Ex Parte Jacobs et al

Patent Trials and Appeals Board

Jun 27, 2019

11563620 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/563,620 11/27/2006 Paul E. Jacobs
112246 7590 07/01/2019
Loza & Loza, LLP/Qualcomm
305 N. Second Ave., #127
Upland, CA 91786
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. CONFIRMATION NO.
060285 1259
EXAMINER
DEGA, MURALI K
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
ocpat_uspto@qualcomm.com
qualcomm-pto@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAULE. JACOBS and NIKHIL JAIN
Appeal 2018-003115
Application 11/563,620
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3, 6, 16, 23, 26-29, 31, 33, 34, 36, and 38-42.
Claims 2, 4, 5, 7-15, 17-22, 24, 25, 30, 32, 35, and 37 were cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Qualcomm
Incorporated. App. Br. 2.
Appeal 2018-003115
Application 11/563,620
STATEMENT OF THE CASE
Appellants' invention relates to "systems and techniques to
authenticate e-commerce transactions using a wireless telecommunications
device." Spec. ,-J 1. Exemplary claim 1 under appeal reads as follows:
1. A merchant system, comprising:
a network interface; and
a processor of the merchant system coupled to the
network interface, the processor configured to:
receive an e-commerce transaction initiated
by a computer via the network interface, where the
e-commerce transaction is billed to a consumer's
account;
obtain an IP address for the computer and a
mobile telephone number of a mobile telephone
associated with the consumer;
send a query to a registry server including the
IP address and the mobile telephone number to
determine whether the computer has been pre-
registered for authentication by a consumer using a
mobile telephone of the consumer to authorize the
computer as an approved device to conduct the e-
commerce transaction usmg the consumer's
account;
receive a confirmation from the registry
server that the computer has been preregistered by
the consumer as an approved device for the e-
commerce transactions using the consumer's
account;
send an authorization request to the mobile
telephone via a wireless network, after receiving the
confirmation from the registry server; and
receive an authorization of the e-commerce
transaction from the mobile telephone, wherein the
e-commerce transaction with the computer is
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authenticated and completed by the merchant
system after the authorization of the e-commerce
transaction is received from the mobile telephone.
REFERENCES and REJECTIONS
Claims 1, 3, 6, 16, 23, 26-29, 31, 33, 34, 36, and 38-42 stand rejected
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
See Final Act. 2.
Claims 1, 3, 6, 16, 23, 26-29, 31, 33, 34, 36, and 39-42 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Kim
(US 2006/0131390 Al; pub. June 22, 2006), Sulmar (US 2006/0149644 Al;
pub. July 6, 2006), Ng (US 2003/0120592 Al; pub. June 26, 2003), Suzuki
(US 2005/0033994 Al; pub. Feb. 10, 2005), and Stancil
(US 2004/0001088 Al; pub. Jan. 1, 2004). See Final Act. 6.
Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim, Sulmar, Ng, Suzuki, Stancil, and Ballou
(US 2007/0174467 Al; pub. July 26, 2007). See Final Act. 22.
PRINCIPLES OF LAW
Patent-Eligible Subject Matter
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (citing Mayo
Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 75-77
(2012)). According to this framework, a determination is made to consider
whether the claims at issue are directed to one of those concepts (i.e., laws of
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nature, natural phenomena, and abstract ideas). See id. If so, a further
determination must be made to consider the elements of each claim both
individually and "as an ordered combination" to determine whether the
additional elements "transform the nature of the claim" into a patent-eligible
application. Id.
The United States Patent and Trademark Office (USPTO) published
revised guidance on the application of 35 U.S.C. § 101. USPTO's January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, Federal Register Vol. 84, No. 4, 50-57 ("Revised Guidance").
Under the Revised Guidance, we first look to whether the claim recites: any
judicial exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activity such
as fundamental economic practices, or mental processes); and additional
elements that integrate the judicial exception into a practical application.
See Revised Guidance, 84 Fed. Reg. at 54-55. Only if a claim recites a
judicial exception and does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that are not "well-understood, routine,
conventional" in the field. See Revised Guidance, 84 Fed. Reg. at 56. "The
question of whether a claim element or combination of elements is well-
understood, routine and conventional to a skilled artisan in the relevant field
is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368
(Fed. Cir. 2018).
