Ex Parte Vihinen

Patent Trial and Appeal Board

Oct 31, 2012

10288091 (P.T.A.B. Oct. 31, 2012)

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.
10/288,091 11/05/2002 Seppo Vihinen 088245-3199 7311
23524 7590 11/01/2012
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
CHENCINSKI, SIEGFRIED E
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
11/01/2012 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
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6
Ex parte SEPPO VIHINEN 7
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9
Appeal 2011-002213 10
Application 10/288,091 11
Technology Center 3600 12
___________ 13
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Before ANTON W. FETTING, BIBHU R. MOHANTY, and 16
MICHAEL W. KIM, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
Appeal 2011-002213
Application 10/288,091

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 16, 2010) and Reply Brief (“Reply Br.,” filed September 2,
2010), and the Examiner’s Answer (“Ans.,” mailed July 8, 2010).
Seppo Vihinen (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2
of a final rejection of claims 15-29 and 37-40, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way for transmission of payment orders in a 6
mobile communication system. (Specification 1: Field of the Invention). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 15, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
15. A method comprising: 11
[1] sending a request for a payment order 12
in the form of a short message service (SMS) message 13
from a telecommunication device 14
to a payment order server 15
that is operatively coupled to a bank interface; 16
[2] receiving said payment order 17
in the form of a SMS message 18
from said payment order server 19
at said telecommunication device, 20
Appeal 2011-002213
Application 10/288,091

3
said payment order carrying with it 1
rights to funds delineated therein 2
upon presentation of said payment order 3
to said bank interface 4
through said payment order server, 5
wherein payment of funds is not conditioned upon 6
further action being executed 7
by said telecommunication device 8
after said telecommunication device 9
sends said payment order to a second 10
telecommunication device; 11
and 12
[3] sending 13
said payment order 14
and 15
instructions for honoring said payment order 16
in the form of a SMS message 17
from said telecommunication device 18
to said second telecommunication device. 19
The Examiner relies upon the following prior art: 20
Mori US 6,085,168 Jul. 4, 2000
Titus US 2002/0029189 A1 Mar. 7, 2002
Ginter US 6,363,488 B1 Mar. 26, 2002
Claims 15-22 and 24-29, and 37-40 stand rejected under 35 U.S.C. 21
§ 103(a) as unpatentable over Mori and Titus. 22
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 23
Mori, Titus, and Ginter. 24
Appeal 2011-002213
Application 10/288,091

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ISSUES 1
The issue of obviousness turns on whether the Examiner’s rationale to 2
modify Mori with the SMS system of Titus is proper. 3
FACTS PERTINENT TO THE ISSUES 4
The following enumerated Findings of Fact (FF) are believed to be 5
supported by a preponderance of the evidence. 6
Facts Related to the Prior Art 7
Mori 8
01. Mori is directed to a settlement system that settles payment 9
based on preliminary information received about the funds 10
available for payment. Col. 17, ll. 9-23. 11
02. Mori discloses that a seller transmits a final settlement request 12
to its financial institution to request payment. Col. 19, ll. 15-20. 13
03. Mori discloses that a purchaser’s system transmits a final 14
settlement admission to the seller’s financial institution when the 15
goods have been confirmed as “OK.” Col. 19, ll. 53-62. 16
04. Mori discloses that when the seller’s financial institution has 17
received both the final settlement request and admission, the final 18
settlement process is performed and payment is transferred to the 19
seller’s account. Col. 20, ll. 10-14. 20
Titus 21
05. Titus is directed to a pre-paid short messaging service system. 22
Titus ¶ [0016]. 23
Appeal 2011-002213
Application 10/288,091

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ANALYSIS 1
Claims 15-22 and 24-29, and 37-40 rejected under 35 U.S.C. § 103(a) as 2
unpatentable over Mori and Titus 3
Each of independent claims 15, 19, 21, and 29 require the use of short 4
message service (“SMS”) messages to convey information. 5
We are persuaded of error by Appellant’s argument that the Examiner’s 6
rationale to combine Titus with Mori does not substantively explain why one 7
of ordinary skill would have modified Mori to use SMS technology. App. 8
Br. 20. 9
The Examiner found Mori does not disclose the use of SMS messaging, 10
but reasoned that Titus does, and that the SMS technology of Titus could be 11
used for conveying messages instead of the networks in Mori. Ans. 5. The 12
reason for this modification was “for the purpose of establishing an 13
electronic payment order settlement method and terminal device, motivated 14
by a desire to bring to the market place an automated method for final 15
settlement for the payment of goods and services rendered and received 16
(Mori, Col. 1, ll. 6-16).” Ans. 5. This stated rationale, and the Field of 17
Invention reference from Mori, do not address any reason the skilled artisan 18
would choose to use SMS messaging, since Mori’s system already 19
automates the payment process. FF 04. Thus, the addition of SMS 20
messaging from Titus (FF 05) to the payment system of Mori (FF 01) does 21
not relate to the rationale provided by the Examiner. For this reason, we 22
reverse the rejection of independent claims 15, 19, 21, and 29, as well as 23
claims 16-18, 20, 22, 24-28, and 37-40 that depend from them. 24
Appeal 2011-002213
Application 10/288,091

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Claim 23 rejected under 35 U.S.C. § 103(a) as unpatentable over Mori, 1
Titus, and Ginter 2
We reverse the rejection of claim 23 because it is dependent on claim 21, 3
the rejection of which is reversed above. 4
CONCLUSIONS OF LAW 5
The rejection of claims 15-22, 24-29, and 37-40 under 35 U.S.C. 6
§ 103(a) as unpatentable over Mori and Titus is improper. 7
The rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable over 8
Mori, Titus, and Ginter is improper. 9
DECISION 10
The rejection of claims 15-29 and 37-40 is reversed. 11
REVERSED 12
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mls 17