Ex Parte BruderDownload PDFPatent Trial and Appeal BoardSep 6, 201813275744 (P.T.A.B. Sep. 6, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/275,744 10/18/2011 113123 7590 Harrity & Harrity, LLP 11350 Random hills road Suite 600 Fairfax, VA 22030 09/10/2018 FIRST NAMED INVENTOR Felix Bruder 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. 0095-0128 2641 EXAMINER CHOO, JOHANN Y ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 09/10/2018 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): docket@harrityllp.com mpick@harrity llp .com ptomail @harrity llp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FELIX BRUDER Appeal2017-006895 Application No. 13/275,744 1 Technology Center 3600 Before ST. JOHN COURTENAY III, MARC S. HOFF, and SCOTT B. HOWARD, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 6-8, 12, and 27--41. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant's invention is method, system, and computer program product for enabling payment for items using a mobile device. The method comprises authenticating the mobile device with a service provider, and confirming said authentication by a device manager. The method further comprises the steps of activating the authenticated mobile device by means 1 The real party in interest is Accenture Global Services Limited. 2 Claims 2-5, 9-11, 13-26 have been cancelled. Appeal2017-006895 Application No. 13/275,744 of an activation signal, and responding to that activation signal by sending an identification signal from the authenticated mobile device to the device manager. After the mobile device is identified using an identification signal, the mobile device receives an identifier list, said list including a first item identifier identifying a first set of items. The method further comprises sending, by the identified mobile device to the device manager, an indication of a selection of the first item identifier. Abstract. Claim 1 is exemplary of the claims on appeal: 1. A method comprising: receiving, by a mobile device associated with a customer, an activation signal from a device manager associated with a merchant, the mobile device being registered with a service provider for the service provider to provide payment to the merchant; activating, by the mobile device, a payment capability of the mobile device based on the activation signal; transmitting, by the mobile device and to the device manager, an identification signal identifying the mobile device based on the activation signal; receiving, by the mobile device and from the device manager, an identifier list including a plurality of item identifiers, each item identifier, of the plurality of item identifiers, identifies a set of items previously chosen by respective customers for purchase from the merchant for which payment has not yet been received, the identifier list being received based on the identification signal, the plurality of item identifiers including a first item identifier identifying a first set of items previously chosen by the customer associated with the mobile device for purchase from the merchant and a second item identifier identifying a second set of items previously chosen by a different customer for purchase from the merchant, 2 Appeal2017-006895 Application No. 13/275,744 the identifier list being received after the device manager confirms authentication of the mobile device with the service provider and before the mobile device causes an authorization signal to be sent to the service provider; selecting, by the mobile device and based on a customer input, the first item identifier from the plurality of item identifiers; sending, by the mobile device and to the device manager, an indication of a selection of the first item identifier from the plurality of item identifiers; and causing, by the mobile device, the authorization signal to be sent to the service provider to authorize the service provider to provide payment to the merchant for the first set of items previously chosen by the customer associated with the mobile device, the authorization signal indicating the service provider is authorized to provide payment to the merchant for the first set of items previously chosen by the customer associated with the mobile device. The Examiner applies the following prior art against the claims: Bezy et al. Hager et al. Byman-Kivivuori et al. Koskimies House et al. Lutnick et al. Murphy Otto et al. Laracey us 5,703,344 US 2001/0051901 Al US 2004/0002305 Al US 2004/0081110 Al US 6,785,805 Bl US 2008/0207296 Al US 2009/0037285 Al US 2009/0182630 Al US 2011/0251892 Al Dec. 30, 1997 Dec. 13, 2001 Jan. 1,2004 Apr. 29, 2004 Aug. 31, 2004 Aug.28,2008 Feb. 5,2009 July 16, 2009 Oct. 13, 2011 Claims 1, 6, 27, 28, 30, 31, and 33-41 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Otto, Koskimies, Murphy, and Hager. 3 Appeal2017-006895 Application No. 13/275,744 Claim 32 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Otto, Koskimies, Murphy, Hager, and House. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Otto, Koskimies, Murphy, Hager, and Lutnick. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Otto, Koskimies, Murphy, Hager, Lutnick, and Laracey. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Otto, Koskimies, Murphy, Hager, and Byman-Kivivuori. Claim 29 stands rejected3 under 35 U.S.C. § 103(a) as being unpatentable over Otto, Koskimies, Murphy, Hager, and Bezy. Throughout this decision, we make reference to the Appeal Brief ("App. Br.," filed November 29, 2016), the Reply Brief ("Reply Br.," filed March 27, 2017), and the Examiner's Answer ("Ans.," mailed February 22, 2017) for their respective details. ISSUES 1. Does the combination of Otto, Koskimies, Murphy, and Hager disclose or fairly suggest receiving, by the mobile device and from the device manager, an identifier list including a plurality of item identifiers, each item identifier serving to identify a set of items previously chosen by respective customers for purchase from the merchant? 2. Does the claimed "second item identifier identifying a second set of items previously chosen by a different customer for purchase from the merchant" constitute nonfunctional descriptive material? 3 The Examiner has withdrawn the 35 U.S.C. § 112(b) rejection of claims 29, 30, and 32. Ans. 2. 