Obviousness
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
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230 (1976). Instead, the relevant question is "whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, "the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations
omitted). Further, one cannot show non-obviousness by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re
Keller, 642 F.2d at 425.
Additionally, a prior art reference is analogous to an application if: (1)
it is from the same field of endeavor as the application, regardless of the
problem addressed, or (2) if the reference is not within the field of the
inventor's endeavor, it is nonetheless reasonably pertinent to the particular
problem with which the inventor is involved. In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). As indicated, these tests are in the alternative, i.e., a
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finding of either is sufficient. See In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992).
ANALYSIS
35 U.S.C. § 1 OJ REJECTION
Independent claims 1 and 29 recite a system, independent claims 16
and 31 recite a mobile telephone, independent claims 23 and 39 recite a
method, independent claim 36 recites a processor, and independent claims
40 and 41 recite a process-readable medium. Thus, under step 1 of the
Revised Guidance, independent claims, 1, 16, 23, 29, 31, 36, and 39-41 are
directed to one of the four statutory categories of patentability enumerated
by 35 U.S.C. § 101 (process, machine, manufacture, or composition of
matter). Applying the first part of the Alice analysis, the Examiner finds the
claims are directed towards facilitating an e-commerce transaction using
registered telecommunications devices between a consumer and a merchant
system, after authentication of the consumer. See Final Act. 3; see also
Ans. 4-5. The Examiner further finds the concept of facilitating e-
commerce is similar to concepts previously determined to be abstract ideas
by the federal courts, such as performance of financial transactions,
mitigating risk, and collecting and comparing known information. See Final
Act. 4 (citing Bilski v. Kappas, 561 U.S. 593 (2010); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014); Classen Immunotherapies, Inc.
v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)); see also Ans. 5. Applying
the second part of the Alice analysis, the Examiner finds the claims do not
amount to significantly more than the abstract idea itself because the claims
do not: effect an improvement to another technology or technical field;
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amount to an improvement to the functioning of a computer itself; or move
beyond a general link of the use of an abstract idea to a particular technology
environment. See Final Act. 4; see also Ans. 8. More specifically, the
Examiner finds the claims amount to nothing more than an instruction to
implement the abstract idea (i.e., facilitating e-commerce) in a well-
understood, routine and conventional technological environment involving
generic computer systems performing generic computer functions. See Final
Act. 4-5; see also Ans. 8.
Appellants argue the Final Office Action fails to establish a prima
facie case of patent-ineligibility because the Final Office Action states that:
(a) the claims are directed to an abstract idea (i.e., facilitating e-commerce)
without identifying the relevant factors considered or providing factual
evidence to support this conclusion; and (b) there are no meaning limitations
in the claim that transform the abstract idea into something more without
identifying the specific limitations considered or any support or rationale as
to why the limitations are not enough to qualify as something more. See
App. Br. 12-13. Appellants assert the Examiner impermissibly engages in
piecemeal analysis and over-generalizations in evaluating the claims, and
fails to consider each of the claims as a whole. See App. Br. 13.
Appellants further argue the claims are not directed to the abstract
idea of conducting e-commerce, but instead, are directed to a computer
network-based authenticated merchant system. See App. Br. 14. More
specifically, Appellants argue the claims are directed to the technical aspects
of conducting e-commerce (i.e., authentication, security), rather than thee-
commerce process itself (e.g., establishing purchase prices, discounts, etc.).
See id; see also Reply Br. 2. According to Appellants, the claims are
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directed to an improvement to the functioning of an overall computer
system, rather than a fundamental economic or longstanding commercial
practice, because the claims address the challenge for authenticating and
securing transactions utilizing a two-level procedure, resulting in the
merchant system operating more securely and efficiently. See App. Br. 15;
see also Reply Br. 2-3.
Appellants additionally argue the claims are directed to something
more than an abstract idea because the claims include: (1) improvements to
another technology or technical field; (2) meaning limitations beyond
generally linking the user of an abstract idea to a particular technological
environment; and (3) a "new and useful application" in the physical realm.
