Ex Parte Mascavage et al

Board of Patent Appeals and Interferences

Apr 29, 2010

09991379 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte JOHN JOSEPH MASCAVAGE, III, MARGARET MORGAN 8
WEICHERT, and ROBERT EDWIN DRAVENSTOTT 9
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11
Appeal 2009-006562 12
Application 09/991,379 13
Technology Center 3600 14
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Decided: April 30, 2010 17
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 21
MOHANTY, Administrative Patent Judges. 22
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CRAWFORD, Administrative Patent Judge. 24
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26
DECISION ON APPEAL27
Appeal 2009-006562
Application 09/991,379

2
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellants invented systems and methods for authorizing an online 4
purchase between a customer and a vendor (Abstr.). 5
Claim 1 under appeal is further illustrative of the claimed invention as 6
follows: 7
1. A method for authorizing an online 8
purchase between a customer and a vendor site, the 9
method comprising steps of: 10
at a funds transaction server, receiving 11
transaction information from the vendor site, 12
wherein the transaction information comprises a 13
transaction amount; 14
opening a pop-up window for the customer; 15
from the funds transfer sever, interacting 16
with the pop-up window to present a transaction 17
amount in the pop-up window and receiving 18
customer assent to the transaction amount; 19
receiving authorization from the customer of 20
a debit for the transaction amount, wherein the 21
debit corresponds to the online purchase; and 22
notifying the vendor site of authorization. 23
The prior art relied upon by the Examiner in rejecting the claims on 24
appeal is: 25
Daniels US 5,758,126 May 26, 1998 26
Stein US 5,826,241 Oct. 20, 1998 27
Wilf US 5,899,980 May 4, 1999 28
Kolling US 5,920,847 Jul. 6, 19991 29

1While Kolling is not listed in the Evidence Relied Upon section on pages 2-
3 of the Examiner’s Answer, Kolling has been cited in rejecting claims 8 and
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Application 09/991,379

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Matyas US 6,102,287 Aug. 15, 2000 1
Paltenghe US 2002/0004783 A1 Jan. 10, 2002 2
Applicants’ Admitted Prior Art (hereinafter “AAPA”). 3
The Examiner rejected claims 1-7, 9-15, and 17-20 under 35 U.S.C. § 4
103(a) as being unpatentable over Wilf in view of Stein, Paltenghe, Daniels, 5
Matyas, and AAPA. 6
The Examiner rejected claims 8 and 16 under 35 U.S.C. § 103(a) as 7
being unpatentable over Wilf, Stein, Fung, AAPA, and Kolling. 8
We AFFIRM-IN-PART. 9
10
ISSUES 11
Did the Examiner err in asserting that a combination of Wilf, Stein, 12
Paltenghe, Daniels, Matyas, and AAPA renders obvious the recitation of 13
“from the funds transfer server,” “interacting with the pop-up window to 14
present a transaction amount in the pop-up window,” and “receiving 15
customer assent to the transaction amount,” as recited in independent claims 16
1, 10, and 17? 17
Did the Examiner err in combining Wilf, Stein, Paltenghe, Daniels, 18
Matyas, and AAPA, because the Examiner failed to identify the level of skill 19
in the relevant art? 20
Did the Examiner err in combining Wilf, Stein, Paltenghe, Daniels, 21
Matyas, and AAPA, because the Examiner only set forth one motivation 22
from Wilf for combining all of the references? 23

16 in every Office Action beginning with a non-final Office Action mailed
March 6, 2003. Moreover, Appellants have not argued the merits of
Kolling. Accordingly, the omission of Kolling from the Evidence Relied
Upon section is considered inadvertent and substantively irrelevant to this
appeal.
Appeal 2009-006562
Application 09/991,379

