Ex Parte Barnett et al

Board of Patent Appeals and Interferences

Feb 16, 2011

09404463 (B.P.A.I. Feb. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
TJnited States Patent and Trademark Office
Add,&: COMMISSIONER FOR PATENTS
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091404,463 09/24/1999 TIMOTHY BARNETT 3376.047.00 8393
APPLICATION NO.
30827 7590 02/17/2011
MCKENNA LONG & ALDRIDGE LLP
EXAMINER
FILING DATE
1900 K STREET, NW WINTER, JOHN M
WASHINGTON. DC 20006
FIRST NAMED INVENTOR
I ARTUNIT I PAPERNUMBER I
ATTORNEY DOCKET NO.
Please find below andlor attached an Office communication concerning this application or proceeding.
CONFIRMATION NO.
MAIL DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
PTOL-90A (Rev. 04/07)
02/17/2011 PAPER
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte TIMOTHY BARNETT and
JOHN GALLOWAY
Appeal 2009-008172
Application 091404,463
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008172
Application 091404,463
STATEMENT OF THE CASE
Timothy Barnett, et al. (Appellants) seek our review under 35 U.S.C.
5 134 (2002) of the final rejection of claims 1- 15 and 17-21. We have
jurisdiction under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM-IN- PART.^
THE INVENTION
The invention relates "to the field of electronic payment processing,
and more particularly to improved gateways through which transaction
processing networks can be reached." Specification 15-7.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for processing credit card transactions comprising the
steps of:
accepting a transaction message from a merchant computer in
ASCII form;
translating the transaction message into a message format
accepted by a credit card transaction processing computer;
encrypting the translated transaction message;
transmitting the encrypted message to a credit card transaction
processing computer.
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed Apr. 18, 2006) and the Examiner's Answer ("Answer," mailed
Jul. 26, 2007).
Appeal 2009-008172
Application 091404,463
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
Ngu y en US 5,978,840 Nov. 2,1999
Ngu y en US 6,072,870 Jun. 6,2000
The following rejection is before us for review:
1. Claims 1-15 and 17-21 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Nguyen '840 and Nguyen '870.
ISSUE
Do col. 71,l. 21 - col. 72 1.20, and claims 1 and 8 of Nguyen '870
disclose transmitting an encrypted message?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
There are six independent claims: claims 1, 7, 13, 18, 19, and 21.
Claims 1 and 7
The Examiner takes the position that Nguyen '840 teaches all the
claim limitations but for "[translating] the transaction message into a
message format accepted by a credit card transaction processing computer, .
. . [encrypting] the translated message and ... [transmitting the encrypted]
message to a credit card transaction processing computer." Answer 3. To
3
Appeal 2009-008172
Application 091404,463
meet that limitation the Examiner relies on Nguyen '870 as teaching "an
inventive concept of ... [translating] the transaction message into a message
format accepted by a credit card transaction processing computer, . . .
[encrypting] the translated transaction message and ... [transmitting]
encrypted message to a credit card transaction processing computer (see
column 7 1 lines 21-72 line 20, claims 1 and 8)." Answer 3.
We have reviewed col. 71,l. 21 - col. 72 1. 20, and claims 1 and 8 of
Nguyen '870 but have been unable to find the claim limitation said to be
disclosed there. Nguyen '870 states that mapped requests are "in the clear"
when forwarded to a payment processor. See col. 71,ll. 21-38. In fact,
Nguyen '870 states that the "Data between the Gateway and the host is sent
in the clear with no encryption." Col. 72,ll. 53-54. Emphasis added.
Accordingly, in contradistinction to the Examiner's characterization of
Nguyen '870, Nguyen '870 at column 71 lines 21-72 line 20, claims 1 and 8
does not disclose "[translating] the transaction message into a message
format accepted by a credit card transaction processing computer, ...
[encrypting] the translated message and ... [transmitting the encrypted]
message to a credit card transaction processing computer" as claimed.
Because the scope and content of the cited prior are mischaracterized,
a prima facie case of obviousness has not been established in the first
instance for the subject matter of claims 1 and 7 and the claims 2-6 and 8-12
dependent thereon, respectively.
Claims 13 and 19
Claim 13 calls for "processing translated transaction messages sent by
the application program interface, wherein the translated transaction
Appeal 2009-008172
Application 091404,463
messages are sent in encrypted form over the Internet." Claim 19 calls for
"transmitting the encrypted message to a third party aggregator computer
from the gateway computer via the Internet."
As with claims 1 and 7, the Examiner relies on col. 71,l. 21 - col. 72
1. 20, and claims 1 and 8 of Nguyen '870 to find that Nguyen '870 discloses
these claim limitations. Answer 5-6 (for claim 13) and 7-8 (for claim 19).
But we have been unable to find there any disclosure of sending the
translated transaction messages in encrypted form or transmitting an
encrypted message.
Because the scope and content of the cited prior are mischaracterized,
a prima facie case of obviousness has not been established in the first
instance for the subject matter of claims 13 and 19 and the claims 14, 15,
and 17 and 20 dependent thereon, respectively.
Claims 18 and 21
These claims do not call for sending the translated transaction
messages in encrypted form. Accordingly, the reasoning used to reverse the
rejections of claims 1-15, 17, 19, and 20 does not apply to the rejection of
these claims.
The Appellants have not made persuasive arguments as to error in the
rejection of these claims. The Appellants have made arguments with respect
to claim18 which simply states, in whole or in part, that the references do
not disclose or suggest certain claimed features - without responding to the
Examiner's reasoning in establishing a prima facie case of obviousness. See
Br. 16 for claim 18. The argument challenging the rejection of claim 21 is
combined with that of claim 19 but the argument is over whether Nguyen
Appeal 2009-008172
Application 091404,463
'870 shows transmitting an encrypted message, which is not an issue relevant
to claim 21. See Br. 18- 19. "It is not the function of this court to examine
the claims in greater detail than argued by an appellant, looking for
nonobvious distinctions over the prior art." In re Baxter Travenol Labs, 952
F.2d 388, 391 (Fed. Cir. 1991). See also In re Wiseman, 596 F.2d 1019,
1022 (CCPA 1979) (arguments must first be presented to the board). A
general allegation that the art does not teach any of the claim limitations is
no more than merely pointing out the claim limitations. A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. 5 41.37(c)(l)(vii)
DECISION
The decision of the Examiner to reject claims 1- 15, 17, 19, and 20 is
reversed. The decision of the Examiner to reject claims 18 and 21 is
affirmed.
AFFIRMED-IN-PART
mev
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