Ex Parte Griffin et al

Patent Trial and Appeal Board

Feb 12, 2016

12242627 (P.T.A.B. Feb. 12, 2016)

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.
12/242,627 09/30/2008 Kent Griffin 70481.31 8966
132906 7590 02/12/2016
Haynes & Boone, LLP
2323 Victory Ave. #700
Dallas, TX 75219
EXAMINER
DASS, HARISH T
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
02/12/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENT GRIFFIN and CARL B. STONE
____________________

Appeal 2013-0101261
Application 12/242,627
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 CASE
This is an appeal from the final rejection of claims 1–22. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to peer-to-peer payment between
mobile devices using near field communications. Spec. 1, ll. 10–12.

1 The Appellants identify eBay, Inc. as the real party in interest. (Br. 1).
Appeal 2013-010126
Application 12/242,627

2
Claim 1 is illustrative:
1. A method for transferring money from a sender to a
recipient, the method comprising:
entering information relating to the transfer into a near
field communication (NFC) enabled data communication
device of the sender;
placing the sender's device in close proximity to an NFC
enabled data communication device of the recipient a first time;
and
placing the sender's device in close proximity to the
recipient's device a second time, wherein the sender's device is
operable in response to being placed in close proximity to the
recipient's device the first time to cause at least one hardware
processor located in at least one of the two devices to:
establish an NFC link between the two devices; and
transmit information relating to the recipient from the
recipient's device to the sender's device via the NFC link; and
wherein the sender's device is operable in response to
being placed in close proximity to the recipient's device the
second time to cause the at least one hardware processor to:
establish a data communication link between the sender's
device and a third party service provider via a network; and
transmit the information relating to the transfer and the
recipient directly from the sender's device to the third party
service provider via the network and thereby cause the service
provider to transfer the money from a funding account of the
sender to a receiving account of the recipient.

Claims 1–22 are rejected under 35 U.S.C. § 102(b) as anticipated by
Rosenberg (US 7,330,714 B2, iss. Feb. 12, 2008).
Claims 1–22 are rejected, in the alternative, under 35 U.S.C. § 103(a)
over Rosenberg.
Appeal 2013-010126
Application 12/242,627

3
Claims 10, 18, and 22 are additionally rejected under 35 U.S.C.
§ 103(a) over Rosenberg and Bloebaum (US 2008/0079573 A1, pub. Apr. 3,
2008).
We REVERSE.

ANALYSIS
Anticipation
We have considered Appellants’ arguments in section 1A, at pages 7–
9 of the Brief, and find them persuasive for the reasons Appellants advance.
The Examiner has not directed us to a single embodiment that discloses the
specific claimed method, wherein a first interaction of two devices
communicates information from a first device to a second device, and a
second interaction of the two devices communicates information from the
second device to a third party, including information received in the first
interaction. See Answer 4–16. A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference. Verdegaal Bros. v. Union Oil Co.
of California, 814 F.2d 628, 631 (Fed. Cir. 1987).

Obviousness
We have considered Appellants’ arguments in sections 1B and 2, at
pages 9–11 of the Brief, and find them persuasive for the reasons Appellants
advance. The Examiner has not established a prima facie case of
obviousness of independent claims 1, 13, 17, and 20.

Appeal 2013-010126
Application 12/242,627

4
In rejecting claims for want of novelty or for
obviousness, the examiner must cite the best references at his or
her command. When a reference is complex . . ., the particular
part relied on must be designated as nearly as practicable. The
pertinence of each reference, if not apparent, must be clearly
explained and each rejected claim specified.
37 C.F.R. § 1.104(c)(2). The Examiner cites multiple embodiments and
explanations in Rosenberg, but we are unable to understand sufficiently how
and why the Examiner has combined or modified any of those embodiments
to render the claimed subject matter obvious. See Answer 4–16.
We also do not sustain the additional rejection of claims 10, 18, and
22 under 35 U.S.C. § 103(a) with the addition of Bloebaum. The Examiner
has not established on the record that Bloebaum remedies the shortcomings
in Rosenberg as to independent claims 1, 17, and 20, from which claims 10,
18, and 22 depend.

DECISION
We REVERSE the rejection of claims 1–22 under 35 U.S.C. § 102(b).
We REVERSE the rejection of claims 1–22 under 35 U.S.C. § 103(a).
We REVERSE the rejection of claims 10, 18, and 22 under 35 U.S.C.
§ 103(a).

REVERSED