Ex Parte Pravetz et al

Patent Trial and Appeal Board

Sep 27, 2013

12195108 (P.T.A.B. Sep. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES D. PRAVETZ and SUNIL AGRAWAL
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Appeal 2011-009888
Application 12/195,108
Technology Center 3600
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Before MEREDITH C. PETRAVICK, NINA L. MEDLOCK, and
JAMES A. TARTAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009888
Application 12/195,108

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-41. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.1

BACKGROUND
Appellants’ invention is directed to a trusted embedded user interface
for secure payments (Spec., para. [0004]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A system, comprising:
one or more processors;
a memory coupled to one or more processors, wherein
the memory stores program instructions executable by the one
or more processors to implement a security component
associated with a network-enabled application, wherein said
security component is configured to:
initiate a display of an embedded region of a
window drawn by the network -enabled application;
wherein the window is drawn according to display
information received from a relying party;
wherein particular information drawn within the
embedded region of the window is defined by said
security component according to a customization
specified to said security component by a user of said
system prior to creation of said window and prior to
receipt of the display information;

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed February 3, 2011) and Reply Brief (“Reply Br.,” filed June 1, 2011)
and the Examiner’s Answer (“Ans.,” mailed April 1, 2011).
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wherein the particular information is not defined
by the relying party;
wherein at least a portion of said display
information and said particular information are displayed
together within the window;
in response to receiving payment input via the embedded
region, generate a payment request, wherein said payment
request comprises:
transaction information regarding a transaction
between the user and the relying party; and
authentication information for the user; and
send the payment request to an assertion provider to
authenticate the user and authorize a payment to the relying
party.

THE REJECTIONS
The following rejections are before us for review:2
Claims 1-13 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1, 4-7, 12-14, 17-20, 25-27, 30-33, and 38-41 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Sendo (US 6,970,852 B1,
iss. Nov. 29, 2005) in view of Omoigui (US 2003/0126136 A1, pub. Jul. 3,
2003).
Claims 2, 3, 8, 10, 15, 16, 21, 23, 28, 29, 34, and 36 are rejected under
35 U.S.C. § 103(a) as unpatentable over Sendo in view of Omoigui, and
further in view of Cook (US 6,675,153 B1, iss. Jan. 6, 2004).

2 This statement of “The Rejections” is taken from Appellants’ statement of
the grounds of rejection to be reviewed on appeal (App. Br. 12), which the
Examiner has acknowledged is correct (Ans. 2). In setting forth the grounds
of rejection in the Answer, the Examiner did not particularly set forth the
correlations between claims 1-13 and claims 14-41. Instead, the Examiner
stated: “[c]laims 14-26, 27-39, 40, and 41 are rejected based on the
rejections of claims 1-13 because the claims claim the same invention”
(Ans. 14).
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Claims 9, 22, and 35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sendo in view of Omoigui and further in view of
Khoshatefeh (US 2004/0133846 A1, pub. Jul. 8, 2004).
Claims 11, 24, and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sendo in view of Omoigui and further in view of
Templeton (US 7,430,537 B2, iss. Sep. 30, 2008).

FACTUAL FINDINGS
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office). Additional facts
may appear in the Analysis section.
1. The Examiner found that the ActiveX controls disclosed in
Sendo correspond to the “security component” recited in the claims (Ans. 7
(“ActiveX corresponds to ‘security component.’”)).
2. The Examiner found that the “Merchant Web Site” in Figure 1
of Sendo corresponds to the claimed “relying party” (Ans. 7-8).
3. The Examiner found that Sendo’s “Payment Option,” described
at column 5, lines 40-60, corresponds to the claimed “particular
information” (Ans. 8; see also Ans. 23 (“Sendo’s invention uses a web
browser which shows payment options (C5:40-60) in order to cover the
argued limitation ‘said particular information are displayed within the
window.”)).
4. The Examiner cited Sendo at column 5, lines 40-60 as
disclosing “the particular information is not defined by the relying party,” as
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recited in the claims (Ans. 8 (“Observe the consumer performs the act of
making a selection for the type of payment option.”)).
5. The Examiner reasoned that the “Payment Option” in Sendo is
not defined by the relying party because “the user does not generate a
selection list of payment options but rather selects one that is already present
(C5:40-60)” (Ans. 23).
6. The Examiner reasoned that Sendo’s Payment Options are not
defined by the relying party because “Sendo teaches the Payment Options
and Session are in programming code; therefore ‘prior to creation of said
window and prior to receipt of the display information’ must be programmed
into the system in order to function as described by Sendo (C5:8-26)”
(Ans. 22-23).
7. Sendo discloses that the “Payment Option consists of a small
piece of HTML script that is added to the web store checkout page” (Sendo,
col. 5, ll. 31-35).
8. Sendo discloses that the “Payment Session Script is a piece of
HTML script that belongs on a page that will be presented once the
consumer has selected the Payment Option” (Sendo, col. 5, ll. 41-43).

