Ex Parte Mengerink

Patent Trial and Appeal Board

Feb 28, 2017

12941944 (P.T.A.B. Feb. 28, 2017)

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.
12/941,944 11/08/2010 Matthew Mengerink 70481.1623US02 1782
132906 7590 03/02/2017
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
EXAMINER
CHEUNG, CALVIN K
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW MENGERINK
Appeal 2014-008360
Application 12/941,9441
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a mobile device communication system. (Spec. 1).
1 Appellant identifies PayPal Inc. as the real party in interest. (Appeal Br.
2).
Appeal 2014-008360
Application 12/941,944
Claim 1, reproduced below, is representative of the subject matter on
1. A method comprising:
receiving, using a processor within a system operated by
a mobile service provider, a purchase request via a
communication network from a user with a mobile airtime
account serviced by the mobile service provider, the purchase
request identifying an item for purchase from a merchant, the
merchant representing an entity separate from the mobile
service provider;
identifying, using the processor within the system
operated by the mobile service provider, a purchase amount and
a merchant account associated with the merchant based on the
purchase request;
sending, from the system operated by the mobile service
provider, a debit instruction to debit a financial account of the
user with the purchase amount;
sending, from the system operated by the mobile service
provider, a credit instruction to credit the merchant account
with at least a portion of the purchase amount; and
crediting, based on a calculation associated with the
purchase request, an amount of free airtime to the mobile
airtime account of the user.
The Examiner relies upon the following as evidence of
unpatentability:
appeal.
THE REJECTIONS
Ling
Fieldhouse
Smith
Brewer
Burdon
US 2002/0111907 A1
US 2002/0119767 A1
US 2004/0133511 A1
US 2005/0287982 A1
WO 96/31848
Aug. 15,2002
Aug. 29, 2002
July 8, 2004
Dec. 29, 2005
Oct. 10, 1996
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Appeal 2014-008360
Application 12/941,944
The following rejections are before us for review.
Claims 1—5, 8, and 17—19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fieldhouse and Burdon.
Claims 6 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Fieldhouse, Burdon, and Brewer.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fieldhouse, Burdon, and Smith.
Claims 9—13 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fieldhouse, Burdon, and Ling.
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fieldhouse, Burdon, Ling, and Brewer.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fieldhouse, Burdon, Ling, and Smith.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 2—10 of the
Answer.
2. Fieldhouse Figure 17, reproduced below, discloses a recharge site
home page presented on a mobile device system:
3
Appeal 2014-008360
Application 12/941,944
Fig. 17
18
RECHARGE SITElfi^
HOME PAGE J
1. RECHARGE AMOUNT OPTIONS
2. PROFILE 33
3. SERVICE REP.
37
SELECT'' SCROLL
Fieldhouse Figure 17 above shows a recharge site home page presented on a
mobile device system.
3. Fieldhouse Figure 15, reproduced below, shows a fixed value
purchasing scheme:
Fig. 15 "X
13 3Sa
"K
RSCHAKGK SITE
oftioks
j 1. 30 MM jTES • $10,361
as. 1 HOUR-$15.95 ''--ISg'
'3. 2 HOUR-$25.95 33
4. CALL. SERVICE REP’’"
SELECT SCROLL EXi
Fieldhouse Figure 15 shows a fixed value purchasing scheme.
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Appeal 2014-008360
Application 12/941,944
ANALYSIS
35 U.S.C. § 103 REJECTIONS
Claims 1 and 17
Appellant argues claims 1 and 17 together as a group. (Appeal
Br. 11). Appellant selects claim 1 as the representative claim for this group
{id.), and the remaining independent claim stands or falls with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellant argues,
The authorized reseller discussed by Fieldhouse
has no ability to sell the recharge minutes
electronically over the service provider’s network,
as required by the plain meaning of the claim
language, which states “receiving, using a
processor within a system operated by a mobile
service provider, a purchase request via a
communication network from a user with a mobile
airtime account serviced by the mobile service
provider.” In fact, the entire purpose of the
Fieldhouse system is to provide a mechanism for
the user to avoid the necessity of going to the
physical store-front run by the authorized reseller
discussed in paragraphs [0004] and [0005].
Accordingly, contrary [sic] the Examiner’s
assertions, it would not have been obvious from
the teachings of Fieldhouse to “modify
Fieldhouse’s invention by incorporating retail
outlet storefronts as taught by Fieldhouse’s
Background of Invention in order to provide a
physical place to conduct business.”
(Appeal Br. 13).
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Appeal 2014-008360
Application 12/941,944
The Examiner, however, found,
According to the §103 rejection, Fieldhouse’s
present invention discloses a person such as a
Recharge Customer Service Rep (CSR) who works
within the system operated by the mobile service
provider (FIG. 1 and 2). The CSR receives
purchase requests from wired and wireless
telecommunications to add more minutes to their
calling account 38, 44-46). This limitation is
