Ex Parte Wolfs et al

Patent Trial and Appeal Board

Feb 23, 2017

13117516 (P.T.A.B. Feb. 23, 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.
13/117,516 05/27/2011 Rudolph Christian Wolfs 67519.001414 7785
21967 7590 02/23/2017
HUNTON & WILLIAMS LLP
INTELLECTUAL PROPERTY DEPARTMENT
2200 Pennsylvania Avenue, N.W.
WASHINGTON, DC 20037
EXAMINER
OBEID, MAMON A
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
02/23/2017 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 RUDOLPH CHRISTIAN WOLFS and DAVID AARON PINSKI
____________________

Appeal 2014-0099341
Application 13/117,5162
Technology Center 3600
____________________

Before NINA L. MEDLOCK, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 4, 6, 7, and 29. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 9, 2014) and Reply Brief (“Reply Br.,” filed Sept. 22, 2014), and the
Examiner’s Answer (“Ans.,” mailed July 22, 2014), the Advisory Action
(“Adv. Act.,” mailed Apr. 29, 2014) and Final Office Action (“Final Act.,”
mailed Jan. 9, 2014).
2 Appellants identify “ING Direct N.V.” as the real party in interest. App.
Br. 1.
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CLAIMED INVENTION
Appellants’ claimed invention relates to “financial transactions in
which three entities are actively engaged in authenticating a transaction.”
Spec. ¶ 2.
Claim 1, reproduced below, is the sole independent claim on appeal,
and is representative of the claimed subject matter:
1. A method of performing a person-to-person financial
transaction between an account of a transferor person from which
funds are to be transferred and an account of a transferee person
into which funds are to be transferred, comprising:
sending from a mobile financial transaction instrument of
the transferor to a financial institution a request to perform a
person-to-person financial transaction, said request comprising a
unique identifier of a mobile financial transaction instrument of
the transferee;
validating the requested transaction at the mobile financial
transaction instrument of the transferor upon receipt from the
financial institution of a transaction pending notice;
receiving an active authentication transaction key at a
mobile financial transaction instrument of the transferor from the
financial institution wherein the active authentication transaction
key comprises at least one character for identifying the financial
institution appended to a random alpha numeric string;
storing the active authentication transaction key in a non-
transient machine-readable storage medium of the mobile
financial transaction instrument of the transferor; and
the mobile financial transaction instrument of the
transferor transferring the active authentication transaction key
directly to the mobile financial transaction instrument of the
transferee for completion of the person-to-person financial
transaction between the transferor account and the transferee
account using wireless transmission.

Appeal 2014-009934
Application 13/117,516

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REJECTION3
Claims 1, 3, 4, 6, 7, and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Flitcroft (US 2003/0028481 A1, pub. Feb. 6, 2003) and
Raj (US 2011/0258686 A1, pub. Oct. 20, 2011).

ANALYSIS
We are not persuaded by Appellants’ argument that Raj fails to
disclose or suggest “sending from a mobile financial transaction instrument
of the transferor to a financial institution a request to perform a person-to-
person financial transaction, said request comprising a unique identifier of a
mobile financial transaction instrument of the transferee,” as recited in
claim 1. See Reply Br. 5–7. Instead, we agree with the Examiner that Raj
discloses the argued limitation. Ans. 5 (citing Raj ¶¶ 23–25).4
Raj is directed to an alias management and value transfer claim
processing system. Raj ¶ 18. Raj describes receiving a value transfer
request message comprising a recipient entity alias, a transfer amount, and a
sending recipient alias. Id. ¶ 6; see also id. ¶¶ 25–26. The recipient entity is
a consumer that is the intended recipient of a value transfer. Id. ¶ 44. A
value transfer transfers funds from one account associated with a portable

3 We treat the rejection under 35 U.S.C. § 112, first paragraph, as being
withdrawn in view of the Amendment After Final filed on April 9, 2014,
which was entered. Adv. Act. 1.
4 In the Final Office Action, the Examiner cited Flitcroft only as disclosing
the argued limitations. Final Act. 4–5. In the Answer, the Examiner found
that Raj also discloses the argued limitations. Ans. 4–6. Appellants argue
that the Examiner, by the new citations of Raj in the Answer, improperly
introduces a new ground of rejection. Reply Br. 5–6, n.1. But Appellants
did not seek redress from this alleged error in the form of a petition under
37 C.F.R. § 1.181.
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consumer device to another account associated with another portable
consumer device. Id. ¶ 23. In other words, Raj describes a person-to-person
financial transaction. The use of an alias preserves privacy and reduces the
likelihood of fraud. Id. ¶ 24. The alias may be a verifiable value, such as a
phone number. Id. ¶ 25.
Appellants contend that Raj fails to disclose or suggest the claimed
“unique identifier of a mobile financial transaction instrument of the
transferee,” as recited in claim 1, because Raj describes that the alias
uniquely identifies the customer instead of the portable consumer device, as
required by claim 1. Reply Br. 5 (citing Raj ¶¶ 24–26 (“a phone number and
an email are verifiable aliases because the alias value indicates a method to
contact a user”)).
However, Appellants’ Specification similarly describes the unique
identifier as information identifying the transferee. For example, the
Specification at paragraph 149 describes that a request for a person-to-
person transaction from a transferor includes “information concerning the
transferee including, but not limited to, a phone number or other unique
identifier of the mobile financial transaction instrument of the transferee
(e.g., MAC address, IMSI, ESN, etc.), [and] an email address of the
transferee.” Spec. ¶ 149 (emphasis added); see also id. ¶ 139. As such, we
are not persuaded of Examiner error.
We are not persuaded by Appellants’ argument that Raj fails to
disclose or suggest “validating the requested transaction at the mobile
financial transaction instrument of the transferor upon receipt from the
financial institution of a transaction pending notice,” as recited by claim 1.
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Instead, we agree with the Examiner that Raj discloses the argued limitation.
Ans. 6 (citing Raj ¶¶ 23, 93).
In this regard, Appellants argue that because Raj fails to disclose or
suggest the claimed unique identifier, Raj fails to disclose validating the
requested transaction. However, for the reasons set forth above, we are not
persuaded that Raj fails to disclose or suggest the claimed unique identifier.
Moreover, Appellants’ argument is not commensurate with the scope of
claim 1, at least because claim 1 recites “validating the requested
transaction” upon receipt of a transaction pending notice, but does not
specify any particular information of the requested transaction that is
validated.
Raj describes that the sending entity is presented with details about
the value transfer and sends a message to the payment processing network
indicating that they wish to continue with the value transfer. Raj ¶ 93. The
sending entity confirms, among other things, the source account or portable
consumer device, the sending entity’s currency, the transfer amount, and an
estimate of fees. Id. We agree with the Examiner that confirming value
transfer details, as described by Raj, constitutes the claimed validating under
the broadest reasonable interpretation.
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of claim 1. We also sustain the rejection of the dependent claims 3,
4, 6, 7, and 29, which are not separately argued.

DECISION
The Examiner’s rejection of claims 1, 3, 4, 6, 7, and 29 under
35 U.S.C. § 103(a) is sustained.
Appeal 2014-009934
Application 13/117,516

6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED