Ex Parte Liu et al

Board of Patent Appeals and Interferences

Mar 12, 2012

11777576 (B.P.A.I. Mar. 12, 2012)

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.
11/777,576 07/13/2007 Charles Liu 9314-180 8823
54414 7590 03/13/2012
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
03/13/2012 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 CHARLES LIU, 8
DANIEL P. HOMILLER, 9
NADI FINDIKLI, 10
and WILLIAM O. CAMP JR. 11
___________ 12
13
Appeal 2010-008998 14
Application 11/777,576 15
Technology Center 3600 16
___________ 17
18
19
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 20
JOSEPH A. FISCHETTI, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
24
Appeal 2010-008998
Application 11/777,576
2

STATEMENT OF THE CASE1 1
Charles Liu, Daniel P. Homiller, Nadi Findikli, and William O. Camp Jr. 2
(Appellants) seek review under 35 U.S.C. § 134 (2002) of a final rejection of 3
claims 1-16, 19-28, and 31-37, which along with claims 17, 18, 29, 30, 38, 4
and 39, withdrawn from consideration, are the only claims pending in the 5
application on appeal. We have jurisdiction over the appeal pursuant to 6
35 U.S.C. § 6(b) (2002). 7
The Appellants invented a way of performing a transaction by providing 8
purchaser information for communication to a certification facility, receiving 9
identification information associated with the purchaser from the 10
certification facility, and completing the transaction responsive to 11
authentication of the user of the electronic device as being the purchaser 12
based on the received identification information (Specification 1:20 – 2:4). 13
An understanding of the invention can be derived from a reading of 14
exemplary claim 1, which is reproduced below [bracketed matter and some 15
paragraphing added]. 16
1. A method of operating an electronic device to perform a 17
transaction, comprising: 18
[1] providing purchaser information for communication to a 19
certification facility; 20
[2] receiving identification information associated with the 21
purchaser from the certification facility; 22
and 23
[3] completing the transaction 24

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 23, 2009) and Reply Brief (“Reply Br.,” filed February 9,
2010), and the Examiner’s Answer (“Ans.,” mailed December 11, 2009).
Appeal 2010-008998
Application 11/777,576
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responsive to authentication of the user of the electronic 1
device as being the purchaser 2
based on the received identification information. 3
The Examiner relies upon the following prior art: 4
Kinoshita US 2003/0055792 A1 Mar. 20, 2003
Atsmon US 2004/0031856 A1 Feb. 19, 2004
Labrou US 2007/0022058 A1 Jan. 25, 2007
Theodossiou US 2007/0187515 A1 Aug. 16, 2007
Claims 1-16, 19-28, and 31-37 stand rejected under 35 U.S.C. § 101 as 5
directed to non-statutory subject matter.2 6
Claims 1, 5, 10-12, 14, 16, 19, 25,26, 31, and 37 stand rejected under 35 7
U.S.C. § 102(e) as anticipated by Kinoshita.3 8
Claims 2-4, 13, 15, 20-22, 27, 28, and 32-34 stand rejected under 35 9
U.S.C. § 103(a) as unpatentable over Kinoshita. 10
Claims 6-9, 23, 24, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as 11
unpatentable over Kinoshita and Atsmon. 12
ISSUES 13
The issue of statutory subject matter turn primarily on whether the steps 14
recite more than the concepts of sending and receiving data and transacting. 15