even clearly seen from Fieldhouse as option 3 from
FIG. 17 initiates a call over the communication
network to a CSR from FIG. 18 (FIG. 17-18 with
associated text) to recharge calling units; thus
Fieldhouse’s present invention discloses the
limitation. . . .
(Answer 3).
We disagree with Appellant. We find that Fieldhouse, in the
embodiment of Figure 17, discloses a recharge site home page presented on
a mobile device system. (FF. 2). We find that prompt 1, “RECHARGE
AMOUNT OPTIONS,” constitutes a request in that by selecting this option,
the user is asking the recharge site home page server to recharge the account
via the mobile device. Id. Such an electronic payment option does not
constitute a storefront transaction, as argued by Appellant, because
transacting through a mobile device as shown in Figure 17, would have been
well understood by one having ordinary skill in the art as eliminating the
need for an in-person store-front transaction. (See Appeal Br. 13).
Appellant’s argument that Fieldhouse teaches away (Appeal Br. 13) likewise
fails because it is based on Appellant’s incorrect argument that Fieldhouse is
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Appeal 2014-008360
Application 12/941,944
based entirely on physical storefront purchases, when in fact the
embodiment of Figure 17 shows otherwise.
To Appellant’s argument that “Fieldhouse is directed to the mobile
service provide [sic] rather than an entity separate from the mobile service
provider’'’ (Appeal Br. 12), we find no error with the Examiner’s finding
(Answer 4) that one having ordinary skill in the art looking to the disclosed
merchant at www.PREPAID.COM in Fieldhouse (see Figure 14) would
have understood that this could be a third party merchant that is an entity
separate from the mobile service provider, such as one which resulted from
the deregulation of the telephony industry.
Concerning Burdon, Appellant argues, “[i]t makes no sense to provide
reward points for purchasing airtime minutes that are then redeemed for
additional airtime minutes, one would just provide an equivalent discount on
the original airtime purchase.” (Appeal Br. 14).
The Examiner, however, found that “the fact that applicant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.” (Answer 7).
We agree with the Examiner. The fact that the result of the
combination would yield a windfall benefit does not destroy the combination
because one having ordinary skill in the art would have understood that in
promoting sales for example, such as is the case with introductory offers, a
compounding value effect would make good marketing sense. Moreover,
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Appeal 2014-008360
Application 12/941,944
there are no claim restrictions limiting how recharge rates are to be
redeemed.
Claims 2, 10 and 18
We are further not persuaded by Appellant’s argument that the . .
recitation of crediting a portion of the purchase amount to the mobile
service provider explicitly involves a third party in the transaction between
the merchant and the user. . . .” (Appeal Br. 16), because, as found supra,
one having ordinary skill in the art would have understood the merchant at
www.PREPAID.COM in Fieldhouse (see Figure 14) to be an obvious
variant of an in-system purchasing source.
Claims 4 and 12
Claim 4 recites, in pertinent part, crediting the mobile airtime account
of the user includes calculating the amount of free airtime based on a fixed
value for each purchase request received.
The Examiner found that Fieldhouse discloses this feature at “FIG. 15
where a fixed value is correlated with a pre-defmed amount of calling units
thus discloses the limitation. Burdon is combined to teach what Fieldhouse
lacks and that is free airtime (Abstract, pl:3-5 and p23:3-8).” (Answer 10).
Appellant argues that,
Even if Fieldhouse teaches “predetermined time-
to-price options” as asserted, this does not teach or
suggest a “fixed value for each purchase request.”
In fact, all the cited teaching means is that, for a
certain dollar amount, a certain amount of airtime
would be credited within the Fieldhouse system,
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Application 12/941,944
which is not a fixed value for each purchase.
(Appeal Br. 17).
We disagree with Appellant. Appellant’s Specification does not
specifically define the term “fixed value,” nor does it utilize the term
contrary to its customary meaning. The ordinary and customary definition
of the term fixed is “not subject to change or fluctuation.”2 As is apparent
from the schedule of purchase time units (FF 3), we find that for each unit
purchased, the cost of the time purchased remains fixed, that is, unchanged
for that unit of purchased time.
In view of the foregoing, we affirm the rejections of claims 1, 2, 4, 10,
12, 17, and 18. We also affirm the rejections of dependent claims 3, 5— 9,
11, 13—16, 19, and 20 because Appellant has not challenged such with any
reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1—20 under
35U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 1—20 is affirmed.
2 Merriam Webster Dictionary, https://www.merriam-
webster.com/dictionary/fixed (last visited Feb. 13, 2017).
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Application 12/941,944
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)(l)(iv).
AFFIRMED
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