Ex Parte Mascavage, et al

Board of Patent Appeals and Interferences

May 11, 2010

10298153 (B.P.A.I. May. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte JOHN J. MASCAVAGE, III,
MARGARET M. WEICHERT, and HENRY M. ABELMAN
____________________
Appeal 2009-013907
Application 10/298,153
Technology Center 3600
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Decided: May 12, 2010
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Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013907
Application 10/298,153

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejections of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.1

THE INVENTION
Appellants’ claimed invention relates to a payment system and
methods for authorizing an online purchase between a customer and a
vendor site through a pop-up window on a customer’s browser. (Spec. p. 3,
ll. 9-12).
Independent claim 1, which is deemed to be representative, reads as
follows:
1. A method for authorizing a transfer for an
online purchase between a customer and a vendor site,
the method comprising steps of:
receiving transaction information from the vendor
site at a funds transfer server via a network, the
transaction information including a transaction amount;
the funds transfer server automatically opening a
new web browser window for the customer on a
customer's computer;
the funds transfer server receiving authenticating
information from the customer;
the funds transfer server authenticating the
customer's identity;

1 Our decision will make reference to the Appellants’ Amended Appeal
Brief (“App. Br.,” filed Jun. 27, 2008) and Reply Brief (“Reply Br.,” filed
Nov. 3, 2008), and the Examiner’s Answer (“Ans.,” mailed Sep. 3, 2008).
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the funds transfer server presenting the transaction
amount in the new web browser window, whereby the
customer can authorize the transaction amount through
interaction with the new web browser window;
the funds transfer sewer receiving authorization
from the customer of a transfer for at least the transaction
amount; and
the funds transfer server notifying the vendor site
of authorization and authentication.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stein et al. US 5,826,241 Oct. 20, 1998
The Examiner rejected claims 1-19 under 35 U.S.C. § 103(a) as
unpatentable over Stein.

ISSUE2
Appellants generally argue that Stein fails to teach or suggest the
steps: “the funds transfer server automatically opening a new web browser
window for the customer on a customer's computer,” “the funds transfer
server receiving authenticating information from the customer,” and “the
funds transfer server authenticating the customer's identity.” (App. Br. 8-9).
Appellants argue that independent claims 11 and 15, which recite similar
limitations as claim 1, should be allowable for these same reasons. (App.

2 Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Br. 11 and 12). Additionally, Appellants argue that the steps supra, are not
inherent features of the Stein reference. (Reply Br. 3-5). The Examiner
finds that Stein teaches an Internet payment system which makes obvious
these limitations as recited by Appellants. (Ans. 3).
Thus, the single issue arising from the respective positions of
Appellants and the Examiner are:
Have Appellants shown that Stein fails to teach or suggest
automatically opening a new web browser window on a customer's
computer, authenticating information from the customer, and authenticating
the customer's identity, as generally recited in independent claims 1, 11, and
15?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence.
1. Stein is directed to a payment system for enabling a first user to
make a payment to a second user for the purchase of a product over the
Internet. (Abs.).
2. Stein describes that the payment system provides Internet users
with a variety of services and functions, including making a funds transfer
transaction, validating a subscriber's status, and enrolling as a subscriber.
(col. 6, ll. 18-22).
3. Stein describes that in order in order to use the payment system for
transactions, buyers and sellers must both enroll and obtain a subscriber or
cardholder account. (col. 5, ll. 1-10).
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4. Stein’s cardholder account includes pay-in/pay-out (e.g., credit
card, checking account) information, and subject to application approval, a
“cardnumber” which uniquely identifies the cardholder’s account. (col. 4, ll.
9-37 and col. 12, ll. 39-45).
5. Stein’s system describes sending messages from the computer
server to the buyer and seller. (col. 16, ll. 62-67).
6. Stein describes that these messages can be sent through the Internet
using an interactive protocol, the World Wide Web (WWW), or FTP. (col.
6, ll. 34-60).

