Ex Parte HammadDownload PDFPatent Trial and Appeal BoardDec 28, 201612431489 (P.T.A.B. Dec. 28, 2016) Copy Citation 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. 12/431,489 04/28/2009 Ay man Hammad 80083-749307 5254 66945 7590 12/30/2016 KILPATRICK TOWNSEND & STOCKTON LLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER GOODBODY, JOAN T ART UNIT PAPER NUMBER CSDM NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): ipefiling@kilpatricktownsend.com jlhice@kilpatrick.foundationip.com EDurrell @ kilpatrickto wnsend .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AYMAN HAMMAD Appeal 2014-009602 Application 12/431,489 Technology Center 0000 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE1 Appellant seeks our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 6—10, 12—17, 19, 21—24, and 26—32. We AFFIRM-IN-PART. 1 Appellant identifies the real party in interest is VISA U.S.A. Inc. (Appeal Br. 3). Appeal 2014-009602 Application 12/431,489 THE CLAIMED INVENTION Appellant’s claims are directed generally to “consumer devices, methods and systems.” (Spec. para. 5). Claim 6 is illustrative of the claimed subject matter: 6. A method comprising: receiving, at a server computer, a first authorization request message associated with a purchase transaction, wherein the first authorization request message includes a first account identifier associated with a first account, a second account identifier associated with a second account, and an alterable flag stored in a portable consumer device, wherein the alterable flag links the first account and the second account, and wherein a state of the alterable flag indicates whether value is to be automatically transferred from the second account to the first account; analyzing, by the server computer, the first authorization request message; determining, by the server computer, that the first account does not contain sufficient funds to pay for the purchase transaction; performing, by the server computer, additional processing depending upon the state of the alterable flag, wherein, if the alterable flag is in a transfer state, the additional processing includes initiating the transfer of value from the second account to the first account; and transmitting, by the server computer, a second authorization request message associated with the purchase transaction to an issuer of the first account. The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Hong Johnson Tucker US 2004/0111365 A1 June 10, 2004 US 2005/0160051 A1 July 21, 2005 US 2006/0059085 A1 Mar. 16, 2006 2 Appeal 2014-009602 Application 12/431,489 REJECTIONS The following rejections are before us for review. The Examiner rejected claims 6—10, 12—17, 19, 21—24, 26—28, and 30- 32 are rejected under 35 U. S.C. § 103(a) as unpatentable over Hong and Tucker. The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as unpatentable over Hong, Tucker, and Johnson. FINDINGS OF FACT We find the following facts by a preponderance of the evidence. 1. Hong discloses a first account identifier as “card account 814,” and second account identifier as “user account 812.” (Hong para. 60). 2. Hong discloses an alterable flag, that indicates whether value is to be automatically transferred from the second account to the first account, as a “yellow amount,” in that: When the balance of the card account 814 is less than the yellow amount and larger than the negative amount, the flag generator 832 automatically attempts to transfer money from the user account 812 to the card account 814 via the banking agency 810 such that the balance of the card account 812 is at least the yellow amount. {Id. at para. 67). 3. Hong is directed to processing card transactions for purchases. {Id. at para. 4). 4. Hong discloses receiving a message in the form of a purchase transaction request including details from a transaction card. {Id. at para. 6). 3 Appeal 2014-009602 Application 12/431,489 5. Hong discloses data stored in a database to which the server accesses to process transactions, in that Hong discloses “card management server 130; and a database (DB) 140 for storing personal information and e- money information of each member, which are processed by the card management server 130.” {Id. at para. 33). 6. Hong discloses: In case of an on-line transaction, when a client requests an approval for using a certain amount of e-money to settle payment at an on-line shopping mall, transfer money by e-mail, or settle payment at an on-line member shop in step S701, a client terminal receiving the request is accessed to a non-rechargeable card management server through an on-line network in step S702 and a client DB is searched in step S703. {Id. at para. 53). 7. Tucker discloses a first account identifier, at a “primary account number,” a second account identifier, at an overdraft “loan account,” and a flag at the signed customer contract. (Tucker para. 38). 8. In support of the claim language “stored in a portable consumer device,” Appellant directs us to paragraph 17 of the Specification. (Appeal Br. 3). 9. The Specification describes storing data in a “memory element.” (Spec, para. 17). 