Ex Parte Reany et alDownload PDFPatent Trial and Appeal BoardAug 30, 201612813766 (P.T.A.B. Aug. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/813,766 06/11/2010 98665 7590 08/31/2016 Otterstedt, Ellenbogen & Kammer, LLP P.O Box 381 Cox Cob, CT 06807 FIRST NAMED INVENTOR Robert D. Reany 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. P00522-US-UTIL 7673 EXAMINER PRESTON, JOHN 0 ART UNIT PAPER NUMBER 3691 MAILDATE DELIVERY MODE 08/31/2016 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 Exparte ROBERT D. REANY, DENNIS J. HILL, SARA E. FIEBIGER, SUSAN E. RISKOVSKY, and SANDEEP MALHOTRA Appeal2014-005205 Application 12/813,7661 Technology Center 3600 Before HUBERT C. LORIN, BRUCE T. WIEDER, and MATTHEWS. MEYERS, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-5 and 7-21.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is MasterCard International Inc. (Appeal Br. 2.) 2 Claim 6 is not pending. (See Final Action 2.) Therefore, we treat the reference to claims 1-21 being rejected as a typographical error. (See id. at 1.) Appeal2014-005205 Application 12/813, 7 66 CLAIMED SUBJECT MATTER Appellants' claimed "invention relates generally to electronic commerce, and, more particularly, to electronic payment systems." (Spec. 1.) Claims 1, 7, 12, and 18 are the independent claims on appeal. Claim 1 is representative and is reproduced below (emphasis added): 1. A method comprising the steps of: facilitating, by at least one hardware processor configured by at least one memory coupled to said at least one hardware processor, placement of a hold amount against a payment card account of a customer, in response to said customer presenting a payment device, associated with said payment card account, in connection with a non-PIN, signature-based, dual-message transaction with a merchant, said presenting of said payment device being prior to a time when an amount of said transaction can be determined; subsequent to said placement of said hold amount, immediately after said time when said amount of said transaction can be determined, facilitating, by said at least one hardware processor configured by said at least one memory coupled to said at least one hardware processor, an electronic transmission of an authorization advice message from an acquirer associated with said merchant to an issuer of said payment device via a computer network, said authorization advice message indicating said amount of said transaction; and facilitating, by said at least one hardware processor configured by said at least one memory coupled to said at least one hardware processor, said issuer of said payment device releasing any portion of said hold amount which exceeds said amount of said transaction, reducing said hold amount to said amount of said transaction, immediately responsive to said authorization advice message. 2 Appeal2014-005205 Application 12/813, 7 66 REJECTION Claims 1-5 and 7-21 are rejected under 35 U.S.C. § 103(a) in view of Lee (US 2001/0050314 Al, pub. Dec. 13, 2001) and Ahles (US 7,937,299 Bl, iss. May 3, 2011). ANALYSIS The Examiner finds that Lee discloses "releasing any portion of said hold amount which exceeds said amount of said transaction, reducing said hold amount to said amount of said transaction." (Final Action 3, citing Lee i-fi-1 40-43.) Specifically, the Examiner finds that Lee teaches a virtual transaction amount (i.e. a hold amount) that is replaced by the actual transaction amount once the amount is established. In doing so, the system reduces the hold amount to the actual amount of the transaction (Lee: pgh 47) and releases the portion of the hold amount which exceeds the amount of the transaction. The actual transaction amount is also considered a hold amount because it serves as a hold on the account until the transaction is cleared. (Answer 13.) Appellants argue that Lee teaches a method for PIN based transactions (see for example, paragraph [0014], which describes non-signature type transactions) with pre-approved payment amounts (see FIG. 6, blocks 612 and 615-617) based on an authorization of an authorization center (see for example, paragraph [0015]) followed by a request for an Approval After the Card Transaction AACT for an Actual Transaction Amount AT A (see FIG. 6, blocks 613-624 and paragraph [0035]). Lee further teaches that the "ABCT may be cancelled at various stages" (see paragraphs [0017] and [0041]); here the ABCT is an Approval Before the Card Transaction for setting a Virtual Transaction Amount (VTA) (see paragraph [0015]). 3 Appeal2014-005205 Application 12/813, 7 66 Accordingly, it can be seen that the method of Lee does not reduce a hold amount obtained prior to a transaction. Rather, the ABCT is canceled and an AACT is separately obtained. (Appeal Br. 13.) Lee discloses a method of requesting an approval before credit transaction (ABCT) for a virtual transaction amount (VTA). (See, e.g., Lee ,-r 15.) For example, a customer may present a credit card at a gas station in advance of an actual purchase. "[T]here is an assumption that no car can hold more than $50 of gasoline (the maximum transaction amount). This establishes a candidate VTA." (Id. ,-r 18.) "The setting of the VTA temporarily lowers the available credit" by the amount of the VTA. (Id.) In other words, a hold is placed on the customer's account for the amount of the VT A. Lee further discloses, with reference to Figure 7, "if the ABCT for the VT A is authorized, the step 719 of canceling the ABCT for the VT A is executed immediately." (Id. ,-r 41.) When the actual transaction amount (ii,Tii .. ) becomes knov,rn, e.g., the customer finishes pumping gas, "[t]he step 725 of requesting the AACT for the AT A and the step 726 of getting the authorization of the AACT for the ATA are executed." (Id.) Lee further discloses that "the step 719 of canceling the ABCT for the VT A can be executed after the steps 720, 721 of controlling transactions or be executed after the step 726 of getting the authorization of the AACT for the AT A." (Id. ,-r 41; see also id. ,-r 4 7.) In short, the portions of Lee relied on by the Examiner disclose placing a hold on a customer's account for a VT A as part of an approval process before the transaction amount is known and subsequently cancelling the hold, either before or after getting authorization for the ATA. (See id. ,-r 41.) 4 Appeal2014-005205 Application 12/813, 7 66 Claim 1 recites "placement of a hold amount against a payment card account of a customer" and "releasing any portion of said hold amount which exceeds said amount of said transaction, reducing said hold amount to said amount of said transaction" (emphasis added). In other words, the "releasing" and "reduction" are against "said hold amount," rather than against a second amount. Therefore, we are persuaded that the Examiner erred in rejecting claim 1. Independent claims 7, 12, and 18 contain similar language and, for the reasons discussed above, we are persuaded that the Examiner erred in rejecting claim 7, 12, and 18 and dependent claims 2-5, 8-11, 13-17, and 19-21. DECISION The Examiner's rejection of claims 1-5 and 7-21under35 U.S.C. § 103(a) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation