Ex Parte Harrison et al

Patent Trial and Appeal Board

Jun 10, 2015

11095411 (P.T.A.B. Jun. 10, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK HARRISON and HUGO OLLIPHANT
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Appeal 2012–008091
Application 11/095,411
Technology Center 3600
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Before ANTON W. FETTING, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Mark Harrison and Hugo Olliphant (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1–21, 23–27, and 29–39, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed December 12, 2011) and the Examiner’s Answer (“Ans.,” mailed
January 30, 2012).

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Application 11/095,411

The Appellants invented a way of making a payment to a third party via
a financial service provider using a network–based device (Specification
para. 1).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A system comprising:
[1] one or more servers associated with a financial service
provider, the one or more servers including:
[2] at least one processor;
[3] an interface configured to receive
an identifier
corresponding to an offer
by a third party
at the financial service provider
from a network–based device
via a network,
the network–based device being associated with a user;
and
[4] a payment transfer module
[4.1] implemented by the at least one processor and
configured to perform,
responsive to receiving the identifier,
an automatic transfer of a payment from the user to the
third party via the financial service provider
without providing user financial information to the
third party,
[4.2] the financial service provider performing the
automatic transfer by initiating both
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a debit to an account of the user
and
a credit to an account of the third party.
The Examiner relies upon the following prior art:
Payne US 5,715,314 Feb. 3, 1998
Ginter US 5,892,900 Apr. 6, 1999
Linehan US 6,327,578 B1 Dec. 4, 2001
Claiborne US 2002/0169662 A1 Nov. 14, 2002
Reay US 6,882,979 B1 Apr. 19, 2005
Claims 11–21, 23, 24, 33, and 36 stand rejected under 35 U.S.C. § 101
as directed to non–statutory subject matter.
Claims 1–10, 27, 29–32, and 37–39 stand rejected under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out and distinctly
claim the invention.2
Claims 1–21, 23–27, 30, 32–34, 36, and 37 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Payne and Linehan.
Claims 29, 31, and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Payne, Linehan, and Ginter.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Payne, Linehan, and Reay.
2 The statutory statement of rejection excludes claim 27 (Ans. 6), but the
analysis includes a rejection of claim 27 (Ans. 7). Appellants filed an
amendment on Aug. 25, 2011, after the Final Rejection to cancel claim 27,
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Claim 39 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Payne, Linehan, and Claiborne.
ISSUES
The issues of indefiniteness turn primarily on whether one of ordinary
skill understood the limitations. The issues of obviousness turn primarily on
whether double entry bookkeeping was known at the time of the invention.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Payne
01. Payne is directed to user-interactive network sales systems for
implementing an open marketplace for goods or services over
computer networks such as the Internet. Payne 1:15–17.
02. Payne describes a network-based sales system with a buyer
computer to buy a product, a merchant computer, and a payment
computer. The buyer computer receives a user request for
purchasing a product, and sends a payment message to the
payment computer with a product identifier. The payment
computer receives the payment message, creates an access
but the amendment was not entered. See Advisory Action mailed Sept. 8,
2011.
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message with the product identifier and an access message
authenticator based on a cryptographic key, and sends the access
message to the merchant computer. The merchant computer
receives the access message, verifies the access message
authenticator to ensure that the access message authenticator was
created using the cryptographic key, and causes the product to be
sent to the user desiring to buy the product. Payne 1:50–2:2.
03. Payne describes a purchase transaction that begins when a user
at buyer computer requests advertisements. The user browses
through the advertising document and requests a product. This
results in the buyer computer sending payment URL A to the
payment computer. Payment URL A includes a product identifier
that represents the product the user wishes to buy, a domain
identifier that represents a domain of products to which the
desired product belongs, a payment amount that represents the
price of the product, a merchant computer identifier that
represents merchant computer, a merchant account identifier that
represents the particular merchant account to be credited with the
payment amount. Payne 5:16–37.
04. Payne describes the payment computer verifying whether the
user account has sufficient funds or credit. If so, the payment
computer creates an access URL that includes a merchant
computer identifier, a domain identifier, a product identifier, an
