Ex Parte Poltorak

Board of Patent Appeals and Interferences

Aug 5, 2010

10378409 (B.P.A.I. Aug. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEXANDER I. POLTORAK
____________

Appeal 2009-005584
Application 10/378,409
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and CAROLYN D.
THOMAS, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-2, 5-11, 13-26, 29-35, and 37-102 which are all

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.

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the claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
The Appellant claimed invention is directed an electronic telephone
wallet used to store payment identifier information for use in a transaction
(Spec. 2-3). Claim 1, reproduced below, is representative of the subject
matter of appeal.

1. An apparatus for providing an electronic wallet device,
comprising:
a memory device for storing payment identifier information
associated with an account holder;
an input device for inputting payment command information
into the apparatus, the payment command information including a
selected method of payment and a selected account to be utilized;
a processing device for processing the payment command
information, wherein the processing device is configured to retrieve
the payment identifier information from the memory device; and
a transmitter for transmitting the payment identifier
information to a merchant computer, wherein the merchant computer
is associated with a merchant, and further wherein the payment
identifier information is utilized in a transaction with the merchant;
wherein the electronic wallet device is implemented in a
telephone.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Himmel US 2001/0011248 A1 Aug. 2, 2001
Immonen US 2002/0077993 A1 Jun. 20, 2002
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Mathai US 2004/0243477 A1 Dec. 2, 2004

The following rejections are before us for review:
1. Claims 1-2, 5-11, 13-26, 29-35, 37-48, and 101-102 are rejected
under 35 U.S.C. § 103(a) unpatentable over Himmel and Immonen.
2. Claims 49-55 and 57-100 are rejected under 35 U.S.C. § 102(b)
as anticipated by Himmel.
3. Claim 56 is rejected under 35 U.S.C. § 103(a) unpatentable
over Himmel and Mathai.

THE ISSUES
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejections.
With regards to claims 1-2, 5-11, 13-26, 29-35, 37-48, and 101-102
this issue turns on whether the combination of Himmel and Immonen would
have been obvious.
With regards to the claims 49-55 and 57-100 this issue turns on
whether Himmel discloses the argued claim limitations.
With regards to claim 56 this issue turns on whether the combination
of Himmel and Mathai would have been obvious in light of the Appellants
arguments.
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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Himmel has disclosed a method for transmitting electronic cash using
a phone wallet (Title). The cash is sent in electronic form to a phone and
may be requested from a financial institution. The phone stores the
electronic cash for use in purchasing goods from a merchant (Abstract).
FF2. Himmel at Fig. 4 shows a smart phone 450 with a phone wallet 451
and electronic cash 497 transmitted to a merchant server 440. Fig. 4 shows
a financial institution server 400 with an account database 402 in direct
communication with the merchant server 440 by link 403 and also in
communication with phone wallet 451.
FF3. Himmel discloses that the financial institution server 400 and
merchant server 440 communicate through link 403 and that the financial
institution and its merchant customers may transfer funds and other
information about the electronic transactions [0035].
FF4. Immonen has disclosed a system for conducting wireless payment
from a user to a merchant for goods (Abstract). A server wallet retains
sensitive financial information such as payment card accounts and carries
out the transaction (Abstract, [0054-0056]). Debit and credit card payments
may be made with the server wallet [0054].

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF5. Immonen at [0052] discloses that the user receives an electronic
invoice and is asked which payment card to use from those available from
the users server “wallet.”
FF6. Mathai discloses an online payment method to facilitate purchase
of items by customers and to have the purchase debited by telephone
(Abstract).
FF7. Mathai discloses that in one embodiment that customers may set up
multiple accounts per phone number to allow, for example, family members
to use to system with personal profiles for each member [0064].

