Ex Parte Peters

Board of Patent Appeals and Interferences

Jul 19, 2010

10758853 (B.P.A.I. Jul. 19, 2010)

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.
10/758,853 01/16/2004 Mark E. Peters RSW920030243US1 (132) 6950
46320 7590 07/19/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
07/19/2010 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 MARK E. PETERS
____________

Appeal 2009-006756
Application 10/758,853
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-006756
Application 10/758,853

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-7, 9-13, and 15-
18. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6
(2002).
The claimed invention is directed to processing payment requests with
mobile server wallets in a payment transaction management network (Spec.
[0002]). Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A mobile server wallet provider (MSWP) portal
comprising:
a configuration for communicative coupling both to a plurality
of MSWPs and also a content proxy;
a composite profile generator configured to combine a plurality
of MSWP profiles into a single, composite profile for routing payment
messages in said proxy to the MSWP portal; and,
selection logic configured to process a user selection of one of
said MSWPs to process a payment transaction received through said
proxy.
The references of record relied upon by the Examiner as evidence of
obviousness are:

Suzuki US 2002/0032616 A1 Mar. 14, 2002
Schuba US 2002/0052842 A1 May 2, 2002

Claims 1-7, 9-13, and 15-18 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Suzuki in view of Schuba.

ISSUE
Did the Examiner err in asserting that a combination of Suzuki and
Schuba renders obvious “a composite profile generator configured to
Appeal 2009-006756
Application 10/758,853

3
combine a plurality of MSWP profiles into a single, composite profile for
routing payment messages in said proxy to the MSWP portal,” as recited in
independent claim 1?

FINDINGS OF FACT
Suzuki discloses that a preferable mode is one wherein the
information, having been transmitted from the wallet server to the user
terminal, is confirming information used for the user to confirm details of
the transaction based on the payment information transmitted from the shop
server to the wallet server and the predetermined item of the confirming
information contains at least amounts to be paid out of the payment
information ([0021]).
Suzuki discloses that a further preferable mode is one wherein the
payment system is provided with a plurality of the wallet servers, and the
information out of which the predetermined item is to be selected by the
contents converting section is information used by the user to select the
wallet server for the payment out of the plurality of the wallet servers
([0030]).

ANALYSIS
The Examiner asserts that paragraphs [0021] and [0030] of Suzuki
disclose the composite profile generator of independent claim 1 (Exam’r’s
Ans. 16). While we agree that paragraph [0030] of Suzuki discloses a
plurality of wallet servers, the aforementioned portion of Suzuki does not
disclose that the profiles of the plurality of wallet servers are combined into
a single profile. Moreover, the Examiner has not provided any evidentiary
Appeal 2009-006756
Application 10/758,853

4
basis for showing that combining the plurality of wallet servers into a single
profile would have been obvious. See In re Fine, 837 F.2d 1071, 1073 (Fed.
Cir. 1988) (in rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the Examiner to establish a factual basis to support the legal conclusion of
obviousness). The Examiner’s assertion that creating a composite profile for
a user/subscriber is well-known does not have any evidentiary basis, nor
does it address combining multiple MSWP profiles into a single profile, as
claimed (Exam’r’s Ans. 10). Accordingly, a proper case of obviousness has
not been established. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (during examination, the examiner bears the initial burden of
establishing a prima facie case of obviousness).
The Examiner also cites Schuba as remedying certain deficiencies of
Suzuki (Exam’r’s Ans. 9-10, 14-18). However, Schuba is only cited for
disclosing a portal, and not for the recited composite profile generator.

REVERSED

hh

CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487