Ex Parte KWAN

Patent Trial and Appeal Board

Feb 28, 2013

09396005 (P.T.A.B. Feb. 28, 2013)

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.
09/396,005 09/13/1999 KHAI HEE KWAN 6815
23336 7590 03/01/2013
KHAI HEE KWAN
P.O.BOX 1178
SANDAKAN, 90713
MALAYSIA
EXAMINER
AUGUSTIN, EVENS J
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
03/01/2013 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 KHAI HEE KWAN
____________

Appeal 2010-002044
Application 09/396,005
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002044
Application 09/396,005
2

STATEMENT OF THE CASE
Khai Hee Kwan (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 13, 14, 33-35, 38-40, 43-46 and 48-
521. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

THE INVENTION
The invention relates to “a method, apparatus[,] and program to make
payment in any currencies through a communication network such as a
telephone service or data service such as the Internet.” Spec. 2:3-5.
Claim 13, reproduced below, is illustrative of the subject matter on
appeal.
13. An user to user payment method over a network under
payer’s control, comprising:
providing an Internet System connected to a host server
having a database to transfer stored funds in any currencies over
said network, said method executable at said host server
comprising:
prompting payer to input payer’s account identifier and
password;
authenticating the payer’s account identifier and
password for validity;

1 Claims 26, 36, and 41 are indicated as allowable. Ans. 2.
2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 18, 2009) and Reply Brief (“Reply Br.,” filed September 9,
2009), and the Examiner’s Answer (“Ans.,” mailed August 19, 2009).
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prompting the payer to input payee’s account identifier
and fund transfer information;
receiving said payee’s account identifier and said fund
transfer information;
upon authenticating the payee’s account identifier,
instantly crediting the fund to the payee’s account upon
determining balance in the database associated with the payer
account identifier and password is more than the fund for
transfer;
instantly debiting the balance associated with the payer’s
account identifier and password in the database with said fund
transferred to said payee’s account;
whereby said stored fund is deposited from a prepaid
card into an account linked to an user created identifier; and
whereby said transfer is made without interacting with
said payee and independently of said prepaid card.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Katz
Walker
US 6,424,706 B1
US 6,138,106
Jul. 23, 2002
Oct. 24, 2000

The following rejection is before us for review:
1. Claims 13, 14, 33-35, 38-40, 43-46 and 48-52 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Katz and Walker.

ISSUE
Did the Examiner set forth a prima facie case of obviousness for the
claimed subject matter over the cited prior art?
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Application 09/396,005

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FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
Katz is directed to the use of stored value accounts such as prepaid
calling cards. Claim 13 is drawn to a method whereby a payer pays a payee
by inputting payer/payee account identifiers and fund transfer information
and funds are debited from the payer account’s stored fund and credited to
the payee account. Significantly, according to claim 13 “said stored fund is
deposited from a prepaid card into an account linked to an [sic] user created
identifier.” The Examiner’s position is that Katz discloses all the limitations
in claim 13.
In particular the Examiner finds that column 4, line 42 of Katz
discloses the claim limitation “whereby said stored fund is deposited from a
prepaid card.” Ans. 5. However, the claim limitation in its entirety is: “said
stored fund is deposited from a prepaid card into an account linked to an
user created identifier.” The relied-upon disclosure at column 4, line 42 of
Katz mentions “prepaid stored value accounts” but does not further describe
depositing a stored fund from a prepaid card, let alone depositing a stored
fund from a prepaid card into an account linked to a user created identifier.
The Examiner does argue in response to the Appellant’s arguments that
various Katz passages at columns 17-19 and 21 “teach the aspect of an
account linked to a user created identifier” (Ans. 8). But the question is not
whether user created identifiers or accounts linked thereto or even smart
cards (see Katz, col. 4) are known, but whether it would have been obvious
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to one of ordinary skill in the art to deposit a stored fund from a prepaid card
into an account linked to a user created identifier. The Examiner has not
provided adequate reasoning explaining how one of ordinary skill in the art
would be led to a method as claimed whereby “said stored fund is deposited
from a prepaid card into an account linked to an user created identifier” and
for that reason the rejection is not sustained. A prima facie case of
obviousness has not been made out in the first instance.
The same claim limitation is in independent claims 34 and 39 and was
rejected in the same way claim 13 was rejected. Ans. 3-7. We reverse the
rejection of claims 34 and 39 for the same reasons we reverse the rejection
of claim 13. We reach the same conclusion as to the rejection of dependent
claims 14, 33, 35, 38, 40, 43-46, and 50-52.
We reach a different conclusion as to claims 48 and 49. Unlike the
claims discussed above, the subject matter of these claims is not limited to
the use of a “prepaid card.” These claims call for “stored funds [being]
deposited without using [a] payer’s bank account.” This claim limitation
reasonably broadly covers providing funds for storage in the host server’s
database via any number of ways – including funds transfer from any
account other than the payer’s bank account. There is no dispute that Katz
discloses electronic funds transfer (see col. 3, ll. 27-47) and it is generally
well known to those of ordinary skill that money can be transferred from any
one account to another.
The Appellant challenges the rejection of claims 48 and 49 over Katz,
but the arguments are unpersuasive as to error in the rejection. The
Appellant argues the user practicing the Katz method would not create their
own subscriber identifier. App. Br. 27. However, this is implicit in the Katz
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(col. 17, ll. 50-51) teaching of prompting for a subscriber ID/PIN which, as
is generally known, is normally preceded by subscriber/payer creating them.
The Appellant also argues that Katz uses a prepaid calling card rather than a
card with stored funds. App. Br. 27. As a matter of fact, Katz (col. 4, l. 8)
does indeed disclose smart cards with stored funds – not an especially new
concept at the time of the invention (2009). Nevertheless, claims 48 and 49
make no mention of cards, and thus the argument is not commensurate in
scope with what is claimed. Lastly, the Appellant argues that in Katz the
same payer and payee “could” (App. Br. 27) be involved. But “the applicant
concedes, the payer subscriber and payee subscriber should be different
persons” (App. Br. 27).
For the foregoing reasons, the rejection of claims 48 and 49 is
sustained.

CONCLUSIONS
The rejection of claims 13, 14, 33-35, 38-40, 43-46 and 50-52 under
35 U.S.C. § 103(a) as being unpatentable over Katz and Walker is reversed.
The rejection of claims 48 and 49 under 35 U.S.C. §103(a) as being
unpatentable over Katz and Walker is affirmed.

DECISION
The decision of the Examiner to reject claims 13, 14, 33-35, 38-40,
43-46 and 48-52 is affirmed-in-part.

Appeal 2010-002044
Application 09/396,005

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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).

AFFIRMED-IN-PART

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