Pradeep Kumar et al.

Patent Trials and Appeals Board

Sep 18, 2020

12406916 - (D) (P.T.A.B. Sep. 18, 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.
12/406,916 03/18/2009 Pradeep Kumar 1615/33 6328
25297 7590 09/18/2020
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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 PRADEEP KUMAR and
MIKEL ROBERT DELAGRANGE
__________________

Appeal 2020-002332
Application 12/406,916
Technology Center 3600
____________________

Before JAMES P. CALVE, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–25. Appeal Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Mastercard International Incorporated as the real party in interest.
See Appeal Br. 1.
Appeal 2020-002332
Application 12/406,916

2
CLAIMED SUBJECT MATTER
Claims 1, 13, and 25 are independent. Claim 1 is reproduced below.
1. A method for providing an electronic value certificate to
a mobile device, the method comprising:
receiving, at a merchant server, electronic
certificate selection information and a mobile device
phone number;
generating, at the merchant server, electronic value
certificate data using the electronic certificate selection
information and the mobile device phone number,
wherein the electronic value certificate data comprises an
electronic certificate number, an electronic coupon
amount, an electronic value certificate authorization
code, an electronic value certificate image, electronic
value certificate personalization data, or electronic value
certificate validity information;
receiving, at an over air (OTA) provisioning
server, the mobile device phone number and the
electronic value certificate data generated at the merchant
server;
determining that the mobile device phone number
is associated with a near field communications (NFC)
enabled mobile device;
establishing a communications link, via the OTA
provisioning server, with the NFC enabled mobile device
corresponding to the mobile device phone number;
provisioning the electronic value certificate data on
the NFC enabled mobile device over the communications
link via OTA communications, wherein provisioning the
electronic value certificate data on the NFC enabled
mobile device comprises triggering a wallet client
application that initiates a downloading process to
receive the electronic value certificate from the OTA
provisioning server; and
transferring the electronic value certificate from
the NFC enabled mobile device to a recipient mobile
device via the OTA provisioning server, wherein
transferring the electronic value certificate includes
Appeal 2020-002332
Application 12/406,916

3
deleting the electronic value certificate from the NFC
enabled mobile device in response to a control short
message sent to the NFC enabled mobile device by the
OTA provisioning server, issuing the electronic value
certificate to the recipient mobile device, and recording
by the merchant server a transfer of ownership of the
electronic value certificate from a user of the NFC
enabled mobile device to a user of the recipient mobile
device, wherein recording the transfer of ownership
includes disassociating the electronic value certificate
from the wallet application of the NFC enabled mobile
device.

Appeal Br. 16–17 (Claims App.).
REJECTION
Claims 1–25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Michaelis (US 2008/0262928 A1, pub. Oct. 23, 2008), Khan (US
7,469,151 B2, iss. Dec. 23, 2008), Slavin (US 2007/0241189 A1, pub.
Oct. 18, 2007), and Barrett (US 2006/0180664 A1, pub. Aug. 17, 2006).
ANALYSIS
Regarding independent claims 1, 13, and 25, the Examiner finds that
Michaelis receives electronic certificate selection information at a merchant
server and Khan receives a mobile device phone number and generates at the
merchant server electronic value certificate data using electronic certificate
selection information and a mobile device phone number, receives at an over
the air (OTA) provisioning server electronic value certificate data, identifies
the mobile device phone number as a near field communication (NFC)
enabled mobile device, establishes communications between the OTA server
and NFC enabled mobile device, and provides the electronic value certificate
data on the NFC phone as a client wallet application. Final Act. 2–6.
Appeal 2020-002332
Application 12/406,916

4
The Examiner finds that Michaelis and Khan teach the transfer of an
e-coupon by an OTA server to an NFC enabled device of an end-user from a
merchant device, but that neither reference teaches transferring/sharing of an
e-coupon certificate from an end user of an NFC enabled device to a user of
a different destination mobile device via the OTA server and removing the
shared coupon (certificate) from the wallet of the sharing device as part of
the recording of the coupon transfer. Id. at 8. The Examiner relies on Slavin
to teach transferring of an electronic value certificate from an NFC enabled
mobile device to a recipient mobile device via an OTA provisioning server
by issuing the electronic value certificate to the recipient mobile device and
recording by the merchant server a transfer of ownership of the certificate
from the NFC enabled mobile device to the recipient mobile device wherein
recording the transfer of ownership includes disassociating the certificate
from the wallet of the NFC enabled mobile device as claimed. Id. at 8–11.
The Examiner also finds that Barrett deletes an electronic value certificate
from an NFC enabled mobile device in response to a control short message
sent to the NFC enabled mobile device by an OTA server. Id. at 11.
Appellant agrees that Slavin teaches a method in which electronic
wallet 114 in mobile device 112 shares an electronic coupon with a mobile
device of another end user. Appeal Br. 11. However, Appellant argues that
there is no action by content delivery server 102 or another server such as an
OTA server to record the transfer of ownership or disassociate the electronic
coupon from the wallet application of a sending NFC enabled mobile device
as claimed. Id. Appellant argues that paragraphs 59 and 60 of Slavin teach
coupon redemption by a NFC enabled mobile device at a point of sale (POS)
system rather than a transfer of a certificate between mobile devices. Id.
Appeal 2020-002332
Application 12/406,916

