Ex Parte Grounds

Board of Patent Appeals and Interferences

Sep 7, 2005

09800535 (B.P.A.I. Sep. 7, 2005)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte GAVIN A. GROUNDS

Appeal No. 2005-1615
Application 09/800,535

ON BRIEF

Before HAIRSTON, OWENS, and NAPPI, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from a rejection of claims 1, 2, 4-6, 8-46,
48, 50 and 52-59, which are all of the pending claims.
THE INVENTION
The appellant claims an apparatus, method and encoded logic
for processing financial transactions. Claim 19, which claims
the method, is illustrative:
Appeal No. 2005-1615
Application 09/800,535
2
19. A method for processing financial transactions
comprising:
receiving a first message indicating the making of a
financial transaction, the first message including customer
information and transaction information;
determining the validity of the customer information;
generating a second message indicating non-authorization of
the financial transaction if the customer information is invalid;
determining in an automated manner whether the financial
transaction involves a micro-payment if the customer information
is valid;
if the financial transaction involves a micro-payment:
storing at least part of the transaction
information; and
generating a third message indicating authorization of
the financial transaction; and
if the financial transaction does not involve a micro-
payment, generating an authorization request.
THE REFERENCES
Weber 5,889,863 Mar. 30, 1999
Ronen et al. (Ronen) 5,905,736 May 18, 1999
Elgamal 6,138,107 Oct. 24, 2000
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 1, 2, 4-6, 8-13, 15-27, 29-41, 43-46, 48, 50, 52, 53
and 58 over Ronen in view of Weber, and claims 14, 28, 42, 54-57
and 59 over Ronen in view of Weber and Elgamal.
Appeal No. 2005-1615
Application 09/800,535
3
OPINION
We affirm the aforementioned rejections.
The appellant indicates that the claims stand or fall
together (brief page 4). Although an additional reference is
applied to some of the dependent claims, the appellant does not
separately argue the patentability of those claims. We therefore
limit our discussion to one claim, i.e., claim 19. See In re
Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2 (Fed.
Cir. 1995); 37 CFR § 1.192(c)(7)(1997).
Ronen discloses a method for performing centralized billing
for transactions conducted over the Internet between a user and
an Internet Service Provider (ISP) (abstract). That is a method
for processing financial transactions.
The ISP retrieves the user’s Internet Protocol (IP) address
which is assigned by an Internet Access Provider (IAP) to the
user for a session (col. 2, lines 9-10; col. 4, lines 13-14),
“and requests confirmation that an entry for a session has been
created for that IP address on the database [110] of the
transaction server [109] and that a billing mechanism has been
established on the billing server [111] for the user
Appeal No. 2005-1615
Application 09/800,535
4
corresponding to that IP address” (col. 7, lines 16-21). That
request is a first message that indicates the making of a
financial transaction and includes customer information (the IP
address) and customer information (the billing mechanism).
If, at the transaction server, a database entry for that
IP address is not confirmed, the ISP receives a non-confirmation
signal (col. 7, lines 21-29). Thus, Ronen determines the
validity of the customer information and generates a second
message (the non-confirmation signal) if the customer information
is invalid.
The billing server has stored on a database (112), for each
user who has arranged for centralized billing functionality, a
record that includes the user’s choices for how charges for
transactions are to be billed (col. 4, lines 20-27 and 43-46).
“Charges for transactions of a certain type for less than a
predetermined amount may be designated for billing to an
identified telephone account associated with the user” (col. 4,
lines 33-36). The exemplified charges for less than a
predetermined amount are charges for information services such as
providing a stock report for $0.50 (tables 1 and 2). Hence, if
Appeal No. 2005-1615
Application 09/800,535
5
the customer information is valid, Ronen determines in an
automated matter whether the financial transaction involves a
micro-payment.
Ronen’s disclosure that when a session is complete, the
transaction server sends to the billing server all of the charges
and associated transaction information for the user’s account
(col. 6, lines 15-20) indicates that at least part of the
transaction information is stored. If the user’s IP address is
on the transaction database and a billing mechanism is in place,
the ISP is signaled to authorize the transaction (col. 5,
lines 61-66). The signal is a third message indicating
authorization of the financial transaction. The appellant’s
claim 19 does not require that the transaction information is
stored and the third message is generated only if the financial
transaction involves a micro-payment. The claim, therefore,
encompasses Ronen’s storing of transaction information and
indicating authorization of the transaction regardless of whether
the financial transaction involves a micro-payment.
Ronen indicates that if the financial transaction does not
involve a micro-payment, the charges for the transaction are
Appeal No. 2005-1615
Application 09/800,535
6
billed to a credit or debit card (col. 4, lines 36-38; tables 1
and 2). Ronen does not address whether billing to a credit or
debit card involves an authorization request. The appellant,
however, acknowledges that, as indicated by Weber (col. 15,
lines 52-56), such authorization requests were conventional
(brief, page 12).
The appellant argues that Ronen allows a user to select,
based upon the amount of the transaction, which account will be
billed for the transaction, but does not use a different
authorization mechanism for micro-payments than for larger
payments (brief, page 11; reply brief, pages 3-4). The
appellant’s claim 19 requires storing transaction information and
generating an authorization message if the financial transaction
involves a micro-payment, but does not exclude those steps for
larger payments. As for the step of generating an authorization
request if the financial transaction does not involve a
micro-payment, as pointed out above, the appellant has
acknowledged that generating an authorization request for credit
and debit card payments, which Ronen exemplifies for payments
larger than micro-payments, was conventional.
Appeal No. 2005-1615
Application 09/800,535
7
The appellant argues that the combination of Ronen and Weber
is improper and that the examiner used improper hindsight
reconstruction (brief, pages 13-15; reply brief, pages 5-6), but
the appellant provides no reasoning in support of those
arguments.
For the above reasons we conclude that the invention claimed
in the appellant’s claim 19 would have been obvious to one of
ordinary skill in the art over the applied prior art.
Accordingly, we affirm the rejection of that claim and claims 1,
2, 4-6, 8-18, 20-46, 48, 50 and 52-59 that stand or fall
therewith.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 2, 4-6, 8-
13, 15-27, 29-41, 43-46, 48, 50, 52, 53 and 58 over Ronen in view
of Weber, and claims 14, 28, 42, 54-57 and 59 over Ronen in view
of Weber and Elgamal, are affirmed.
Appeal No. 2005-1615
Application 09/800,535
8
No time period for taking any subsequent action in connec-
tion with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
TERRY J. OWENS ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
TJO:psb
Appeal No. 2005-1615
Application 09/800,535
9
William R. Borchers
Baker Botts L.L.P.
Suite 600
2001 Ross Avenue
Dallas, TX 75201-2980