10807431 (B.P.A.I. Mar. 29, 2011)

Ex Parte Gandre et al

Board of Patent Appeals and InterferencesMar 29, 2011

10807431 (B.P.A.I. Mar. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte THOMAS R. GANDRE and DANIEL J. RUPPE ____________ Appeal 2010-004323 Application 10/807,431 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004323 Application 10/807,431 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1 to 20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND Appellants’ invention is directed to a method and apparatus to determine whether to require a user to enter a secret code into an electronic transaction device for completing selected merchant transactions (Spec. 1). Claim 1 is illustrative: A computer-implemented method of determining whether to require a user to enter a secret code into an electronic transaction device for completing selected merchant transactions, the method comprising: (a) receiving account identification information read from a form of account identification presented by a user to an electronic transaction device to initiate a transaction; (b) receiving a transaction amount; (c) providing a table that includes a plurality of merchant categories and transaction threshold amounts for each merchant category; (d) obtaining the merchant category for each initiated transaction; (e) comparing the transaction amount to the transaction threshold associated with the merchant; and (f) requiring the user to enter the secret code for the selected transaction if the inputted transaction amount exceeds the transaction threshold amount associated with the merchant; wherein the table resides at the electronic transaction device and step (e) is performed by the electronic transaction device, or wherein the table resides at a terminal driver and step Appeal 2010-004323 Application 10/807,431 3 (e) is performed by the terminal driver, or wherein the table resides at an acquirer processor and step (e) is performed by the acquirer processor, or wherein the table resides at a payment network and step (e) is performed by the payment network. Appellants appeal the following rejections: Claims 11 to 20 are rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter. Claims 1 to 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Berardi (US Pub. 2004/0049451 A1, pub. Mar. 11, 2004) in view of Langhans (US Pat. 5,621,201, iss. Apr. 15, 1997). ISSUE Did the Examiner err in finding that Langhans discloses that the table resides at a payment network and that comparing the transaction amount to the transaction threshold is performed at the payment network? FACTUAL FINDINGS We adopt all of the Examiner’s findings regarding the location of the table in Langhans and the comparison of the transaction amount and the transaction threshold as our own. (Ans. 5 to 6). Additional findings of fact may appear in the Analysis that follows. Appeal 2010-004323 Application 10/807,431 4 ANALYSIS Indefiniteness We agree with the Examiner that Appellants’ Specification does not clearly link the corresponding means clauses in claim 11 to corresponding structure. Although the Appellants are correct that the various means clauses take place on the POS device, the Specification has not indicated what structure in the POS device performs the various functions. For example, the Specification is not clear what structure in the POS device receives a transaction amount and obtains a merchant category. We appreciate that the POS device has a software program disposed thereon. However, the Specification does not disclose the algorithm that is used to perform the various steps. When a Specification discloses no algorithm corresponding to a computer-enabled means-plus-function limitation in a claim, an applicant has necessarily failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112. See Aristocrat Techs. Australia Pty Ltd., v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (“‘[t]he corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.’ [Harris,] 417 F.3d at 1249.”); Net MoneyIN, Inc. v. Verisign, Inc. 545 F.3d 1359, 1367 (Fed. Cir. 2008) (‘“[A] means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function.”) See also Blackboard, Inc. v. Desire2Learn Inc., 574 Appeal 2010-004323 Application 10/807,431 5 F.3d 1371, 1382-83 (Fed. Cir. 2009) (finding Blackboard’s means-plus- function claims indefinite because the patent describes an undefined component, i.e., a black box, that performs the recited function but does not disclose how the component performs the function). See further Ex parte Catlin, 90 USPQ2d 1603, 1605 (BPAI 2009) (precedential) (during prosecution, computer-enabled means-plus-function claims will be held unpatentable under 35 U.S.C. § 112, second paragraph, as being indefinite if a Specification fails to disclose any algorithm corresponding to the recited function in the claims). Appellants disclose that the POS equipment may be any form of electronic device and the various steps may be performed over the internet using a web browser on a personal computer, on a handheld computer device, or on a voice response unit. It is the algorithm on the various devices that performs the various functions. The Appellants have not disclosed this algorithm. Therefore, we will sustain this rejection. Obviousness Appellants argue that Langhans does not disclose that the table resides at the payment network nor that the comparing step is performed by the payment network. At the heart of the disagreement between the Examiner and the Appellants is what construction is to be given the term “payment network.” The Appellants argue that the payment network in Langhans is the corporate card processor 70 (Br. 7). Appellants further argue that the table does not reside on the corporate card processor 70 nor does the corporate card processor perform the comparing step. We do not find this Appeal 2010-004323 Application 10/807,431 6 argument persuasive because the Examiner does not find that the corporate card processor alone is the payment network. The Examiner finds that the corporate card processor 70 plus the VisaNet network 94 is the payment network (Ans. 19). In support of this finding the Examiner finds that a transaction can not be completed without the integral functions of the card processor 70 and the VisaNet network. We note that the Appellants have not directed our attention to a definition in the Specification that would preclude finding that the payment network in Langhans is the corporate card processor and the VisaNet network. In view of the forgoing, we will sustain the Examiner’s rejection under 35 U.S.C. § 103(a). DECISION We affirm the § 112, second paragraph and § 103(a) rejections for the reasons of record. 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)(1). AFFIRMED Appeal 2010-004323 Application 10/807,431 7 hh