Ex Parte Hultgren

Board of Patent Appeals and Interferences

Mar 23, 2004

09047533 (B.P.A.I. Mar. 23, 2004)

1 Application for patent filed March 25, 1998, which claims the
filing priority benefit under 35 U.S.C. § 119 of Provisional Applications
60/043,610, filed April 15, 1997 and 60/049,774, filed June 16, 1997.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDERS HULTGREN
____________
Appeal No. 2002-0819
Application No. 09/047,5331
____________
ON BRIEF
____________
Before HAIRSTON, JERRY SMITH, and SAADAT, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1-3, 5-7, 11-16, 18, 19, 21, 27, 29-34, 36-
40, 42, 44-80. Claims 4, 8-10, 17, 20, 22-26, 28, 35, 41 and 43
have been canceled.
We reverse.
Appeal No. 2002-0819
Application No. 09/047,533
2
BACKGROUND
Appellant’s invention is directed to facilitating financial
transactions via a customer mobile terminal and transferring
funds between a customer account and a merchant account using a
tele/datacommunications network (TSN). The TSN confirms that the
customer mobile station is within a predetermined geographical
proximity of the merchant terminal before completing the transfer
of funds (specification, page 3). The TSN compares the GPS
location coordinates of the merchant terminal and the current GPS
coordinates of the customer mobile station to determine if they
are within an acceptable proximity range (specification, page 4).
Representative independent claims 1 and 21 are reproduced
below:
1. A method of facilitating automated payment from a
customer account of a customer financial institution to a
merchant account of a merchant financial institution, the
method including:
acquiring a merchant identifier and transaction amount
from a customer mobile station;
verifying the transaction amount with a merchant
terminal;
determining whether the customer mobile station and the
merchant terminal are within a predetermined geographical
proximity;
upon receipt of a verification from the merchant
terminal, requesting transfer of the transaction amount from
the customer account to the merchant account; and
Appeal No. 2002-0819
Application No. 09/047,533
2 The effective filing date of the Hall reference appears to be after
the priority date of the application. However, since there is nothing in the
record to indicate that Appellant has challenged the reference as prior art,
we treat the reference as prior art.
3 The Examiner labels the rejection as “anticipation” by mistake,
whereas the rejection is under 35 U.S.C. § 103(a).
3
transferring the transaction amount from the customer
account to the merchant account only if the customer mobile
station and the merchant terminal are within the
predetermined geographical proximity as a security safeguard
to assure that the customer mobile station is actually
proximate the merchant terminal at the time of requesting
transfer.
21. A service node of a telecommunications network
which, in response to a request from a customer mobile
station, arranges for transfer of a transaction amount from
a customer account of a customer financial institution to a
merchant account of a merchant financial institution
provided that the service node determines that the customer
mobile station and the merchant terminal are within a
predetermined geographical proximity.
The Examiner relies on the following references in rejecting
the claims:
Morrill, Jr. (Morrill) 5,991,749 Nov. 23, 1999
(effective filing date: Sep. 11, 1996)
Hall et al. (Hall) 6,026,375 Feb. 15, 2000
(filed Dec. 5, 1997)2
Shannon et al. (Shannon) 6,032,044 Feb. 29, 2000
(filed Aug. 16, 1996)
Claims 1-3, 5-7, 11-16, 18, 19, 21, 27, 29, 31-34, 36-40,
42, 44-80 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morrill in view of Hall.3
Appeal No. 2002-0819
Application No. 09/047,533
4 The Examiner includes claim 30 in the rejection of the other claims
while in the rejection over Morrill and Shannon, claim 30 is replaced with
claim 21 in the answer. We assume that this change is inadvertent because the
Examiner should be aware that it can constitute a new ground of rejection and
is not permitted. We note that although the explanation of the rejection
matches the limitations recited in claim 21, the examiner has consistently
rejected claim 30 over Morrill and Shannon in all the Office actions including
the final Office action (Paper, No. 10, mailed November 2, 2000).
4
Claim 304 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Morrill in view of Shannon.
We make reference to the answer (Paper No. 15, mailed
September 10, 2001) for the Examiner’s reasoning, and to the
appeal brief (Paper No. 14, filed June 26, 2001) for Appellant’s
arguments thereagainst.
OPINION
With respect to the rejection of claims 1-3, 5-7, 11-16, 18,
19, 21, 27, 29, 31-34, 36-40, 42, 44-80, the Examiner asserts
that Morrill teaches all the claimed features except for
determining if the customer mobile station and a merchant
terminal are within a predetermined geographical proximity
(answer, page 4). However, the Examiner characterizes the
process of checking the time it takes for a customer to reach a
facility location of Hall as determining if the customer mobile
station is within a predetermined proximity of the merchant
terminal (id.). By pointing to the completion of transaction
based on a determination that the customer order may be
Appeal No. 2002-0819
Application No. 09/047,533
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fulfilled, as disclosed in Hall, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to
combine the teachings of Morrill and Hall whereas using the
predetermined geographical proximity as a security safeguard must
result from the combination (answer, pages 4 & 5).
Appellant argues that considering the customer’s location in
Hall is merely for scheduling the completion of the order at the
same time the customer arrives at a local facility (brief, page
6). Appellant further points out that the use of the customer’s
location is for efficiency purposes and for insuring that the
order is locally available (brief, page 7). Additionally,
Appellant indicates that the claimed “predetermined geographical
proximity” is necessary to authorize or complete payment, whereas
Hall never uses proximity as criteria or authorization for
payment and merely considers the GPS coordinates for timing of
providing the requested service (id.).
In response to Appellant’s arguments, the Examiner asserts
