidates the individual 9
payments and forwards the consolidated payments to the 10
micro-payment system; and 11
[19] paying the merchant; 12
[20] wherein the micro-payment system pays the 13
merchant for a consolidated plurality transactions 14
involving a plurality of authorized users. 15
The Examiner relies upon the following prior art: 16
Hansmann US 2001/0016835 A1 Aug. 23, 2001
Braco US 2002/0002536 A1 Jan. 3, 2002
Kahn US 7,127,236 B2 Oct. 24, 2006
Ginter US 7,165,174 B1 Jan. 16, 2007
Claims 1-16 and 26-33 stand rejected under 35 U.S.C. § 103(a) as 17
unpatentable over Hansmann, Khan, Braco, and Ginter. 18
19
20
21
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Application 10/190,387

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ISSUES 1
FACTS PERTINENT TO THE ISSUES 2
The following enumerated Findings of Fact (FF) are believed to be 3
supported by a preponderance of the evidence. 4
Facts Related to Claim Construction 5
01. The disclosure defines a micro-payment as a payment of less 6
than one dollar. Specification 2:14-15. 7
Facts Related to the Prior Art 8
Hansmann 9
02. Hansmann is directed to making payment in a purchasing action 10
performed by means of an electronic communication device. 11
Hansmann ¶ 0001. 12
03. Since each cell phone user has a world-wide unique ID number, 13
Hansmann uses the very sophisticated billing system established 14
by the telecommunication providers to charge purchase payment 15
costs with the monthly telecommunication bill. Hansmann ¶ 16
0018. Such systems authenticate the users. Hansmann ¶ 0020. 17
04. Hansmann uses both a payment provider and a goods or 18
services provider, in addition to the customer for a transaction. 19
Hansmann ¶ 0019. The goods or services provider transmits a 20
digitized bill for the transaction. Hansmann ¶ 0021. 21
22
23
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Khan 1
05. Khan is directed to enabling payment transactions to be effected 2
through a buyer’s personal trusted device without relying on 3
tokens or prepayment credits. Khan 2:44-46. 4
06. Khan addresses the problem of automated micro-payments, 5
where micro payments are amounts less than $10.00. Khan 1:46-6
51. 7
Ginter 8
07. Ginter is directed to providing a secure architecture enabling 9
distributed, trusted electronic commerce administration. Ginter 10
1:35-41. 11
08. Ginter Figs. 20A - 20F show an example financial clearing 12
activity using a local electronic money purse maintained at the 13
consumer's electronic appliance. In this example, a financial 14
clearinghouse may initially provide a consumer with electronic 15
money in the form of electronic cash by transmitting the electronic 16
cash within one or more secure containers. Financial 17
clearinghouse may automatically debit the consumer's bank or 18
other account to obtain these funds, and may do so at the 19
consumer's request. Ginter 49:37-46. 20
Braco 21
09. Braco is directed to an electronic bill presentment and payment 22
system. Braco ¶ 0003. 23
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10. Any financial institution or financial institution sponsored third 1
party may be a participant. Braco consolidates presentment and/or 2
payment. Braco ¶ 0034. 3
ANALYSIS 4
As can be seen, claim 1 is drawn toward using a third party payment 5
provider to consolidate micro-payments. As the Examiner found, Hansmann 6
describes steps [1] – [11] and [14] save for referring to its system as a micro-7
payment system. Khan describes using a system similar to that in Hansmann 8
for micro-payments. FF 06. Braco describes consolidating payments as in 9
steps [17] - [20]. FF 10. Ginter shows a process flow in its Figs. 20A – 20F 10
in which a payment system transmits transaction information to a payment 11
provider as in steps [12] and [13] and the user paying the payment provider 12
as in steps [15] and [16]. FF 08. See Ans. 3-6. 13
The most pervasive argument by the Appellant is that the applied prior 14
art fails to use a micro-payment system. Again, Khan describes using a 15
micro-payment system for financial transaction. The Appellant does not cite 16
any structure or steps other than those in the claim to define a micro-17
payment system. Rather, the Appellant defines a micro-payment as a 18
payment less than $1.00. FF 01. Since Khan defines a micro-payment as a 19
payment less than $10.00 (FF 06), these ranges overlap such that Khan 20
processes payments less than $1.00, meeting the only requirement for a 21
payment to be labeled a micro-payment. 22
