Ex Parte Sherwin

Patent Trial and Appeal Board

Feb 7, 2018

13622733 (P.T.A.B. Feb. 7, 2018)

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.
13/622,733 09/19/2012 Francis M. Sherwin PRAZ 200047US01 3100
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
MCINTYRE, CHARLES AARON
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
02/08/2018 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 FRANCIS M. SHERWIN
Appeal 2016-007759
Application 13/622,7331
Technology Center 3600
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
JASON M. REPKO, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—8 and 10-22.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
The invention is directed to methods and/or systems for mobile and/or
electronic commerce. Spec. 12. Claim 1 is illustrative of the invention and
is reproduced below:
1 According to Appellant, the real party in interest is Cardinal Commerce
Corporation. App. Br. 1.
2 Claim 9 was cancelled. App. Br. 20.
Appeal 2016-007759
Application 13/622,733
1. A system for completing a transaction between a
first party and a second party, said system comprising:
at least one processor; and
at least one program memory coupled to the at least one
processor, the at least one program memory including processor
executable instructions, the processor executable instructions,
when executed by the at least one processor, causing the at least
one processor to perform the steps of:
receiving one or more banking applications and/or wallets
including personal data, or access to the personal data, to
complete a transaction between a first party and a second party;
receiving a request for the personal data from the second
party using an open commerce wallet exchange (OCWE)
protocol;
receiving a selection of one of the banking applications
and/or wallets from the first party;
authenticating the first party using built-in authentication
of the selected banking application and/or wallet;
receiving the personal data from the selected banking
application and/or wallet; and,
providing the merchant with the personal data using the
OCWE protocol to complete the transaction.
REJECTION AT ISSUE
Claims 1—8 and 10-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Dryer (US 2012/0290376 Al;
filed May 9, 2011) (hereinafter, “Dryer”), Kramer (US 2003/0140007 Al;
published July 24, 2003) (hereinafter, “Kramer”), and Graylin (US
2012/0036042 Al; published Feb. 9, 2012) (hereinafter, “Graylin”). Final
Act. 5—10.
ANALYSIS
The Examiner finds Dryer’s secret or transaction specific
authorization token teaches “personal data” (claims 1,14, and 22) because
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Application 13/622,733
the Specification describes “personal data” as “payment and fulfillment
data,” in a non-limiting context. Ans. 2 (citing Dryer 141). The Examiner
finds because Dryer teaches “personal data,” there is no frustration of
purpose, and no changing of a principle operation of Dryer. Ans. 2. In
addition, the Examiner finds Dryer’s data 122 transmitted from electronic
payment device 120 to mobile communication device 110 teaches “receiving
a request for the personal data from a second party, the personal data being
data of the banking applications and/or wallets” as recited in claim 1 (and
similarly recited in claims 14 and 22). Id. at 3.
Additionally, the Examiner finds Dryer’s mobile wallet application
113 displays payment options to the consumer who selects a payment option
and then generating an authorization token teaches “receiving a selection of
the banking applications and/or wallets from the first party; authenticating
the first party using built-in authentication of the selected banking
application and/or wallet” as recited in claim 1 (and similarly recited in
claims 14 and 22). Id. at 4—5. And the Examiner finds Kramer’s payment
protocol teaches “an open commerce wallet exchange (OCWE) protocol” as
recited in claims 1,14, and 22 because it is neither defined internally in the
Specification nor referenced in any extrinsic material, not commonly known
in the art, and is a generic placeholder term created by Appellant. Id. at 5—6.
Moreover, the Examiner finds Graylin’s secure fastpay 180 allows
previously used payment instruments to be stored in user accounts or
e-wallets 182, and then to be used again quickly with a user authentication
teaches the limitation “built-in authentication” recited in claims 1 and 14.
Id. at 7—8. The Examiner finds Graylin’s teaching of providing a transaction
token to Roambuy Server 110 and subsequently providing ResponseCode,
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ResponseMessage, Transactionld to merchant server 270 teaches the
limitation “providing the merchant with the personal data to complete the
transaction” recited in claim 1 (and similarly recited in claim 14 and 22). Id.
at 8—9 (citing Graylin, Fig. 3). The Examiner finds a person having ordinary
skill in the art at the time of the invention would combine Dryer, Kramer,
and Graylin by ascertaining from Graylin that some benefits combining the
references include creating a more efficient checkout process designed for
mobile devices that reduces the number of steps that a consumer has to
complete a transaction, increases consumer security, and provides useful
information about customers to merchants. Id. at 9—10 (citing Graylin | 6).
Appellant argues because Dryer does not provide the merchant with
personal data, the changes that result in Dryer are substantial resulting in a
change in the principle operation of Dryer and frustrates the purpose of
Dryer. App. Br. 6—7. In addition, Appellant argues Dryer does not teach
“personal data” as recited in claims 1, 14, and 22. Id. at 7—8. Appellant also
argues Dryer teaches ID verification is performed before any payment
option is selected, which fails to teach the chronological order requirement
of: (1) “receiving a selection of the banking applications and/or wallets
from the first party” and then (2) “authenticating the first party using built-in
authentication of the selected banking application and/or wallet” as recited
in claim 1 (and similarly recited in claims 14 and 22). Id. at 8. And
Appellant argues the rejection is flawed because Dryer’s payment protocol is
a protocol for payment, whereas “OCWE” (claims 1,14, and 22) pertains to
an exchange of information from a wallet or business application. Id. at 8—9.
Moreover, Appellant argues Graylin’s customer ID information and
password fail to teach “built-in authentication” recited in claims 1 and 14
