Ex Parte Blythe

Patent Trial and Appeal Board

Jan 9, 2015

11964859 (P.T.A.B. Jan. 9, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/964,859 12/27/2007 Simon Blythe 1788-14 2488
71973 7590 01/09/2015
HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
01/09/2015 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 THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SIMON BLYTHE
____________________

Appeal 2012-0051991
Application 11/964,8592
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 12, 13, 15, 16, 18–20, and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
August 12, 2011) and Reply Brief (“Reply Br.,” filed January 9, 2012), and
the Examiner’s Answer (“Ans.,” mailed November 10, 2011).
2 Appellant identifies MasterCard International, Inc. as the real party in
interest. App. Br. 2.
Appeal 2012-005199
Application 11/964,859

2
CLAIMED INVENTION
Appellant’s claimed invention “generally relates to payment
transaction systems, and more particularly to conducting a payment
transaction using a pre-allocated resource” (Spec. 1, ll. 6–8).
Claim 12, the sole independent claim, is reproduced below and is
representative of the subject matter on appeal:
12. A method for conducting a payment transaction
comprising:
storing on a payment device a user specified allowable
first resource amount that can be charged to a user account and
at least one user specified class of good or service associated
with said user specified allowable first resource amount, said
payment device associated with said user account;
transmitting with said payment device a transaction
instruction to a payment terminal, said transaction instruction
including said user specified allowable first resource amount
and said at least one user specified class of good or service;
transmitting with said payment terminal an authorization
request to a credit grantor, said authorization request including
a second resource amount to charge said user account, a
merchant identifier associated with said second resource
amount, said user specified allowable first resource amount, and
said at least one user specified class of good or service, said
merchant identifier determined by said payment terminal;
comparing with a control module of said credit grantor
said user specified allowable first resource amount to said
second resource amount;
comparing with said control module of said credit grantor
said at least one user specified class of good or service to said
merchant identifier; and
Appeal 2012-005199
Application 11/964,859

3
authorizing with said control module of said credit
grantor the charging of said user account for said second
resource amount for said merchant identifier when said second
resource amount is less than said user specified allowable first
resource amount and said merchant identifier corresponds to
said at least one user specified class of good or service based on
the comparison of said merchant identifier and said at least one
user specified class of good or service.

REJECTION
Claims 12, 13, 15, 16, 18–20, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hoffman (US 7,729,986 B1, iss. June 1,
2010), Fleming (US 5,953,710, iss. Sept. 14, 1999), and Asack
(US 7,606,765 B1, iss. Oct. 20, 2009).

ANALYSIS
Appellant argues that the Examiner erred in rejecting claim 12 under
35 U.S.C. § 103(a) because none of Hoffman, Fleming, and Asack discloses
or suggests comparing a user specified good or service to a merchant
identifier, i.e., “authorizing . . . the charging of said user account for said
second resource amount for said merchant identifier when . . . said merchant
identifier corresponds to said at least one user specified class of good or
service based on the comparison of said merchant identifier and said at least
one user specified class of good or service,” as recited in claim 12 (App. Br.
7–11; see also Reply Br. 2–3). The Examiner acknowledges that neither
Hoffman nor Fleming specifically mentions a “user specified class of good
or service” and directs our attention to Asack as disclosing the argued
feature (Ans. 6, citing Asack, col. 3, ll. 38–40). We agree with Appellant.
Appeal 2012-005199
Application 11/964,859

4
Asack is directed to a television credit card system, and describes that
a credit card may be used for purchasing television programming, e.g., pay-
per-view television events, when the purchaser is located remotely from his
or her home base (Asack, Abstract). Asack describes that credit card use can
be tracked to monitor users’ viewing habits (Asack, col. 3, ll. 35–38), and
states at column 3, lines 38–40, cited by the Examiner, that “[p]arents can
limit the credit card used by their children to certain events and prohibit
purchase of other events and thereby exert some control over the viewing
habits of their children.” But we find nothing in this portion of Asack that
discloses or suggests comparing a user specified good or service to a
merchant identifier, as called for in claim 12.
Responding to Appellant’s arguments in the Response to Argument
section of the Answer, the Examiner asserts that a “‘good or service’ can be
anything including ‘pay-for-view’ as mentioned by Asack” and
“[f]urthermore, the limitation states ‘. . . at least one user specified class of
good or service . . . .,’ therefore applicant’s further argument about
‘Asack et al. is only concerned with services in a single class . . .’ is moot”
(Ans. 11). Yet the difficulty with that response is that the Examiner does not
point to any support in Asack, nor for that matter in either Fleming or
Hoffman, for the merchant identifier feature, i.e., any disclosure or
suggestion of comparing the user specified class of service with a merchant
identifier, as called for in claim 12 (see Reply Br. 2–3).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 12 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of claims 13, 15, 16, 18–20, and 22, which depend from
claim 12. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
Appeal 2012-005199
Application 11/964,859

5
(“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).

DECISION
The Examiner’s rejection of claims 12, 13, 15, 16, 18–20, and 22
under 35 U.S.C. § 103(a) is REVERSED.

REVERSED

Klh/rvb