PRINCIPLES OF LAW
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
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The operative question is thus “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id. at 417.

ANALYSIS
Claims 1-19 rejected under 35 U.S.C. § 103(a) as obvious over Stein.
Independent claims 1, 11, and 15
Turning first to Appellants’ argument that Stein fails to teach or
suggest automatically opening a new web browser window on a customer's
computer (App. Br. 9), we disagree and find that Stein’s system sends
messages from its computer server to buyers and sellers. (FF 5). These
messages are sent through the Internet and can be in the form of an
interactive protocol, World Wide Web (WWW), or FTP. (FF 6). While we
agree with Appellants that Stein does not explicitly disclose automatically
opening a new web browser window on a customer's computer, we must
agree with the Examiner that it would have been obvious to one of ordinary
skill in the art at the time of the invention to have included this feature.
(Ans. 3).
Specifically, we find that a person of ordinary skill in the art would
appreciate from a reading of Stein’s operates over the WWW, and that when
sending messages to buyers (i.e., customers) from a server using the WWW
(FF 6), these messages would likely be hypertext documents, and thus
viewed through a web browser. Accordingly, we find that Stein teaches
sending messages using a web browser window, and thus find that one of
ordinary skill would have found it obvious for the server’s message to
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automatically open a new web browser window for the customer in order for
the customer to distinguish a buying window from a payment window or
merchant window, thus providing a well-structured payment system. (Ans.
3). Moreover, the step of automatically opening a new web browser window
is nothing more than the predictable use of prior art elements according to
their established functions. Therefore, we find that Stein makes obvious the
step of claim 1 wherein “the funds transfer server automatically opening a
new web browser window for the customer on a customer's computer.”
Accordingly, Appellants’ argument is not persuasive as to error in the
rejection.
Turning next to Appellants’ arguments that Stein fails to teach or
suggest that the funds transfer server receives authenticating information
from the customer and authenticating the customer's identity (App. Br. 9-
10), we cannot agree. Stein teaches an internet payment system which
enrolls subscribers and validates their subscriber status before allowing
participation in funds transfers. (FF 2, 3). In order for a buyer/seller to user
Stein’s payment system they must apply for an account which is subject to
approval. (FF 4). This approval is based upon the payment system
receiving authenticating information such as credit card and checking
account information from the customer. (FF 4). Additionally, during this
application process, and upon approval, a buyer or seller receives a
“cardnumber” which uniquely identifies the cardholder’s account. (FF 4).
This “cardnumber” is required in order for a user to make a transaction using
Stein’s payment system. Thus, we find that Stein makes obvious a funds
transfer server which receives authenticating information from the customer
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and also authenticates the customer's identity using the unique
“cardnumber.” Therefore, Appellants’ arguments are not persuasive as to
error in the rejection.
Lastly, as discussed supra, since Appellants’ arguments have not been
persuasive to show that the Examiner failed to establish a prima facie case of
obviousness and there is presently no rejection under anticipation before us
where the Examiner relied on the principles of inherency, we find no basis to
reach with respect to Appellants’ arguments regarding inherency. (Reply
Br. 3-5).

Dependent claims 2-10, 12-14, and 16-19
Appellants do not separately argue claims 2-10, 12-14, and 16-19
which depend from claims 1, 11, and 15, respectively, and so have not
shown that the Examiner erred in rejecting claims 2-10, 12-14, and 16-19
under 35 U.S.C. § 103(a) as unpatentable over Stein for the same reasons we
found as to claims 1, 11, and 15, supra.

CONCLUSION OF LAW
We conclude that the Appellants have not shown that Stein fails to
teach or suggest automatically opening a new web browser window on a
customer's computer, authenticating information from the customer, and
authenticating the customer's identity, as generally recited in independent
claims 1, 11, and 15.

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DECISION
The decision of the Examiner to reject claims 1-19 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)(1)(2009).

AFFIRMED

ack

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