that the timing of the customer’s arrival is related to the
distance between the customer and the merchant (answer, page 13).
The Examiner further reasons that since the reference discusses
“acceptable estimated times of arrival in order to fulfill the
order,” a predetermined geographical proximity must be involved
as “distance is an integral component” (id.). The Examiner also
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Application No. 09/047,533
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argues that Hall determines if a customer order can be fulfilled
within an acceptable wait time and therefore, teaches the
geographical proximity as a requisite for completing the
transaction and transferring money (answer, page 14).
The initial burden of establishing reasons for
unpatentability rests on the Examiner. In re Oetiker, 977 F.2d
1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). The Examiner
must produce a factual basis supported by teaching in a prior art
reference or shown to be common knowledge of unquestionable
demonstration, consistent with the holding in Graham v. John
Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). This evidence is
required in order to establish a prima facie case. In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir.
1984); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA
1966). However, “the Board must not only assure that the
requisite findings are made, based on evidence of record, but
must also explain the reasoning by which the findings are deemed
to support the agency’s conclusion.” In re Lee, 277 F.3d 1338,
1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
First, to address the Examiner’s assertion that the timing
of the customer’s arrival is the same as determining geographical
proximity, we note that the claims require that the transaction
amount from the customer’s account be transferred only if the
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Application No. 09/047,533
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customer’s mobile terminal is within a predetermined geographical
proximity of the merchant’s terminal. Therefore, the
determination of the geographical proximity is the criteria for
completing the financial transaction and has nothing to do with
determining at which merchant location and at what time the
service will be provided. Thus, the analysis should be directed
to determining whether the customer’s location is applied as a
condition of completing the transaction.
Our review of Hall confirms that the reference relates to a
method and system for receiving an order from a mobile customer,
receiving customer location information and scheduling the
completion of the order (abstract). In particular, Hall provides
for receiving an order from a mobile customer which includes
different components related to customer location, the facility
that is capable of completing the order, estimated time of
arrival of the customer and the time needed to complete the order
(col. 3, lines 55-67). According to another component, a
facility that is capable of completing the order within the time
prior to the customer’s arrival is identified (col. 4, lines 1-
5). In fact, contrary to the Examiner’s interpretation of Hall,
determination of the estimated arrival time of the customer based
on the location of the mobile customer merely provides the system
with information that helps with selecting which merchant
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Application No. 09/047,533
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facility should complete the order, not whether the order should
be completed. We also disagree with the Examiner that estimated
time of arrival determines if the order would be filled (answer,
page 16) since the location of the mobile customer is not
compared to a predetermined geographical proximity. In fact, the
estimated time of arrival in combination with the other
information related to the location, availability of the service
and backlog in the facility merely facilitates scheduling by
determining which facility has the necessary stock and means for
completing the order within the customer’s needed time frame
(col. 9, lines 33-50).
Therefore, we agree with Appellant that the combination of
Morrill and Hall fails to teach or suggest that transferring of
the transaction amount is completed only if the customer mobile
station and the merchant terminal are within the predetermined
geographical proximity, as required by the independent claims.
Thus, assuming, arguendo, that it would have been obvious to
combine Morrill with Hall, as held by the Examiner, the
combination would still fall short of teaching the use of the
relative geographical proximity of the customer mobile station
and the merchant terminal as a condition for transferring the
transaction amount. As the Examiner has failed to set forth a
Appeal No. 2002-0819
Application No. 09/047,533
5 We also note that claim 56 is improperly dependent upon itself and
should be amended to depend from claim 55 which appears to provide the
antecedent basis for the features recited in claim 56.
6 Even if the rejection was meant to be for claim 21, the above-noted
claimed feature, which is present in independent claims 21 and 69, is neither
taught nor suggested by the combination of Morrill and Shannon.
9
prima facie case of obviousness, we cannot sustain the 35 U.S.C.
§ 103 rejection of claims 1-3, 5-7, 11-16, 18, 19, 21, 27, 29,
31-34, 36-40, 42, 44-80 over Morrill and Hall.5
With respect to the rejection of claim 30, the Examiner
relies on Morrill and Shannon (final Office action, page 12).
However, Shannon provides no teaching related to the claimed
determination of the relative geographical proximity of the
customer mobile station and the merchant terminal as a condition
for transferring the transaction amount in order to overcome the
deficiencies of Morrill discussed above with respect to the base
claims. Therefore, the 35 U.S.C. § 103 rejection of claim 30
over Morrill and Shannon cannot be sustained.6
Appeal No. 2002-0819
Application No. 09/047,533
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CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-3, 5-7, 11-16, 18, 19, 21, 27, 29-34, 36-40,
42, 44-80 under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
Appeal No. 2002-0819
Application No. 09/047,533
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