Ex Parte Fletcher

Patent Trial and Appeal Board

Feb 10, 2016

12106647 (P.T.A.B. Feb. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/106,647 04/21/2008
132862 7590 02/12/2016
Schwegman Lundberg & Woessner, P.A. I PayPal
P.O. Box 2938
Minneapolis, MN 55402
Charles Dale Fletcher
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.
2043.545US 1 8158
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/12/2016 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 CHARLES DALE FLETCHER
Appeal2013-006807 1
Application 12/106, 647
Technology Center 3600
Before: MICHAEL W. KIM, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the Examiner's Non-Final rejection of
claims 1-18 and 25-27. We have jurisdiction to review the case under
35 U.S.C. §§ 134 and 6.
1 The real party in interest, according to Appellant, is eBay Inc. Appeal
Br. 2.
Appeal2013-006807
Application 12/106,647
The invention relates generally to conducting payment transactions.
Spec. para. 1.
Claim 15 is illustrative:
15. A method in a networked system for conducting
payment transactions that pool payments, comprising:
using one or more computer processors at a payment
system, receiving an electronic invoice from a merchant system
wherein the electronic invoice is associated with a transaction
between the merchant system and two or more consumers;
receiving, at the payment system, a transaction code from
two or more consumer systems associated with the two or more
consumers, where the transaction code identifies the electronic
mv01ce;
transmitting the electronic invoice from the payment
system to the two or more consumer systems; and
receiving, at the payment system, a payment
authorization for two or more sub-payments from the two or
more consumer systems, wherein the two or more sub-
payments are to cover at least a portion of the electronic
mv01ce.
Claims 15 and 25 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Claims 15-18 and 25-27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sanchez (US 2004/0122767 Al, pub. June 24, 2004) and
Hansen (US 2004/0199461 Al, pub. Oct. 7, 2004).
We AFFIRM.
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Appeal2013-006807
Application 12/106,647
ANALYSIS
Rejection Under 35 U.S. C. § 112, first paragraph
We are persuaded the Examiner erred in asserting that claims 15 and
25 fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph. Appeal Br. 9-10.
The Examiner states that the Specification does not provide adequate
written description support for "transmitting the electronic invoice from the
payment system to the two or more consumer systems" as recited in
independent claim 15, because such language is not found within the
Specification. Independent claim 25 recites a similar limitation. According
to the Examiner, Figure 4A shows that the electronic invoice only goes to
the payment system, and that it is only the transaction code, and not the
electronic invoice, that is transmitted to multiple client computer systems.
Ans. 4--5.
We agree with Appellant, however, that the argued limitation is found
in Figure 7. Specifically, paragraph 81 of the Specification discloses that the
process in Figure 7 may be performed by the payment system. Block 710 of
Figure 7 discloses "transmit[ting] the electronic invoice to the Consumer
'1, "' and block 715 discloses "transmit[ ting] the electronic invoice to the
Consumer '2, "' etc.
For these reasons, we do not sustain the rejection of independent
claims 15 and 25 under 35 U.S.C. § 112, first paragraph.
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Appeal2013-006807
Application 12/106,647
Rejection under 35 U.S.C. §' 103(a) as unpatentable over Sanchez and
Hansen
Independent Claim 15
We are not persuaded the Examiner erred in asserting a combination
of Sanchez and Hansen renders obvious independent claim 15, because,
according to Appellant, Sanchez does not disclose "using one or more
computer processors at a payment system, receiving an electronic invoice
from a merchant system, wherein the electronic invoice is associated with a
transaction between the merchant system and two or more consumers."
Appeal Br. 13-20 (emphasis omitted). Specifically, Appellant asserts that
Sanchez does not disclose an electronic invoice received at the payment
system from the merchant system.
As a subset of that overarching assertion, Appellant first asserts that
because the first financial institution of Sanchez corresponds to the recited
"merchant system," certain claim limitations that define specific transactions
between the "payment system" and the "merchant system" cannot be met by
