Ex Parte Dogin et al

Patent Trial and Appeal Board

Feb 27, 2017

13571926 (P.T.A.B. Feb. 27, 2017)

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.
13/571,926 08/10/2012 Jennifer Dogin 0076412-000071 8125
21839 7590 03/01/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER DOGIN and BRIAN MAW
Appeal 2015-0050001
Application 13/571,926
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—36. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to “the reservation of a future financial
transaction including providing payment information by a party for the
benefit of a third party.” Spec. 11.
1 The Appellants identify MasterCard International Inc. as the real party in
interest. Appeal Br. 2.
Appeal 2015-005000
Application 13/571,926
Independent claim 1 is illustrative:
1. A method of processing a reservation, comprising:
receiving, by a receiving device, reservation information
for a reservation, wherein the reservation information includes at
least a preauthorization amount, payment information, a
merchant identifier, and a predetermined period of time;
storing, in a database device, the received reservation
information;
identifying, by a processing device, a unique identifier
associated with the stored reservation information;
transmitting, by a transmitting device, at least the unique
identifier associated with the stored reservation information and
predetermined period of time to a merchant associated with the
merchant identifier for a future financial transaction pertaining
to the reservation information;
receiving, by the receiving device, data identifying, within
the predetermined period of time, fulfillment of the reservation;
and
transmitting, by the transmitting device, the stored
payment information for payment of the financial transaction
based on the preauthorization amount.
Claims 1—36 are rejected under 35U.S.C. § 101 as reciting ineligible
subject matter in the form of an abstract idea.
Claims 1—36 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bernstein (US 2012/0066133 Al, pub. Mar. 15, 2012) and Myatt
(US 2003/0101135 Al, pub. May 29, 2003).
We AFFIRM.
ANALYSIS
Rejection under 35 U.S.C. f101
The Examiner asserts that the claims are directed to “processing a
reservation,” that this is a “fundamental economic practice,” and that the
claims merely implement that “fundamental economic practice” on a generic
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Application 13/571,926
computer system. Answer 4—5. The Appellants’ assert that the Examiner’s
characterization that the claims are directed to “processing a reservation” is
overly broad, in that it is only recited only in the preamble, and is merely the
overall objective of the claimed invention. Reply Br. 8; see also Reply Br.
11—13. We agree.
More specifically, while we could perhaps agree with the Examiner
that most of the steps, for example, of independent claim 1, are steps that
would typically occur in “processing a reservation,” we disagree that the
same can be said for the following limitation: “transmitting, by a
transmitting device, at least the unique identifier associated with the stored
reservation information and predetermined period of time to a merchant
associated with the merchant identifier for a future financial transaction
pertaining to the reservation information.” The Specification confirms the
relevance of this claim limitation. Spec. 11 (“The present disclosure relates
to . . . the reservation of a future financial transaction including providing
payment information by a party for the benefit of a third party.”) By failing
to account for this claim limitation, we agree with Appellants that the
Examiner’s characterization that the claims are directed to “processing a
reservation” is overly broad. Moreover, even if we were to consider this
claim limitation at this time, we have an insufficient basis to discern that it is
a fundamental economic practice, because, based on the record, the
Examiner did not make sufficient findings to support that the transmitting
limitation has been long prevalent in our system of commerce.
For these reasons, we do not sustain the rejection of claims 1—36
under 35 U.S.C. § 101.
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Application 13/571,926
Rejection under 35 U.S.C. § 103(a)
Independent claims 1,9, 19, and 27 are argued together as group
(Appeal Br. 7), so we select claim 1 as representative. See 37 C.F.R. §
41.37(c)(l)(iv).
We are not persuaded that neither Bernstein nor Myatt, alone or in
combination, disclose or suggest “transmitting, by a transmitting device, at
least the unique identifier associated with the stored reservation information
and predetermined period of time to a merchant associated with the
merchant identifier for a future financial transaction pertaining to the
reservation information,” as recited in claim 1, because, according to the
Appellants, the cited portions merely disclose transmitting information once
a transaction has been initiated. Appeal Br. 14; see also Appeal Br. 8—14,
Reply Br. 2—6.
Bernstein discloses:
the financial account issuer (or payment processor) receives a
first authorization request that identifies a transaction. The
transaction is associated with merchant information, an account
identifier corresponding to a financial account, and a transaction
amount. The financial account issuer identifies a first pre­
authorization record associated with the account identifier and
determines that the transaction amount complies with
authorization criteria associated with the first pre-authorization
record. An authorization message is provided to the merchant.
Bernstein 114. This receiving of the merchant information, account
identifier, and transaction amount corresponds to the received data that
indicates fulfillment of a future financial transaction, as claimed. The
providing of an authorization corresponds to transmitting payment
information, as claimed.
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Appeal 2015-005000
Application 13/571,926
Having said that, we do acknowledge that while paragraph 14 of
Bernstein indicates identifying a pre-authorization record corresponds to the
financial transaction for which a request is received, Bernstein does not
describe in explicit detail, in paragraph 14, how this “pre-authorization
record” is established. See Id. Paragraph 158 of Bernstein, however,
discloses an example of receiving and storing reservation information about
a future financial transaction, for the aforementioned “pre-authorization
record,” as follows:
A transaction record is generated by the travel facilitator which
includes information identifying the two merchants involved in
the transaction (i.e., Hertz and United Airlines), the price of the
goods purchased from each merchant (i.e., $150 and $300
respectively), and the dates of travel. The travel facilitator
forwards a message to the issuer device requesting that limited
use account identifiers be selected for each transaction. If the
issuer device is available to respond, the issuer device identifies
the appropriate card pool (i.e., the card pool which is associated
with the travel facilitator) and retrieves a limited use account
identifier for each merchant. A pre-authorization record is
established for each limited use account identifier.
Bernstein 1158.
Bernstein further discloses the “pre-authorization record may be
established for this limited use account identifier which restricts its use to
use at Hertz during the period of Mar. 15—17, 2003”, which, therefore,
includes a “predetermined period of time,” as claimed. Id. at 1159. Finally,
Bernstein discloses transmitting the “limited use account identifiers” to the
merchant. Id.
Although this portion of Bernstein does not disclose transmitting data
representing a “predetermined period time” to a merchant, Bernstein
additionally discloses “the limited use account identifier is presented along
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Application 13/571,926
with information identifying, for example, an expiration date of the limited
use account identifier,” to a merchant at the time of the future financial
transaction. Id. at 1130. Therefore, Bernstein meets the disputed claim
language of “transmitting, by a transmitting device, at least the unique
identifier associated with the stored reservation information and
predetermined period of time to a merchant associated with the merchant
identifier for a future financial transaction pertaining to the reservation
information,” as recited in independent claim 1.
For these reasons, we sustain the rejection of independent claims 1, 9,
19, and 27. We also sustain the rejections of dependent claims 2—8, 10-18,
20—26, and 28—36, which were not argued separately. Appeal Br. 17.
DECISION
We REVERSE the rejection of claims 1—36 under 35 U.S.C. § 101.
We AFFIRM the rejections of claims 1—36 under 35 U.S.C. § 103(a).
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
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