See App. Br. 16; see also Reply Br. 3. Appellants assert the claims are
directed to authenticating and securing transactions utilizing a two-level
procedure utilizing a computing device and mobile device over two different
networks, and, thus, are directed to something more than facilitating e-
commerce. See App. Br. 16-17.
Under step 2A, prong 1, of the Revised Guidance ( consistent with the
Alice analysis), we must determine "whether the claims at issue are directed
to one of those patent-ineligible concepts," including the abstract ideas
enumerated in the Revised Guidance. Claim 1 recites, in part, "receive an e-
commerce transaction initiated by a computer," and "receive an
authorization of the e-commerce transaction from the mobile telephone."
Claims 23, 29, 3 6, and 41 recite similar elements. Further, claim 16 recites,
in part, "receive ... an authorization request from a merchant system to
authorize an e-commerce transaction initiated by the computer," and "send
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.. an authorization or a denial of the e-commerce transaction." Claims 31,
39, and 40 recite similar elements.
Consistent with the Examiner's finding, the aforementioned elements
recite a concept of facilitating an e-commerce transaction between a
consumer and a merchant system. Commerce transactions between
merchants and consumers are examples of fundamental or long-standing
economic practices. The Revised Guidance identifies "fundamental
economic principles or practices" as an example of certain methods of
organizing human activity, which is an enumerated category of abstract
ideas. See Revised Guidance, 84 Fed. Reg. at 52. Further, the fact that the
commerce transaction is an e-commerce transaction does not impart patent-
eligibility on the claims, as the recitation of "e-commerce" merely amounts
to a statement to use a computing system to process the transaction. "[I]f a
patent's recitation of a computer amounts to a mere instruction to
'implemen[t]' an abstract idea 'on ... a computer,' that addition cannot
impart patent eligibility." Alice, 573 U.S. at 223 (quoting Mayo, 566 U.S. at
84). Thus, claims 1, 16, 23, 29, 31, 36, 39, 40, and 41, as well as the
corresponding dependent claims, recite an abstract idea. Notwithstanding
Appellants' argument that the claims are directed to technical aspects of
conducting e-commerce, rather than the e-commerce process itself,
Appellants' argument does not change the fact that the claims recite a
concept of facilitating an e-commerce transaction, and thus, recite an
abstract idea.
Because we conclude that the claims recite an abstract idea, we tum to
step 2A, prong 2, of the Revised Guidance. As described in the Revised
Guidance, we must evaluate "whether the claim as a whole integrates the
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recited [ abstract idea] into a practical application of the [ abstract idea]." 2
Revised Guidance, 84 Fed. Reg. at 54. A claim that integrates an abstract
idea into a practical application will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the abstract idea,
such that the claim is more than a drafting effort designed to monopolize the
abstract idea. See id. If the exception is so integrated, the claims is not
directed to an abstract idea. See id.
We agree with the Examiner's findings that the claims do not recite
elements ( or a combination of elements) that are either an improvement to
the functioning of an underlying computer or an improvement to another
technology or technical field. See Final Act. 4-5; see also Ans. 6-8. We
conclude Appellants' argued improvement (i.e., causing the merchant system
to operate more securely and efficiently via authorizing an e-commerce
transaction using a received IP address of a computer associated with a
mobile telephone number of a mobile telephone) is not a technological
improvement, but, instead, is an improvement to the underlying fundamental
economic practice of facilitating an e-commerce transaction, where the
improvement is effectuated by using the underlying computer system as a
tool to carry out the underlying fundamental economic practice.
We further agree with the Examiner's findings that the claims merely
recite elements that generally link the use of the fundamental economic
practice to a computing system (i.e., merchant system) that includes a
2 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Revised Guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Revised Guidance). See Revised
Guidance, 84 Fed. Reg. at 54-55.
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network interface and a processor, where Appellants' Specification discloses
that the processor can be any type of a processor, including a general
purpose processor. See e.g., Spec. ,i 46. Further, in view of Appellants'
Specification, and consistent with the Examiner's findings, the claims do not
recite an additional element ( or combination of elements) that: applies or
uses an abstract idea to effect a particular treatment or prophylaxis;
implements an abstract idea with, or uses the abstract idea in conjunction
with a particular machine; effects a transformation of a particular article;
uses the abstract idea in some other meaningful way beyond generally
linking the use of the abstract idea to a particular technological environment;
or otherwise integrates the abstract idea into a practical application. See
Revised Guidance, 84 Fed. Reg. at 55.
