Ex Parte Sosa et al

Board of Patent Appeals and Interferences

May 12, 2010

09662222 (B.P.A.I. May. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROGELIO SOSA and
BERTRAND SOSA
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Appeal 2009-012765
Application 09/662,222
Technology Center 3600
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Decided: May 12, 2010
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012765
Application 09/662,222

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STATEMENT OF THE CASE
Appellants, Rogelio Sosa and Bertrand Sosa, seek our review, under
35 U.S.C. § 134 (2002), of the Examiner’s final decision rejecting claims 1-
5, 7-13, 15-29, 31, 32, 34-42, and 44-48. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

BACKGROUND1
Appellants’ invention “relates to e-commerce, and more particularly,
to a charge number issuing system and method that provides a universally-
accessible, anonymous and secure online payment option for users and
consumers.” Specification 1:14-16.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of issuing and transacting charge numbers by an issuing
and transaction system using an electronic communications network,
comprising:
receiving a plurality of valid charge numbers from an issuing
bank, wherein each valid charge number is acceptable to any entity
that accepts valid charge numbers that are provided to a charge

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed December 12, 2008); the Examiner’s Answer (“Ans.,” mailed April 2,
2009) and the Final Office Action (“Final,” mailed June 10, 2008).
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Application 09/662,222

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settlement network and routed by the charge settlement network to the
issuing and transaction system for validating transactions;
storing the plurality of valid charge numbers in a memory
device of the issuing and transaction system;
establishing a prepaid cash account for a user in exchange for
cash;
detecting a request by the user for one of a plurality of valid
charge numbers;
associating one of the plurality of valid charge numbers with
the prepaid cash account;
providing, via the electronic communications network, the
associated valid charge number in response to the request;
detecting, via the charge settlement network, a purchase
transaction using the associated valid charge number between the user
and a merchant; and
authorizing the purchase transaction if a cash balance of the
prepaid cash account is sufficient for a purchase amount of the
purchase transaction.

THE REJECTION
The Examiner relies on the following prior art references as evidence
of unpatentability:
Stimson
Risafi
US 5,577,109
US 6,473,500 B1
Nov. 19, 1996
Oct. 29, 2002

Appellants appeal the following rejection:
1. Claims 1-5, 7-13, 15-29, 31, 32, 34-42, and 44-48 are rejected under
35 U.S.C. §103(a) as being unpatentable over Stimson and Risafi.

Appeal 2009-012765
Application 09/662,222

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APPELLANTS’ CONTENTIONS
Appellants’ major contention is that the cited prior art combination
fails to disclose the step “providing, via the electronic communications
network, the associated valid charge number in response to the request”
(claim 1). See Br. 8 (“Stimson and Risafi are both card-based systems and
simply do not address electronically communicated charge numbers in the
manner recited in the claims.”).
The Examiner had found that Stimson “discloses ... providing, via the
electronic communications network, the associated valid charge number in
response to the request (col. 7, ll. 26-45).” Final 3 and Ans. 5. The
Examiner also cited Stimson col. 6, ll. 20-44. Final 15 and Ans. 17.
The Appellants responded by arguing that “[i]n Stimson (including
col. 6, lines 20-44 and col. 7, lines 26-45) a serial number is provided on a
card ‘or not.’” Br. 8.
Claim 1 recites a method not limited to the use of physical
cards in which the valid charge number is provided
electronically rather than being encoded on a physical card.
Although Stimson suggests that the security number might not
be encoded on a card, Stimson does not show or suggest
receiving a valid charge number in response to a request
conducted via an electronic communications network.
Br. 8.

ISSUE
Does Stimson disclose the step “providing, via the electronic
communications network, the associated valid charge number in response to
the request” (claim 1) as the Examiner has asserted?

Appeal 2009-012765
Application 09/662,222

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FACTUAL FINDINGS
We adopt all of the Examiner’s findings as our own. Ans. 3-16, Final
3-14.

ANALYSIS
I: claims 1-5, 7-13, and 15-25
These claims are process claims, claim 1 being the sole independent
claim.
The Appellants' argument that Stimson does not disclose or render
obvious the step “providing, via the electronic communications network, the
associated valid charge number in response to the request” (claim 1) as
claimed is persuasive.
The Appellants argue that Stimson, like Risafi, is a card-based system.
That argument, per se, is not persuasive because claim 1 is not limited so as
to exclude card-based systems. There is no requirement that any of the steps
claimed must be conducted without the use of a card. While the claim steps
of “detecting a request by the user for one of a plurality of valid charge
numbers” and “providing . . . the associated valid charge number in response
to the request” are necessarily conducted via an electronic communications
network, the source of the request is unstated and could broadly cover a card
as the source of the request.
In that regard, Stimson (col. 7, ll. 26-45) discloses a card-based
system whereby, upon swiping a card in a card reader of an activation
terminal, the terminal transmits information to a host computer and, in
return, “[t]he clerk or user ... is informed that the security number on the
card has been activated for the amount shown”. Stimson does not otherwise
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explain the manner by which the clerk or user is informed that the security
number on the card has been activated. There is no discussion in this
passage of charge numbers, valid or not, or of communicating them to the
user, whether requested or not. The passage in Stimson at col. 6, ll. 20-44 is
similarly devoid of disclosure communicating charge numbers.
Accordingly, we agree with the Appellants. The claim step of
“providing ... the associated valid charge number in response to the request”
is not disclosed in Stimson as the Examiner has asserted.

II: claims 26-29, 31, 32, and 34-41
These claims are apparatus claims, claim 26 being the sole
independent claim.
These claims require an “issuing and transaction system” for
performing the functions of “detect[ing] a request by a user for a charge
number” and “issu[ing] a selected one of the plurality of valid charge
numbers via the electronic communications network” (claim 26). For the
same reasons discussed above with respect to the method claims, we agree
with the Appellants, that these features are not disclosed in Stimson as the
Examiner has asserted.

III: claims 42 and 44-48
These claims are apparatus claims, claim 42 being the sole
independent claim.
These claims require an “issuing and transaction system” for
performing the functions of “detect[ing] requests for charge numbers” and
“provid[ing] a selected one of the plurality of valid charge numbers via the
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electronic communications network” (claim 42). For the same reasons
discussed above with respect to the method claims, we agree with the
Appellants, that these features are not disclosed in Stimson as the Examiner
has asserted.

ORDER
REVERSED

mev

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