Ex Parte Moses

Board of Patent Appeals and Interferences

Aug 17, 2011

11113425 (B.P.A.I. Aug. 17, 2011)

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.
11/113,425 04/25/2005 Manuel Brad Moses 8945
7590 08/17/2011
Manuel Brad Moses
Apartment TM
150-48 Jewel Avenue
Flushing, NY 11365
EXAMINER
JOHNS, CHRISTOPHER C
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
08/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANUEL BRAD MOSES
____________

Appeal 2011-000382
Application 11/113,425
Technology Center 3600
____________

Before: HUBERT C. LORIN, ANTON W. FETTING, and MICHAEL W.
KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal1 from the final rejection of claims 18-23. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to “credit card processing and
banking industry and its associated detrimental effects on the consumer.”
(Spec. 3:3-5). Claim 18, reproduced below, is further illustrative of the
claimed subject matter.
18. A method of conducting automated commercial
transactions between multiple buyers and multiple sellers,
comprising:
subscribing multiple sellers to an internet-based data
processing system that processes transactions, the data
processing system linked to a master catalogue of products and
services, the sellers being in competition with one another,
subscribing multiple consumers to the Internet-based
system of commerce,
providing the subscribed consumers with consumer data
credit cards or consumer data debit cards, the subscribed
consumers thereby becoming consumer cardholders,
data mining each consumer cardholder's profile for past
purchases and/or surveying the consumer cardholder's
anticipated purchases using interviews and questionnaires,
analyzing the consumer cardholder's profile of
anticipated purchases, aggregating the consumer cardholders
into buying pool based on their profiles and encrypting
identities of the consumer cardholders in the buying pool so as
to be unidentifiable to sellers and to other consumer cardholders
and consumers,
sending offers of discounted purchases from buying
pools to sellers through the Internet-based system on existing
products and services within the master catalog of products and
services, the sellers competing amongst themselves; and

1 We refer to the Appeal Brief filed May 4, 2010 (hereinafter “Appeal Br.”)
and Examiner’s Answer filed June 24, 2010 (hereinafter “Exam’r’s Ans.”).
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processing acceptances and associated billing without
communicating to the sellers information about accepted
transactions that the sellers did not accept.

Claims 18-23 stand rejected under 35 U.S.C. § 112, second paragraph,
for indefiniteness; claims 18-21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walker (US Pat. 5,794,207, iss. Aug. 11, 1998) in view of
Halbert (US Pat. 6,101,484, iss. Aug. 8, 2000); and claims 22-23 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Walker in view of
Halbert and Andrea M. Findlay, In-store deployments of web-enabled kiosks
are bringing the clicks closer to the bricks, Internet Retailer, 1-3 (Apr. 2001)
(http://www.internetretailer.com/printArticle.asp?id=3428) (last visited Oct.
28, 2008) (hereinafter “Kiosks”).
We AFFIRM.

ISSUES
Did the Examiner err in asserting that “accepted transactions that the
sellers did not accept,” as recited in independent claim 18, is indefinite?
Did the Examiner err in asserting that a combination of Walker and
Halbert renders obvious the subject matter of independent claim 18?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 4-17
of the Examiner’s Answer.

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ANALYSIS
Indefiniteness
We are not persuaded the Examiner erred in asserting that “accepted
transactions that the sellers did not accept,” as recited in independent claim
18, is indefinite (App. Br. 4-6). Appellant sets forth several arguments as to
why it may be advantageous to keep information about certain transactions
from sellers. Neither we, nor the Examiner, disagree with this logic. The
problem lies with the current claim language.
The reason for the Examiner’s rejection is that we do not understand,
and one of ordinary skill would not understand, how an “accepted
transaction” can be a transaction that the “sellers did not accept,” as recited
in independent claim 18. If the seller did not accept the transaction, then
there is no accepted transaction. Thus, regardless of Appellant’s intentions,
the current claim wording “accepted transactions that the sellers did not
accept” is illogical as being contradictory, and thus indefinite under 35
U.S.C. § 112, second paragraph.
Perhaps Appellant meant to convey that information concerning
accepted transactions of other sellers is hidden from a particular seller.
Perhaps Appellant meant to convey that all information concerning accepted
transactions is hidden from all sellers. Perhaps Appellant meant to convey
that the accepted transactions are different from those that the sellers did not
accept. Nevertheless, the current claim language of “processing acceptances
and associated billing without communicating to the sellers information
about accepted transactions that the sellers did not accept” does not support
any of these interpretations, regardless of what Appellant may have intended

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to claim. Put simply, the actual claim language is unrelated to and trumps
any arguments made by Appellant.
Obviousness
We are not persuaded the Examiner erred in asserting that a
combination of Walker and Halbert renders obvious the subject matter of
independent claim 18 (App. Br. 6-10). Appellant’s make several arguments
concerning the relative strength of the Walker and Halbert patents based on
the business prospects of the assignees (App. Br. 7-9). However, this type of
information has no relevance in an obviousness rejection; the only thing that
matters is what is actually disclosed in the four-corners of the cited
references. To the extent the argument is meant to suggest one of ordinary
skill would not have read or followed the references, the criteria for a utility
patent is just that, utility, not profitability. The utility of Walker and Halbert
are self-evident from their disclosures.
Appellant asserts that Halbert is not prior art (App. Br. 9). However,
whether a reference is prior art is an objective fact determined by whether
the effective date of a particular reference is before the earliest effective date
of the current application. Here, Halbert issued on August 8, 2000, which is
before the current application’s filing date of April 25, 2005. Accordingly,
Halbert is objectively prior art to the current application.
Appellant objects to the Examiner “pick[ing] and choos[ing] in [a]
fragmentary fashion” different aspects from Walker and Halbert, and then
combining them to render obvious the subject matter of independent claim
18 (App. Br. 8-10). Yet, that is exactly how obviousness works under 35
U.S.C. § 103(a). Indeed, Appellant has correctly summarized these different
aspects on page 10 of the Appeal Brief:
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a. Encryption in Walker is for the individual having no group
benefit to a group buying transaction.
b. The aggregation methods described in Halbert never apply
encryption to a group of buyers.
Put simply, the Examiner has applied the individual encryption disclosed in
Walker to the groups disclosed in Halbert, to render obvious the subject
matter of independent claim 18. The fact that Walker in particular does not
disclose group buying or that Halbert in particular does not disclose
encryption is immaterial when the rejection is based on the combination of
Walker and Halbert. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (the argument that a single reference alone does not disclose the
recited claimed steps is not persuasive because nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures); In re Keller, 642
F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references”).
Appellant sets forth several alleged advantages that distinguish the
claimed invention from both Walker and Halbert (App. Br. 8-10). However,
Appellant has not set forth which advantages correlate with which specific
aspects set forth in the claims. For example, Appellant asserts “[t]he key to
the patentability of my application and continuation in part is that encryption
serves MULTIPLE USES AND EMPLOYES MULTIPLE METHODS
to drive discounts for consumers” (App. Br. 10). Appellant does not tie

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these (or any) arguments to any specific claim recitations, and thus in the
absence of such correlations, are accorded little probative weight.

DECISION
The decision of the Examiner to reject claims 18-23 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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