Ex Parte Kemper et al

Patent Trial and Appeal Board

Aug 31, 2016

12130143 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/130,143 05/30/2008 Lynn KEMPER
66945 7590 09/02/2016
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
l 6222U-0094 l 3US 3400
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
EDurrell@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LYNN KEMPER, AKSHEY SHAWN VU, and
ROBIN O'CONNELL
Appeal2014-007396 1
Application 12/130,143
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 3-18 and 20-292. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify Visa U.S.A. Inc. as real party in interest. Appeal Br. 2.
2 Claim 19 is withdrawn.
Appeal2014-007396
Application 12/130,143
Appellants' invention generally concerns a financial transaction
processing system that authorizes or denies credits or debits related to
transactions. (Spec. para. 1 ).
Claim 3 is illustrative:
3. A method comprising:
requesting an authorization of a transaction conducted by
a user, the request for authorization including details of the
transaction, wherein authorization includes receiving approval
from an authorization subprocessor, wherein the authorization
subprocessor compares a plurality of user selected authorization
parameters and constraints with the details of the transaction
during the transaction and approves or denies the transaction
based on the comparison, the plurality of user selected
authorization parameters and constraints selected by the user
through an interface, wherein if the transaction details exceed the
user selected authorization parameters and constraints, the
transaction is always denied, wherein subsequent to an approval
by the authorization subprocessor, the authorization request is
sent to an authorization processor, the authorization processor
approves or denies the transaction based on a comparison of the
details of the transaction and issuer specified criteria, wherein the
authorization subprocessor further compares the plurality of user
selected authorization parameters and constraints with the details
of the transaction and sends notifications to the user based on the
comparison; and
receiving an authorization response, the response
indicating if the transaction is approved or denied.
Appellants appeal the following rejection:
Claims 3-18 and 20-29 are rejected under 35 U.S.C. § 102(e) as
anticipated by Stevanovski (US 7,653,597 Bl, iss. Jan. 26, 2010).
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Appeal2014-007396
Application 12/130,143
ANALYSIS
Claims 3-18. 20. 23-27. and 29
Appellants argue claims 3-18, 20, 23-27, and 29 together as a group,
so we select claim 3 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants' argument that Stevanovski sends
notifications for all transactions, and, thus, does not base the notification on
the recited comparison of parameters and constraints with the transaction
details. (Appeal Br. 5-6; see also Reply Br. 2-3).
Stevanovski discloses the recited comparing, in that:
the approval program 50 queries the database customer files 28
to verify the customer's identity and that the purchase is within
the parameters established. This includes the customer's credit
limit and any predefined customer selected purchase parameters
33 such as time of day, merchant type, or type of purchase of
goods. If the purchase is within the parameters established,
approval is given and the transaction amount is posted to the
merchant account and the customer's account.
(Stevanovski, col. 4, 11. 28--'32). Stevanovski further discloses a notification
system "of any account activity, such as a payment or purchase."
(Stevanovski, col. 39--43). Thus, notifications are based on the same
comparison as for determining whether a transaction is approved or denied,
because notifications are sent when a transaction is approved, but a denial
would mean no transaction takes place, and, thus, no notification is sent.
Because Stevanovski discloses the disputed notification claim
language, we sustain the rejection of claims 3-18, 20, 23-27, and 29.
Claims 21 and 22
Dependent claim 21 recites "wherein the user selected authorization
parameters and constraints include denying cash advance transactions."
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Appeal2014-007396
Application 12/130,143
Dependent claim 22 recites "wherein the user selected authorization
parameters and constraints include denying transactions that exceed a
specified number of transactions per day."
We are persuaded by Appellants' arguments that Stevanovski fails to
disclose the specific parameters as recited for use in the claimed comparison,
because Stevanovski does not disclose any language directed to cash
advance transactions or a limited number of transactions per day. (Appeal
Br. 6-7; see also Reply Br. 3-5).
The Examiner argues that the claimed parameters "can be" one of the
ones included after the phrase "such as," even though neither is actually
disclosed. (Answer 6-7). The Examiner is, thus, speculating what may be
possible, rather than what is disclosed. However, a claim is anticipated only
if each and every element as set forth in the claim is found, either expressly
or inherently described, in a single prior art reference. Verdegaal Bros. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). There is
admittedly no disclosure of the recited parameters for comparison, and no
attempt by the Examiner to show evidence of inherency.
Therefore, the Examiner has failed to establish anticipation for the
limitations of claims 21 and 22. As a result, we do not sustain the rejection
of claims 21 and 22.
Claim 28
Dependent claim 28 recites "wherein the notifications are sent only if
transactions are denied."
We are persuaded by Appellants' arguments that Stevanovski fails to
disclose sending notifications only if transactions are denied. (Appeal Br. 8;
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Appeal2014-007396
Application 12/130,143
see also Reply Br. 6). Our interpretation of Stevanovski, we advanced
above at claim 3, is that notifications are sent only if a transaction is
successful. Therefore, because Stevanovski does not, at the cited locations,
disclose notifications for transaction denials, the recited claim language is
not disclosed. In response, the Examiner argues that because Stevanovski
lets a customer set parameters, the options the customer sets "could include"
limiting notifications only to denials. (Answer 7). This, however, is mere
speculation, because it neither shows evidence of the limitation disclosed in
Stevanovski, nor inherency.
Therefore, the Examiner has failed to establish anticipation for the
limitations of claim 28. As a result, we do not sustain the rejection of claim
28.
DECISION
We affirm the rejection under 35 U.S.C. § 102(e) of claims 3-18, 20,
23-27, and 29.
We reverse the rejection under 35 U.S.C. § 102(e) of claims 21, 22,
and 28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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