Ex Parte 7627528 et al

Patent Trial and Appeal Board

Oct 31, 2013

95001590 (P.T.A.B. Oct. 31, 2013)

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.
95/001,590 03/30/2011 7627528 9027.141.IP528 3609
7590 11/01/2013
GEORGE LIKOUREZOS, ESQ.
261 WASHINGTON AVE.
ST. JAMES, NY 11780
EXAMINER
DESAI, RACHNA SINGH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/01/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE PATENT TRIAL AND APPEAL BOARD
____________

EBAY, INC.
Requester and Respondent

v.

XPRT VENTURES, LLC.
Patent Owner and Appellant
____________

Appeal 2013-009107
Reexamination Control 95/001,590
Patent 7,627,528 B2
Technology Center 3900
____________

Before KEVIN F. TURNER, WILLIAM V. SAINDON, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-009107
Reexamination Control 95/001,590
Patent 7,627,528 B2

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Patent Owner XPRT Ventures, LLC. (“Patent Owner”) appeals under
35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1,
13, 18, 26, 33, 38, 40, and 52.
1
Third Party Requestor eBay, Inc. responds to
the Patent Owner’s appeal.
2
We have jurisdiction under 35 U.S.C. §§ 134(b)
and 315(a).
We AFFIRM.

STATEMENT OF THE CASE
United States Patent 7,627,528 B2 (hereinafter the “’528 Patent”),
issued to George Likourezos and Michael Anthony Scaturro on December 1,
2009, is the subject of the current inter partes reexamination.
The ’528 Patent, along with five other patents, are the subject of a
civil action in the United States District Court for the District of Delaware,
which is currently stayed. See App. Br. 4.
Additionally, the Board of Patent Appeals and Interferences has
decided appeals from inter partes reexaminations of related patents,
US Patent Nos. 7,483,856 and 7,567,937. See App. Br. 4.

THE INVENTION

1
See Patent Owner’s Appeal Brief, filed August 24, 2012 (hereinafter “PO
App. Br.”), at 1, 5, and 11; Examiner’s Answer, mailed March 4, 2013,
incorporating by reference the Examiner’s Right of Appeal Notice, mailed
May 23, 2012 (hereinafter “RAN”). The Patent Owner states that claims 1,
18, 40, and 52 are now cancelled and presents no arguments with respect to
those claims. Therefore, we do not address the rejections of those claims.
2
See Third Party Requestor’s Respondent Brief, filed January 22, 2013
(hereinafter “TPR Resp. Br.”).
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The ’528 Patent generally relates to a computerized electronic auction
payment system and method for effecting a real-time payment for an item
sold via an electronic auction web site. ’528 Patent, Abstract and 1:17-20.
The system maintains electronic auction payment accounts for users and
may present the option of loaning funds to users, in order to facilitate or
effect payments related to items sold via the electronic auction web site.
’528 Patent, Abstract.
Claims 13 and 26, which are illustrative of the appealed subject
matter, have not been amended during reexamination and reads as follows:
13. A method for effecting at least one payment for a
user of an electronic auction web site, said method comprising
the steps of:
providing the user with an option to enable loaning of
funds if a payment source corresponding to the user has
insufficient funds for effecting payment for at least one
transaction conducted via the electronic auction web site;
receiving authorization from the user, in response to the
option, to use the payment source corresponding to the user for
effecting the at least one payment and to loan funds to the user
if the payment source has insufficient funds;
determining if the payment source corresponding to the
user has sufficient funds for effecting the at least one payment;
and
loaning funds for effecting the at least one payment if the
payment source corresponding to the user has insufficient funds
for effecting the at least one payment and authorization from
the user has been received, wherein the payment system is in
operative communication with the electronic auction system,
and wherein the payment source corresponding to the user is a
payment account maintained by the payment system and
accessible by the user via at least one web page of the electronic
auction web site.

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26. A method for effecting at least one payment for a
user of an electronic auction web site maintained by an
electronic auction system, said method comprising the steps of:
receiving payment authorization via a graphical user
interface from the user of the electronic auction web site prior
to a conclusion of an electronic auction conducted via the
electronic auction web site to automatically loan funds thereto
for effecting the at least one payment, wherein the at least one
payment is related to the electronic auction web site-related
transaction; and
loaning funds by at least one of a payment system of the
electronic auction system and an external financial system for
automatically effecting the at least one payment following the
conclusion of the electronic auction without receiving
additional payment authorization from the user following the
conclusion of the electronic auction, wherein the payment
system and the external financial system are in operative
communication with the electronic auction system.

App. Br., Claims App’x.