2 The statutory basis for this rejection is not explicitly recited in the Answer,
but it is at Final Rejection 6 and the analysis for this rejection is set forth at
Answer 5-6. Appellants respond to the rejection at Appeal Brief 5-6. Thus,
the rejection is taken as being still in place.
3 The statement of the rejection at Answer 6 improperly also cites claims 17,
18, 29, 30, 38, and 39, which are withdrawn from consideration. This is
taken as a typographic error.
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The issues of anticipation and obviousness turn on whether authentication is 1
performed at multiple places, including places within the scope of the 2
claims. 3
FACTS PERTINENT TO THE ISSUES 4
The following enumerated Findings of Fact (FF) are believed to be 5
supported by a preponderance of the evidence. 6
Facts Related to the Prior Art - Kinoshita 7
01. Kinoshita is directed to a user able to pay by credit card using a 8
terminal without handing a credit card to a clerk, thereby 9
preventing a third-party including a clerk from using the card 10
improperly. The payment device identifies a user to which an 11
authentication result is transmitted. Kinoshita ¶ 0016. 12
02. A portable device sends the user ID to a Mobile terminal, from 13
where it is transferred to a POS terminal 11. Kinoshita ¶ 0167. 14
03. Upon receipt of a user ID, the POS terminal sends to the payment 15
gateway transaction information, the user ID, and a request for 16
transaction number including information to identify the shop 17
(merchant), which is inputted by a clerk. Upon receipt of the 18
request sent from POS terminal, the payment gateway stores the 19
transaction information included in the request into a transaction 20
table and adds a transaction number to the transaction information 21
to send back to the POS terminal. Kinoshita ¶ 0168. 22
04. The payment gateway sends an e-mail including commands for 23
direction of payment to the portable device indicated by the user 24
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ID included in the request, which then executes an application for 1
payment according to the commands included in the e-mail. 2
Kinoshita ¶ 0169. 3
05. The authentication result and the device ID are transmitted to the 4
payment gateway to make a request for proceeding payment 5
processing. Therefore, the user need not do complicated 6
procedures for payment, for example inputting information on the 7
transaction which is often bothersome for a user. A request for 8
proceeding payment processing is sent to the payment gateway 9
automatically after completion of the authenticity. Kinoshita ¶ 10
0170. 11
06. Upon receipt of the authentication result and the request including 12
the device ID both sent from the portable device, the payment 13
gateway confirms authenticity of the user through the result. 14
Next, the payment gateway authenticates the portable device by 15
checking the device ID against a device ID stored correspondingly 16
to the user ID in a user table. If the two IDs coincide, authenticity 17
of the portable device is established. Kinoshita ¶ 0171. 18
07. If the authenticity of the portable device is established, the 19
payment gateway sends to the portable device transaction details 20
including name of goods, quantity, and price and information on 21
possible payment methods. Upon receipt of a payment method 22
and a confirmation from the portable device, the payment gateway 23
retrieves transaction information from the transaction table and a 24
credit card number and its expiration date from a user table. Next, 25
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the payment gateway sends to a credit server a request for credit 1
including information on the merchant and the payment method 2
along with the retrieved transaction information. Kinoshita ¶ 3
0172. 4
08. Upon receipt of the request, the credit server checks the credit 5
card number and its expiration date, to determine whether to 6
conduct the payment processing. If the credit card number and the 7
expiration date are proper, the credit server carries out payment 8
processing and sends a completion report to the payment gateway. 9
Kinoshita ¶ 0173. 10
09. Upon receipt of the user ID, a transmitting/receiving unit sends a 11
confirmation e-mail to the portable device corresponding to the 12
user ID. If the transmitting/receiving unit does not receive a reply 13
e-mail or both passwords do not agree, the transaction is canceled. 14
Kinoshita ¶ 0270. 15
ANALYSIS 16
Claims 1-16, 19-28, and 31-37 rejected under 35 U.S.C. § 101 as directed to 17
non-statutory subject matter. 18
The Appellants argue claims 1-16 as a group, claims 19-28 as a group, 19
and claims 31-37 as a group. Accordingly, we select claims 1, 19, and 31 as 20
representative of the groups. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 21
These claims are to methods of operating a device, although the steps are 22
not necessarily associated with such operation. Claims 1, 19, and 31 are 23