ANALYSIS
Indefiniteness
Independent claim 1 and dependent claims 2-10, 12, and 13
We are persuaded that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 112, second paragraph, on the ground that the recitation of an
“assertion provider” renders claim 1 indefinite (App. Br. 13-14 and Reply
Br. 4-5).
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The Examiner maintains that one of ordinary skill in the art would not
be able to determine the metes and bounds of the “system,” and that claim 1,
therefore, is indefinite because the assertion provider is “located outside the
embodiment of [the claimed] ‘system’” (Ans. 5).
Claim 1 recites that the security component is configured to “send the
payment request to an assertion provider to authenticate the user and
authorize a payment to the relying party.” In our view, one of ordinary skill
in the art would readily understand from this language what is claimed when
claim 1 is read in light of the Specification. See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for
definiteness under 35 U.S.C. § 112, second paragraph is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.”). We agree with Appellants that whether the
assertion provider is a part of the claimed system or not is a question of
breadth, not indefiniteness (App. Br. 13), such that the recitation of “an
assertion provider” in claim 1 does not render the claim indefinite.
See In re Miller, 441 F.2d 689, 693 (CCPA 1971).
We also are persuaded that the Examiner erred in finding that the
phrase “particular information” renders claim 1 indefinite under 35 U.S.C.
§ 112, second paragraph (App. Br. 14-16 and Reply Br. 5).
The Examiner notes that the Specification describes various types of
information that are required in making online purchases and that the phrase
“particular information” is not lexicographically defined by Appellants.
Therefore, the Examiner concludes that one of ordinary skill in the art would
not be able to determine what constitutes the “particular information,” as
recited in claim 1 (Ans. 5 and 21). We cannot agree.
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Claim 1 does not recite “particular information” in isolation (App.
Br. 15). Instead, claim 1 recites that the “particular information” is
information “drawn within the embedded region of the window [and] is
defined by said security component according to a customization specified
to said security component by a user of said system prior to creation of said
window and prior to receipt of the display information.” Claim 1 also
recites that the “particular information” is “not defined by the relying party”
and that it is “displayed together within the window” with the recited
“display information.” One of ordinary skill in the art would understand
from this language what is claimed when claim 1 is read in light of the
Specification. See Orthokinetics, 806 F.2d at 1565. Therefore, we cannot
agree with the Examiner that claim 1’s recitation of “particular information”
renders the claim indefinite.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 112, second paragraph. We also will not
sustain the Examiner’s rejection of dependent claims 2-10, 12, and 13.
Dependent claim 11
We are persuaded that the Examiner erred in rejecting claim 11 under
35 U.S.C. § 112, second paragraph, on the ground that the recitation,
“wherein the payment information does not include a credit card number or
other account identifier for the user,” renders the claim indefinite (App.
Br. 16-17 and Reply Br. 5-6).
The Examiner maintains that the subject recitation “contradicts the
Original Specification” (Ans. 5-6 and 21). Yet the law is abundantly clear
that limitations appearing in the Specification may not properly be read into
the claims. See, e.g., Superguide Corp. v. DirecTV Enterprises, Inc.,
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358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing
in the written description may not be read into a claim when the claim
language is broader than the embodiment”).
That the Specification may describe some embodiments in which the
user’s credit card number is used does not negate other embodiments in
which the payment information does not include a credit card number or
other account identifier for the user (App. Br. 17). In fact, the Specification
clearly describes at paragraph [0051] that “[i]n some embodiments, payment
may be authorized to the relying party 140 in such a way that the relying
party 140 does not receive the user’s credit card number or personal
information about the user.” See also Spec., para. [0079].
One of ordinary skill in the art would understand what is claimed
when claim 11 is read in light of the Specification. Therefore, we will not
sustain the Examiner’s rejection of claim 11 under 35 U.S.C. § 112, second
paragraph.
Obviousness
Independent claim 1 and dependent claims 4-7, 12, and 13
We are persuaded that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) by Appellants’ argument that Sendo, on
which the Examiner relies, does not disclose or suggest “wherein the
particular information [drawn within the embedded region of the window] is
not defined by the relying party,” as recited in claim 1 (App. Br. 19 and
Reply Br. 7-8).
The Examiner found that the claimed “relying party” is the “merchant
web site” described in Sendo (FF 2) and that the “particular information” is
Sendo’s “Payment Option” menu (FF 3). The Examiner thus concluded that
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the “Payment Option” selectable list is “not defined by the relying party”
(i.e., the merchant web site) because the user selects from the list that is
already present (FF 4 through FF 6). We disagree.
Sendo discloses that the Payment Option is “a small piece of HTML
script that is added to the web store checkout page” (FF 7). This script
provides selectable options that, when selected, download further HTML
script code from the merchant web site (FF 8). Sendo thus discloses that the
Payment Option originates at, and is presented by the merchant web site, and
is therefore “defined by the relying party,” in direct conflict with the claim
language. See also Sendo, col. 8, ll. 41-43 (describing that “[t]o integrate
the service, the merchant will create a link on their checkout page that will
be labeled in accordance with the inventive payment option.”).
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103(a). We also will not sustain the rejection
of claims 4-7, 12, and 13, which depend from claim 1.
Independent claims 14, 27, 40, and 41 and dependent claims 17-20, 25, 26,
30-33, 38, and 39
Each of independent claims 14, 27, 40 and 41 includes language
substantially identical to the language of claim 1. Therefore, we will not
sustain the rejection of claims 14, 27, 40, and 41 under 35 U.S.C. § 103(a)
for the same reasons as set forth above with respect to claim 1. We also will
not sustain the Examiner’s rejection of claims 17-20, 25, 26, 30-33, 38, and
39, each of which depends from one of independent claims 14, 27, 40 and
41.
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Dependent claims 2, 3, 8-11, 15, 16, 21-24, 28, 29, and 34-37
The Examiner has not established on the record that any of Cook,
Khoshatefeh, and Templeton cures the deficiencies of Sendo as set forth
above. Therefore, we will not sustain the Examiner’s rejections of
dependent claims 2, 3, 8-11, 15, 16, 21-24, 28, 29, and 34-37 under
35 U.S.C. § 103(a) for the same reasons set forth above with respect to
independent claims 1, 14, 27, 40, and 41.

DECISION
The Examiner’s rejection of claims 1-13 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s rejections of claims 1-41 under 35 U.S.C. § 103(a)
are reversed.

REVERSED

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