Ex Parte Wankmueller et al

Patent Trial and Appeal Board

Jul 29, 2016

12475718 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/475,718 0610112009
21839 7590 08/02/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
John R. Wankmueller
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.
007 6412-000077 4033
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. W ANKMUELLER and PAUL SMITH
Appeal2014-000578
Application 12/475,718 1
Technology Center 3600
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the decision
rejecting claims 1-19. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
1 According to Appellants, MasterCard International, Inc., is the real party
in interest. Appeal Br. 2 (filed May 29, 2012).
Appeal2014-000578
Application 12/475,718
INVENTION
Appellants' invention relates to "methods and systems for secure
mobile device initiated payments." Spec., Title. Claims 1, 6, and 13 are
independent. Claim 1 is illustrative of the claimed invention and reads as
follows:
1. A computer-implemented method for conducting a transaction,
the method comprising:
receiving an authorization request to authorize a purchase
transaction involving a purchase from a merchant, said
authorization request including a static virtual payment account
number (VP AN), an expiry date of the VP AN, and a dynamic
code generated by a mobile device, said authorization request
further including a transaction amount and a transaction date;
identifying, by a processor and based on said static
VP AN, a payment card account number;
verifying by the processor, that said dynamic code
matches an expected value of said dynamic code; and
transmitting an updated authorization request message to
an issuer for authorization processing based on said payment
card account number, said updated authorization request
including said payment card account number and an expiry date
of the payment card account number.
Appeal Br. 15, Claims Appendix.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 6-14, 18, and 19 under
35 U.S.C. § 103(a) as being unpatentable over Franklin et al.
(US 5 ,883 ,810, iss. Mar. 16, 1999, hereinafter "Franklin") and
Wankmueller (US 7,039,809 Bl, iss. May 2, 2006).
II. The Examiner rejected claims 3-5 and 15-17 under 35 U.S.C.
§ 103(a) as being unpatentable over Franklin, Wankmueller,
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Appeal2014-000578
Application 12/475,718
and Curry et al. (US 6,237,095 Bl, iss. May 22, 2001,
hereinafter "Curry").
ANALYSIS
Rejection I
Claims 1, 2, 6--14, 18, and 19
In rejecting independent claims 1, 6, and 13 as unpatentable over
Franklin and Wankmueller, the Examiner finds that Franklin's "transaction
proxy number" described at column 2, lines 22-28 corresponds to "a static
virtual payment account number (VP AN)," as recited in the claims. See
Final Act. 2--4 (mailed Sept. 19, 2011 ).
Appellants dispute this finding and contend that unlike the claimed
subject matter, "Franklin relates to an online commerce card that uses a
temporary single [use] transaction number for a purchase transaction."
Appeal Br. 7. According to Appellants, the term "static," as per claims 1, 6,
and 13, further defines the "virtual payment account number (VPAN)" and
thus, the claimed "VP AN refers to a VP AN having a fixed (i.e., static)
value .... that does not change." Id. at 9. Therefore, Appellants conclude
that Franklin's dynamic proxy transaction number is the exact opposite of
the claimed static VPAN. Id.; see also Reply Br. 2 (filed Oct. 1, 2013).
In responding to Appellants' arguments, the Examiner does not
disagree that Franklin discloses a single use proxy transaction number that is
dynamically generated for each purchase transaction, but instead asserts that
"nothing in the claims require that a static VP AN be used in more than one
transaction and the [S]pecification does not define a static VPAN as such."
Ans. 10 (mailed Aug. 2, 2013).
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Appeal2014-000578
Application 12/475,718
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Bond, 910 F .2d 831,
833 (Fed. Cir. 1990) (internal citation and quotations omitted). This means
that the words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. In re Zletz, 893 F .2d
319, 321 (Fed. Cir. 1989). In this case, an ordinary and customary meaning
of the term "static" is "pertaining to or characterized by a fixed or stationary
condition. "2 Such an interpretation of the term "static" is consistent with
Appellants' Specification, which describes a "static virtual payment account
number (VP AN)" as a permanent number that is installed and stored on the
mobile device for completing transactions. Spec. i-f 30. Upon receiving an
authorization request for each purchase transaction, the stored static VP AN
is used to look-up a data record from an associated physical payment card.
Id. at i-f 23. Therefore, we agree with Appellants that the claimed "static
virtual payment account number (VP AN)" cannot reasonably be interpreted
as corresponding to a temporary and dynamic single use transaction proxy
number. See Reply Br. 2-3. The Examiner's position that Franklin's
temporary single use transaction proxy corresponds to the static VP AN is
inconsistent with the plain and ordinary meaning of the claim language as it
would be understood by persons of ordinary skill in the art in light of
Appellants' Specification. As a result, we find that the Examiner failed to
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Appeal2014-000578
Application 12/475,718
establish a prima facie case of obviousness in rejecting independent claims
1, 6, and 13 based on the combination of Franklin and Wankmueller.
For the foregoing reasons, we do not sustain the rejection of
independent claims 1, 6, and 13, and claims 2, 7-12, 14, 18 and 19
dependent thereon. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("dependent claims are nonobvious if the independent claims from which
they depend are nonobvious").
Rejection II
Claims 3-5and15-17
Claims 3-5 and 15-17 are also nonobvious because independent
claims 1 and 13 from which they depend are nonobvious, and the
Examiner's use of the disclosure of Curry does not remedy the deficiencies
of Franklin as discussed supra. See Final Act. 4--5. Accordingly, for the
same reasons, we also do not sustain the rejection under 35 U.S.C. § 103(a)
of claims 3-5 and 15-1 7.
DECISION
The rejections of claims 1-19 are reversed.
REVERSED
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