Ex Parte Bedier

Patent Trial and Appeal Board

Mar 30, 2016

11618104 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111618,104 12/29/2006
132862 7590 04/01/2016
Schwegman Lundberg & Woessner, P.A. I PayPal
P.O. Box 2938
Minneapolis, MN 55402
Osama Mostafa Bedier
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.
2043.397US 1 5293
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
slw@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSAMA MOST AF A BEDIER
Appeal2013-010667 1
Application 11/618, 104
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-24. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies eBay Inc. as the real party in interest. Br. 2.
Appeal2013-010667
Application 11/618, 104
Appellant's invention relates generally to authenticating payments
from a buyer to a seller. (Spec. para. 1 ).
Claim 1 is illustrative:
1. A system comprising:
an electronic payment data structure comprising one or
more electronic payment fields, each electronic payment field to
provide access to an account value from a payment source
selected from at least one payment source;
a payment transaction data structure, the payment
transaction data structure comprising a matching selection
associated with a at least one seller criterion defined by a buyer,
the matching selection to be compared against verifying data, the
buyer defined seller criterion defining a circumstance in which a
payment request received from a seller is to be fulfilled, the
payment request including an agreed upon amount of value to be
transferred from the buyer to the seller; and
a payment application to fulfill, using one or more
processors, the payment request to the seller when the payment
is authenticated, the payment being authenticated based in part
on the matching selection matching the verifying data and the
circumstance defined by the buyer defined seller criterion being
met.
Appellants appeal the following rejection:
Claims 1-24 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Luchene (US 2008/0059329 Al, pub. Mar. 6, 2008), and Cornelius (US
6,629,081 Bl, iss. Sept. 30, 2003).
ANALYSIS
Claims 1--8
Claim 1 recites a system with three components: two data structures
and a "payment application." The term "payment application" is not defined
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Application 11/618, 104
or otherwise limited in scope by the Specification, (see, e.g., Spec. para. 24),
but the claim calls for the application to use "one or more processors." We
thus, construe a "payment application" as software. The Specification
describes the operation of the payment application as making
determinations. (Appeal Br. 7, citing Spec. para. 101).
Within the payment transaction data structure is a "criterion." The
"criterion" is examined by the payment application to determine if the
criterion is met, but this meeting of the criterion is not further limited, and is
construed broadly to encompass all manners of determining if a criterion is
met by the payment application software.
The payment application is claimed using functional language, thus a
prior art system must be at least capable of fulfilling the payment request to
the seller when the payment is authenticated, the payment being
authenticated based in part on the matching selection matching the verifying
data and the circumstance defined by the buyer defined seller criterion being
met. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
We are persuaded by Appellant's argument that neither the
"matching" in Luchene, nor the bidding or letter of credit in Cornelius,
discloses a buyer- defined seller criterion, or any process involving
authenticating a payment request based on the criterion being met. (Appeal
Br. 14--17). The Examiner finds the application authenticating a payment
request based on the criteria being met, in Cornelius, at Figure 13, and in
columns 1 and 18. (Final Act. 4--5).
The portions of Cornelius relied upon the Examiner, however, fail to
disclose the necessary elements. The cited section in column 1, for instance,
refers to a letter of credit, which is an extension of credit that may never
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Application 11/618, 104
materialize as a payment. (Col 1, 11. 23-39). The cited section in column 18
describes Figure 13, and discloses bidding for the trading of financial
instruments. (Col. 18, 11. 52----67). The cited section discloses that agreed
transactions are "closed." (Id.). The closing, however, does not indicate a
payment request being authenticated based on a criterion being met, and
thus, does not disclose an application capable of authenticating a payment
request, as claimed. It merely discloses "closing" and nothing else.
The Examiner has, thus, failed to establish a system at least capable of
authenticating a payment request when "the circumstance defined by the
buyer defined seller criterion [is] met." For this reason, we will not sustain
the rejection of claim 1, nor of dependent claims 2-8 rejected along with
claim 1.
Claims 9-11, 19, and 20
Each of independent claims 9 and 19 recite "making the association of
the at least one seller criterion with the matching selection available to a
payment application, the payment application capable of using the
association to fulfill the payment request when the payment is
authenticated."
We are persuaded by Appellant's argument that Cornelius fails to
disclose a payment application fulfilling a payment request when
authenticated. (Appeal Br. 16-17).
As with claim 1, the Examiner cites to Cornelius, Figure 13, and
portions of columns 1and18. (Final Act. 7-8, 14--15). As we set forth
above, at claim 1, the cited sections of Cornelius do not disclose an
application authenticating a payment request. For this reason, we do not
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Application 11/618, 104
sustain the rejection of claims 9 and 19, nor of dependent claims 10, 11, and
20 that were rejected along with claims 9 and 19.
Claims 12-15, 21, and 22
Independent claims 12 and 21 each recite "processing, using one or
more processors, a payment amount from the one or more payment source
selections when the payment is authenticated, the payment being
authenticated based in part on ... a buyer defined seller criterion associated
with the matching value is met."
We are persuaded by Appellant's argument that Cornelius fails to
disclose processing a payment request when authenticated. (Appeal Br.
16-17).
As with claim 1, the Examiner cites to Cornelius, Figure 13, and
portions of columns 1and18. (Final Act. 9-10, 15-16). As we set forth
above, at claim 1, the cited sections of Cornelius do not disclose an
application authenticating a payment request, and therefore does not disclose
a payment application actually processing a payment request when
authenticated. For this reason, we do not sustain the rejection of claims 12
and 21, nor of dependent claims 13-15 and 22 that were rejected along with
claims 12 and 21.
Claims 16--18, 23, and 24
Each of independent claims 16 and 23 recite "receiving a positive
response from the application server indicating that the payment amount has
posted to an account of the seller when the payment is authenticated, the
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payment being authenticated based in part on the verifying data matching the
matching selection and the seller criterion is satisfied."
We are persuaded by Appellant's argument that Cornelius fails to
disclose a response to posting a payment to an account. (Appeal Br. 16-17).
As with claim 1, the Examiner cites to Cornelius, Figure 13, and
portions of columns 1and18. (Final Act. 11-13, 17-18). As we set forth
above, at claim 1, the cited sections of Cornelius do not disclose an
application authenticating a payment request, and therefore does not disclose
a payment application actually posting a payment to an account, and
receiving a response after the posting. For this reason, we do not sustain the
rejection of claims 16 and 23, nor of dependent claims 17, 18, and 24 that
were rejected along with claims 16 and 23.
DECISION
We reverse the rejection under 35 U.S.C. § 103(a) of claims 1-24.
REVERSED
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