We are not persuaded by Appellants' argument that the claims are
directed to the technical aspects of conducting e-commerce, rather than the
e-commerce process itself, and thus, the claims amount to an improvement
to the functioning of the underlying computing system itself. See App. Br.
14-1 7. As previously described, the argued improvement is not an
improvement to the underlying computer system, but, instead, is an
improvement to the underlying fundamental economic practice effectuated
by the use of the computer system to implement the fundamental economic
practice. As also previously described, the claim elements, which are
allegedly directed to the technical aspects of conducting e-commerce,
merely link the use of the e-commerce process to a computing system.
Because we conclude that the claims are directed to an abstract idea,
we tum to step 2B of the Revised Guidance. As described in the Revised
Guidance, we must evaluate "the additional elements individually and in
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combination ... to determine whether they provide an inventive concept
(i.e., whether the additional elements amount to significantly more than the
exception itself)." Revised Guidance, 84 Fed. Reg. at 56.
We agree with the Examiner's findings that the recited elements of the
claims perform activities which are well-understood, routine, and
conventional. See Final Act. 4. Consistent with the Examiner's findings,
evidence that the recited components, and the recited functionality
performed by the recited components, are well-understood, routine, and
conventional, is found in Appellants' Specification. More specifically,
Appellants' Specification describes that the functionality performed by a
merchant system, registry server, authentication device, and
telecommunications device can be performed with any type of a processor,
including a general purpose processor. See e.g., Spec. ,-J,-J 42-47. Thus, we
conclude the claims do not amount to significantly more than an abstract
idea.
Regarding Appellants' argument that the Final Office Action fails to
establish a prima facie case of patent-ineligibility, this argument is not
persuasive either. Contrary to Appellants' argument, the Examiner is merely
required to provide Appellants reasonable notice as to the basis of the § 101
rejection, as set forth by 35 U.S.C. § 132:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." 3 5
U.S.C. § 132. That section "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
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seeking to counter the grounds for rejection." Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). The Examiner's findings
met this requirement, as the Examiner provided an analysis of the patent-
eligibility of the claims and an articulated rationale for the rejection that
clearly put Appellants on notice regarding the basis of the rejection and
provided sufficient information for Appellants to judge the propriety of
continuing the prosecution of the application. See Final Act. 2-5; see also
Ans. 4-8.
Appellants' argument that the Examiner failed to consider elements of
each claim, both individually and as an ordered combination, is also not
persuasive. Appellants fail to specifically identify the specific element(s)
contained in the claims that the Examiner failed to consider, and that are
"significantly more" than the abstract idea.
Therefore, we are not persuaded the Examiner erred in finding claims
1, 3, 6, 16, 23, 26-29, 31, 33, 34, 36, and 38-42 recite patent-ineligible
subject matter. Accordingly, we sustain the rejection of claims 1, 3, 6, 16,
23, 26-29, 31, 33, 34, 36, and 38-42 under 35 U.S.C. 101 as being directed
to a judicial exception without significantly more.
35 U.S.C. § 103(a) REJECTION
We have reviewed the Examiner's rejections under 35 U.S.C. § 103(a)
in light of Appellants' arguments in Appellants' Appeal Brief and Reply
Brief that the Examiner has erred. We are unpersuaded by Appellants'
contentions and concur with the findings and conclusions reached by the
Examiner as explained below.