Sanchez. Appellant's assertion is misplaced, as the seller of Sanchez
corresponds to the recited "merchant system," and the combination of the
first and second financial institutions corresponds to the recited "payment
system." Specifically, Sanchez discloses a seller, a first financial institution,
a second financial institution, and a purchaser. Fig. 1. Further, Sanchez
discloses that the first financial institution and the second financial
institution may be "a single financial institution." Sanchez i-f 55.
Appellant next asserts that only a sale price, and not the recited
"electronic invoice," is transmitted. In order to decide this issue, it is
necessary to construe "electronic invoice." The claim term "invoice" is not
defined by the Specification, including the claim language. The ordinary
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Appeal2013-006807
Application 12/106,647
and customary meaning of the term "invoice" is as follows: "a document
that shows a list of goods or services and the prices to be paid for them"
(MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-
webster.com/dictionary/invoice (last viewed Feb. 3, 2016)). In other words,
at its most basic level, an "invoice" includes an item and a price. Figure 4 B
of the Specification has an example of an invoice, which is consistent with
the aforementioned ordinary and customary meaning, that an "invoice"
includes an item and its price.
As an initial matter, we note that Appellant acknowledges that
Sanchez discloses transmitting "a sale for a predetermined sale price."
Appeal Br. 15 (citing Sanchez i-f 10). We find that "a sale for a
predetermined sale price" includes, at a minimum, an item and its price, thus
meeting the aforementioned construction of "electronic invoice."
Even if that is not sufficient, however, Sanchez discloses that the
second financial institution is given instructions to disallow purchases of
certain items based on age, for example, liquor, cigarettes, and the like.
Sanchez i-f 54. Based on that, we find that in order to disallow a purchase,
the second financial institution in Sanchez must receive information
concerning the product sold. Thus, we agree with the Examiner that both an
item and its price, which constitute an invoice, are transmitted by Sanchez.
All of Appellant's other assertions concerning independent claim 15
have been addressed by the above analysis. For these reasons we sustain the
rejection of independent claim 15.
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Appeal2013-006807
Application 12/106,647
Dependent Claims 16-18
Dependent claims 17 and 18 each depends from dependent claim 16,
which depends from independent claim 15. Of these claims, Appellant
argues only dependent claim 16 with any particularity. Appeal Br. 21-23.
We select dependent claim 16 as representative. See 37 C.F.R.
§ 41.37(c)(l)(vii).
Appellant asserts that the payment system does not generate the
transaction code, as required by claim 16, because, in Sanchez, the first
financial system, which corresponds to the recited merchant system, and not
the recited payment system, generates the transaction code. Appellant's
assertion is misplaced. As stated above regarding independent claim 15, the
combination of the first and second financial institutions of Sanchez
correspond to the recited payment system. Sanchez Fig. 1, i-f 55. The
transaction code is generated by the first financial institution. Sanchez i-f 11].
Thus, we agree with the Examiner that Sanchez discloses that the transaction
code is generated by the payment system.
For these reasons we sustain the rejection of dependent claims 16-18.
Claims 25-27
Dependent claims 26 and 27 each depends from independent
claim 25. Of these claims, Appellant argues only independent claim 25
separately. Appeal Br. 23-26. We select independent claim 25 as
representative. See 37 C.F.R. § 41.37(c)(l)(vii).
Appellant advances arguments for independent claim 25 that are
substantially similar to those advanced for dependent claim 16. Appeal
Br. 23-25. They are unpersuasive for the same reasons we articulate above.
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Appeal2013-006807
Application 12/106,647
We sustain the rejection of claim 25; therefore, we also sustain the
rejection of dependent claims 26 and 27.
DECISION
We REVERSE the rejection of claims 15 and 25 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
We AFFIRM the rejection of claims 15-18 and 25-27 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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