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because “built-in authentication” pertains to the system retrieving
information from the banking application and/or wallet, whereas Graylin
pertains to stores of previously used payment instruments. Id. at 10. And
Appellant argues Graylin’s secure webpage hosted on commerce gateway
server 110 captures customer ID information, password, and the payment
information providing fails to teach “providing the merchant with the
personal data” as recited in claim 1 (and similarly recited in claims 14 and
22) because commerce gateway server 110 is not a merchant. Id. at 10—11.
Appellant argues the motivation to combine is flawed because the Examiner
did not find the motivation from the cited references and fails to provide an
affidavit saying the motivation is based on personal knowledge. Id. at 9-10.
Based upon a preponderance of the evidence, and our review of the record,
we disagree with Appellant’s contentions. We address Appellant’s
arguments seriatim.
At the outset, the Specification describes “personal data” as “payment
and fulfillment data,” in a non-limiting context. Spec. 113. The cited
portions of Dryer relied upon by the Examiner teach a secret or transaction
specific authorization token, which teaches “personal data” (claims 1, 14,
and 22). Ans. 2 (citing Dryer 141). Because Dryer teaches “personal data”
as described in the Specification, we agree with the Examiner’s finding that
there is no frustration of purpose of Dryer, and no changing of a principle
operation of Dryer. Ans. 2. In addition, the cited portions of Dryer relied
upon by the Examiner teaches data 122 transmitted from electronic payment
device 120 to mobile communication device 110, which teaches the
limitation “receiving a request for the personal data from a second party, the
personal data being data of the banking applications and/or wallets” as
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recited in claim 1 (and similarly recited in claims 14 and 22). Id. at 3 (citing
Dryer H 22, 73-75).
The cited portions of Dryer relied upon by the Examiner teach mobile
wallet application 113 displays payment options to the consumer who selects
a payment option and then generating an authorization token, which we find
teach or suggest the chronological order requirement of the limitation
“receiving a selection of the banking applications and/or wallets from the
first party; authenticating the first party using built-in authentication of the
selected banking application and/or wallet” as recited in claim 1 (and
similarly recited in claims 14 and 22). Id. at 4—5 (citing Dryer || 73—74,
Fig. 10).
In addition, we agree with the Examiner that OCWE is not defined in
the Specification nor referenced in any extrinsic material, not commonly
known in the art, and is a generic placeholder term created by Appellant.
Spec. 11 13, 22, 30. Put another way, the Specification describes OCWE
using non-limiting, exemplary language, such as “[i]n a preferred
embodiment,” “for example,” “can,” “[i]n one embodiment,” etc., which
falls short of a limiting definition. As such, the cited portions of Kramer
relied upon by the Examiner teach a payment protocol used when
conducting transactions with a merchant, which we find teach or suggest “an
open commerce wallet exchange (OCWE) protocol” as recited in claims 1,
14, and 22. Ans. 5—6 (citing Kramer H 666, 123, 232, Figs. 15A and 27).
Moreover, the Specification discloses the “[bjuilt in security of
banking applications and/or wallets 26 prevents unauthorized access to the
personal data.” Therefore, the cited portions of Graylin relied upon by the
Examiner teach secure fastpay 180 allows previously used payment
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Application 13/622,733
instruments to be stored in user accounts or e-wallets 182, and then to be
used again quickly with a user authentication, which we find teach or
suggest the limitation “built-in authentication” recited in claims 1 and 14
when interpreting the claim using a broadest reasonable construction. Id. at
7—8 (citing Graylin 124, Figs. 1A and IB). The cited portions of Graylin
relied upon by the Examiner teach providing a transaction token to Roambuy
Server 110 and subsequently providing ResponseCode, ResponseMessage,
Transactionld to merchant server 270, which we find teach or suggest the
limitation “providing the merchant with the personal data to complete the
transaction providing merchant with personal data” recited in claim 1 (and
similarly recited in claim 14 and 22). Id. at 8—9 (citing Graylin, Fig. 3).
Appellant’s arguments pertaining to a lack of motivation to combine
are unpersuasive. We are not persuaded by Appellant’s hindsight argument,
because Appellant has not provided any objective evidence of record that
shows that combining the respective teachings of the cited references would
have been “uniquely challenging or difficult for one of ordinary skill in the
art,” or that the Examiner’s proffered combination would have “represented
an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Furthermore, we find the
Examiner has set forth sufficient “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). (Final Act. 10, 12, 13, and 14). That is, the Examiner
finds one having ordinary skill in the art at the time of the invention would
ascertain from Graylin that some benefits combining the references include
creating a more efficient checkout process designed for mobile devices that
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Application 13/622,733
reduces the number of steps that a consumer has to complete a transaction,
increases consumer security, and provides useful information about
customers to merchants. Id. at 9—10 (citing Graylin 16).
Additionally, Appellant has not provided any objective evidence of
secondary considerations (e.g., unexpected results), which our reviewing
court guides, “operates as a beneficial check on hindsight.” Cheese Sys.,
Inc. v. Tetra Pak Cheese and Powder Syss., Inc., 725 F.3d 1341, 1352 (Fed.
Cir. 2013).
Accordingly, for the reasons set forth supra, we sustain the
Examiner’s rejection of: (1) independent claims 1, 14, and 22; and
(2) dependent claims 2—8, 10-13, and 15—21. See 37 C.F.R.
§ 41.37(c)(l)(iv).
DECISION
The Examiner’s decision rejecting claims 1—8 and 10—22 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 under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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