PRIOR ART REJECTIONS
The Examiner relies on the following references:
Churchill 7,461,022 Dec. 2, 2008
Brett 6,023,685 Feb. 8, 2000
Young 7,003,485 Feb. 21, 2006
Hutchison 7,761,385 Jul. 20 2010
Yahoo! Auctions, Additional Information on Payment Options,
yahoo.com (Aug. 16, 2000, 6:52 AM),
http://replay.waybackmachine.org12000-
0816065243/http://help.yahoo.comihelp/us/auct/asell/asell-24.html
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(accessed by searching yahoo.com in the Internet Archive) (hereinafter
“Yahoo! Auctions Payment Options”).
The Examiner adopts, or adopts with modification, six rejections
proposed by the Requester:
1. The rejection of Claims 1, 18, 26, 38, 40, and 52 under 35 U.S.C.
§102(e) as being anticipated Hutchison.
2. The rejection of Claims 13, 26, 33, and 38 under 35 U.S.C. §103(a)
as being unpatentable over Hutchison and Churchill.
3. The rejection of Claims 13, 26, 33, and 38 under 35 U.S.C. §102(e)
as being anticipated by Churchill.
4. The rejection of Claims 1, 13, 18, 33, 40, and 52 under 35 U.S.C.
§103(a) as being unpatentable over Churchill and Hutchison.
5. The rejection of Claims 26 and 38 under 35 U.S.C. §103(a) as
being unpatentable over Hutchison and Young.
6. The rejection of Claims 1, 18, 40, and 52 under 35 U.S.C. 103(a)
as being obvious over Churchill and Yahoo! Auctions Payment
Options.

ISSUES
1. Under 35 U.S.C. § 102(e), has the Examiner erred by rejecting
claims 13, 26, 33, and 38 as anticipated by Churchill?
2. Under 35 U.S.C. § 102(e), has the Examiner erred by rejecting
claims 26 and 38 as anticipated by Hutchison?
3. Under 35 U.S.C. § 103(a), has the Examiner erred by rejecting
claims 13, 26, 33 and 38 as unpatentable over the cited prior art?
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ANALYSIS
The Patent Owner groups claims 13 and 33 as Group I and claims 26
and 28 as Group II. See PO App. Br. 5. We address each group separately
below.

THE ANTICIPATION REJECTION OVER CHURCHILL
Claims 13 and 33 (Group I)
The Patent Owner asserts that the Examiner erred in finding that
Churchill discloses “providing the user with an option to enable loaning of
funds if a payment source corresponding to the user has insufficient funds
for effecting payment for at least one transaction conducted via the
electronic auction web site,” as recited in claims 13 and 33. PO App. Br. 27.
In particular, the Patent Owner identifies that the claimed “option”
refers to “providing the user with a choice to enable loaning funds” and
maintains that this option is absent in Churchill. PO App. Br. 20. To
support this argument, however, the Patent Owner erroneously equates the
Yahoo! Auction system’s enabling a credit feature to enabling loaning of
funds. See PO App. Br. 19-20 (asserting that Churchill fails to present a user
with the option to enable loaning of funds because “the Yahoo! Auction
System unilaterally makes a determination of whether to enable a credit
feature….”)
To the contrary, Churchill expressly describes that the Yahoo!
Auction system, once the credit feature is enabled by the system, presents
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the option of using the credit feature, i.e. loaning of funds, to the user. See
TPR Resp. Br. 7 (citing Churchill at 45:42-56). More specifically, when a
user is configuring a maximum bid amount and the user’s account does not
have enough credit points to cover the maximum bid entered, Churchill
explains that
…the Yahoo! Auction System will either disallow the
participation of the user in that auction, suggest a lower
maximum bid amount that can be covered by the user' account
balance, or allow the user to participate provided that the credit
line in the user's account is not exceeded. Normally, the
Yahoo! Auction System will prompt the user with the first two
options—disallow participation and suggest a lower maximum
bid amount. The third option is available [to a user] provided
that the Yahoo! Auction System has enabled the credit feature
of the user's account.
Churchill 45:.42-54 (emphasis added).