indication of the end of the duration time for which access to the
product is to be granted, the buyer network address, and an access
URL authenticator that is a digital signature based on a
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cryptographic key. The payment computer then records the
product identifier, the domain, the user account, the merchant
account, the end of duration time, and the actual payment amount
in the settlement database. Payne 7:14–30.
Linehan
05. Linehan is directed to computer networks and more particularly
to electronic commerce. Linehan 1:5–6.
06. Linehan adds an issuer gateway and moves the credit/debit card
authorization function from the merchant to the issuer. This
enables an issuer to independently choose alternate authentication
mechanisms without changing the acquirer gateway. Linehan
4:2–7.
07. Linehan describes a payment transfer module responsive to
receiving a transaction identifier, to automatically transfer a
payment from the purchaser to the merchant via card issuer
without providing user financial information to the merchant.
Linehan 4:10–64.
ANALYSIS
Claims 1–10, 27, 29–32, and 37–39 rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention
As to claims 1–10, 29–32, and 37–39, we are persuaded by the
Appellants’ arguments. Br. 17–18. Claim 27 is not argued, but is indicated
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as being cancelled. A review of the record shows that the amendment
cancelling claim 27 was filed after the Final Rejection and was not entered.
Thus, claim 27 is still in the record. Accordingly we summarily affirm the
rejection of claim 27.
Claims 1–21, 23–27, 30, 32–34, 36, and 37 rejected under 35 U.S.C. §
103(a) as unpatentable over Payne and Linehan
The only limitation in claim 1 under contention is [4.2] of initiating a
debit to the user account and credit to the third party account. We are not
persuaded by the Appellants’ argument that the Examiner’s taking of official
notice is unwarranted. Br. 19–20. In particular, we find the argument that
the prior art references themselves must teach or suggest every limitation is
erroneous. The prior art must show that the differences were predictable to
one of ordinary skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Debiting and crediting the accounts of purchaser and vendor is the
prototypical example of the notoriously old and well known practice of
double entry bookkeeping. The Examiner found that this might even occur
in the same institution after a bank consolidation. But the Examiner went
further than necessary because the limitation only requires initiation of the
transaction, not the execution itself. The fact that both references applied
perform payment transfer is sufficient to show the necessary bookkeeping
that would inherently follow.
The Examiner made findings as to how the art described claims 2, 3, 5,
6, 8, 15–17, 36, and 37. Ans. 10–17. In addition, the Examiner found that
some of the limitations in these claims are non-functional and deserving of
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no patentable weight. Appellants argued that the limitations were
functional, but not that the art failed to describe these limitations. Br. 21–23.
Thus, we find the arguments unpersuasive.
As to claims 32 and 34, the Examiner found that because the parent
claims 30 and 33 contain alternative limitations and that if some of those
limitations were found in the art, claims 32 and 34 would be inoperative, the
limitations of claims 32 and 34 should be afforded no patentable weight.
We adopt this reasoning.
Claims 29, 31, and 35 rejected under 35 U.S.C. § 103(a) as unpatentable
over Payne, Linehan, and Ginter
These claims are argued on the basis of the parent claims.
Claim 39 rejected under 35 U.S.C. § 103(a) as unpatentable over Payne,
Linehan, and Claiborne
This claim is argued on the basis of the parent claims.
Claim 38 rejected under 35 U.S.C. § 103(a) as unpatentable over Payne,
Linehan, and Reay
This claim is argued on the basis of the parent claims.
Claims 11–21, 23, 24, 33, and 36 rejected under 35 U.S.C. § 101 as directed
to non–statutory subject matter
We need not reach this rejection as the rejections over art are dispositive.
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CONCLUSIONS OF LAW
The rejection of claims 1–10, 29–32, and 37–39 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention is improper.
The rejection of claim 27 under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention is
summarily affirmed.
The rejection of claims 1–21, 23–27, 30, 32–34, 36, and 37 under
35 U.S.C. § 103(a) as unpatentable over Payne and Linehan is proper.
The rejection of claims 29, 31, and 35 under 35 U.S.C. § 103(a) as
unpatentable over Payne, Linehan, and Ginter is proper.
The rejection of claim 39 under 35 U.S.C. § 103(a) as unpatentable over
Payne, Linehan, and Claiborne is proper.
The rejection of claim 38 under 35 U.S.C. § 103(a) as unpatentable over
Payne, Linehan, and Reay is proper.
The rejection of claims 11–21, 23, 24, 33, and 36 under 35 U.S.C. § 101
as directed to non–statutory subject matter is not reached.
DECISION
The rejection of claims 1–21, 23–27, and 29–39 is affirmed.
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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)(iv) (2011).

AFFIRMED

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