MasterCard International Incorporated

Patent Trials and Appeals Board

Mar 25, 2020

14156038 - (D) (P.T.A.B. Mar. 25, 2020)

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.
14/156,038 01/15/2014 Brien Buckman 1615/77 4680
25297 7590 03/25/2020
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
datcheson@jwth.com
usptomail@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIEN BUCKMAN, KIMBERLY PEYTON, and MARK LULIC
Appeal 2019-005033
Application 14/156,038
Technology Center 3600
Before JEREMY J. CURCURI, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as
MasterCard International Incorporated. Appeal Br. 2.
Appeal 2019-005033
Application 14/156,038

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STATEMENT OF THE CASE
Introduction
The Application is directed to facilitating access to transportation
services, by providing “preauthorization, route planning, and journey
tracking steps” for “toll roads” and “other transportation services, such as
bus, rail, ferry, or air transportation.” Spec. 15:6–10. Claims 1–5, 7–16, and
18–23 are pending; claims 1, 12, and 23 are independent. Appeal Br. 20–25.
Claim 1 is reproduced below for reference (emphases added):
1. A system for facilitating access to transportation services,
the system comprising:
an application configured to execute on a mobile phone,
the application being configured to receive or determine
information regarding a route to be traveled by a user, to identify
a transportation service associated with the route and an authority
for the identified transportation service, to obtain cost
information from the identified authority for accessing the
transportation service, present the cost information to the user,
receive input from the user indicating selection of the route,
obtain preauthorization from the authority for the user to access
the transportation service, wherein, prior to the user beginning
to travel the route, the application identifies a plurality of
transportation service providers whose toll gates will be
accessed during travel of the route and wherein the application
includes transponder interface configured to emulate a toll
transponder and communicate with toll gate transponders using
protocols used by dedicated transponder devices;
at least one server including a processor and memory, the
server being configured to communicate with the application and
with the authority to facilitate the obtaining of the
preauthorization to access the transportation service, wherein,
prior to the user beginning to travel the route, the at least one
server is configured to receive a request for the preauthorization
from the application, generate and send a preauthorization
request to the authority, receive a preauthorization approval from
the authority and wherein the request for preauthorization
Appeal 2019-005033
Application 14/156,038

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includes information for identifying an account of the user and
an amount to be charged for accessing the transportation service;
and
wherein the authority stores the preauthorization along
with user credentials prior to the user beginning travel along the
route and, during travel of the route by the user:
receives the user credentials, accesses the stored
preauthorization, and uses the stored preauthorization to obtain
payment for the transportation service.
References and Rejections2
The Examiner relies on the following prior art:

Name Reference Date
Yamauchi US 2003/0115095 A1 June 19, 2003
Chan US 2011/0000962 A1 Jan. 6, 2011
Nuzzi US 2013/0030964 A1 Jan. 31, 2013
Underwood US 2013/0090991 A1 Apr. 11, 2013
Willis US 2014/0025444 A1 Jan. 23, 2014

Claims 1–5, 7, 8, 11–16, 18, 19, 22, and 23 stand rejected under
35 U.S.C. § 103 as being unpatentable in view of Yamauchi, Underwood,
Chan, and Willis. Final Act. 6.
Claims 9, 10, 20, and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable in view of Yamauchi, Underwood, Chan, Willis, and
Nuzzi. Final Act. 17.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).

2 The Examiner has withdrawn the patent eligibility rejection. See Ans. 3.
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Application 14/156,038

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Appellant argues that each of the cited references “fails to disclose,
teach, or suggest the subject matter of the independent claims.” Appeal Br.
17. Particularly, Appellant contends “[i]n contrast to [Chan’s] obtaining
authorization at the toll gate reader, each of the independent claims recites
the preauthorization request is sent to the authority prior to the user
beginning travel of a pre-planned route.” Id. Appellant further contends
Chan’s disclosure of a “single transportation service” does not teach the
claimed “planned route involving multiple transportation service.” Id.
Moreover, Appellant contends the cited art provides “no disclosure that the
toll tag device or that the mobile phone with the toll tag device emulates a
toll transponder by communicating with the toll transponder using the
protocols used by dedicated transponder devices.” Id. at 18.
Appellant’s arguments focus on the individual teachings of each
reference, whereas the Examiner’s rejection is based on the combined
teachings of Yamauchi, Underwood, Chan, and Willis. See Ans. 4 (“[T]he
rejection is based on a combination of references, not a single reference.”).
We do not find the Examiner errs in determining the claims are obvious in
view of the prior art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415,
418 (2007) (“Neither the enactment of § 103 nor the analysis in Graham
disturbed this Court’s earlier instructions concerning the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and “[o]ften, it will be necessary for a court to look to interrelated
teachings of multiple patents.”). We disagree with Appellant that the
Examiner erred and adopt as our own the findings and reasons set forth by
the Examiner, to the extent consistent with our analysis below. We add the
following discussion of claim 1 primarily for emphasis.
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Application 14/156,038

