Ex Parte Vadhri

Patent Trial and Appeal Board

Jan 9, 2017

12211891 (P.T.A.B. Jan. 9, 2017)

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.
12/211,891 09/17/2008 Srinivas Vadhri 2043.617US1 9323
49845 7590 01/11/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
01/11/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIVAS VADHRI
Appeal 2015-0000421
Application 12/211,8912
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
April 9, 2014) and Reply Brief (“Reply Br.,” filed September 22, 2014), and
the Examiner’s Answer (“Ans.,” mailed July 31, 2014) and Final Office
Action (“Final Act.,” mailed July 18, 2013).
2 Appellant identifies eBay, Inc. as the real party in interest. App. Br. 1.
Appeal 2015-000042
Application 12/211,891
CLAIMED INVENTION
Appellant’s claimed invention “pertains generally to electronic
communication and more particularly, but not by way of limitation, to
initiating a function with an email message” (Spec. 11).
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative:
1. A computer implemented method comprising:
receiving an email message from a sender, the email
message including a payment command to transfer an amount
from the sender to a payee;
based on an email address of the sender, using at least one
processor of a machine, validating the sender; and
based on validating the sender, using at least one processor
of the machine, initiating execution of the payment command.
REJECTIONS
Claims 1—4, 7—15, and 18—22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kulasooriya (US 2006/0015453 Al, pub. Jan. 19, 2006),
Dheer (US 2006/0195398 Al, pub. Aug. 31, 2006), and Chow
(US 2008/0307226 Al, pub. Dec. 11, 2008).
Claims 5, 6, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kulasooriya, Dheer, Chow, Ross (US 2002/0143885 Al,
pub. Oct. 3, 2002).
ANALYSIS
Independent Claim 1 and Dependent Claims 2—4 and 7—11
We are not persuaded by Appellant’s arguments that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because the combination
of Kulasooriya and Dheer, on which the Examiner relies, does not disclose
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Application 12/211,891
or suggest “receiving an email message from a sender, the email message
including a payment command to transfer an amount from the sender to a
payee” (App. Br. 6—8; see also Reply Br. 2-4).
Kulasooriya is directed to a system and method for effecting online
financial transactions between individuals or between individuals and
entities such as banks, merchants, and other companies (Kulasooriya,
Abstract). Kulasooriya discloses that a user, i.e., a payor, that desires to
send money to another entity, i.e., the payee, may do so by accessing an
existing online account associated with the user and initiating a “send
money” transaction (id. at 125; see also id. at 137). In accordance with the
disclosed method, the payor is prompted to enter an amount of funds to be
transferred and identification information, e.g., an email address, for the
recipient of the funds, i.e., the payee (id. at 137). The system processes the
information and sends an electronic message (including a link, e.g., URL or
selectable link) to the payee using the contact information; upon selecting
the link, the payee is provided with a web page or other online document
that allows the payee to accept (or reject) the “send money” transaction and
direct the funds to be transferred to an identified account (id. at || 38—39).
The Examiner takes the position that “the email with an embedded
link actionable to transfer funds [as disclosed in Kulasooriya] teaches an
email message comprising a payment command” (Ans. 8). But the
Examiner states that Kulasooriya fails to teach the claim requirement to
“transfer an amount to the sender” (id.), and cites Dheer as teaching a
request to make a payment to a payee (id. at 9 (citing Dheer || 28—29).
Dheer is directed to a method and apparatus for processing payment
requests, and discloses that a request for payment is sent, via email, to an
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Application 12/211,891
intended recipient (Dheer 128). The email includes an embedded link that
directs the email recipient to a web site that allows the recipient to make a
payment; upon activation of the link, the email recipient is provided with
multiple choices for making an electronic payment, e.g., paying by credit
card, debit card, or by a direct debit to his/her bank account (id. at 129).
After the email recipient selects one of the payment choices, the payment
system verifies the email recipient’s ability to make the electronic payment
and, if verified, implements the payment (id. at 130).
Appellant argues that the payment facilitated by the link embedded in
the email in Dheer is from the email recipient to another party and, therefore,
cannot be ‘“a payment command to transfer an amount from the sender to a
payee,”’ as recited in claim 1 (App. Br. 7). Appellant, thus, maintains that
by incorporating the embedded link of Dheer (i.e., a link that allows an
email recipient to make a payment) into the email of Kulasooriya that is sent
to a payee, the system resulting from the combination of Kulasooriya and
Dheer would facilitate the sending of an email to a recipient that allows the
recipient to pay himself or herself, which is contemplated by neither
Kulasooriya nor Dheer (id. at 8).
Appellant’s argument is based on the bodily incorporation of the
Dheer link into the Kulasooriya email. Yet the test for obviousness is not
whether the features of one reference may be bodily incorporated into the
structure of another reference. Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
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Application 12/211,891
invention under review.”); In re Nievelt, 482 F.2d 965 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). The Supreme Court also has made clear
that when considering obviousness, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection
of dependent claims 2-4 and 7—11, which are not argued separately except
based on their dependence from claim 1 (App. Br. 11).
Independent Claim 12 and Dependent Claims 13—15, and 18—22
Appellant argues that claim 12 is allowable for the same reasons set
forth with respect to claim 1 (App. Br. 8—9). Therefore, we sustain the
Examiner’s rejection under 35 U.S.C. § 103(a) of claim 12 for the same
reasons set forth with respect to claim 1. For the same reasons, we also
sustain the rejection of dependent claims 13—15 and 18—22, which are not
argued separately except based on their dependence from claim 12.
Dependent Claims 5, 6, 16, and 17
Claims 5 and 6 and claims 16 and 17 depend from independent
claims 1 and 12, respectively. Appellant does not present any argument in
support of the patentability of these dependent claims except to argue that
the claims are allowable based on their dependence from claims 1 and 12.
Therefore, we sustain the Examiner’s rejection of claims 5, 6, 16, and
17 under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejections of claims 1—22 under 35 U.S.C. § 103(a)
are 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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