ANALYSIS
Claims 1-2, 5-11, 13-26, 29-35, 37-48, and 101
The Appellant argues that the rejection of claim 1 is improper because
the claims require that the payment command information includes: 1) a
selected method of payment and 2) a selected account (Br. 16). The
Appellant argues that Himmel's phone wallet provides only electronic cash
and that a person using the device would not be motivated to select a method
of payment since only a single method is described in Himmel (Br. 17-19).
In contrast the Examiner has determined that Himmel and Immonen
are properly combined to meet the claimed limitations of claim 1 (Ans. 9-
11).
We agree with the Examiner. Himmel has disclosed a method for
transmitting electronic cash using a phone wallet. The phone stores the
electronic cash for use in purchasing goods from a merchant (FF1). Himmel
in Fig. 4 shows a smart phone 450 with a phone wallet 451 and electronic
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cash 497 transmitted to a merchant server 440 (FF2). Immonen has
disclosed a system for conducting wireless payment from a user to a
merchant for goods in which a server wallet retains sensitive financial
information such as payment card accounts and carries out the transaction
(FF4). Immonen also shows that both debit and credit card payments may
be made with the server wallet and that the user receives an electronic
invoice and is asked which payment card to use from those available from
the users server “wallet” (FF5). The modification of the system of Himmel
to additionally offer credit card payment accounts as taught by Immonen is
considered an obvious combination of familiar elements for the predictable
result and benefit of offering the user multiple ways in which to pay for
the transaction. Himmel has also shown that multiple payment cards (a
selection from accounts) may be used (FF5). The combination of Himmel
and Immonen would result in a selected method of payment and selected
account being used for payment as claimed and provide the benefit of
paying with credit cards when cash was not available to the user in their
accounts.
With regard to claim 5, the Appellant argues that the prior art does not
show “a receiver for receiving a request for information from the merchant
computer” since the phone 450 in Himmel does not disclose or suggest this.
We note that claim 5 includes no requirement that the phone includes the
claimed “receiver” and that since in the Himmel reference that the financial
institution server 400 is in communication with the merchant server 440 by
link 403 (FF2) that this cited limitation has been disclosed therein.
For these reasons the rejection of claim 1 and its dependent claims
which have not been separately argued is sustained. The Appellant has
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provided the same arguments for claims 25 and 101 and its dependent claims
and the rejection of these claims is sustained for these same reasons.

Claims 49-55, 57-100, and 102
The Appellant argues that the rejection of claim 49 is improper
because “Himmel does not teach such apparatus for transmitting payment
identifier information from the account holder’s communication device to
the merchant computer” because instead Himmel teaches transmitting
electronic cash directly from the smart phone to the merchant (Br. 22).
In contrast the Examiner has determined that Himmel discloses that
cited claim limitation (Ans. 11).
We agree with the Examiner. Claim 49 includes a limitation requiring
“a transmitter for transmitting the payment identifier information to a
merchant computer” and there is no requirement that the “transmitter” can
not be placed on the phone of the user. As Himmel has disclosed that the
phone wallet transmitting electronic cash to a merchant server (FF2) this
limitation is considered met since the electronic cash would inherently
include some payment identifier to know whom the payment was made for.
Further Himmel has disclosed that the link 403 may be used for
communicating financial information between the financial institution server
and the merchant server (FF2, FF3) which serves as transmitting information
to a merchant computer as claimed.
For these reasons the rejection of claim 49 is sustained. The
Appellant has provided essentially the same arguments for claims 75 and
102 and the rejection of the claim is sustained for the same reasons given
above. With regard to claim 102 note that merchants frequently store
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account data for plural customers to expand the customer base by facilitating
ease of payment.

Claim 56
The Appellant argues that the rejection of claim 56 is improper
because Mathai states the disadvantages of digital cash while Himmel
emphasizes the use of digital cash (Br. 28-29). The Appellant argues that
Mathai is non-analogous art.
In contrast, the Examiner has determined that Himmel and Mathai
disclose the cited claim limitation and that the combination would have been
obvious (Ans. 8-9, 12-13).
We agree with the Examiner. Claim 56 includes the cited recitation
that “wherein the memory device stores corresponding payment identifier
information for each respective account holder of a plurality of account
holders.” Himmel and Mathai are both directed to a payment method for
purchase made by telephone (FF1, FF6) and the references are pertinent to
the same field of invention. Further, Mathai has only been cited by the
Examiner to show that customers may set multiple accounts per phone (FF7)
which would require storing payment information for a plurality of account
holders, as claim 56 recites. The modification of the system of Himmel to
include storing payment information for a plurality of account holders in a
telephone system is considered an obvious combination of familiar elements
for the predictable result of being able to handle transactions with a larger
customer base. For this reason, the rejection of claim 56 is sustained.
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CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred
in rejecting claims 1-2, 5-11, 13-26, 29-35, 37-48, and 101-102 under
35 U.S.C. § 103(a) as unpatentable over Himmel and Immonen.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 49-55 and 57-100 under 35 U.S.C. § 102(b) as anticipated
by Himmel.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim 56 under 35 U.S.C. § 103(a) as unpatentable over Himmel
and Mathai.

DECISION
The Examiner’s rejection of claims 1-2, 5-11, 13-26, 29-35, and 37-
102 is AFFIRMED.

AFFIRMED

JRG

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