Ex Parte Matsuda et al

Patent Trial and Appeal Board

Oct 27, 2016

13450298 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/450,298 04/18/2012 Paul J. Matsuda
66945 7590 10/31/2016
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
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UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
79900-830240(080540USC3) 9379
EXAMINER
YU,ARIELJ
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
EDurrell@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL J. MATSUDA,
SARAH E. PERRY, and TRACY L. WILK
Appeal2014-005066 1
Application 13/450,2982
Technology Center 3600
Before MICHAEL W. KIM, MATTHEWS. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 40-60. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
December 23, 2013) and Reply Brief ("Reply Br.," filed March 11, 2014),
the Examiner's Answer ("Ans.," mailed February 6, 2014), and Final Office
Action ("Final Act.," mailed May 28, 2013).
2 Appellants identify Visa International Service Association as the real party
in interest (Appeal Br. 3).
Appeal2014-005066
Application 13/450,298
CLAIMED fNVENTION
Appellants' claimed invention relates generally "to systems and
methods for conducting electronic commerce between individuals"
(Spec. 1, 11. 10-11).
Claims 40 and 50 are the independent claims on appeal. Claim 40,
reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
40. A method of integrating the shipping of goods with
the purchase of the goods, the method comprising:
[a] recording, by a transaction server, a purchase price of
the goods, a first account for an individual buyer and a second
account for an individual seller, the seller and the buyer
connecting to the transaction server over a network;
[b] receiving an indication of a chosen shipper by which
to ship the goods from the seller to the buyer;
[ c] receiving a tracking number identifying the goods to
be shipped by the shipper; and
[ d] receiving a notification from the shipper regarding a
status of the goods associated \~1ith the tracking number.
REJECTIONS
Claims 40-59 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Walker (US 6,240,396 Bl, iss. May 29, 2001) and Hilbush (US
2010/0332284 Al, pub. Dec. 30, 2010).
Claims 60 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Walker, Hilbush, and Official Notice.
ANALYSIS
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 40 and 50 as unpatentable over Walker and
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Appeal2014-005066
Application 13/450,298
Hilbush "because Hilbush et al. cannot be relied upon as prior art" (Appeal
Br. 10-11; see also Reply Br. 3).
We begin by noting that the present application is a continuation of
U.S. Application No. 12/892,807, filed September 28, 2010, which is a
continuation of U.S. Application No. 12/190,130, filed August 12, 2008,
which is a continuation of U.S. Application No. 09/352,468, filed July 14,
1999. The '468 application claims benefit of priority to U.S. Provisional
Application no. 60/135,103, filed February 19, 1999.
We also note that the Hilbush reference, U.S. Application No.
12/876,740, filed September 7, 2010 is a division of U.S. Application No.
10/832,111, filed April 26, 2004, which is a continuation of U.S.
Application no. 09/498,805, filed February 7, 2000. The '805 application
claims benefit of priority to U.S. Provisional Application no. 60/119, 189,
filed February 8, 1999.
On this record, we agree with Appellants that the Examiner has not
met the burden of establishing that the Hilbush provisional application
reasonably supports the portions of Hilbush cited by the Examiner in making
the rejections of certain claim limitations. Although the Hilbush provisional
application antedates the present application's earliest effective filing date,
the Hilbush reference, relied upon by the Examiner, constitutes prior art only
for subject matter properly supported by the provisional application in
accordance with 35 U.S.C. § 112, first paragraph. See In re Giacomini, 612
F.3d 1380, 1383-85 (Fed. Cir. 2010); see also Ex parte Yamaguchi, 88
USPQ2d 1606, 1609 (BP AI 2008) (precedential).
Here, the Examiner has not sufficiently shown that Hilbush's
provisional patent application provides such support through any factual
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Appeal2014-005066
Application 13/450,298
findings or reference to the provisional application. In this regard, the
record indicates that the Examiner provided Appellants with a copy of the
provisional application on May 28, 2013 "[i]n response to [A]pplicant's
argument that provisional application number 60/119, 189 is not available to
verify support of the reference relied upon" (Final Act. 6). However, in
response to Appellants' argument that after having reviewed the provision
application, Appellants were unable to find support for "receiving a
notification from the shipper regarding a status of the goods associated with
the tracking number," as recited by limitation [ d] of independent claim 40,
and similarly recited by independent claim 50 (Appeal Br. 11 ), the Examiner
provided no response in the Examiner's Answer (see, e.g., Ans. 3-9). Thus,
we agree with Appellants that on the record the Examiner has failed meet the
burden of establishing that the Hilbush reference is prior art for the relevant
subject matter.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 40 and 50 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejections of claims 41--49
and 51---60.
DECISION
The Examiner's rejections of claims 40---60 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
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