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Independent Claims 1, 23, 29, 36, and 41
The Examiner finds Kim teaches credit card users connecting with an
online merchant system via a network using user computing devices. See
Final Act. 6 ( citing Kim ,i 18; Fig. 1 ). The Examiner further finds Kim
additionally teaches the merchant server: receives transaction information
required for conducting a transaction (e.g., account number and credit card
expiration date); sends a notification of the transaction to, and requests
authorization from, a mobile device of a credit card user; receives a reply
message generated by the mobile device of the credit card user, and analyzes
the reply message to determine whether the transaction is approved or
denied. See Final Act. 6-9 (citing Kim ,i,i 7, 18, 19, 25, 36, 39; Fig. 1). The
Examiner additionally finds the following:
• Sulmar teaches a vendor system contacting a user for
verification or authorization purposes and using the user's
account as a billing account for the user's mobile device
(see Final Act. 9-10 ( citing Sulmar ,i,i 8, 1 O));
• Suzuki teaches a device registration system verifying a
user is a registered user based on received user
identification information (see Final Act. 11-13 ( citing
Suzuki ,i,i 15, 173));
• Ng teaches a central registry storing identification
information of registered users including a registered
user's phone number and credit card information (see
FinalAct. 14 (citingNgiJiJ 12, 53; Fig. l)); and
• Stancil teaches an Internet Protocol ("IP") address (see
Final Act. 15-16 (citing Stancil ,i 41)).
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The Examiner further finds it would have been obvious to a person of
ordinary skill in the art, at the time of the claimed invention, to modify the
system of Kim to include the aforementioned features of Sulmar, Suzuki,
Ng, and Stancil. See Final Act. 10, 13-16; see also Ans. 21-24.
Appellants argue Sulmar is non-analogous to Kim and the claims
because Sulmar' s system is directed to billing exclusively in a mobile
telephone environment for mobile telephone service and requires a user to
make a voice call to a telephone number from a mobile telephone before any
billing functionality is executed. See App. Br. 19-21. Appellants also argue
Sulmar is based on an entirely different system with materially different
functions and/or operations, and thus, one of ordinary skill in the art would
not combine Sulmar with Kim, in the manner suggested by the Examiner.
See id.
This argument is not persuasive. Contrary to Appellants' argument,
we conclude that Sulmar is analogous art because Sulmar' s disclosure of a
vendor system contacting a user for verification or authorization purposes
and using the user's account as a billing account for the user's mobile device
is reasonably pertinent to the objective of both the claimed invention (i.e.,
authenticating e-commerce transactions in order to prevent unauthorized e-
commerce transactions) and Kim (i.e., detecting and preventing fraudulent
use of credit and debit cards). See e.g., Spec. ,i,i 1-4; see also Kim ,i 2.
Further, as previously discussed above, in the context of the obviousness
analysis under 35 U.S.C. § 103, it is not a requirement that references be
physically combinable. Instead, the test of obviousness is what the
combined teachings of the references would suggest to a person of ordinary
skill in the art. As previously discussed above, Kim teaches a merchant
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server sending a notification of a transaction to, and requesting authorization
from, a mobile device of a credit card user, and Sulmar teaches a vendor
system contacting a consumer for authorization purposes and using the
consumer's account as a billing account for a telecommunication device.
Thus, we agree with the Examiner's finding that it would have been obvious
to modify the merchant system disclosed in Kim to include the authorization
and billing features of the vendor system disclosed in Sulmar because the
combination merely involves the substitution of known elements yielding
predictable results. See Final Act. 1 O; see also Ans. 21-24.
Appellants also argue Suzuki is non-analogous to Sulmar, Kim, and
the claims because the authentication of Suzuki is based on an IC card that
contains unique identification. See App. Br. 21-22. This argument is not
persuasive either. Similar to Sulmar, we conclude that Suzuki is also
analogous art because Suzuki's disclosure of a vendor system that authorizes
a registered user for a credit card transaction is also reasonably pertinent to
the objective of both the claimed invention (i.e., authenticating e-commerce
transactions in order to prevent unauthorized e-commerce transactions) and
Kim (i.e., detecting and preventing fraudulent use of credit and debit cards).
See e.g., Spec.,i,i 1-4; see also Kim ,i 2. Further, as previously discussed,
Kim teaches a merchant server sending a notification of a transaction to, and
requesting authorization from, a mobile device of a credit card user, and
Suzuki teaches verifying a user is a registered user based on received user
identification information. Thus, we agree with the Examiner's finding that
it would have been obvious to modify the merchant system disclosed in Kim
to include the verifying feature of the vendor system disclosed in Suzuki
because the proposed combination merely involves the substitution of
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known elements yielding predictable results. See Final Act. 13; see also
Ans. 21-24.
Appellants further argue Stancil is wholly irrelevant to the claims
because Stancil has nothing to do with authentication and instead discloses a
USB stick that is pre-programmed with executable code to automatically
generate an IP address of a website containing computing environment data.
