Ex Parte Gopalan

Board of Patent Appeals and Interferences

May 12, 2010

09888470 (B.P.A.I. May. 12, 2010)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PRABHAKAR GOPALAN
____________

Appeal 2009-009448
Application 09/888,470
Technology Center 3600
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Decided: May 12, 2010
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009448
Application 09/888,470

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STATEMENT OF THE CASE
Prabhakar Gopalan (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claim 17. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention “relates to a centralized personal data bank and an
electronic wallet tied to the centralized personal data bank that can be used
for purchases over the telephone or over the Internet based upon a primary
number and a wallet number.” Specification 1:6-8.
Claim 17, reproduced below, is the subject matter on appeal.
17. A method of completing a financial transaction between a user
having a payment account and a merchant having a merchant account,
the method comprising:
a) the user logging on to a centralized personal data base using
a basic number and a primary number, wherein the basic number is
accessible by the user but not by the merchant;
b) the user creating an electronic wallet in the centralized
personal data base by inputting a payment account number of the
user's payment account to associate with the electronic wallet,
a payment limit of the electronic wallet, and an expiration date of the
electronic wallet;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sep. 5, 2008) and Reply Brief (“Reply Br.,” filed Dec. 23, 2008),
and the Examiner’s Answer (“Answer,” mailed Oct. 29, 2008).
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c) responsive to the user creating the electronic wallet, the
centralized personal data base generating a wallet number associated
with the electronic wallet;
d) the user making a purchase from the merchant on a purchase
date by sending the primary number and the wallet number to the
merchant, wherein the purchase has a price;
e) the merchant sending the primary number and the wallet
number to the centralized personal data base; and
f) the centralized personal data base determining whether the
purchase is authorized by determining whether the purchase price
exceeds the payment limit of the electronic wallet and whether the
purchase date is after the expiration date, wherein the purchase is
authorized when the purchase price does not exceed the payment limit
and the purchase date is not after the expiration date;
g) responsive to determining that the purchase is authorized, the
centralized personal data base debiting the user's payment account for
the purchase price and crediting the merchant account.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Park
Armes
Shub
US 2001/0034725 A1
US 2001/0034720 A1
US 6,807,530 B1
Oct. 25, 2001
Oct. 25, 2001
Oct. 19, 2004
The following rejection is before us for review:
1. Claim 17 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Park and Armes.
2. Claim 17 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Armes and Shub.

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ISSUES
Regarding the rejection of claim 17 under 35 U.S.C. §103(a) as being
unpatentable over Park and Armes, the issue is whether the references
disclose step “c) responsive to the user creating the electronic wallet, the
centralized personal data base generating a wallet number associated with
the electronic wallet.”

Regarding the rejection of claim 17 under 35 U.S.C. §103(a) as being
unpatentable over Armes and Shub, the issue is whether the references
disclose “d) the user making a purchase from the merchant on a purchase
date by sending the primary number and the wallet number to the merchant,
wherein the purchase has a price” and “e) the merchant sending the primary
number and the wallet number to the centralized personal data base.”

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer
(Answer 3-7).

