Ex Parte Rose et al

Patent Trial and Appeal Board

Aug 4, 2016

13614667 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/614,667 09/13/2012
23696 7590 08/08/2016
QUALCOMM INCORPORATED
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
FIRST NAMED INVENTOR
Gregory Gordon Rose
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.
071685C2 7827
EXAMINER
OBAID,FATEHM
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY GORDON ROSE, CRAIG LAUER,
ALEXANDER GANTMAN, and JOAN T. WALTMAN
Appeal2014-005156 1
Application 13/614,667
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 44--83. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a mobile commerce authentication
and authorization system. Spec., para. 2.
1 The Appellants identify QUALCOMM Inc. as the real party in interest.
Appeal Br. 2.
Appeal2014-005156
Application 13/614,667
Claim 44 is illustrative:
44. A computer-implemented method of authenticating and
authorizing a financial transaction across mobile wireless
communications system, the method comprising:
installing with a processor one or more data processing
systems in a hand-held mobile wireless communications
instrument;
determining the location of the hand-held mobile wireless
communications instrument with a processor of the hand-held
mobile wireless communications instrument using satellite
positioning signals;
determining the location of the point-of-sale device;
automatically initiating a payment application with a
processor on the hand-held mobile wireless communications
instrument in response to the hand-held mobile wireless
communications instrument detecting the hand-held mobile
wireless communications instrument is in proximity to the point-
of-sale device;
matching the location of the hand-held mobile wireless
communications instrument and of the point-of-sale device with
the payment application running on a processor; and
approving the payment application with a processor.
Claims 44--83 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Bozeman (US 2002/0052852 Al, pub. May 2, 2002) and
Tumminaro (US 2007/0244811 Al, pub. Oct. 18, 2007).2
We REVERSE.
2 The Non-Final Action mailed December 11, 2012 contains rejections under
35 U.S.C. § 101and35 U.S.C. § 112. The Final Action mailed June 27,
2013, however, does not list those rejections, and neither the Appellants nor
the Examiner make further reference to those rejections in any subsequent
paper. Accordingly, we treat them as withdrawn.
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Appeal2014-005156
Application 13/614,667
ANALYSIS
Each of independent claims 44, 54, 64, and 7 4 recite "automatically
initiating a payment application on the hand-held mobile wireless
communications instrument in response to the hand-held mobile wireless
communications instrument detecting the hand-held mobile wireless
communications instrument is in proximity to the point-of-sale device."
The Examiner finds "automatically initiating a payment application"
in Bozeman's Abstract and paragraph 115, but finds "a processor on the
hand-held mobile wireless communications instrument in response to the
hand-held mobile wireless communications instrument detecting the hand-
held mobile wireless communications instrument is in proximity to the
point-of-sale device" in Tumminaro, paragraphs 9 and 486. Final Act. 3--4.
We are persuaded by the Appellants' argument that the cited sections
of Tumminaro do not disclose a mobile wireless instrument with a processor
that automatically detects it is in proximity of a point-of-sale device, as
required by the independent claims. Appeal Br. 7-8; see also id at 13-14.
Tumminaro, at paragraph 9, discloses the common use of multi-function
mobile cellular devices. Tumminaro, at paragraph 486, discloses the
existence of a "payment system" that mobile cell phone users can utilize to
"conduct transactions" that is funded by merchants. Neither of these
paragraphs disclose the detection of any proximity.
Tumminaro, at paragraph 452, however, does disclose automatically
transferring information between a cell phone and point-of-sale device,
using near field, Bluetooth â„¢,or RFID communications when the devices
are in proximity. Nevertheless, although Tumminaro may detect proximity,
paragraph 452 does not disclose that a payment application is automatically
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Appeal2014-005156
Application 13/614,667
initiated, as claimed. Paragraph 452 of Tumminaro also appears to disclose
that the point of sale device detects nearby cell phone devices, rather than
the cell phone detecting the point of sale device, as claimed.
Furthermore, as set forth above, each of independent claims 44, 54,
64, and 7 4 each recite "payment application." Bozeman describes a non-
bank-specific "positive pay system" which is universal form of "a service
that a bank sells for a fee to its account holders whereby only checks that are
pre-approved are accepted at the bank. The check generating customer
generally uploads a file of check register information daily to the bank of all
checks written that day." Bozeman, para. 50; see also id. at para. 46.
Bozeman, at the Abstract, introduces this pay system, and paragraph 115
discloses check clearing as part of the system.
The Appellants do not define the term "payment application," but
describe that the customer uses it to indicate a payment sum and
authorization, or payment instructions, to a merchant to enable the merchant
to authenticate the user and accept payment for a transaction. Spec., para.
37, 59, 60. In support of the means-for limitation of independent claim 64, a
point of sale system, with which a payment application communicates, is
described as receiving and processing received payment data. Spec., para.
56. We, thus, construe a payment application as a program that provides
payment data to a point of sale device to permit a merchant to authenticate a
user and accept payment for a transaction.
A system that processes checks after a transaction at a financial
institution, as in Bozeman, does not authorize a merchant to accept payment
for a transaction by the user, because once the check is being process by the
financial institution, the merchant has already accepted the check as payment
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Appeal2014-005156
Application 13/614,667
for the transaction. Thus, a check clearing function within a positive pay
system that keeps a record of checks a customer has written (a check
register) is not a payment application, as claimed and as the Examiner
asserts. This is because processing a check after a merchant has accepted it
does not enable the merchant to authenticate the user and accept payment for
a transaction. Instead, Bozeman operates after the merchant has accepted
payment for a transaction. Bozeman, thus, does not disclose a payment
application as claimed, and as a result does not disclose initiating a payment
application.
In addition, as set forth above, Tumminaro discloses either a cell
phone or a point of sale device detecting proximity to the other device
through the establishment of a NF, Bluetooth â„¢,or RFID link, but does not
initiate a payment application. Thus, even in combination, the Examiner has
not shown adequately that the cited portions of Bozeman and Tumminaro
disclose or suggest "automatically initiating a payment application on the
hand-held mobile wireless communications instrument in response to the
hand-held mobile wireless communications instrument detecting the hand-
held mobile wireless communications instrument is in proximity to the
point-of-sale device," as claimed. In summary, not all the claim features are
disclosed, as advanced above, and no rationale to fill the gaps has been set
forth adequately.
For these reasons, we do not sustain the rejection of independent
claims 44, 54, 64, and 74, nor of dependent claims 45-53, 65-73, and 75-83
rejected along with the independent claims.
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Appeal2014-005156
Application 13/614,667
DECISION
We REVERSE the rejection of claims 44--83 under 35 U.S.C.
§ 103(a).
REVERSED
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