In other words, the Yahoo Auction System determines whether the
credit feature is available to a particular user. As the Patent Owner
acknowledges, the Yahoo! Auction System reviews a user’s account and
provides a marker in the user’s account indicating that that user may use
credit points. PO App. Br. 21-22 (citing Churchill 53:49- 54:9).
As such, the Yahoo! Auction System does not unilaterally loan funds
or provide credit points as asserted by the Patent Owner, but instead merely
determines whether the particular user is permitted to receive a loan or use
the credit feature. When there are insufficient funds, a user is prompted with
options, including a third option of using credit when the user’s account has
the credit enabled marker. See TPR Resp. Br. 7 (citing Churchill at 45:42-
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56). We are therefore not persuaded that Churchill fails to disclose
providing the user with the option of enabling loaning of funds.
The Patent Owner additionally contends that because Churchill fails
to disclose providing the option of enabling loaning of funds, Churchill
cannot disclose “receiving authorization in response to the option” and
“loaning funds…if…authorization from the user has been received.” See
PO App. Br. 22-23 and 27. We likewise find these arguments unavailing.
Accordingly, we affirm the rejection of claims 13 and 33 as
anticipated by Churchill.

Claims 26 and 38 (Group II)
We are also not persuaded by the Patent Owner that Churchill fails to
disclose or suggest receiving payment authorization from a user prior to a
conclusion of an electronic auction to automatically loan funds thereto
following the conclusion of the electronic auction, as required by claims 26
and 38.
The Patent Owner acknowledges that Churchill describes that “the
Yahoo! Auction System allows the human bidder to automate his actions so
that he does not have to be physically present at this [sic] computer to locate
an auction, submit a bid, or finalize a sale.” PO App. Br. 25. But the Patent
Owner asserts that automating the finalization of the sale does not entail the
Yahoo! Auction system receiving payment authorization from the user prior
to a conclusion of an electronic auction to automatically loan funds at the
conclusion of the election auction without receiving additional payment
authorization from the user. Id.
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The Patent Owner’s arguments, however, are not persuasive.
Churchill discloses that prior to or during an auction, a user may configure
automatic bidding setting, including setting a maximum bid. Churchill 45:1-
4 and 14-19. When setting this maximum bid, a user may be prompted to
select the credit feature, if the account is approved, when there are
insufficient funds for the selected maximum bid. See TPR Resp. Br. 10-11
(citing Churchill 45:42-56). Thus, by selecting this credit feature in
configuring the automatic bidding, the user provides authorization prior to
the conclusion of the auction to automatically loan funds without any
additional authorization at the conclusion of the auction.
Moreover, Churchill also describes that a user may use a credit-based
accounts to make purchases (Churchill 1:13-17) and that a user can automate
tasks such as “locate an auction, submit a bid, or finalize a sale.” Churchill
44:67-45:4. As the Requestor identifies, “in the case where the buyer has a
credit account, by automating sale finalization, the buyer is providing the
system authorization to automatically loan funds to effect payment.” TPR
Resp. Br. 11.
The Patent Owner also contends that Churchill teaches away from
“any user interaction with respect to authorizing the automatic loaning of
funds or points to effect payment” because Churchill teaches that the Yahoo!
Auction System provides a credit marker in the user’s account.
This argument lacks merit because the Patent Owner fails to
persuasively explain why providing an identifier indicating that the account
holder is permitted to loan funds teaches away from a user providing
authorization to automatically loan funds. As discussed above, Churchill
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expressly describes that a user may be prompted with the option of loaning
funds when a user is configuring the automatic bidder setting. Churchill
45:1-4, 14-19 and 42-56.
Therefore, we see no error in the Examiner’s finding that Churchill
discloses this limitation. Accordingly, we affirm the rejection of claims 26
and 38 as anticipated by Churchill.

THE ANTICIPATION REJECTION OVER HUTCHISON
Claims 26 and 38 (Group II)
The Patent Owner argues that Hutchison fails to disclose “receiving
payment authorization ... prior to a conclusion of an electronic auction ... to
automatically loan funds thereto for effecting the at least one payment,”
3

and “loaning funds ... for automatically effecting the at least one payment
following the conclusion of the electronic auction without receiving
additional payment authorization from the user following the conclusion of
the electronic auction,” as recited by claims 26 and 38. PO App. Br. 14-17.
Hutchison discloses a payment system where a user can open a prepay
or credit virtual payment account. See PO App. Br. 14 (citing Hutchison
Fig. 8A and 12:20-58). The Patent Owner maintains that while in Hutchison
funds are automatically deducted from a prepay account, funds are not