10. The Specification describes that a “memory element” may be “volatile” storage, encompassing a “memory chip[ ].” {Id. at para. 18). 11. Hong discloses a user applying for a new card that is assigned a “first account identifier,” by supplying a “second account identifier” as a source of funds, and establishing a “yellow limit” flag. (Hong para. 40- 41). 4 Appeal 2014-009602 Application 12/431,489 12. Hong discloses “account processor 831 accesses the banking agency 810 to check the balance (or deposit) of the card account 814 or request to subtract the amount of money for card transaction from the balance.” {Id. at para. 63). 13. Tucker discloses an overdraft protection loan that provides “an overdraft protection amount when the customer account lacks sufficient funds to cover the initiated transaction and the deficiency in customer account funds does not exceed the overdraft protection limit.” (Tucker para. 64). ANALYSIS Claims 6-10, 12-14, 19, 21-24, 26, and 30 Initially, we note that the Appellant argues independent claims 6, 12, 13, and 19 together as a group. (Appeal Br. 21). Correspondingly, we select representative claim 6 to decide the appeal of these claims, with remaining claims 12, 13, and 19 standing or falling with claim 6. Appellant does not provide a substantive argument as to the separate patentability of claims 7— 10, 14, 21—24, 26, and 30 that depend from claims 6 and 13. Thus, claims 7—10, 12—14, 19, 21—24, 26, and 30 stand or fall with claim 6. See 37 C.F.R. § 41.37(c)(l)(vii). Appellant argues that there is no message received at a server in either Hong or Tucker whose content includes a first account identifier, a second account identifier, and an alterable flag linking the first and second accounts, as claimed. (Appeal Br. 13—15; see also Reply Br. 2—5). We are not persuaded by Appellant’s argument. 5 Appeal 2014-009602 Application 12/431,489 We find Hong discloses first and second account identifiers, and the claimed flag. (FF 1, 2). Hong discloses receiving a purchase transaction request, and receiving account information from the client database, at the management server. (FF 3—6). Claim 6 only recites receiving a “request message” at a server, but the origin of the message is not recited, and, thus, may have many potential sources, such as another server. Claim 6 does not require that the first and second account identifiers and the recited flag are transmitted from their stored location at the portable consumer device to the claimed server. Moreover, other than arguing that the prior art fails to disclose the first and second account identifiers and the recited flag as part of a single message, Appellant fails to show why this distinction makes the claim nonobvious over Hong. This is especial true given the server in Hong continuously knows the information related to the first and second account identifiers and the recited flag via database (DB) 140 (FF 5), and Tucker also discloses a first account identifier, at a “primary account number,” a second account identifier, at an “overdraft loan” account, and a flag in a single signed customer contract (FF 7). The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is “whether the difference between the prior art and the subject matter in question ‘is a differen[ce] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.’” Id, at 228 (citation omitted) (finding system for automatic record keeping of bank checks and deposits obvious in view of nature of extensive use of data processing systems in banking industry and “closely analogous” patent for an automatic data 6 Appeal 2014-009602 Application 12/431,489 processing system used in a large business organization for keeping and updating system transaction files for each department of the organization). Appellant next argues that Hong fails to disclose storing the three recited data items in a portable consumer device. (Appeal Br. 15—16; see also Reply Br. 4—5). We are not persuaded by Appellant’s argument. The Specification describes, by example, storing data in a “memory element,” such as a volatile memory chip. (FF 8—10). The ordinary artisan would recognize that when using a computer, such as a portable consumer device, to establish an account, the values of the data entered during the application process would be stored in memory during program execution, thus, meeting the claim language. Although Hong does not specifically disclose the user setting the yellow flag, Tucker discloses a flag at a user- signed contract, which would be stored in memory when being signed. (FF 7). Appellant argues Tucker fails to disclose the two account identifiers and the alterable flag that indicates whether value is to be automatically transferred from the second account to the first account. (Appeal Br. 16). We are unpersuaded by Appellant’s argument, for the reasons set forth above. Appellant next argues “there is no teaching or suggestion of an authorization request message being sent to an issuer of the card account 814, i.e. the account that receives funds from the user account 812,” because in Hong the entity processing the card also issued the card. (Appeal Br. 17). We are not persuaded