Ex Parte Rau et al

Patent Trial and Appeal Board

Sep 6, 2018

11290903 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/290,903 11/29/2005
131244 7590 09/07/2018
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania A venue, NW
Suite 800
Washington, DC 20037
FIRST NAMED INVENTOR
Scott W. Rau
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
47004.000358 8526
EXAMINER
KUCAB, JAMIE R
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
09/07/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT W. RAU, SCOTT PHILP BERTETTI, and
GERALD A. BEECHUM JR.
Appeal2017-005095
Application 11/290,903 1
Technology Center 3600
Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
DAVID. J. CUTITTA II, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 21, 26, and 53-58. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify J.P. Morgan Chase Bank, N.A. as the real party in
interest. App. Br. 1.
Appeal2017-005095
Application 11/290,903
BACKGROUND
THE INVENTION
According to Appellants, the invention relates to "transponder-
activated account transactions at point of sale or other locations." Spec. 1 :5-
7.
Exemplary independent claim 21 is reproduced below.
21. A transponder-reader payment system comprising:
a plurality of transponders each having a transponder
identifier;
a Radio Frequency Identification (RFID) reader providing
a radio frequency interrogation signal to one of the transponders
and receiving a transponder identifier therefrom;
a merchant system including a merchant point of
interaction device in communication with the RFID reader, the
merchant system receiving the transponder identifier and
forming a merchant transaction request;
an authorization system comprising:
an authorization system server in communication
with the merchant point of interaction device for receiving
the merchant transaction request and the received
transponder identifier; and
at least one database comprising a plurality of
account tables, each account table associated with one of
the transponder identifiers and comprising a plurality of
accounts;
wherein the authorization system selects at least one
account of the plurality of accounts in the account table
associated with the received transponder identifier to
satisfy the merchant transaction request.
2
Appeal2017-005095
Application 11/290,903
REFERENCES AND REJECTIONS
1. Claims 21, 26, and 53-58 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Dickson (US Patent No. 6,810,304 Bl, issued
Oct. 26, 2004), Applicant Admitted Prior Art, and Zacharias (US Patent No.
6,494,367 Bl, issued Dec. 17, 2002). Final Act. 5-7.
2. Claims 21 and 26 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 26 and 35 of
copending Application No. 09/630,595.
DISCUSSION
Rejection under 35 USC§ 103(a)
The Examiner finds Dickson teaches or suggests several limitations of
claim 21 including an authorization system [that] selects one account
associated with a received transponder identifier to satisfy the merchant
transaction request. See Final Act. 5 (citing Dickson 32:33-35; 33:2-5).
The Examiner acknowledges, however, that although Dickson selects one
account, that account is not one account "of the plurality of accounts in the
account table." Final Act. 6. Thus, the Examiner relies on Zacharias as
teaching a database comprising a plurality of accounts and selecting one
account associated with an identifier of a plurality of accounts. Final Act. 6
( citing Zacharias Figs. 1, 2, and 5).
Appellants argue that
although Zacharias discloses that its Supracard has multiple
applications, such as multiple credit cards, Zacharias discloses
that it receives the identification of the card to use - the index -
from the user. Moreover, if the user does not provide the index,
the user is prompted to enter the index. The bank/financial
institution receives the index and then retrieves the actual card
number and expiration date based on the index. Thus, the
3
Appeal2017-005095
Application 11/290,903
bank/financial institution does not select at least one of the
accounts to satisfy the merchant transaction request.
App. Br. 8. In other words, Appellants argue that in Zacharias the user
selects the account (by selecting the index) instead of the authorization
system selecting the account.
We are unpersuaded by Appellants' argument because it attacks
Zacharias individually and fails to address the Examiner's findings as a
whole. One cannot show non-obviousness by attacking references
individually, where the rejections are based on combinations of references.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller,
642 F.2d 413, 425-26 (CCPA 1981). Here, the Examiner relies on Dickson
as teaching or suggesting an "authorization system selects at least one
account with the received transponder identifier to satisfy the merchant
transaction request." Final Act. 5 (citing Dickson 32:33-35; 33:2-5). The
Examiner relies on Zacharias to address the deficiency that in Dickson there
is only one account corresponding to the transponder, not a plurality of
accounts. Final Act. 6 ( citing Zacharias Figs. 1, 2, 5, and associated text).
Thus the combination of Dickson, which teaches an authorization system
selecting an account, with Zacharias, which teaches a plurality of accounts,
leads to the references together teaching or suggesting an "authorization
system [that] selects at least one account of the plurality of accounts" as
claimed.
Moreover, Appellants' argument effectively amounts to arguing that a
manual task performed by a user, that of selecting an account, cannot render
obvious the same task being performed by the authorization system.
Without further evidence or reasoning distinguishing the two, broadly
claiming an automatic way to replace a manual activity accomplishing the
4
Appeal2017-005095
Application 11/290,903
same result is insufficient to distinguish an automated process over a manual
activity. See In re Venner, 262 F.2d 91, 95 (CCPA 1958).
Appellants next argue that "Dickson does not disclose 'at least one
database comprising a plurality of account tables, each account table
associated with one of the transponder identifiers and comprising a plurality
of accounts."' App. Br. 9. According to Appellants "Dickson discloses that
its transponders are each only associated with a single account." App.
Br. 10. (citing Dickson 12:38-13:4).
We are unpersuaded by Appellants' argument. The Examiner
acknowledges that Dickson does not disclose a database comprising a
plurality of accounts. Final Act. 6. For this very reason the Examiner relies
on Zacharias to teach a database with a plurality of accounts. Final Act. 6
(citing Zacharias Figs. Figs. 1, 2, 5, and associated text). We, therefore, find
Appellants' argument directed only at Dickson as unpersuasive because the
Examiner is relying on the combined teachings of Dickson and Zacharias.
Appellants argue claims 21, 26, and 53-58 together as a group.
Accordingly, we sustain the Examiner's rejection under 35 U.S.C. § 103(a)
of claims 21, 26, and 53-58.
Double Patenting Rejection
The Examiner provisionally rejects claims 21 and 26 on the grounds
of non-statutory obviousness-type double patenting over claims 26 and 35 of
co-pending Application No. 09/630,595. Final Act. 8-10. Appellants do not
present any arguments against these rejections, thus waiving any arguments
with respect thereto. Accordingly, we summarily sustain these provisional
double patenting rejections. Our affirmance of the double patenting
5
Appeal2017-005095
Application 11/290,903
rejection is only provisional, and "might be obviated by future events." See
In re Wetterau, 356 F.2d 556, 558 (CCPA 1966).
DECISION
The Examiner's rejection of claims 21, 26, and 53-58 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6