3
We apply the BPAI’s construction of “automatically” from the appeal of
the priority parent patent, U.S. Patent Nos. 7,483,856. Namely,
“automatically” means “acting or operating in a manner essentially
independent of external influence or control.” See PO App Br. 14 and
Related Proceedings App’x.
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similarly automatically loaned to a credit account without additional manual
authorization at the conclusion of the auction. PO App. Br. 14-15.
On the other hand, the Requestor points out that the Patent Owner
relies on a single embodiment and “ignores embodiments directed to an
automatic electronic auction purchase.” TPR Resp. Br. 4. Further, the
Requestor identifies that Hutchison discloses that the system “supports
buyer-initiated, pre-approved purchases with expiration date/time, such as
auction and gift-certificate purchases.” TPR App. Br. 4-5 (citing Hutchison
at 24:41-44). In other words, Hutchison’s system allows a buyer, with a
virtual credit account, to pre-approve a purchase for a length of time, e.g.
during an auction, resulting in the automatic loaning of funds if the buyer
wins the auction.
The Patent Owner fails to distinguish these teachings and further we
agree that Hutchison’s disclosure of pre-approved purchases reads on the
claimed limitation. Therefore, we agree with the Examiner and Requestor
that Hutchison discloses “receiving payment authorization ... prior to a
conclusion of an electronic auction ... to automatically loan funds thereto for
effecting the at least one payment.”
The Patent Owner additionally contends that Hutchison does not
disclose loaning for automatically effecting without additional authorization
following the conclusion of the auction. PO App. Br. 15-16. Here, the
Patent Owner essentially argues that the payment is not effected until the
user pays his/her bill.
There is no disclosure by Hutchison et al. that electronic
payments for a buyer's credit account are automatic following a
purchase, e.g., following the conclusion of an electronic
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auction. See, e.g., Figure 10C which shows there is a "Payment
Due Date" with respect to the "Minimum Payment" amount
with respect to the buyer's credit account. A "Payment Due
Date" and a "Minimum Payment" are indications that the buyer
is required to manually effect payment by the payment due date
and make at least the minimum payment following a purchase,
e.g., following the conclusion of an electronic auction.
PO App. Br. 16.

This argument, however, is misplaced. Hutchison, in the cited
paragraphs, identifies that the buyer must make payments to the buyer’s
virtual credit account, i.e. the loaning entity, not the seller. Thus, we agree
with the Examiner and the Requestor that Hutchison discloses loaning for
automatically effecting without additional authorization following the
conclusion of the auction.
We therefore see no error in the Examiner’s rejection of claims 26 and
33 are anticipated by Hutchison and accordingly affirm the rejection.

THE OBVIOUSNESS REJECTION OVER CHURCHILL AND HUTCHISON
Claims 13, 26, 33 and 38 (Group I and II)
The Patent Owner presents the same arguments here as those
presented with respect to the Churchill and Hutchison anticipation
rejections. As discussed above, we disagree with the Patent Owner and see
no error in the Examiner’s findings. Accordingly, we affirm the rejection of
claims 13, 26, 33, and 38 as unpatentable over Churchill and Hutchison.

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THE OBVIOUSNESS REJECTION OVER HUTCHISON AND YOUNG
Claims 26 and 38 (Group II)
The Patent Owner again presents the same arguments as those
discussed above with respect to Hutchison, which we find unpersuasive. We
likewise find the arguments regarding Young unavailing.
First, the Patent Owner here asserts that the cited combination is
improper. Namely, according to the Patent Owner, the ’528 Patent
expressly addresses and remedies the disadvantages of charging a credit
card, as taught by Young, to effect payment to a seller in an electronic
auction. PO App. Br. 35 (citing the Background section of the ’528 Patent
discussing disadvantages of using credit cards).
However, as the Requestor explains, the Examiner does not apply the
use of a credit card but merely relies on Young for teaching loaning of funds
without additional authorization. TPR Resp. Br. 14; see also RAN 39. The
Patent Owner’s statements in the Specification that might be construed as
possibly discouraging the use of a credit card are thus not relevant.
Moreover, the Patent Owner’s argument lacks merit because the disclosed
embodiments of the ’528 Patent expressly contemplate use of credit cards.
See ’528 Patent 8:42-57.
Second, the Patent Owner’s contention that the cited combination
would render Hutchison inoperable for its intended purpose is unpersuasive
because they rely on a single embodiment of Hutchison. As discussed
above, Hutchison discloses use of pre-approving purchases, not just
selecting a payment method after purchase. See Hutchison 24:39-44.
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Therefore, we see no error in the Examiner’s rejection of claims 26
and 38 as unpatentable over Hutchison and Young and accordingly affirm
the rejection.

DECISION
The Examiner’s decision to reject claims 13, 26, 33, and 38 is
affirmed.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED

ack

PATENT OWNER:
GEORGE LIKOUREZOS, ESQ.
261 WASHINGTON AVE.
ST. JAMES, NY 11780

THIRD-PARTY REQUESTER:
SCHWEGMAN, LUNDBERG & WOESSNER/REEXAMS
P.O. BOX 2938
MINNEAPOLIS, MN 55402