See App. Br. 22-23. Appellants' argument is not persuasive. The Examiner
did not rely on Stancil for teaching authentication. Instead, the Examiner
relied on Stancil for teaching the transmission of an IP address. See Final
Act. 15-16. We agree with the Examiner that the combination of Kim and
Stancil is no more than the modification of the merchant server to utilize an
IP address in addition to a mobile telephone number in storing account
records in a database for the purpose of sending and receiving authorization
requests messages for a specific account. See Final Act. 16. We further
agree with the Examiner that such a combination merely involves the
substitution of known elements yielding predictable results. See id.; see also
Ans. 21-24.
Appellants also argue Ng fails to teach or suggest a central registry
maintaining a database containing identification of devices that are
authorized to conduct Internet transactions, or that the central registry
confirms that a user's device is authorized to conduct the Internet
transactions because Ng's central registry merely confirms payment. See
App. Br. 23-24. This argument is not persuasive either because it attacks
the Ng reference individually rather than the Examiner's combination of
references. More specifically, the Examiner relied on Kim (in combination
with the other cited references) for teaching a server that maintains a
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database containing identification of devices that are authorized to conduct
transactions and confirming that a user's device is authorized to conduct a
transaction, and further relied upon Ng for teaching a central registry. See
Final Act. 13-15. Appellants' argument does not address the Examiner's
combination of cited references, and, thus, is not persuasive.
Dependent Claim 6
The Examiner further finds Kim teaches a server that locates relevant
phone number information stored in a database and designated to handle
authorization request messages for an account, and transmits an
authorization request message to a mobile device assigned to an account
requesting a transaction. See Final Act. 21 ( citing Kim ,i 7); see also Kim
,i 8. Appellants argue there are no teachings or suggestions in any of the
references about a merchant server sending an authorization request directly
to a mobile telephone to authorize an e-commerce transaction. See App.
Br. 25. We are not persuaded by this argument either. Paragraph 8 of Kim
discloses that the server "generates an authorization request message ... and
transmits the authorization request message to the mobile device assigned to
the account requesting the transaction." Kim ,i 8. Thus, we agree with the
Examiner's finding that, Kim, in combination with the other cited
references, teaches or suggests the elements recited in claim 6. See Final
Act. 6, 21.
Dependent Claim 26
As previously described above, the Examiner finds Ng teaches a
central registry, and further finds Kim teaches a cardholder information
database that stores mobile phone number information associated with a
corresponding account number. See Final Act. 14, 24 (citing Ng ,i,i 12, 53;
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Fig. 1; Kim ,i 7). Appellants argue, apart from failing to teach or suggest the
claimed registry server, the cited references further do not teach or suggest
either: (a) a database of identifications of one or more computers approved
to conduct e-commerce with a consumer's account; or (b) mapping mobile
telephone numbers to each computer identification in the aforementioned
database. See App. Br. 25. This argument is not persuasive. Paragraph 6 of
Kim discloses that "the phone number information is associated with a
corresponding account number and stored in a cardholder information
database." Kim ,i 7. Paragraph 39 ofNg discloses a "[c]entral registry" that
is "[a] clearing and statement facility that provides basis for identification."
Ng ,i 39. Thus, we agree with the Examiner's findings that Kim and Ng, in
combination with the other cited references, teaches or suggests the elements
of claim 26. See Final Act. 6, 14, 24
Dependent Claim 38
As previously described above, the Examiner finds Ng teaches a
central registry, and further finds Kim teaches a cardholder information
database that stores mobile phone number information associated with a
corresponding account number. See Final Act. 14, 22, and 24 (citing Ng
,i,i 12, 53; Fig. l; Kim ,i 7). The Examiner further finds Ballou teaches a
verification server maintaining a registry of subscribing users and list of
codes associated with the subscribing users' devices, and further teaches the
verification server receives a transmitted code and verifies a particular
device using the received code associated with the device. See Final Act. 23
( citing Ballou ,i 175). Appellants argue Ballou fails to disclose either: (a) a
user registering ( or pre-registering) a user device; or (b) a user device is pre-
registered using an authentication device such as a mobile telephone to
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authorize the pre-registration. See App. Br. 26-27. We are not persuaded by
this argument either because it attacks the Ballou reference individually
rather than the Examiner's combination of references. More specifically, the
Examiner relied on Kim for teaching a server that retrieves from a database a
pending transaction record by matching unique identifying information
specified in a received message with corresponding information stored in the
database, and verifies that the message is sent from a proper mobile device
by matching the phone number transmitting the message with the phone
number include in the retrieved record. See Final Act. 22; see also Kim ,-J 9.