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Did the Examiner err in asserting that a combination of Wilf, Daniels, 1
Matyas, and AAPA renders obvious “wherein the pop-up window overlays 2
an existing web browser window of a web site associated with the merchant 3
system,” as recited in dependent claim 12? 4
Did the Examiner err in asserting that a combination of Wilf, Daniels, 5
Matyas, and AAPA renders obvious “wherein the receiving transaction 6
information step triggers the opening a pop-up window step,” as recited in 7
dependent claim 13? 8
9
FINDINGS OF FACT 10
Specification 11
Appellants invented systems and methods for authorizing an online 12
purchase between a customer and a vendor (Abstr.). 13
14
Wilf 15
Wilf discloses that a preferred way of payment is by credit card. 16
However, because of security concerns there is great reluctance of the users 17
to transmit credit card account information over the Internet (col. 1, ll. 24-18
27). 19
20
Stein 21
Stein discloses a funds transfer transaction where at approximately the 22
same time that the seller 28 sends information product to the buyer 20 via 23
the Internet, the seller 28 also sends a transfer-request message 129 to the 24
payment system 10 via the Internet 12. Specifically, the seller 28 sends the 25
transfer-request message 129 to the front end program 90 on the front end 26
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computer 50. The transfer-request message 129 may be sent by either e-mail 1
or using an interactive protocol on the Internet 12. The transfer-request 2
message 129 contains the following information: the buyer cardnumber 3
102B, the seller cardnumber 102S, a transfer type 130 (e.g., sale of 4
information), a textual description 132 of the transaction, a transfer amount 5
134, the currency 112S (e.g., USD); and optionally, the merchant's 6
transaction-identifier 136 (col. 7, ll. 34-48). 7
After receiving the transfer-request message 129, the front end 8
program 90 asks the buyer 20 whether the buyer 20 wishes to authorize 9
payment for the transaction 132 to the seller 28. Specifically, the front end 10
program 90 sends a transfer-query message 140 to the buyer 20. Using the 11
information contained in the transfer-request message 129 from the seller 28, 12
specifically the buyer's cardnumber 102B and the seller's cardnumber 102S, 13
the front end program 90 looks up the buyer's name 103B and the seller's 14
name 103S. The transfer-query message 140 contains: a transaction-15
identifier 142 uniquely-generated by the front end program 90, the buyer's 16
name 103B, the seller's name 103S, the transfer type 130, the textual 17
description of the transaction 132, and a transfer amount 135 in the currency 18
preference 112B associated with the buyer's cardholder account (which may 19
represent a currency exchange of the transaction amount 134 into the buyer's 20
currency preference 112B and further which fixes the transfer amount, with 21
respect to currency fluctuations, in the currency used by the buyer). In 22
addition, if currency denomination exchange occurred, the original currency 23
112S and amount 134 are noted in the message 140. In the transfer-query 24
message 140, the buyer's name 103B and the seller's name 103B are used 25
instead of the buyer's cardnumber 102 and the seller's cardnumber 102S in 26
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order to minimize transmission of the cardnumber information over the 1
Internet thereby improving security of the system. After sending the 2
transfer-query message 140, the front end program 90 waits for a response 3
from the buyer 20 (col. 7, l. 49 through col. 8, l. 10). 4
The buyer 20 may respond by sending a transfer-response message 5
150 to the front end computer 50 via the Internet. The transfer-response 6
message 150 contains the following data: the payment system generated 7
transaction-identifier 142 and an indication 152 of the buyer's willingness to 8
allow transfer of funds. The willingness indication 152 is one of “‘yes,’” 9
“‘no,’” or, “‘fraud’” (col. 8, ll. 11-18). 10
11
Daniels 12
Daniels discloses that pop-up windows are windows which open or 13
“‘pop-up’” when a display button is actuated (col. 13, ll. 58-60). 14
15
Matyas 16
Matyas discloses that Netscape Navigator (browser) can open a pop-17
up window, which will allow the user to download and install the required 18
plug-in. Once the plug-in has been installed, it can be reused repeatedly 19
without downloading each time (col. 12, ll. 41-45). 20
Using the information contained in the tag, the MiniPay 21
plug-in displays a pop-up window with all the necessary information to 22
permit the user to initiate a MiniPay payment order (col. 12, ll. 46-49). 23
Appeal 2009-006562
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PRINCIPLES OF LAW 1
Obviousness 2
One cannot show non-obviousness by attacking references 3
individually where the rejections are based on combinations of references. 4
In re Keller, 642 F.2d 413, 426 (CCPA 1981). 5
When there is a design need or market pressure to solve a problem 6
and there are a finite number of identified, predictable solutions, a person of 7
ordinary skill in the art has good reason to pursue the known options within 8
his or her technical grasp. If this leads to the anticipated success, it is likely 9
the product not of innovation but of ordinary skill and common sense. KSR 10
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402-03 (2007). 11
It is well-established that an invention may be held to have been 12
obvious without a specific finding of a particular level of skill where the 13
prior art itself reflects an appropriate level. See Chore-Time Equip., Inc. v. 14
Cumberland Corp., 713 F.2d 774, 779 (Fed. Cir. 1983). See also Okajima v. 15
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 16
1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). 17
During examination, the examiner bears the initial burden of 18
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 19
1443, 1445 (Fed. Cir. 1992). 20
21
ANALYSIS 22
Pop-Up Window 23