5
Paragraphs 59 and 60 of Slavin do not teach a transfer of ownership of
an electronic value certificate from a wallet application of an NFC enabled
mobile device to a recipient mobile device via an OTA provisioning server.
Nor does Slavin disassociate an electronic value certificate from a wallet of
an NFC enabled mobile device upon a merchant server recording a transfer
of ownership of the electronic value certificate from a user of the NFC
enabled mobile device to a user of the recipient mobile device as claimed.
Paragraphs 59 and 60 describe a process for redeeming an electronic
coupon at POS system 118 rather than transferring an electronic coupon
from one mobile device to another as claimed. Slavin ¶ 59. Wallet 114 on
mobile device 112 checks the validity of the coupon before permitting the
coupon’s barcode to be provided to POS system 118. Id. ¶¶ 59, 60. “If the
coupon is not valid, the wallet continues to inhibit provision of the barcode
to POS system 118 until the coupon is removed from the wallet or another
validity event renders the coupon valid again.” Id. ¶ 60.
Nor does the redemption of a coupon at POS system 118 result in a
merchant server recording a transfer of ownership and disassociating the
coupon from the sending mobile device 112 or deleting the coupon from the
sending mobile device in response to a control short message as claimed.
Instead, a valid coupon is retained so “the wallet again permits the coupon’s
barcode to be provided to POS system 118.” Id. No instruction is provided
to mobile device 112 to disassociate/delete the coupon after a redemption. If
the coupon is invalid, the coupon remains in the wallet until a validity event
renders it valid or it is removed at some later time. Id. However, an invalid
coupon is not transferred as claimed. Thus, no transfer of ownership occurs
and any subsequent removal does not result from such a transfer as claimed.
Appeal 2020-002332
Application 12/406,916

6
Slavin teaches an embodiment in which content delivery server 102,
which is similar to the claimed OTA server, enables mobile device 112 to
share a coupon with mobile device 116. Id. ¶¶ 144–181, Figs. 8, 9. This
sharing does not transfer ownership of the coupon from mobile device 112
to recipient mobile device 116 as claimed. Nor does it result in deletion or
disassociation of the coupon from the donor mobile device 102 as claimed.
Slavin instead teaches that a user may share a coupon with other users
as many times as sharing is permitted for the coupon. Id. ¶¶ 146, 147, 172.
Thus, the sharing mobile device 112 retains ownership of the coupon after
sharing it with mobile device 116. Ownership does not transfer to mobile
device 116 so that a coupon is deleted from wallet 114 of mobile device 112
in response to a control short message sent by content delivery server 102
(the OTA provisioning server). After sharing the coupon, mobile device 112
retains a coupon and shares the coupon with other mobile devices until the
permitted number of transfers is reached. See id. ¶¶ 149–165. Nor does a
merchant server record a transfer of ownership of the coupon as claimed.
When a coupon cannot be shared, content delivery server 102 sends a
message to mobile device 112 that “no additional coupons can be shared.”
Id. ¶ 149. Thus, “[i]f the limit [for sharing] has been reached or exceeded,
then the Content Delivery Server 102 returns a message to device 112 via
message format such as SMS explaining that no additional coupons can be
shared.” Id. This message does not result from a coupon transfer. Nor does
it result in the deletion of a coupon from the mobile device after a transfer as
claimed. Paragraph 60 teaches only that a nontransferred coupon may be
removed from a mobile phone wallet at a later time rather than in response
to a transfer or a message from an OTA server as claimed. See Reply Br. 3.
Appeal 2020-002332
Application 12/406,916

7
Slavin teaches that n-use coupons, which can be used a fixed number
of times before becoming invalid, are tested for validity before use. Slavin
¶ 100. “If the use count has reached 0, the coupon is invalid and validity test
logic 604 places it in set 614 of coupons known to be invalid.” Id. ¶ 106.
An invalid coupon is discarded and not transferred between mobile devices.
See id. ¶ 104; Ans. 5. It is not deleted in response to a message after being
transferred. Unredeemable coupons or tokens may be removed (id. ¶¶ 218–
21), but removal does not occur after a transfer as claimed. Nor is an invalid
or unredeemable coupon disassociated from a wallet of a mobile device after
a transfer of ownership is recorded as claimed. The Examiner’s finding that
Slavin fully teaches the claimed features of disassociating/deleting a coupon
from a wallet of a mobile device when Slavin’s server sends a message (a
command) to the wallet that results in removal of the coupon from the wallet
(see Ans. 5) does not address the claimed requirements that removal occurs
after a transfer is made in response to a message from an OTA server, and
disassociation occurs after a merchant server records a transfer of ownership
of the coupon from one mobile device to another mobile device.
Thus, we do not sustain the rejection of claims 1–25.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–25 103(a) Michaelis, Khan,
Slavin, Barrett
1–25
REVERSED