The Examiner further relied on Ng for teaching a central registry (see Final
Act. 22; see also Ng ,-J 39), and relied upon Ballou for teaching a verification
server that receives a transmitted code and verifies a particular device using
the received code associated with the device (see Final Act. 23 ( citing Ballou
,-J 175)). Appellants' argument does not address the Examiner's specific
findings regarding the combination of cited references, and, thus, is not
persuasive.
Independent Claims 16, 31, 39, and 40
The Examiner finds Ng teaches a pre-registration phrase where a user
registers with a central registry by providing credit card information and a
telephone number with which the central registry can contact the user to
confirm a transaction. See Final Act. 16-18; see also Ng ,-J,-J 39, 41, and 47.
The Examiner further finds Kim teaches a system that enables authorized
cardholders to designate a phone number of a mobile device for receiving
authorization request messages and for transmitting mobile reply
authorization messages. See Final Act. 19-21; see also Kim ,-J 7. As
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described above, the Examiner also finds Stancil teaches an IP address. See
Final Act. 15-16 ( citing Stancil ,i 41 ).
Appellants argue the merchant server disclosed in Kim never receives
a phone number of a mobile communication device, which is assigned to
receive an authorization request. See App. Br. 28-29. Appellants further
argue Kim fails to teach or suggest registering an IP address of a computer
and a mobile telephone number of a mobile telephone of a consumer in a
database to indicate that the computer is authorized to conduct e-commerce
transactions with the merchant system using an account of the consumer, as
recited in claim 16, and similarly recited in claims 31, 39, and 40. See App.
Br. 29. Instead, according to Appellants, Kim discloses that authorized
cardholders designate a mobile device for receiving authorization request
messages and transmitting mobile reply messages, and that the phone
number is associated with a corresponding account number and stored in a
cardholder information database. See id. Appellants additionally argue Ng's
disclosure of utilizing a mobile telephone to enter a secret PIN to
authenticate an identity of a cardholder during a credit card transaction is not
equivalent to the claimed registering an IP address of a computer and a
mobile telephone number of a mobile telephone of a consumer in a database
to indicate that the computer is authorized to conduct e-commerce
transactions with the merchant system using an account of the consumer.
See App. Br. 29-30.
We are not persuaded by these arguments. Ng discloses a pre-
transaction registration phase where a user provides a central registry credit
card information and a telephone number of mobile device with which the
central registry can contact the user to confirm a transaction. See Ng ,i,i 41,
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4 7. Further, as previously described above, Kim discloses a server that
enables authorized cardholders to designate a phone number of a mobile
device for receiving authorization request messages and for transmitting
reply authorization messages. See Kim ,i 7. As also previously described
above, Stancil discloses an IP address. See Stancil ,i 41. Thus, we agree
with the Examiner's findings that Kim, Ng, and Stancil, in combination with
the other cited references, teach or suggest the elements of claim 16, and
similarly recited elements of claims 31, 39, and 40. See Final Act. 16-21.
Remaining Claims
No separate arguments are presented for the remaining dependent
claims. See App. Br. 24, 30. Therefore, we are not persuaded that the
Examiner erred in finding claims 1, 3, 6, 16, 23, 26-29, 31, 33, 34, 36, and
38-42 unpatentable over the cited prior art references. Accordingly, we
sustain the rejection of claims 1, 3, 6, 16, 23, 26-29, 31, 33, 34, 36, and 38-
42 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1, 3, 6, 16, 23, 26-29,
31, 33, 34, 36, and 38-42 under 35 U.S.C. § 101.
We affirm the Examiner's rejection of claims 1, 3, 6, 16, 23, 26-29,
31, 33, 34, 36, and 38-42 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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