This argument arises numerous times as contending that various steps 23
are not shown to be executed by a micro-payment system in the references. 24
As any system that otherwise meets the claim limitations is a micro-payment 25
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system when it processes a payment of less than $1.00, these contentions are 1
resolved by again finding that Khan describes making such payments in a 2
financial payment system. 3
The Appellant contends that steps [1] – [7] are not described by 4
Hansmann. Appeal Br. 4-6. Hansmann describes bringing a user, a 5
payment provider and a merchant system together to execute a transaction. 6
FF 04. The Appellant contends these parties are not registered. 7
But the claim does not narrow the manner of registration. Clearly any 8
party allowed to enter data into a transaction in a system is in registration 9
and authorized with that system, i.e. that party is recognized by the system 10
and the transactions are allowed in. The authority described in limitations 11
[5] and [7] are not steps and therefore are not part of the claim 1 process. To 12
the extent these limitations modify the parties involved, these authorities are 13
only those conventionally provided in credit processing, such as billing the 14
customer and allowing a customer to independently set up a credit account. 15
Authority to allow a customer to directly set up a micro-payment account 16
through the merchant is similar to conventional merchant customer accounts 17
set up. Again, the adjective “micro” does not structurally alter the account. 18
The Appellant also contends that the user does not select a preferred 19
payment provider from among a plurality of payment providers as in 20
limitation [1]. Appeal Br. 7-8. The Examiner found that Braco described 21
that any financial institution or financial institution sponsored third party 22
may be a payment party participant. FF 10. This is clearly the case, as the 23
customer may select from any of his or her credit instruments to pay for a 24
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transaction, where each such instrument is generally from a different 1
payment provider. One has only to open one’s wallet to see this vividly. 2
The Appellant also contends that Hansmann relies on a cell phone 3
identifier rather than a user identifier as recited in limitation [8]. Appeal Br. 4
9. As the claim imposes no particular limitation on the nature of the user 5
identifier, the fact that Hansmann recognizes a customer via a cell phone 6
identifier still describes the claim limitation. 7
The Appellant also contends that sending a bill and paying the payment 8
provider are not described. Appeal Br. 9-10. But these are conventional 9
practices with any third party payment provider, as anyone with a credit card 10
account would know. 11
The Appellant also contends that Braco only consolidates for the 12
presentment and/or payment of bills. Limitations [17] – [20] refer to paying 13
for a consolidated plurality of transactions involving a plurality of users. 14
Clearly the payment provider is not executing a separate wire transfer for 15
every customer. One of ordinary skill in the financial transaction arts would 16
know that conventional payment clearing practice was to add up all the net 17
transactions between each pair of entities and make a consolidated transfer. 18
An accounting is provided so each party can disaggregate the consolidated 19
payment back to individual accounts. The claim makes no further limitation 20
as to the manner of the consolidation, and such grossing up clearly reads on 21
this limitation. 22
The Appellant relies on the arguments in support of claim 1 for the 23
remaining claims. 24
Appeal 2009-013317
Application 10/190,387

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CONCLUSIONS OF LAW 1
Rejecting claims 1-16 and 26-33 under 35 U.S.C. § 103(a) as 2
unpatentable over Hansmann, Khan, Braco, and Ginter is not in error. 3
DECISION 4
The rejection of claims 1-16 and 26-33 under 35 U.S.C. § 103(a) as 5
unpatentable over Hansmann, Khan, Braco, and Ginter is sustained. 6
No time period for taking any subsequent action in connection with this 7
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 8
§ 1.136(a)(1)(iv) (2007). 9
10
AFFIRMED 11
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mev 16
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Address 18
KLEIN, O'NEILL & SINGH, LLP 19
18200 VON KARMAN AVENUE, SUITE 725 20
IRVINE, CA 92612 21