Ex Parte Nuzzi et al

Patent Trial and Appeal Board

Mar 30, 2016

13277638 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/277,638 10/20/2011
132906 7590
Haynes & Boone, LLP
2323 Victory Ave. #700
Dallas, TX 75219
04/01/2016
FIRST NAMED INVENTOR
Frank Anthony Nuzzi
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.
70481.390 (Pll 70US2) 3627
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK ANTHONY NUZZI
and VAINATHA POLASANI
Appeal2013-010613 1
Application 13/277,638
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 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants identify eBay Inc. as the real party in interest. Appeal Br. 1.
Appeal2013-010613
Application 13/277,638
Appellants' invention is related to a payment system that restricts
account use based at least partially on a time at which a payment is
requested. (Spec. para. 2).
Claim 1 is illustrative:
1. A payment system, comprising:
a memory storing associations between payment time
restrictions and accounts;
one or more processors coupled to the memory and
operable to perform a method including:
receiving a request to make a payment using an
account of a user over a network;
determining that at least one of the payment time
restrictions exists for the account of the user, wherein the
at least one payment time restriction includes at least one
authorized payment time or at least one unauthorized
payment time for making payments using the account of
the user;
determining a current time; and
determining that the current time is not included in
the at least one authorized payment time or determining
that the current time is included in the at least one
unauthorized payment time;
holding the request to make the payment in response
to determining that the current time is not included in the
at least one authorized payment time or determining that
the current time is included in the at least one unauthorized
payment time; and
sending a confirmation request to a user device of
the user over the network; and
authorizing the request to make the payment in
response to receiving a confirmation response from the
user device over the network.
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Appeal2013-010613
Application 13/277,638
Appellants appeal the following rejections:
Claims 1-7 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1-20 are rejected under 35 U.S.C. § 102(b) as anticipated by
Joao (US 2008/0275820 Al, pub. Nov. 6, 2008).
ANALYSIS
Indefiniteness Rejection
The Examiner rejects claims 1-7 as indefinite on the basis that,
according to the Examiner, it is "unclear to which statutory class of
invention the claims are directed," because claim 1 recites a system but
claims 2-7 refine the method disclosed within the system of claim 1.
Answer 3.
We are persuaded by Appellants' argument that independent claim 1
is directed to a system, with a memory, and one or more processors, where
the processors are operable to perform a method, and claims that depend
from it are directed to further limitations on that method performed by the
recited processor. Reply Br. 4. The recited method steps are a limitation on
the scope of the function of the processors.
For this reason, we will not sustain the rejection of claims 1-7 under
35 U.S.C. § 112, second paragraph.
Rejection ofclaims 1-7 under 35 U.S.C. § 103(a)
We are persuaded by Appellants' argument that J oao does not discuss
holding a payment request in response to determining that the payment
request is not authorized based on time restrictions. Appeal Br. 8. For the
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Appeal2013-010613
Application 13/277,638
"holding" limitation, the Examiner finds the claim language is disclosed at
paragraphs 215, 230, 234, and 248 of Joao. Answer 5.
Joao discloses that restrictions on transactions based on time can be
programmed into the computer system. Paras. 215, 230. Joao further
discloses sending notifications based on events (para. 234) and storing
information about restrictions on an account card, such as "authorized times
of usage." (para. 248). These four cited paragraphs, however, do not
disclose any manner of holding a request for payment for any length of time,
even permanently. The Examiner has therefore failed to establish a prima
facie case of anticipation of claim 1. As a result, we will not sustain the
rejection of claim 1, nor of dependent claims 2-7 that were rejected along
with claim 1.
Rejection of claims 8-14 under 35 U.S.C. § 103(a)
Independent claim 8 recites "denying" a request based on time
conditions, and "sending a denied payment request message to the user."
The Examiner finds these two limitations are disclosed in Joao at paragraphs
77, 78, 142, 165, 180, 198,210,215,230,234,248,334,451, 560,646, 777,
and 923 (Answer 5---6), as well as at paragraphs 30, 32, and 34 (Answer
8-9).
We are persuaded by Appellants' argument there is no discussion in
Joao of sending a user a denied payment request message. Appeal Br.
11-12; Reply Br. 5. Appellants further argue Joao, in paragraphs 30, 32,
and 34, merely discloses sending a notification to a user that a request has
been made against their account, and seeking whether the user will allow or
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Appeal2013-010613
Application 13/277,638
deny the request, which does not meet the claim language. Appeal Br. 11;
Reply Br. 5.
We agree that Joao, in paragraphs 30, 32, and 34 discloses allowing a
user to allow or deny a payment transaction, but does not disclose the claim
language requiring at least determining that the current time is not included
in the at least one authorized payment time or determining that the current
time is included in the at least one unauthorized payment time. Our review
of the remaining cited paragraphs reveals that Joao discloses the user may
program automatic authorization or denial (para. 210, 334, 451, 560, 646,
777, and 923), and restrictions on account use may be established and
recorded (para. 77, 78, 142, 165, 180, 198, 215, 230, 234, and 248). But no
cited paragraphs disclose processors denying a request and sending a
message to the user in response to the denying. The Examiner has therefore
failed to establish a prima facie case of anticipation of claim 8. As a result,
we will not sustain the rejection of claim 8, nor of dependent claims 9-14
rejected along with claim 8.
Rejection of claims 15-20 under 35U.S.C.§103(a)
Independent claim 15 recites "means for authorizing the request in
response to determining the current time is not included in the at least one
authorized payment time or determining the current time is included in the at
least one unauthorized payment time and the request to make the payment is
a reoccurring request."
The Examiner rejects claim 15 using the same citations and reasoning
as independent claim 8. Answer 5---6.
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Application 13/277,638
We are persuaded by Appellants' argument that claim 15 includes
language about a "reoccurring request" that is not present in claim 8.
Appeal Br. 12-13; Reply Br. 6.
The Examiner does not specifically address the "reoccurring"
language, except to say that Joao "is capable of performing the function of
restricting based on time and is capable of being programmed to allow for a
rule to allow if it is a recurring payment." Answer 9.
We do not agree with the Examiner's reasoning or apparent claim
construction. Instead of reciting mere functional claiming, claim 15 instead
is recited in means-plus-function form, such that the meaning of the claim
must be construed according to 35 U.S.C. § 112, sixth paragraph. The
means for performing the function is cited by Appellants as a computer
system programmed to perform the function of allowing an otherwise not-
allowed transaction if it is a reoccurring request. See Appeal Br. 4, citing
paragraphs 73, 85, 86, and 93-110; see also para. 71:
The profile 802 also includes an Apply To Reoccurring
Payments selection 810 that may be selected to apply any time
restrictions to automated or reoccurring payments or left
unselected to ensure that the time restrictions are not applied to
automated or reoccurring payments (e.g., a payment request
using an account that is made during a time that the account is
time restricted may be authorized or allowed in response to
determining that the payment request is an automatic or
reoccurring request).
The Examiner has not established on the record that Joao discloses
this structure. Therefore, we do not sustain the rejection of claim 15, nor of
dependent claims 16-20 rejected along with claim 15.
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Application 13/277,638
DECISION
We reverse the rejection of claims 1-7 under 35 U.S.C. § 112, second
paragraph.
We reverse the rejection of claims 1-20 under 35 U.S.C. § 102(b).
REVERSED
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