by Appellant’s argument. Hong discloses the system issues a card associated with account 812. The ordinary artisan would recognize that if the entity processing the 7 Appeal 2014-009602 Application 12/431,489 transaction did not issue the account the card represents, the processing entity would send a message to the issuer when undertaking an action that affects that account. For example, Hong discloses “account processor 831 accesses the banking agency 810 to check the balance (or deposit) of the card account 814 or request to subtract the amount of money for card transaction from the balance.” (FF 12). Hong, thus, discloses contacting a separate entity, which the ordinary artisan would recognize as the issuer of the card, because an issuer typically also holds the balance on the account. Appellant further argues there is no rational underpinning to the combination of Hong and Tucker, because “Tucker is entirely unrelated to the utilization of two account, let alone the linking of two accounts such that funds can be transferred between the accounts as needed.” (Appeal Br. 17— 18). We disagree with Appellant, because Tucker links an account to an overdraft loan, which is a type of account. (FF 13). In addition, the Examiner indicates Tucker discloses the ability for the user to control whether funds are transferred between accounts. (Final Act. 7). As to the ability to control funds transfer with the contract, Tucker represents an improvement on Hong, and therefore the Examiner has articulated sufficient reasoning with a rational underpinning for the combination. For similar reasons, we also find Appellant’s argument, that the combination of Hong and Tucker is conceived only through impermissible hindsight, unpersuasive. (Appeal Br. 19—20). Claims 15—17, 27, 28, and 31 8 Appeal 2014-009602 Application 12/431,489 Dependent claim 15 recites “receiving the first account identifier, the second account identifier, and the alterable flag from the portable consumer device.” Appellant argues there is nothing in Hong disclosing that “card 890 further stores an identifier of the user account 812 (i.e. the asserted second account), let alone an ‘alterable flag’ that links the card account 814 and user account 812. Since the card 890 does not contain such information, it would necessarily be incapable of providing it.” (Appeal Br. 21). We are persuaded by Appellant’s argument. The Examiner finds the recited language in Hong at Figure 4, paragraphs 5, 6, 8—14, 41, 60, 64, 67, 68, and 80, and claim 6. (Final Act. 13). However, in these cited sections, we do not find a message sent from a portable consumer device that encompasses all three items of data as claimed. Hong would not need the second account identifier and flag to be received from the portable consumer device, because the server already has this information. (FF 5). Although it is conceivable it would be obvious to substitute the location, from which the second account and flag information is stored and sent, from the server to the portable consumer device, the Examiner has not set forth such a rationale of obviousness. Therefore, we reverse the rejection of claim 15. We also reverse the rejection of claims 16, 17, 27, 28, and 31 that depend from claim 15. Claim 29 Claim 29 depends ultimately from claim 15. The Examiner has not established that Johnson remedies the shortcomings in the combination of Hong and Tucker set forth above at claim 15. Therefore, we reverse the rejection of claim 29. 9 Appeal 2014-009602 Application 12/431,489 Claim 32 Dependent claim 32 recites: generating, by the server computer, a third authorization request message that identifies the requested value to be transferred; transmitting, by the server computer, the third authorization request message to an issuer of the second account; and receiving, by the server computer, an authorization response message from the issuer of the second account, wherein the authorization response message indicates whether the issuer of the second account has authorized the transfer of value from the second account to the first account. Appellant argues “Hong does not disclose transmitting an authorization request message to an issuer of the user account 812 (i.e. the asserted second account).” (Appeal Br. 22). We are not persuaded by Appellant’s argument, because Hong discloses contacting a “banking agency 810,” which the ordinary artisan would recognize would necessarily involve communicating via a message to and from that agency to facilitate the transfer of funds under the control of that agency, thus, meeting the claim language. (FF 2). CONCLUSIONS OF LAW The Examiner did not err in rejecting claims 6—10, 12—14, 19, 21—24, 26, 30, and 32 under 35 U.S.C. § 103(a). The Examiner erred in rejecting claims 15—17, 27—29, and 31 under 35 U.S.C. § 103(a). 10 Appeal 2014-009602 Application 12/431,489 DECISION For the above reasons, the Examiner’s rejection of claims 6—10, 12— 14, 19, 21—24, 26, 30, and 32 are affirmed. The Examiner’s rejections of claims 15—17, 27—29, and 31 are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 11 Copy with citationCopy as parenthetical citation