independent. Claim 1 recites steps including providing and receiving 24
information and completing a transaction. Claim 19 recites steps of 25
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receiving information, authenticating a customer, and completing a 1
transaction. Claim 31 recites steps of receiving and sending information. 2
The Examiner found that claims 1, 19, and 31 perform no physical 3
transformation and do not recite how a specific machine is used, and 4
therefore recite no more than an abstract idea. The Appellants contend that 5
the claims are connected to physical devices. App. Br. 5-6. 6
Here we disagree with the Appellants. The Supreme Court recently held 7
that claims that explained the basic concept of an activity (hedging) would 8
allow the Appellant to pre-empt the use of this approach in all fields, and 9
would effectively grant a monopoly over an abstract idea. Bilski v. Kappos, 10
130 S.Ct. 3218, 3231 (June 2010). Abstract ideas are not patent eligible. Id. 11
at 3225. 12
Claims 1, 19, and 31 do no more than lay out the concept of receiving 13
and sending information and completing a transaction. The claims neither 14
refer to a specific machine by reciting structural limitations to any apparatus, 15
nor recite any specific operations that would cause a machine to be the 16
mechanism to receive, authenticate, or send information, or to complete a 17
transaction. Indeed to receive, send, authenticate, and transact requires no 18
machine, only the conscious thought of the one controlling the operation. 19
Absent any specific structural limitations on how one acts to perform these 20
steps, these claims recite no more than the abstract concept of receiving and 21
sending information for a transaction. As in Bilski, a patent including these 22
claims would allow the Appellants to pre-empt the use of this approach in all 23
fields, and would effectively grant a monopoly over an abstract idea. 24
Appeal 2010-008998
Application 11/777,576
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Claims 1, 5, 10-12, 14, 16, 19, 25,26, 31, and 37 rejected under 35 U.S.C. § 1
102(e) as anticipated by Kinoshita. 2
Claims 2-4, 13, 15, 20-22, 27, 28, and 32-34 rejected under 35 U.S.C. § 3
103(a) as unpatentable over Kinoshita. 4
Claims 6-9, 23, 24, 35, and 36 rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Kinoshita and Atsmon. 6
We are unpersuaded by Appellants’ argument that the payment gateway 7
15 does not send any identification information associated with the 8
purchaser to the portable device 14 that is used to authenticate the user of the 9
device as the purchaser. Appellants argue that instead, the user is 10
authenticated at the portable device 14 in Step 1 of FIG. 11, which involves 11
the user entering a USERID and a password. App. Br. 8-10. 12
Only claims 1 and19 recite authentication. Claim 31 does not recite 13
authentication. As the Examiner found at Answer 12, Kinishita sends an 14
email that is also used for authentication. FF 01-09. The transaction is 15
completed responsive to authentication (claim 1) and the customer is 16
authenticated as being the purchaser based on the received identification 17
(claim 19) by this email. 18
Appellants respond that the email sent from the payment gateway 15A to 19
the portable device 14A as described in paragraph 270 of Kinoshita is not 20
identification information associated with a purchaser, but simply a 21
mechanism for the purchaser to enter a password associated with a user ID, 22
which can then be compared at the payment gateway to authenticate the 23
identity of the user. Reply Br. 4. 24
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This very argument admits that the email is associated with the user 1
identity. Further, this authentication of the device itself further authenticates 2
the user, and the payment gateway authenticates the user through the result. 3
FF 06. 4
We are also unpersuaded by Appellants’ argument that Kinoshita fails to 5
describe presenting an image as in claims 5 and 25. App. Br. 10. The 6
Examiner found that the communications in Kinoshita were expressed as 7
images on a screen. Given the claims do not narrow the nature of the recited 8
image, the claims encompass such an image within their scope. The 9
remaining claims are argued on the basis of the independent claims. 10
CONCLUSIONS OF LAW 11
The rejection of claims 1-16, 19-28, and 31-37 under 35 U.S.C. § 101 as 12
directed to non-statutory subject matter is proper. 13
The rejection of claims 1, 5, 10-12, 14, 16, 19, 25,26, 31, and 37 under 14
35 U.S.C. § 102(e) as anticipated by Kinoshita is proper. 15
The rejection of claims 2-4, 13, 15, 20-22, 27, 28, and 32-34 under 35 16
U.S.C. § 103(a) as unpatentable over Kinoshita is proper. 17
The rejection of claims 6-9, 23, 24, 35, and 36 under 35 U.S.C. § 103(a) 18
as unpatentable over Kinoshita and Atsmon is proper. 19
DECISION 20
The rejection of claims 1-16, 19-28, and 31-37 is affirmed. 21
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED 5
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mls 10