Ex Parte Hoyos et al

Patent Trial and Appeal Board

Jun 28, 2016

11243088 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111243,088 10/04/2005 Carlos Antonio Lorenzo Hoyos
73109 7590 06/30/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO.
RSW920050098US 1
8152-0067
CONFIRMATION NO.
6047
EXAMINER
SCARITO, JOHN D
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLOS ANTONIO LORENZO HOYOS,
ANDREA JEAN WATKINS MORY ADAS,
MARCELO PERAZOLO, MARKE. PETERS, and
VISWANATH SRIKANTH
Appeal2014-000124
Application 11/243,088
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 22--42.
We AFFIRM.
1 The Appellants identify IBM Corp. as the real party in interest. (Appeal
Br. 1).
Appeal2014-000124
Application 11/243,088
THE CLAIMED fNVENTION
Appellants claimed invention relates generally to payment capture in
an online commerce system. (Spec., para. 1 ). Claim 22 is illustrative of the
claimed subject matter:
22. A computer-implemented method, comprising:
receiving a payment authorization for an authorized
payment amount;
receiving a payment capture request for a partial amount
less than the authorized payment amount;
selecting, using a processor, between immediate payment
capture and deferred payment capture of the partial amount based
upon:
at least one characteristic associated with the
payment capture request and
a set of rules governing payment capture requests,
deferring the received payment capture request, upon the
deferred payment capture being selected;
adding, upon the deferring, the partial amount to a
previously-deferred amount to create a currently-deferred
amount; and
selecting, based upon the received payment capture
request, between immediate payment capture of the currently-
deferred amount and deferred payment capture.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ling
Omidyar
US 2002/0111907 Al
US 2005/0102242 Al
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Aug. 15, 2002
May 12, 2005
Appeal2014-000124
Application 11/243,088
REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 22--42 under 35 U.S.C. § 112, second
paragraph, as indefinite.
The Examiner rejected claims 22-25, 27, 29-32, 34, 36-39, and 41
under 35 U.S.C. § 103(a) as unpatentable over Omidyar.
The Examiner rejected claims 26, 33, and 40 under 35 U.S.C. § 103(a)
as unpatentable over Omidyar and Applicant Admitted Prior Art ("AAP A").
The Examiner rejected claims 28, 35, and 42 under 35 U.S.C. § 103(a)
as unpatentable over Omidyar and Ling.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Omidyar discloses a system where a payor may make payment
commitments to a payee in a series of amounts. (Omidyar, para. 25).
2. Omidyar discloses that payment commitments may not be funded until a
threshold value of commitments is reached. (Id.).
3. Omidyar discloses lowering a threshold based on circumstances and
amounts, stating:
the threshold adjustment module 76 may adjust thresholds
dynamically based on whether a particular payee user has failed
to achieve a predetermined rate of payment commitments. For
example, the threshold adjustment module 76 may automatically
lower a funding receivable threshold so as to prevent the relevant
payee user from having to wait an unacceptable amount of time
prior to having payment commitments funded.
(Omidyar, para. 43).
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Application 11/243,088
4. Omidyar discloses "where historical or reputation information
associated with the user indicates an increased or decreased risk
associated with obtaining funding from a payor user, the threshold
adjustment module 76 may automatically adjust a funding payable
threshold for that user." (Omidyar, para. 44).
5. Omidyar discloses receiving a payment capture request at "a threshold
assessment module 80, the threshold assessment module 80 operating to
assess whether a commitment payable total, for a commitment
receivable total, exceeds a specified threshold." (Omidyar, para. 46).
6. Omidyar discloses selecting immediate or deferred payment capture
based on a type of payment, in that "example, where the micropayment
system 24 is aware that a certain settlement system 22 will be utilized in
connection with a particular funding event, the threshold adjustment
module 76 may adjust thresholds dependent on transaction charges
levied by the relevant settlement system 22." (Omidyar, para. 43).
ANALYSIS
Claim Construction
We begin by construing the plain meaning of claim 22.
The last recitation in claim 22 is "selecting, based upon the received
payment capture request, between immediate payment capture of the
currently-deferred amount and deferred payment capture." In the
immediately-preceding recited limitation, the "currently-deferred amount" is
created by "adding, upon the deferring, the partial amount to a previously-
deferred amount." Thus, we construe that the last two limitations must be
performed in the order recited.
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Application 11/243,088
The "adding" also must be done after the "deferring" limitation
recited immediately before the "adding" limitation. Additionally, the
deferring limitation, "deferring the received payment capture request, upon
the deferred payment capture being selected," must be performed after the
first-recited "selecting" limitation, which selects "between immediate
payment capture and deferred payment capture of the partial amount." The
deferring of the partial amount will not take place unless selected, and the
selecting recited in the final limitation will not take place unless the partial
amount is deferred.
The claim recites two "receiving" limitations must take place as a
claim requirement. The selecting relies on the received values. But, in the
case where the outcome of the first selecting is "immediate payment
capture," there are no more recited steps, and the method ends at that first
selecting step, upon selection of "immediate payment capture."
The broadest reasonable construction of claim 1 is the case where the
first selection (based on a characteristic and rules) results in "immediate
payment capture," with no additional steps performed.
Rejection of claims 22--42 under 35 US.C. § 112, second paragraph
Appellants argue "one skilled in the art would recognize that the only
reasonable interpretation of the claim language is that the deferred payment
capture of the second selection refers to the currently-deferred amount - not
only the partial amount, as alleged by the Examiner," and that "the
Examiner's rejection fails to present a proper rejection for indefiniteness."
(Reply Br. 3--4; see also Appeal Br. 5---6).
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Appeal2014-000124
Application 11/243,088
In rejecting the claims as indefinite, the "Examiner questions whether
'deferred payment capture' of Applicant's last limitation is referencing only
'the partial amount' or 'the currently-deferred amount' .... Examiner seeks
clarification." (Final Act. 6). Questioning and seeking clarification do not
establish a prima facie case of indefiniteness.
The Examiner explains "it is unclear whether 'deferred payment
capture' of Appellant's second selecting step: (i) introduces a new deferral
[e.g. deferred payment capture of the currently-deferred amount, i.e.
deferring the partial amount as well as the previously-deferred amount] or
(ii) also references 'deferred payment capture of the partial amount' [i.e.
deferring only the partial amount]." (Answer 2-3).
We find the claim language is clear. Relying on our claim
construction above, we find the first selecting step chooses between
deferring a partial payment and capturing it immediately. If the partial
payment is deferred, it is added to the already-deferred balance. Then, a
decision is made whether to continue deferral, or immediately capture the
entire deferred balance, including the partial amount just deferred. The
claim thus leads to one of three possible outcomes: 1) selection of
immediate payment capture of the (current) partial amount and no further
steps, 2) deferral of the (current) partial amount and continued deferral of the
already-deferred balance, or 3) immediate payment capture of the currently-
deferred amount which includes the (current) deferred partial amount. There
is nothing indefinite.
Because the Examiner has not established a prima facie case of
indefiniteness, we reverse the rejection of all claims under 35 U.S.C. § 112,
second paragraph.
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Appeal2014-000124
Application 11/243,088
Rejection of Claims 22-25, 27, 29-32, 34, 36-39, and 41
under 35 US.C. § 103(a)
Initially, we note that the Appellants argue independent claims 22, 29,
and 36 together as a group, stating that claims "22-25, 27, 29-32, 34, 36-39,
and 41 stand or fall with claim 22". (App. Br. 11). Appellants therefore
waive arguments challenging the Examiner's rejections of claims 29 and 36.
See 37 C.F.R. § 41.37(c)(l)(iv). See, e.g., Hyatt v. Dudas, 551F.3d1307,
1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to
make for a given ground of rejection as waived).
Correspondingly, claim 22 will decide the appeal of these claims, with
remaining claims 29 and 36 standing or falling with claim 22. Appellants do
not provide a substantive argument as to the separate patentability of claims
23-25 and 27 that depend from claim 22, claims 30-32 and 34 that depend
from claim 29, and claim 41 that depends from claim 39. Thus claims 23-
25, 27, 29-32, 34, 36-39, and 41 stand or fall with claim 22. See, 37 C.F.R.
§ 41.37(c)(l)(vii).
Appellants argue Omidyar discloses only the second recited selecting
but not the first. (Appeal Br. 11-17; see also Reply Br. 4--7).
We are not persuaded by Appellants' arguments as error in the
rejection because Omidyar discloses a series of payment commitments, with
an analysis to determine at any point in time if the commitments exceed a
threshold that warrants funding the commitment immediately, as opposed to
deferring funding until a greater accumulation of commitments exists.
(FF 1--4). The ordinary artisan would recognize that Omidyar's disclosure
encompasses the situation where a commitment amount entered exceeds the
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Application 11/243,088
threshold for a payor, such that the commitment is determined to warrant
immediate funding of the commitment. (Id.). In such a situation, Omidyar
selects immediate payment capture, thus meeting the claim language.
Thus, Omidyar discloses selecting, an immediate payment capture,
rather than a deferred payment capture of the partial amount. As such we
find that the requirements of the method of claim 22 are met by Omidyar.
As a method claim with conditional limitations, the broadest reasonable
interpretations of these claims include instances in which the deferred
payment capture of the partial amount will not be selected, and the steps
conditional to that selection will not be performed. See Ex parte Katz, 2011
WL 514314, at *4-5 (BPAI Jan. 27, 2011) (non-precedential) (citing In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (the
broadest reasonable interpretation of a conditional step in a method claim
includes instances in which the conditional step would not be invoked)),
2011WL1211248, at *2 (BPAI Mar. 25, 2011) (denying request for
rehearing); see also In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006)
("optional elements do not narrow the claim because they can always be
omitted").
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Appeal2014-000124
Application 11/243,088
Rejection of claims 26, 33, and 40 under 35 USC§ 103(a)
Appellants argue dependent claims 26, 33, and 40 together as a group.
(App. Br. 20). Correspondingly, we select representative claim 26 to decide
the appeal of these claims, with remaining claims 33 and 40 standing or
falling with claim 26. See, 37 C.F.R. § 41.37(c)(l)(vii).
Dependent claim 26 recites "the at least one characteristic includes a
type of payment associated with the payment capture request."
Appellants argue that the Examiner's finding that a type of payment
exists "does not establish that the selecting based upon [a type of payment]
is also known." (Appeal Br. 20-21).
We are not persuaded by Appellants' argument, because Omidyar
discloses taking into consideration a type of payment, based on charges for
various payment methods, in selecting between immediate and deferred
payment capture. (FF 6). A higher cost per transaction may weigh toward
deferral to save fees associated with some credit or debit cards, for instance.
Rejection of claims 28, 35, and 42 under 35 USC§ 103(a)
Appellants do not advance arguments directed to claims 28, 35, and
42, so we affirm the rejection of these claims proforma.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 22--42 under 35 U.S.C.
§ 103(a).
The Examiner erred in rejecting claims 22--42 under 35 U.S.C. § 112,
second paragraph.
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Application 11/243,088
DECISION
For the above reasons, the Examiner's rejection of claims 22--42 is
affirmed.
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
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