ANALYSIS
The rejection of claim 17 under 35 U.S.C. §103(a) as being unpatentable
over Park and Armes.
According to claim 17, a) a user logs on to a database using two
numbers, a basic number not accessible by a merchant and a primary
number; b) the user creates an electronic wallet in the database by inputting
three pieces of information: a payment account number of the user’s
payment account to associate with the electronic wallet, a payment limit of
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the electronic wallet, and an expiration of the electronic wallet; and c) the
database generates a wallet number associated with the electronic wallet in
response to the user creating the electronic wallet.
According to the Examiner these three claim steps are generally
disclosed in Parks at [0022]-[0024], [0028], and [0034]. Answer 4. The
Examiner found that step c) was disclosed in [0023]-[0023] of Parks. But
the Examiner did state that Parks did not disclose, in step b), “the user
creating an electronic wallet in the centralized personal data base by
inputting ... a payment limit of the electronic wallet, and an expiration date
of the electronic wallet”. Emphasis added. The Examiner relied on Armes
as disclosing inputting these additional pieces of information. According to
the Examiner, “it would have been obvious to one of ordinary skill in the art
at the time of the invention to modify Park to include these features as taught
by Armes for the obvious reason of providing restriction of the use of the
wallet thereby enhancing the security of the process.” Answer 5.
Appellant disagrees with the Examiner’s position. Appellant argues
that neither Park nor Armes discloses the claim step c): “responsive to the
user creating the electronic wallet, the centralized personal data base
generating a wallet number associated with the electronic wallet.” App. Br.
10.
In response to this argument, the Examiner stated that “Armes at
paragraph [0013] explicitly teaches that a cardholder is provided with a
secondary transaction number that is associated with a cardholder’s primary
account. This transaction number is an equivalent to “wallet number.””
Answer 9.
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Accordingly, the Examiner found step c) to be disclosed in [0022]-
[0023] of Park as well as in [0013] of Armes.
The Appellant replied that (a) Park’s identification number or card
number is not the same as the wallet number of claim 17 because Park’s
identification number and card number are not part of a centralized personal
data base’s three number system and the electronic wallet is not created in a
centralized personal data base” (Reply Br. 3) and (b) “Armes “secondary
number” is not the same as the wallet number of claim 17 because Armes
“secondary number” is not part of a centralized personal data base’s three
number system and the electronic wallet is not created in a centralized
personal data base” (Reply Br. 3).
Park describes an electronic payment method whereby an electronic
payment web server connected to a client terminal via the Internet provides a
user an ID and a password when the user registers for a card that can be used
to make purchases. Park: [0008]. The information the user provides upon
registration is stored in a database. Park: [0021]. When the user applies for
a card, the application information is sent to a payment gateway server
which sends the information, along with the registration information in the
database, to a financial company for approval for card use. Park: [0022].
Once approved, the card is provided with a number and the electronic
payment web server issues the card with the number to the registered user.
Park: [0022]. The payment gateway server creates an electronic wallet
corresponding to the member ID and having the approved card number.
Park: [0022]. The card number can be communicated to the registered user.
Park: [0023]. The Park method further downloads an electronic wallet
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driving program to a web browser on the client computer. Park: [0009]. An
electronic wallet icon appears which can be used to download an electronic
wallet driving program for use during purchases. Park: [0027]. It is to be
used to call the electronic payment web server. Park: [0026]. A user inputs
a member ID and password into the electronic wallet driving program,
which information is transferred to the payment gateway server for
authentication, whereupon a purchase can be made. Park: [0028].
The method Park describes arguably meets the claim limitation of
inputting information into a database, albeit the information Park inputs is
not the same as that which is required for the claimed method. But, Park
does not disclose the database generating anything to be associated with the
inputted information. While Park does disclose an electronic wallet, there is
no generation of an electronic wallet number associated with the electronic
wallet. Moreover, step c) of claim 17 requires the database to generate an
electronic wallet number associated with the electronic wallet “responsive to
the user creating the electronic wallet.” That, too, is not disclosed.
Accordingly we agree with Appellant, that step c) of claim 17 is not
disclosed in [0023]-[0023] of Parks as the Examiner has asserted.
Regarding the disclosure in Armes at paragraph [0013], it is disclosed
that transactions between a cardholder and a merchant can be facilitated by
providing the cardholder with a secondary transaction number associated
with the cardholder’s primary account and the cardholder presenting the
transaction number to the merchant. There is no disclosure of the claim step
of a user inputting information into a database and the database generating a
“wallet number” associated with that information in response to the
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information created by the input. Accordingly, we agree with Appellant that
step c) of claim 17 is not disclosed in paragraph [0013] of Armes as the
Examiner has asserted.

The rejection of claim 17 under 35 U.S.C. §103(a) as being unpatentable
over Armes and Shub.
The Examiner stated that Armes fails to disclose the use of a primary
number in addition to the wallet number as required by steps d) and e) of
claim 17. Answer 7. Emphasis added. Step d) calls for sending both the
primary number and the wallet number to the merchant upon making a
purchase from the merchant and step e) calls for the merchant to send the
primary number and the wallet number to the centralized personal data base.
The Examiner relied on Shub to show a customer providing certain
numbers issued by a payment server to a merchant such that the merchant
can confirm the transaction. Answer 7. The Examiner specifically referred
to col. 8, ll. 31-48 and col. 10, ll. 42-60 of Shub. Answer 7. But the
Examiner does not explain in what way Shub shows or would render
obvious the merchant sending a number to the centralized database as is
claimed. As the Appellant has argued (see App. Br. 11 and Reply Br. 6),
Shub states that its objective is such that “no party (employee or company)
ever possesses all the information necessary to link the customer to the
merchant.” Col. 3, ll. 56-59. Accordingly, Shub teaches away from sending
any information, such as a primary number, to the centralized database as
claimed. Thus, Shub does not lead one of ordinary skill in the art to the
claimed method comprising of “the merchant sending the primary number
and the wallet number to the centralized personal data base” (step e)).
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DECISION
We reverse the Examiner’s §103 rejections.

ORDER
REVERSED

mev

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