4 Appeal2017-006895 Application No. 13/275,744 PRINCIPLES OF LAW When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms ofpatentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1993). ANALYSIS CLAIMS 1, 6, 27, 28, 30, 31, AND 33--41 Appellant argues that the Examiner's prior art combination of Otto, Koskimies, Murphy, and Hager fails to disclose or suggest two elements of independent claim 1: (a) "a set of items previously chosen by respective customers for purchase from the merchant for which payment has not yet been received," and (b ), "a second item identifier identifying a second set of items previously chosen by a different customer for purchase from the merchant." App. Br. 11. "A SET OF ITEMS" We do not agree with Appellant's allegation that the combination of references fails to disclose or suggest the claimed "item identifiers" or "identifier list." We agree with the Examiner's finding that Otto discloses the selection, use, and display of an item identifier. Final Act. 7; Otto ,r,r 120, 125. The Examiner finds, and we agree, that Koskimies discloses allowing for a user to select from a catalog of identifiers. "The midlet will then retrieve a list of available content items from the content server and display them to the user via the mobile device." Koskimies ,r 50; Final Act. 8. The Examiner then finds that the combination of Otto and Koskimies does not disclose an item identifier that identifies a set of items chosen by 5 Appeal2017-006895 Application No. 13/275,744 respective customers for purchase from a merchant, including a first item identifier identifying a first set of items previously chosen by the customer. Final Act. 9. We agree with the Examiner's finding that Murphy discloses an identifier as a reference to a set of items: "A selection of one or more items may be received at block 1202. A total for the selection may be generated at block 1204. The total for the selection may be presented on a display of a point of sale (POS) device at block 1206." Murphy ,r 92; Final Act. 10. We also agree with the Examiner's conclusion that it would have been obvious to modify Otto and Koskimies in view of Murphy "for the user to be able to select groups of related or previously selected items." Final Act. 10. "A SECOND ITEM IDENTIFIER" The Examiner finds "Otto does not specifically disclose "a second item identifier identifying a second set of items previously chosen by a different customer for purchase from the merchant." Final Act. 11. The Examiner cites Hager as disclosing this limitation. Id. The Examiner further finds that "the limitations applicant is currently asserting as not being taught by the prior art are descriptions of registrations, files, signals, identifier lists and what they indicate, etc., which do not manipulate the process being performed, nor the system performing, nor the CRM storing instructions and therefore does not move to distinguish over the prior art." Final Act. 3. Appellant argues in response that the claimed identifier list[ s] must be given patentable weight, because Appellant is "not merely attempting to claim the contents of an 'identifier list' as an end result of a process, but rather is claiming a functional use of the 'identifier list' to cause 'the service 6 Appeal2017-006895 Application No. 13/275,744 provider to provide payment to the merchant for the first set of items previously chosen by the customer."' App. Br. 16. We observe that the "second item identifier" recited in claim 1 is not tied to any other claim limitation, and performs no function in any claim. We agree with the Examiner that the "second item identifier, identifying a second set of items previously chosen by a different customer," constitutes descriptive material not functionally related to the "substrate" of the claim, and does not distinguish the invention from the prior art. Gulack, 703 F.2d at 1385. The "second item identifier" material in the appealed claims is analogous to the nucleic acid sequence numbers recited in the claims of Ex parte Nehls, 88 USPQ2d 1883 (BPAI 2008). The invention in Nehls was a computer-based system for identifying nucleic acid fragments of the human genome. The claims recited "a) a data storage means comprising the sense or antisense sequence of at least 18 contiguous nucleotides of any one of SEQ ID NOS:9-1,008; b) search means for comparing a target sequence to each of the sequences of the data storage means of step a) to identify homologous sequence(s); and c) retrieval means for obtaining said homologous sequence(s) of step (b)." Nehls, 88 USPQ2d at 1884. The Board in Nehls found no evidence that the sequence ID numbers functionally affect the process of comparing a target sequence to a database. Id. at 1888. The sequence ID numbers, the Board concluded, are merely information being manipulated by a computer, and do not affect how the method of the prior art is performed. Id. In the invention under appeal, as in Nehls, the second item identifiers similarly have no effect on the function of 7 Appeal2017-006895 Application No. 13/275,744 the steps of the claimed method; the item identifiers are merely information being manipulated by computer hardware and software. As a result, we conclude the claimed "second item identifiers identifying a second set of items" are directed to nonfunctional descriptive material that does not serve to distinguish the invention from the prior art. It is of no moment, then, that Hager does not disclose second item identifiers that identify a second set of items previously chosen by a different customer. We conclude that the Examiner did not err in combining Otto, Koskimies, Murphy, and Hager. We sustain the Examiner's§ 103(a) rejection of claims 1, 6, 27, 28, 30, 31, and 33--41. CLAIMS 7, 8, 12, 29, AND 32 With respect to these dependent claims, Appellant argues only that the claims are patentable for the same reasons given with respect to claim 1. App. Br. 17-19. Because we are not persuaded that the Examiner erred in rejecting claim 1 over Otto, Koskimies, Murphy, and Hager, we also sustain the Examiner's rejection of: claim 32 over Otto, Koskimies, Murphy, Hager, and House; claim 7 over Otto, Koskimies, Murphy, Hager, and Lutnick; claim 8 over Otto, Koskimies, Murphy, Hager, Lutnick, and Laracey; claim 12 over Otto, Koskimies, Murphy, Hager, and Byman- Kivivuori; and claim 29 over Otto, Koskimies, Murphy, Hager, and Bezy, all for the same reasons given with respect to claim 1, supra. 8 Appeal2017-006895 Application No. 13/275,744 CONCLUSIONS 1. The combination of Otto, Koskimies, Murphy, and Hager fairly suggests receiving, by the mobile device and from the device manager, an identifier list including a plurality of item identifiers, each item identifier serving to identify a set of items previously chosen by respective customers for purchase from the merchant. 2. The claimed "second item identifier identifying a second set of items previously chosen by a different customer for purchase from the merchant" constitutes nonfunctional descriptive material. ORDER The Examiner's decision to reject claims 1, 6-8, 12, and 27--41 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation