Ex Parte Hoyos et al

Patent Trial and Appeal Board

Dec 22, 2015

11456189 (P.T.A.B. Dec. 22, 2015)

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.
11/456,189 07/08/2006 Carlos Antonio Lorenzo Hoyos 49703.426 5158
132906 7590 12/23/2015
Haynes & Boone, LLP
2323 Victory Ave. #700
Dallas, TX 75219
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
12/23/2015 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 CARLOS ANTONIO LORENZO HOYOS,
MARCELO PERAZOLO, MARK E. PETERS,
VISWANATH SRIKANTH,
and ANDREA JEAN WATKINS MORYADAS
____________

Appeal 2013-003095
Application 11/456,1891
Technology Center 3600
____________

Before, JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
non-final rejection of claims 1, 2, 4 ̶ 8, 10 ̶ 14, 16, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Appellants identify International Business Machines Corporation as the
real party in interest. Br. 2.

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Application 11/456,189

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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claim a system and method for preventing multiple
charges for a transaction in a payment system. (Spec. 1).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method comprising:

a receiving a first payment operation request from an order system at a
computer system to pay for an order;

sending the first payment operation request from the computer system
to a payment provider;

receiving financial transaction results corresponding to the first
payment operation request at the computer system from the payment
provider, the financial transaction results completing a payment
operation that corresponds to the order;

receiving a second payment operation request from the order system
at the computer system to pay for the order, wherein the order
corresponding to the second payment operation request is the same as
the order corresponding to the first payment operation request;

determining, by the computer system, that the payment operation for
the order was completed based upon the received financial transaction
results; and

in response to determining that the payment operation for the order
was completed, the method further comprising;

retrieving, by the computer system, the financial transaction
results that correspond to the first payment operation request;
and
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sending the retrieved financial transaction results from the
computer system to the order system to correspond with the
second payment operation request.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hogan US 2003/0120554 A1 June 26, 2003
Meffie US 7,657,473 B1 Feb. 2, 2010

The following rejection is before us for review.
Claims 1, 2, 4 ̶ 8, 10 ̶ 14, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hogan in view of Meffie.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 3 ̶ 5 of the
Answer and on pages 2–5 of the non-final action dated January 30, 2012.
2. Meffie discloses:
a check may include the maker’s e-mail address
for sending images of cancelled checks either in a
clear or encoded form on the check. This may
enable an ATM or other device receiving such a
check the ability to read or resolve the system
address for sending an image of the check and/or
other data regarding the check cashing transaction
to a user.
Col. 55, ll. 21–26.
3. Meffie discloses:
In some embodiments the image data or other data
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Application 11/456,189

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may be delivered in a manner that enables such
data to be used by other computer programs
operated in computers which receive such data for
purposes of accounting, settlement, analysis of
possible illegal activity and/or verifying
genuineness of the check.
Col. 55, ll. 41–47.
4. Hogan discloses:
If the AAV received is determined to be valid
based on a positive match (step 712), the processor
442 verifies that the issuer-defined data 810 have
not been received in a prior transaction.
Optionally, if the issuer-defined data 810 have
been received in a prior transaction more than “n”
seconds ago (where “n” typically equals 60) (step
716), then the transaction is declined and the AAV
802 is labeled as a detected duplicate (step 718).
Para. 159.

ANALYSIS
35 U.S.C. § 103 REJECTION
The Appellants argued independent claim 1 as the representative
claim for the group of independent claims 1, 7, and 13 (Appeal Br. 8), and
the remaining independent claims standing or falling with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellants argue,
… when Hogan receives a duplicate transaction
request, Hogan declines the duplicate transaction.
Hogan never matches the duplicated transaction
request with first payment information from a first
payment request and, in turn, never sends the
retrieved first payment information to fulfill the
duplicated transaction request…. Meffie sends
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images of a cancelled check to a user based upon
addresses on the checks and user information
entered at the ATM machine. Meffie, however,
never teaches or suggests matching the cancelled
check to a duplicate transaction request and,
therefore never sends the cancelled check in order
to fulfill the duplicated transaction request.
Br. 7–8.
The Examiner, however, found concerning this limitation that:
… Hogan discloses ‘Optionally, if the issuer-
defined data 810 have been received in a prior
transaction more than ‘n’ seconds ago (where ‘n’
typically equals 60) (step 716), then the transaction
is declined and the AAV 802 is labeled as a
detected duplicate (step 718)’.([0159]-11. 5-8). …
Further, Meffie discloses sending canceled checks
as evidence of prior payment (Col. 55, ll. 19-23;
Col. 56, ll. 38-41). The ordinary practitioner
would have seen it as obvious that providing
evidence of prior payment was applicable to
providing evidence of prior payment authorization.
(Non-Final 4).
We agree with the Examiner that the Appellants are attacking the
references individually when the rejection is based on a combination of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young,
403 F.2d 754, 757-58 (CCPA 1968). We find that the Examiner properly
found that Hogan determines an improper duplicate transaction by matching
it to a prior transaction, and then declining the later-in-time transaction once
the match is established after an “n” second period. (Non-Final 4, FF. 4).
The Examiner further found that that “Meffie discloses sending canceled
checks as evidence of prior payment (Col. 55, ll. 19 ̶ 23; Col. 56, ll. 38 ̶ 41).”
(Non-Final 4).
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We thus agree with the Examiner that one having ordinary skill in the
art looking to Meffie would know to use the cancelled check in conjunction
with the “n” transaction determination of Hogan when the later-in-time
transaction is declined as duplicate. This is at least because Meffie explicitly
discloses sending the cancelled check data for purposes of accounting
(FF. 3) which would be used as evidence for the declined “n” transaction in
Hogan.
We also affirm the rejections of dependent claims 2, 4–6, 8, 10–12,
14, 16, and 17 since Appellants have not challenged such with any
reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 4 ̶ 8,
10 ̶ 14, 16, and 17 under 35 U.S.C. § 103(a).

DECISION
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).
AFFIRMED

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