We are not persuaded that the Examiner erred in asserting that a 24
combination of Wilf, Stein, Paltenghe, Daniels, Matyas, and AAPA renders 25
obvious the recitation of from the funds transfer server, interacting with the 26
Appeal 2009-006562
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pop-up window to present a transaction amount in the pop-up window, and 1
receiving customer assent to the transaction amount, as recited in 2
independent claims 1, 10, and 17 (App. Br. 5-6; Reply Br. 1-2). Stein 3
discloses that transfer-query message 140 is sent from front-end program 90 4
to buyer 20 (col. 7, ll. 52-54). Transfer-query message 140 includes transfer 5
amount 134, 135, depending on the currency, and a request to buyer 20 to 6
authorize the transfer via indication 152 in transfer-response message 150 7
(col. 7, l. 58 through col. 8, l. 18). Accordingly, the Examiner has shown 8
that front-end program 90 corresponds to the recited funds transfer server, 9
that transfer-query message 140 corresponds to the recited interacting with 10
the user’s computer to present a transaction amount, and that indication 152 11
via transfer-response message 150 corresponds to the recited customer 12
assent. Thus, the only aspect missing from Stein is that the form of the 13
interaction is with a pop-up window; the interaction itself is met by Stein. 14
See In re Keller, 642 F.2d at 426. 15
Stein further discloses that transfer-request message 129, and thus also 16
transfer-query message 140, may be sent by either e-mail or using an 17
interactive protocol on the Internet 12 (col. 7, ll. 40-41). Daniels and Matyas 18
each disclose that pop-up windows can be used for presenting information to 19
the user. Matyas in particular discloses that pop-up windows can be used for 20
financial transactions (col. 12, ll. 41-49). Accordingly, as Stein discloses 21
that any interactive protocol can be used for presenting information to the 22
user, and Daniels and Matyas disclose that pop-up windows are one such 23
protocol, we agree with the Examiner that it would have been obvious to 24
modify Stein to include the pop-up windows of Daniels and Matyas to arrive 25
at the aforementioned aspects of independent claims 1, 10, and 17, 26
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especially where Matyas discloses that pop-up windows can be used for 1
financial transactions, and the number of ways for presenting information to 2
the user are finite. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 402-03. 3
4
Level of Skill 5
We are not persuaded that the Examiner erred in combining Wilf, 6
Stein, Paltenghe, Daniels, Matyas, and AAPA, because the Examiner failed 7
to explicitly identify the level of skill in the relevant art (App. Br. 7; Reply 8
Br. 2). The prior art itself, which is all in the field of computers and the 9
Internet, properly establishes the appropriate level of skill in the art. See 10
Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d at 779. 11
12
Motivation 13
We are not persuaded that the Examiner erred in combining Wilf, 14
Stein, Paltenghe, Daniels, Matyas, and AAPA, because the Examiner only 15
set forth one motivation from Wilf for combining all of the references (App. 16
Br. 7; Reply Br. 2). For the pop-up window aspect, page 4 of the 17
Examiner’s Answer recites that “[t]he ordinary practitioner of the art would 18
have seen it as obvious at the time of Applicant’s invention that a web 19
browser window was a practical and popular interface for displaying this 20
transaction data for the customer buyer’s authorization or rejection of the 21
payment by transfer.” The Examiner then cites Daniels, Matyas, and the 22
AAPA as examples supporting this modification. Accordingly, the 23
motivation for modifying Stein to include a pop-up window does not flow 24
from Wilf. 25
Appeal 2009-006562
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Dependent Claim 12 1
We are not persuaded that the Examiner erred in asserting that a 2
combination of Wilf, Daniels, Matyas, and AAPA renders obvious “wherein 3
the pop-up window overlays an existing web browser window of a web site 4
associated with the merchant system,” as recited in dependent claim 12 5
(App. Br. 7-8; Reply Br. 3). There are only two options for presenting a 6
pop-up window in relation to another window: either it does or does not 7
overlay an existing web browser window. Such limited options support a 8
conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 9
402-03. 10
11
Dependent Claim 13 12
We are persuaded that the Examiner erred in asserting that a 13
combination of Wilf, Daniels, Matyas, and AAPA renders obvious “wherein 14
the receiving transaction information step triggers the opening a pop-up 15
window step,” as recited in dependent claim 13 (App. Br. 8; Reply Br. 3). 16
The Examiner asserts that “Wilf, Daniels, Matyas and AAPA disclose a 17
method wherein the receiving transaction information step triggers the 18
opening of a pop-up window step (This triggering step is implicit to the way 19
a pop-up window or automatically opening window is implicitly designed to 20
work)” (Exam’r’s Ans. 7). Even if the cited references generally disclose 21
the nature of how pop-up windows are triggered, the Examiner has not met 22
the initial burden of showing how the references disclose that receiving 23
transaction information triggers the opening as recited in dependent claim 24
13. In re Oetiker, 977 F.2d at 1445. 25
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CONCLUSION 1
The Appellants have not shown that the Examiner erred in rejecting 2
claims 1-12 and 14-20. 3
The Appellants have shown that the Examiner erred in rejecting claim 4
13. 5
6
DECISION 7
The decision of the Examiner to reject claims 1-12 and 14-20 is 8
affirmed. 9
The decision of the Examiner to reject claim 13 is reversed. 10
No time period for taking any subsequent action in connection with 11
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 12
§ 1.136(a)(1)(iv) (2007). 13
14
AFFIRMED-IN-PART 15
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