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Regarding the claimed preauthorization “prior to the user beginning to
travel the route,” we agree with the Examiner that one of ordinary skill
would have combined Underwood’s “planned user travel; and Chan[‘s]
identif[ying] preauthorization for transit system access, and preauthorization
occurring subsequent to a user accessing the transit service.” Final Act. 20;
Underwood ¶¶ 2, 38; Chan ¶¶ 44, 49. For at least this reason, we are not
persuaded the Examiner errs in finding the disputed limitation taught or
suggested by the cited references. Further, as cited by the Examiner, Chan
discloses “[a] pre-authorization amount may be generated for a single transit
system use or for a set of uses of the system (i.e., multiple trips),” which
“may be stored in a transit system or issuer database.” Chan ¶ 44; see also
id. at 49. We find Chan’s teaching of “multi-use pre-authorization,” for
multiple distinct trips, teaches or suggests pre-authorization prior to
travelling the route, as claimed. Chan ¶ 44; Final Act. 9.
Regarding the claimed multiple transportation services, Appellant
does not challenge the Examiner’s reliance on Willis for this limitation. See
Final Act. 20 (“Willis identifies a plurality of transportation services.”);
Willis ¶¶ 4, 5. Nor does Appellant provide technical reasoning or
substantive argument to show the Examiner errs in combining such teaching
of Willis with the other cited references. See Appeal Br. 17; Reply Br. 4.
Accordingly, we do not find the Examiner errs in determining the disputed
limitations are obvious in view of the cited references.
Regarding the claimed “the application includes transponder interface
configured to emulate a toll transponder and communicate with toll gate
transponders using protocols used by dedicated transponder devices,” we
agree with the Examiner that Chan in view of Willis teaches such interface.
Appeal 2019-005033
Application 14/156,038

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See Final Act. 10, 11; Chan ¶ 29; Willis ¶¶ 27–29. Chan teaches “the
payment device may be integrated into another device (e.g., a mobile
phone[)]),” and Appellant fails to show such integrated payment features are
substantively distinguishable from the claimed method of using a mobile
phone application to emulate a toll transponder and communicate with a toll
gate.3 Chan ¶ 29. Further, we agree with the Examiner that one of ordinary
skill would have modified Chan’s mobile phone (emulating a toll
transponder) with Willis’s teaching of “permitting a mobile phone to interact
with toll gate transponders using protocols used by dedicated transponder
devices.” Final Act. 20; see also Willis Fig. 1; ¶¶ 101, 102. Thus, we are
not persuaded the Examiner errs in determining the disputed limitations are
obvious in view of the combination of cited references.
We are not persuaded the Examiner errs in finding independent claim
1 to be obvious in view of the cited references. Appellant does not present
separate substantive arguments for the remaining claims. See Appeal Br. 18.
Thus, we sustain the Examiner’s obviousness rejection of claims 1–5, 7–16,
and 18–23.

3 Separately, we note that it is not clear, from the record before us, how a
mobile phone would communicate with a toll gate transponder without using
the protocols used by dedicated transponders.
Appeal 2019-005033
Application 14/156,038

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–5, 7, 8,
11–16, 18,
19, 22, 23
103 Yamauchi,
Underwood, Chan,
Willis.
1–5, 7, 8,
11–16, 18,
19, 22, 23

9, 10, 20, 21 103 Yamauchi,
Underwood, Chan,
Willis, Nuzzi
9, 10, 20,
21

Overall
Outcome
1–5, 7–16,
18–23

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED